DCT
1:24-cv-06371
Pakage Apparel Inc v. Tommy John Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Pakage Apparel, Inc. d/b/a BN3TH (British Columbia, Canada)
- Defendant: Tommy John, Inc. (Delaware)
- Plaintiff’s Counsel: Daniels & Tredennick LLP
- Case Identification: 4:23-cv-04337, S.D. Tex., 11/17/2023
- Venue Allegations: Plaintiff alleges venue is proper because Defendant has committed acts of infringement and maintains a "regular and established place of business," specifically a retail store, within the Southern District of Texas.
- Core Dispute: Plaintiff alleges that Defendant’s "Hammock Pouch" line of men's underwear infringes a patent related to supportive undergarments featuring an internal pouch structure.
- Technical Context: The technology concerns the design of men's undergarments engineered to provide anatomical separation and support, aiming to reduce chafing and increase comfort during physical activity.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant with notice of the patent-in-suit and the alleged infringement on or before November 20, 2020, but that Defendant refused to cease its activities, which forms the basis for Plaintiff's willfulness allegations.
Case Timeline
| Date | Event |
|---|---|
| 2010-12-31 | Priority Date for ’974 Patent |
| 2020-11-17 | U.S. Patent No. 10,834,974 Issued |
| 2020-11-20 | Alleged date of first notice of infringement to Defendant |
| 2023-11-17 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,834,974 - "Garments for Men," issued November 17, 2020
The Invention Explained
- Problem Addressed: The patent addresses the problem of discomfort in men's next-to-skin garments, specifically "uncomfortable pressure and or chafing of the genital area" that is common during sports and other activities (’974 Patent, col. 1:24-28).
- The Patented Solution: The invention is a garment, such as a pair of undershorts, that incorporates an internal "stretch panel" inside the front portion of the garment. This panel, which has an opening to receive the wearer's genitals, is constructed and attached in a way that it works with the outer fabric to define a "three-dimensional pouch" (’974 Patent, col. 2:38-42; Abstract). This pouch is designed to gently support and contain the genitals, enhancing comfort and preventing them from being pulled tightly against the body (’974 Patent, col. 2:32-34).
- Technical Importance: This design provides a structured, yet flexible, internal compartment that offers anatomical support and separation, a departure from traditional undergarment construction.
Key Claims at a Glance
- The complaint asserts independent Claim 1 (Compl. ¶31).
- The essential elements of Claim 1 include:
- A body with a front portion and leg openings.
- A waistband attached to an upper edge of the body.
- A stretch panel made of "elastically resilient four-way stretch material" attached inside the front portion at top, bottom, and side locations, with the panel including an opening for the wearer's genitals.
- The stretch panel having a smaller unstretched length and width than the corresponding section of the front portion, causing the front portion to be "gathered from side-to-side and top-to-bottom" to define a "three-dimensional pouch."
- The complaint reserves the right to assert additional claims, including dependent claims (Compl. ¶42).
III. The Accused Instrumentality
Product Identification
- The accused products are various styles of Tommy John's men's underwear sold with a feature called the "Hammock Pouch," including the "360 Sport Hammock Pouch," "Second Skin Hammock Pouch," and "Cool Cotton Hammock Pouch," among others (Compl. ¶5, ¶23).
Functionality and Market Context
- The complaint alleges that the Accused Products incorporate the "Hammock Pouch" feature to provide support and comfort (Compl. ¶23). The complaint presents an annotated photograph of the interior of the "Tommy John Air Hammock Pouch" underwear, which depicts an internal fabric panel with an opening, attached inside the front of the garment (Compl. ¶36). The complaint alleges that Plaintiff and Defendant are direct competitors in the market for supportive men's undergarments (Compl. ¶20).
