DCT

1:24-cv-04338

Knix Wear Inc v. Emidia LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:24-cv-04338, S.D.N.Y., 06/06/2024
  • Venue Allegations: Plaintiff alleges venue is proper because Defendant has a regular and established place of business in the Southern District of New York and has committed the alleged acts of patent infringement in the district.
  • Core Dispute: Plaintiff alleges that Defendant’s period underwear and swimwear products infringe four U.S. patents related to absorbent garment construction and moisture capture assemblies.
  • Technical Context: The technology concerns absorbent garments, such as period underwear and swimwear, designed to be leak-proof and absorbent while remaining discreet and comfortable through seamless bonding techniques.
  • Key Procedural History: The complaint alleges that Plaintiff sent Defendant a demand letter on November 19, 2021, providing notice of U.S. Patent Nos. 10,441,479 and 10,441,480. Subsequent correspondence allegedly included an agreement by Defendant to cease manufacturing and selling the accused products, though Defendant allegedly refused to execute a formal agreement and continued the accused activities, which may be central to Plaintiff’s claim of willful infringement.

Case Timeline

Date Event
2013-05-03 Priority Date for ’479, ’480, and ’931 Patents
2019-10-15 Issue Date for U.S. Patent No. 10,441,479
2019-10-15 Issue Date for U.S. Patent No. 10,441,480
2021-10-25 Priority Date for ’267 Patent
2021-11-19 Plaintiff sends demand letter to Defendant regarding ’479 and ’480 Patents
2022-01-04 Defendant responds to demand letter
2022-02-07 Plaintiff sends draft settlement agreement to Defendant
2022-03-04 Defendant declines to execute written agreement
2023-07-18 Issue Date for U.S. Patent No. 11,701,267
2023-08-29 Issue Date for U.S. Patent No. 11,737,931
2023-09-05 Plaintiff purchases sample of Accused Underwear Product
2023-10-27 Plaintiff purchases sample of Accused Swimwear Product
2024-01-12 Date of screenshots of Defendant's retail website
2024-06-06 Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 10,441,479, Absorbent Garment, issued October 15, 2019

  • The Invention Explained:
    • Problem Addressed: The patent describes a need for absorbent garments, particularly for stress incontinence, that are not bulky or indiscreet, which can make users feel "ashamed or embarrassed" and limits what clothing can be worn over them (ʼ479 Patent, col. 1:25-30). Conventional absorbent products often use stitching that adds "unseemly bulk" and is visible through tighter-fitting overgarments (ʼ479 Patent, col. 6:17-23).
    • The Patented Solution: The invention is an undergarment that integrates an absorbent pad using an elastic bonding film instead of traditional seams. The solution specifies an absorbent pad constructed with a thicker inner region for absorbency and a thinner, thermo-compressed peripheral region. The elastic bonding film overlies this thinned periphery to bond the pad to the garment's body, creating a smooth, "substantially seamless" and low-profile transition at the leg openings (ʼ479 Patent, Abstract; col. 7:15-22; Fig. 2).
    • Technical Importance: This construction method addresses the dual challenge of providing effective moisture absorption while achieving an aesthetic and comfortable result that is "invisible or very closely comparable in invisibility to known, non-absorbent undergarments" (ʼ479 Patent, col. 6:30-34).
  • Key Claims at a Glance:
    • The complaint asserts independent claim 1 and dependent claims 3, 4-8, 15, 17, and 20-22 (Compl. ¶25).
    • Independent Claim 1 requires:
      • A body portion with a waistband, two leg opening regions, and a crotch region.
      • An absorbent assembly with an absorbent layer overlying the crotch region, the assembly having an inner region and a peripheral region, where the peripheral region is thinner than the inner region.
      • An elastic bonding film that lines the leg opening regions and overlies the peripheral region of the absorbent assembly, bonding it to the body portion.
      • The undergarment must be configured to be washed and re-worn numerous times.

