DCT
1:17-cv-00592
Under Weather LLC v. Christmas Tree Shops Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Under the Weather, LLC (Ohio)
- Defendant: Christmas Tree Shops, Inc. (Massachusetts) and Lion Sports Inc. (New York)
- Plaintiff’s Counsel: Benesch, Friedlander, Coplan & Aronoff LLP
- Case Identification: 1:17-cv-00592, S.D. Ohio, 09/08/2017
- Venue Allegations: Venue is alleged to be proper based on Defendants’ regular solicitation and transaction of business in Ohio, including the sale of the accused products within the judicial district.
- Core Dispute: Plaintiff alleges that Defendants’ "All-Weather Sports Pod" infringes four design patents covering ornamental designs for a personal pop-up enclosure.
- Technical Context: The technology relates to portable, collapsible, single-person shelters designed to protect spectators from the elements at outdoor events.
- Key Procedural History: U.S. Patent No. D711,996 is a divisional of the application that resulted in U.S. Patent No. D691,688. The complaint does not mention any other prior litigation, licensing history, or post-grant proceedings.
Case Timeline
| Date | Event |
|---|---|
| 2011-03-30 | Earliest Priority Date for all Patents-in-Suit |
| 2013-10-15 | Issue Date for '688, '689, and '690 Patents |
| 2014-08-26 | Issue Date for '996 Patent |
| 2017-08-10 | Accused Product offered for sale on Walmart.com |
| 2017-08-17 | Accused Product offered for sale on Amazon.com |
| 2017-09-08 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D691,688 - "Personal Enclosure", issued October 15, 2013
The Invention Explained
- Problem Addressed: The complaint asserts the inventor sought to create a personal enclosure to protect spectators at outdoor sporting events from inclement weather (Compl. ¶1).
- The Patented Solution: The patent claims the specific ornamental, non-functional design of a complete personal enclosure. The claimed design features a generally cuboid shape with a domed top, a large, arched transparent front window with a prominent zipper, and specific proportions for its side and rear panels ('688 Patent, FIGS. 1-7). The patent's claim protects the overall visual appearance of the article as depicted in the drawings (D691,688 Patent, Claim).
- Technical Importance: The complaint alleges that products embodying the patented designs led the plaintiff to become a "leader in the personal pop-up pod market," suggesting the commercial significance of the design (Compl. ¶2).
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a personal enclosure, as shown and described."
- The key ornamental features defining the design include:
- The overall configuration and shape of the enclosure.
- The specific shape, size, and placement of the front and side windows.
- The visual appearance of the zippers on the front panel.
- The relative proportions of the opaque and transparent panels.
- The complaint does not assert specific dependent claims, as design patents do not have them.
U.S. Design Patent No. D691,689 - "Personal Enclosure Side", issued October 15, 2013
The Invention Explained
- Problem Addressed: As with the '688 patent, the design addresses the need for a personal weather-protection enclosure for outdoor spectators (Compl. ¶1).
- The Patented Solution: This patent claims the ornamental design for only the side panel of a personal enclosure ('689 Patent, Claim). The design consists of a generally rectangular panel with a slightly curved top, divided into an upper transparent portion and a lower opaque portion, with visible stitching around the transparent window that is explicitly part of the claimed design ('689 Patent, DESCRIPTION). Two distinct embodiments of this side panel design are shown ('689 Patent, FIGS. 1-7 and FIGS. 8-14).
- Technical Importance: This design contributes to the overall aesthetic of the personal enclosure that the complaint alleges is commercially successful (Compl. ¶2).
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a personal enclosure side, as shown and described."
- The key ornamental features defining the design include:
- The profile and proportions of the side panel.
- The specific two-part configuration of transparent and opaque sections.
- The dashed lines representing stitching, which are expressly identified as part of the claimed design.
- The complaint does not assert specific dependent claims.
Multi-Patent Capsule: U.S. Design Patent No. D691,690
- Patent Identification: U.S. Patent No. D691,690, "Personal Enclosure Front", issued October 15, 2013 (Compl. ¶14).
- Technology Synopsis: The patent claims the ornamental design for the front face of a personal enclosure. The design is characterized by its large, arched transparent window and the path of the surrounding zipper (D691,690 Patent, FIGS. 1-2).
- Asserted Claims: A single claim for the ornamental design as shown and described (D691,690 Patent, Claim).
- Accused Features: The front panel design of the Lion Sports Pop-Up Pod is accused of embodying the claimed design (Compl. ¶¶41-42, Ex. I).
Multi-Patent Capsule: U.S. Design Patent No. D711,996
- Patent Identification: U.S. Patent No. D711,996, "Personal Enclosure", issued August 26, 2014 (Compl. ¶15).
- Technology Synopsis: This patent, a divisional of the application for the '688 patent, claims an ornamental design for a complete personal enclosure. It presents a similar overall aesthetic to the '688 patent but constitutes a separately patented design (D711,996 Patent, FIGS. 1-3).