IV. Analysis of Infringement Allegations
’974 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A male garment comprising: [1] a body including a front portion and having leg openings for a wearer's legs; | The accused Tommy John Hammock Pouch underwear includes a body with a front portion and leg openings. An annotated photograph shows these labeled elements on the exterior of the garment (Compl. ¶34). | ¶34 | col. 2:35-37 |
| [2] a waistband attached by a waistband seam at an upper edge of the body; | The accused underwear includes a waistband attached to the body at an upper edge. This is identified in an annotated photograph of the product's interior (Compl. ¶36). | ¶35, ¶36 | col. 2:35 |
| [3] a stretch panel attached to the body inside the front portion, the stretch panel comprising a sheet of elastically resilient four-way stretch material having a top edge attached to the body at a top location, a bottom edge attached to the body at a bottom location, side edges attached to the body at side seams extending substantially continuously along either side of the front portion and an opening for receiving a wearer's genitals; | The accused underwear allegedly has an internal stretch panel made of "elastically resilient four-way stretch material" with an opening. The complaint provides an annotated photograph showing the alleged attachments of this panel's top edge, bottom edge, and side edges inside the garment's front portion (Compl. ¶36). | ¶36 | col. 2:50-62 |
| [4] the stretch panel being resiliently elastic...having a length when unstretched smaller than a length measured along the front portion...and a width when unstretched smaller...such that the front portion is gathered from side-to-side and top-to-bottom by the stretch panel and defines a three-dimensional pouch between the stretch panel and the front portion for receiving the wearer's genitals... | The complaint alleges that the accused underwear's stretch panel is resiliently elastic and has smaller unstretched dimensions than the corresponding front portion of the garment. This dimensional difference is alleged to gather the front portion, thereby defining a three-dimensional pouch. The complaint states this is apparent from the provided photos and "when reviewed in-person" (Compl. ¶37). The interior view of the product, with callouts for the "Stretch Panel" and "Opening," is offered as visual evidence of this structure (Compl. ¶36). | ¶37 | col. 6:16-29 |
- Identified Points of Contention:
- Scope Questions: The interpretation of "substantially continuously" may be disputed. The parties may argue over how much of the side edges of the stretch panel must be attached to the body to meet this limitation.
- Technical Questions: A central factual question is whether the accused "Hammock Pouch" is actually formed by the mechanism required in the fourth limitation—specifically, by a smaller-dimensioned internal panel "gathering" the outer fabric. The complaint alleges this is the case but notes it is confirmed by in-person review (Compl. ¶37), suggesting this may be a point of significant factual dispute requiring expert analysis and physical evidence beyond what is shown in photographs.
V. Key Claim Terms for Construction
The Term: "stretch panel"
Context and Importance: This term is the central structural element of the invention. Its definition will determine whether the accused internal "Hammock Pouch" structure falls within the scope of the claims. Practitioners may focus on this term because the claim requires it to be made of "elastically resilient four-way stretch material" and to have specific attachment points.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims define the panel functionally by its attachments and its effect on the garment body, potentially allowing for a range of materials that achieve the "four-way stretch" property.
- Evidence for a Narrower Interpretation: The specification provides examples of specific materials, such as a blend of "93% Modal™ and 7% Spandex™" (’974 Patent, col. 5:27-28), and specific stretch percentages (e.g., "a stretch of 30% or more") (’974 Patent, col. 5:42-43). A defendant may argue that the term should be limited by these more specific disclosures.
The Term: "defines a three-dimensional pouch"
Context and Importance: This is a functional limitation at the heart of the infringement allegation. The dispute will likely center on how the pouch is defined. The claim requires that the pouch is defined by the stretch panel gathering the front portion.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A plaintiff might argue that any construction that results in a three-dimensional space between the panel and the front body, caused by the panel's elastic properties, meets the limitation.
- Evidence for a Narrower Interpretation: The claim links the creation of the pouch directly to the dimensional mismatch between the panel and the front portion ("having a length when unstretched smaller...and a width when unstretched smaller...such that the front portion is gathered"). A defendant could argue this requires a specific mechanism of gathering fabric, not just the presence of a shaped pocket, and that the patent’s detailed description of this gathering effect limits the claim scope (’974 Patent, col. 6:16-20).
VI. Other Allegations
- Indirect Infringement: The complaint includes a count for induced and contributory infringement, though it does not plead specific underlying facts beyond the general allegation (Compl. ¶29).
- Willful Infringement: The complaint alleges willful infringement based on pre-suit knowledge. It specifically claims that Plaintiff sent a notice letter regarding the ’974 Patent and the accused infringement to Defendant's CEO on or before November 20, 2020, and that Defendant "refused" to cease its activities (Compl. ¶25, ¶38). The complaint also alleges willful blindness (Compl. ¶39).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim scope: can the detailed functional language of Claim 1, which requires a "three-dimensional pouch" to be defined by a "stretch panel" gathering the outer fabric due to a specific dimensional mismatch, be read to cover the accused "Hammock Pouch"? The case may turn on whether the accused product achieves its supportive function through this claimed gathering mechanism or by a different structural design.
- A key evidentiary question will be one of factual infringement: does the accused product's internal panel, upon physical inspection and testing, actually possess the properties required by Claim 1—specifically, being unstretched smaller in both length and width than the corresponding front portion of the garment? The complaint's own reference to "in-person" review suggests this technical question cannot be resolved by visual marketing materials alone and will likely be a central battleground for expert testimony.