U.S. Patent No. 10,441,480, Absorbent Garment, issued October 15, 2019

  • The Invention Explained:
    • Problem Addressed: As with its parent, this patent addresses the challenge of creating absorbent garments that are functional for leakages like menstruation or incontinence but are also comfortable and discreet enough for everyday wear under various types of clothing (ʼ480 Patent, col. 1:15-30).
    • The Patented Solution: This invention specifies an "absorbent assembly" comprising both an absorbent layer and a "moisture-barrier layer." The assembly is bonded to the garment's body portion using strips of elastic bonding film. The moisture-barrier layer is positioned between the absorbent layer and the main body of the garment to prevent leakage (ʼ480 Patent, col. 9:10-23, col. 9:36-40; Fig. 2). The goal is to provide a reliable, reusable, and seamless-appearing absorbent garment.
    • Technical Importance: The explicit inclusion of a moisture-barrier layer within the seamless construction provides a technical solution for enhanced leak-proof performance while maintaining the aesthetic benefits of the seamless bonding method (ʼ480 Patent, col. 6:10-16).
  • Key Claims at a Glance:
    • The complaint asserts independent claim 1 and dependent claims 2-6, 12, 16, 18, 22, and 23 (Compl. ¶31).
    • Independent Claim 1 requires:
      • A body portion with a waistband, two leg opening regions, and a crotch region.
      • An absorbent assembly comprising an absorbent layer and a moisture-barrier layer.
      • Strips of elastic bonding film that bond the absorbent assembly to the body portion.
      • The absorbent assembly must overlie the crotch region with the moisture-barrier layer facing the body portion.
      • The strips of elastic bonding film must be bonded to the leg opening regions and bond at least a portion of the absorbent assembly to the body portion.
      • The undergarment must be configured to be washed and re-worn numerous times.

U.S. Patent No. 11,737,931, Garments and Associated Methods, issued August 29, 2023

  • Technology Synopsis: This patent, part of the same family as the '479 and '480 patents, describes garments with an absorbent assembly bonded to a body portion without stitching. The invention focuses on providing a physically stable, comfortable, and aesthetically seamless moisture-absorbent garment that can be washed and re-worn, using elastic bonding film to attach an absorbent layer to the garment body ('931 Patent, Abstract; col. 5:10-21).
  • Asserted Claims: Independent claim 1 and dependent claims 2-5 and 8-11 (Compl. ¶37).
  • Accused Features: The "Second-Skin Hipster" period underwear product is accused of infringing this patent (Compl. ¶¶14, 37).

U.S. Patent No. 11,701,267, Garments with Moisture Capture Assemblies and Associated Methods, issued July 18, 2023

  • Technology Synopsis: This patent is directed toward garments, particularly swimwear, that incorporate a "moisture capture assembly." This assembly is joined to the garment base and includes a "moisture retention portion" to absorb fluids and an "anti-leak portion" to prevent those fluids from escaping into the external environment (e.g., a pool). The invention details specific bond structures and layer configurations to ensure fluids are contained during activities like swimming ('267 Patent, Abstract; col. 3:59-65).
  • Asserted Claims: Independent claim 1 and dependent claims 2, 11, and 15-17 (Compl. ¶43).
  • Accused Features: The "Swimwear One-Piece Classic" product is accused of infringing this patent (Compl. ¶¶15, 43).

III. The Accused Instrumentality

Product Identification

The complaint identifies two accused products: the "Second-Skin Hipster," referred to as the "Accused Underwear Product," and the "Swimwear One-Piece Classic," referred to as the "Accused Swimwear Product" (Compl. ¶¶14-15).

Functionality and Market Context

The complaint alleges that the Accused Underwear Product is a type of seamless period underwear, and the Accused Swimwear Product is period swimwear (Compl. ¶¶13-15). The complaint provides images of Plaintiff's own period underwear, which are described as having a seamless construction and an integrated absorbent gusset, illustrating the type of technology central to the dispute (Compl. ¶7, p. 3). Plaintiff alleges that Defendant's products were part of a "then-new line of seamless period underwear" that directly competes with its own patented products (Compl. ¶19).

IV. Analysis of Infringement Allegations

The complaint references claim chart exhibits (Exhibits G, H, I, and K) demonstrating infringement, but these exhibits were not attached to the filed document. The infringement theory is therefore based on the complaint's narrative allegations (Compl. ¶¶16-18).

