DCT
1:23-cv-03388
Saxx US Acquisition Inc v. Rhone Apparel Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Saxx US Acquisition, Inc. (British Columbia, Canada)
- Defendant: Rhone Apparel, Inc. (Delaware)
- Plaintiff’s Counsel: Perkins Coie LLP
- Case Identification: 1:23-cv-03388, S.D.N.Y., 04/21/2023
- Venue Allegations: Venue is alleged to be proper based on Defendant maintaining regular and established retail locations within the Southern District of New York.
- Core Dispute: Plaintiff alleges that Defendant’s men's underwear products, which feature a "comfort pouch," infringe a patent related to an underwear garment design that uses internal side panels to isolate the male genitals and prevent chafing.
- Technical Context: The technology concerns the structural design of men's undergarments, specifically the use of internal fabric panels to enhance comfort, provide support, and reduce skin-on-skin friction.
- Key Procedural History: The complaint notes that Plaintiff sent a letter to Defendant in January 2022 detailing the alleged infringement. Following this, Plaintiff sued Defendant in Canada over a related Canadian patent. The parties settled the Canadian litigation, but Plaintiff alleges that infringement in the U.S. has continued, forming the basis for this suit and allegations of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2007-01-25 | ’571 Patent Priority Date (Provisional Application) |
| 2007-12-19 | ’571 Patent Application Filing Date |
| 2011-06-14 | ’571 Patent Issue Date |
| 2022-01-10 | Plaintiff sent pre-suit notice letter to Defendant |
| 2022-02-08 | Defendant served with statement of claim in Canadian litigation |
| 2023-04-21 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,958,571 - "Underwear Garment for a Male"
- Patent Identification: U.S. Patent No. 7,958,571, "Underwear Garment for a Male," issued June 14, 2011 (the "’571 Patent").
The Invention Explained
- Problem Addressed: The patent's background section identifies deficiencies in conventional men's underwear, including the propensity for the scrotum to contact and stick to the inner thigh, leading to "friction, chaffing, and discomfort," as well as moisture problems and a lack of support ('571 Patent, col. 1:20-28).
- The Patented Solution: The invention is an undergarment featuring a "genital pouch" and, critically, a pair of internal, "laterally spaced apart" side panels. These panels function as "scrotum fences," extending upward from the perineum into the fold between the scrotum and the thighs to isolate the genitals, prevent skin-on-skin contact, and wick moisture ('571 Patent, Abstract; col. 2:34-44). The specific shape and construction of the pouch and panels are designed to hold the genitals in a more natural position while providing support ('571 Patent, col. 5:1-7).
- Technical Importance: The design provides a structural solution to the problem of genital comfort and isolation, an issue the patent claims was not successfully addressed by prior art designs like loose boxer shorts or tight-fitting briefs ('571 Patent, col. 1:29-49).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶54).
- The essential elements of independent claim 1 include:
- An underwear garment with a waistband and a front wall.
- A "genital pouch" formed in a mid-section of the front wall that is "pear-shaped when viewed from the front" and has a lower extremity forming a "perineum portion."
- The pouch includes a "phallus supporting portion" and a "scrotum supporting portion."
- A "pair of laterally spaced apart, separate and substantially parallel side panels" that form "generally vertical extending scrotum fences."
- These side panels are spaced to "snugly engage sides of the scrotum" and extend upward into the fold between the scrotum and inner thighs to "substantially entirely cover exposed thigh skin in the fold."
- The complaint reserves the right to assert other claims (Compl. ¶61).
III. The Accused Instrumentality
Product Identification
- The accused products are the "Essentials Boxer Brief," "Essentials Boxer Trunk," "Essentials Active Boxer Trunk," and "Essentials Active Boxer Brief" (collectively, "Essentials Boxer") (Compl. ¶45).
Functionality and Market Context
- The complaint alleges these are men's underwear products that Defendant markets as featuring a "comfort pouch" and "signature pouch details" (Compl. ¶¶ 46-47). A screenshot from Defendant's website shows the "Essentials Boxer Brief" and a marketing callout for its "Comfort pouch" (Compl. p. 9). The complaint alleges these products are sold through Defendant's website and various third-party retailers (Compl. ¶¶ 16, 49).
IV. Analysis of Infringement Allegations
’571 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| For wearing by a user having a penis, a scrotum, and a perineum an underwear garment comprising: a waistband, and a front wall depending downwardly from the front thereof, | The accused products are underwear garments for men that include a waistband and a front wall depending from it (Compl. ¶¶ 55-56). | ¶¶55-56 | col. 6:8-11 |
| a genital pouch formed in a mid-section of said front wall so as to bisect said front wall, said pouch pear-shaped when viewed from the front and having a lower extremity thereof which extends under and rearwardly of said front wall so as to form a perineum portion for covering past the scrotum and to the perineum of the user... | The accused products include a genital pouch in the mid-section of the front wall, which is alleged to be pear-shaped and extend rearwardly to form a perineum portion (Compl. ¶57). | ¶57 | col. 6:12-19 |
| said pouch having a phallus supporting portion extending forwardly of a plane generally containing said front wall and forming therein an apex portion for containing a head of the penis of the user when the penis is hanging at rest, | The pouch on the accused products is alleged to have a phallus supporting portion that extends forward and forms an apex for containing the head of the penis (Compl. ¶58). | ¶58 | col. 6:20-24 |
| said pouch having a scrotum supporting portion extending from and between said phallus supporting portion and said perineum portion for containing at least a portion of the scrotum of the user, | The pouch on the accused products is alleged to have a scrotum supporting portion for containing at least part of the scrotum (Compl. ¶59). | ¶59 | col. 6:25-28 |
| a pair of laterally spaced apart, separate and substantially parallel side panels forming upwardly from adjacent the perineum generally vertical extending scrotum fences towards said waistband, spaced so as to snugly engage sides of the scrotum... | The accused products are alleged to include a pair of laterally spaced, parallel side panels that form vertical scrotum fences, which snugly engage the sides of the scrotum (Compl. ¶60). | ¶60 | col. 6:29-34 |
| ...and to substantially completely cover over and support the sides of the scrotum and to extend upwardly into a fold along a lowermost aspect of the abdomen of the user...so as to substantially entirely cover exposed thigh skin in the fold exposed for rubbing against scrotum skin in the fold. | The side panels are alleged to cover and support the sides of the scrotum and extend up into the anatomical fold between the scrotum and inner thighs, covering the exposed thigh skin in that area (Compl. ¶60). | ¶60 | col. 6:35-41 |
- Identified Points of Contention:
- Scope Questions: The claim recites highly specific geometric and anatomical features, such as a "pear-shaped" pouch and "scrotum fences." A central question will be whether the structure of Defendant's "comfort pouch" can be shown to meet these specific definitions. The interpretation of what constitutes "separate and substantially parallel side panels" will be critical.
- Technical Questions: A key evidentiary question is whether the internal panels of the accused products function as claimed, specifically whether they "snugly engage sides of the scrotum" and extend into the "fold along a lowermost aspect of the abdomen" to "substantially entirely cover exposed thigh skin." The complaint makes these allegations based on "information and belief and as shown in at least the product images" (Compl. ¶60), which raises the question of what discovery regarding the products' internal construction will reveal.
V. Key Claim Terms for Construction
The Term: "a pair of laterally spaced apart, separate and substantially parallel side panels forming...scrotum fences"
- Context and Importance: This phrase describes the core inventive concept. The dispute will likely center on the structural reality of the accused product's pouch. Practitioners may focus on this term because the definitions of "separate," "substantially parallel," and "scrotum fences" will determine whether a generic "comfort pouch" design infringes on this specific, detailed structure.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the panels' function as "isolating the genitalia from contacting the inner thighs and legs" ('571 Patent, col. 3:36-38), which could support an interpretation focused on the functional outcome rather than a rigid structure.
- Evidence for a Narrower Interpretation: The specification states the panels are "two separate and substantially parallel pieces of mesh fabric" ('571 Patent, col. 3:41-43) and shows them in figures as distinct elements (e.g., Fig. 3, element 12). This could support a narrower reading requiring two physically distinct fabric components, not just sections of a single, integrated pouch.
The Term: "extend upwardly into a fold along a lowermost aspect of the abdomen"
- Context and Importance: This term defines the precise anatomical location and extent of the claimed side panels, which is essential to their function of preventing skin-on-skin chafing. Infringement will depend on whether the accused product's panels reach this specific location on the wearer's body.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The purpose is to "inhibit skin-to-skin contact" ('571 Patent, col. 4:6-8). An argument could be made that any structure achieving this goal in the general groin area meets the spirit of the claim.
- Evidence for a Narrower Interpretation: The patent is highly specific, describing the location as "the crack or fold between the laterally outer sides of scrotum 14 and the top of the inner thighs" ('571 Patent, col. 3:44-46). This language may support a requirement that the panels must extend fully into this anatomical crease.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement under 35 U.S.C. § 271(b) (Compl. ¶62). The factual basis alleged is that Defendant intended for infringement by contracting with third-party importers and retailers to import and sell the accused products, and by selling the products to end-users (Compl. ¶63).
- Willful Infringement: The complaint alleges willfulness, asserting that Defendant had knowledge of the ’571 Patent since at least January 10, 2022, from a notice letter, and knowledge of its infringement from being served in a related Canadian litigation in February 2022 (Compl. ¶¶ 64-65, 67). The continuation of sales after these events is alleged to be "willful, egregious, deliberate, in bad faith, and/or flagrant" (Compl. ¶67).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of structural correspondence: Do the internal components of Rhone's "comfort pouch," as they are actually constructed, possess the specific "pair of...separate and substantially parallel side panels" that function as "scrotum fences," as required by Claim 1, or is it a different, unpatented design?
- A related question will be one of definitional scope: Can the term "pear-shaped," a subjective descriptor, be definitively applied to the accused product's pouch? Further, how will the court construe the claim's precise anatomical language, such as extending "into a fold along a lowermost aspect of the abdomen," and can the accused products be proven to meet this standard during use?
- Finally, a key evidentiary question will be what facts emerge from discovery. The complaint's infringement allegations rely on "information and belief" and external product images, and the case may turn on whether physical inspection and expert analysis of the accused products confirm the presence and function of the highly specific structures recited in the patent's claims.