Plaintiff alleges that Defendant’s Accused Underwear Product and Accused Swimwear Product directly infringe the asserted patents by being made, used, sold, offered for sale, and/or imported in the United States (Compl. ¶¶25, 31, 37, 43). The Accused Underwear Product is alleged to practice the inventions of the ’479, ’480, and ’931 patents, which relate to absorbent garments with seamless bonding. The Accused Swimwear Product is alleged to practice the invention of the ’267 patent, which relates to moisture-capturing swimwear.

Identified Points of Contention

  • Technical Questions: A factual question for the court may be whether the materials and manufacturing processes of the accused products meet the specific structural limitations of the claims. For the ’479 and ’480 patents, this includes whether the accused underwear utilizes an "elastic bonding film" and an absorbent pad with a "reduced-thickness peripheral region" as claimed (ʼ479 Patent, cl. 1).
  • Scope Questions: For the ’267 patent, a key legal and factual question will be whether the construction of the Accused Swimwear Product falls within the scope of a "moisture capture assembly" having distinct "moisture retention" and "anti-leak" portions as recited in the claims, or if its design is technically distinguishable ('267 Patent, cl. 1). The defense may argue that its product employs a different structural approach to fluid management in a swimwear context.

V. Key Claim Terms for Construction

'479 Patent

  • The Term: "elastic bonding film" (Claim 1)
  • Context and Importance: This term is fundamental to how the absorbent pad is attached to the garment body to achieve the "seamless" benefit. The composition and properties of this "film" will be critical to determining the scope of the claim. Practitioners may focus on this term because it distinguishes the invention from garments using traditional stitching.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification does not limit the term to a single material, which may support a construction covering a range of thermoplastic or adhesive materials that exhibit elastic and bonding properties.
    • Evidence for a Narrower Interpretation: The specification states the film's thickness is "about equal to the difference in thickness between the peripheral region 21a and the inner region 21b of the absorbent pad 20," which could be argued to impose a specific dimensional limitation on what qualifies as the claimed "film" (ʼ479 Patent, col. 7:42-47).

'480 Patent

  • The Term: "seamlessly bonded" (Claim 15)
  • Context and Importance: This term, appearing in a dependent claim, captures the core aesthetic and functional advantage of the invention. The dispute will likely center on what degree of "seamlessness" is required.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent contrasts the invention with prior art stitching that adds "unseemly bulk," suggesting "seamlessly" could mean free of bulky, sewn seams, rather than being literally without any seam whatsoever ('480 Patent, col. 6:17-23). The term is presented as an advantage that makes the garment "invisible or very closely comparable in invisibility to known, non-absorbent undergarments" ('480 Patent, col. 6:30-34).
    • Evidence for a Narrower Interpretation: A defendant could argue that the term requires a perfect, undetectable transition between components, a standard that might be difficult to meet. The lack of an explicit definition leaves the term's construction dependent on its context within the specification.

VI. Other Allegations

Indirect Infringement

The complaint does not set forth a separate count for indirect infringement.

Willful Infringement

The complaint makes a detailed allegation of willful infringement. It claims that Defendant had pre-suit knowledge of the ’479 and ’480 patents as of at least November 19, 2021, via a specific demand letter (Compl. ¶19). The complaint further alleges that Defendant responded, engaged in communications about ceasing infringement, but ultimately continued its accused activities despite these communications (Compl. ¶¶20-22). This alleged history of notice and continued infringement forms the primary basis for the willfulness claim (Compl. ¶¶26, 32, 38, 44).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A central issue will be one of willfulness and evidence: given the detailed allegations of pre-suit notice and subsequent communications, a key question for the fact-finder will be whether Defendant’s continued sales of the accused products, allegedly in contravention of its own representations, rose to the level of objective recklessness required to support a finding of willful infringement.
  • A second issue will be one of claim scope and construction: the case may turn on whether the term "elastic bonding film," as used in the patents to describe a method for creating a smooth, seamless finish, can be construed to read on the specific bonding agents and manufacturing techniques employed in Defendant's accused products.
  • A third key question will be one of structural infringement, particularly for the swimwear patent: does the accused "Swimwear One-Piece Classic" embody the specific multi-part "moisture capture assembly" required by the ’267 patent’s claims, or is there a fundamental mismatch in its technical construction that places it outside the scope of the invention?