- Asserted Claims: A single claim for the ornamental design as shown and described (D711,996 Patent, Claim).
- Accused Features: The overall design of the Lion Sports Pop-Up Pod is accused of embodying the claimed design (Compl. ¶¶51-52, Ex. I).
III. The Accused Instrumentality
Product Identification
- The accused product is the "All-Weather Sports Pod," also referred to as the "Lion Sports Pop-Up Pod" (Compl. ¶16).
Functionality and Market Context
- The accused product is a portable, pop-up shelter intended to protect a single user from wind and rain at outdoor events (Compl. Ex. E). The complaint alleges it is marketed and sold by Lion Sports and distributed through various retail channels, including Christmas Tree Shops retail stores and online marketplaces like walmart.com and amazon.com (Compl. ¶¶3, 17-19). A photograph in the complaint shows the accused product on a retail shelf at a Christmas Tree Shops store (Compl. Ex. F).
IV. Analysis of Infringement Allegations
The complaint alleges that the accused Lion Sports Pop-Up Pod is "substantially the same" as the designs claimed in the patents-in-suit and that an ordinary observer would be deceived by the similarity (Compl. Ex. I, p. 1). The central evidence for this allegation is presented in Exhibit I, a visual chart comparing figures from the patents to photographs of the accused product. A photograph from Exhibit E shows a left perspective view of the accused blue and clear pop-up pod (Compl. Ex. E).
D691,688 Patent Infringement Allegations
| Claim Element (from '688 Patent) | Alleged Infringing Functionality (from Lion Sports Pop-Up Pod) | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental design of the personal enclosure. | The overall ornamental design of the accused pod, which is alleged to be confusingly similar. | ¶22; Ex. I | '688 Patent, FIG. 1 |
| A generally cuboid shape with a domed top and four vertical side walls. | The accused pod features a cuboid shape with a domed top and four side walls. | Ex. I | '688 Patent, FIG. 1 |
| A large, arched, transparent front window extending nearly the full height of the front panel, with a dual-zipper closure. | The accused pod features a large, arched, transparent front window with a dual-zipper closure. | Ex. I | '688 Patent, FIG. 2 |
| A rear wall that is substantially opaque. | The accused pod features a substantially opaque rear wall. | Ex. I | '688 Patent, FIG. 3 |
D691,689 Patent Infringement Allegations
| Claim Element (from '689 Patent) | Alleged Infringing Functionality (from Lion Sports Pop-Up Pod) | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design of a personal enclosure side. | The side panels of the accused pod are alleged to be confusingly similar to the claimed design. | ¶32; Ex. I | '689 Patent, FIG. 4 |
| A side panel comprising a transparent upper portion and an opaque lower portion, with a distinct proportional relationship. | The side panels of the accused pod feature a transparent upper portion and an opaque lower portion. | Ex. I | '689 Patent, FIG. 4 |
| The overall profile of the side panel, including its corners and the slight curvature of its top edge. | The accused pod's side panels are alleged to have the same overall profile as the claimed design. | Ex. I | '689 Patent, FIG. 4 |
Identified Points of Contention
- Scope Questions: The primary dispute will concern the scope of the claimed designs. A key question is whether the overall visual impression of the accused product is substantially the same as the patented designs in the eye of an ordinary observer. Defendants may argue that functional aspects of the pop-up tent (e.g., the need for a door, windows, and a floor) limit the scope of protectable ornamental design.
- Technical Questions: The infringement analysis will turn on a visual comparison. A question for the fact-finder will be whether the specific differences between the accused product and the patent drawings—such as any variations in proportion, curvature, zipper pulls, or panel configuration—are significant enough to avoid a finding of infringement, or if they are minor details that do not alter the overall ornamental appearance.
V. Key Claim Terms for Construction
In design patent litigation, the claim is understood to be the design as depicted in the drawings, and detailed verbal construction is generally disfavored. The analysis focuses on the scope of the design as a whole.
- The "Claim": "The ornamental design for a personal enclosure" (and its constituent parts in the other patents), as shown and described in the patent figures.
- Context and Importance: The central issue for the court will be to determine the scope of the claimed ornamental designs and distinguish them from any purely functional elements. The outcome of the infringement analysis under the "ordinary observer" test depends entirely on what visual features are considered part of the protected ornamental design.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party arguing for a broader scope may contend that the patent protects the overall visual impression and aesthetic appeal of the enclosure, which results from the unique combination of its shape, window configuration, and proportions. They may argue that minor differences in the accused product do not change this overall appearance. The complaint's visual comparison chart in Exhibit I, which juxtaposes the designs, supports an argument that the overall impression is the same (Compl. Ex. I).
- Evidence for a Narrower Interpretation: A party arguing for a narrower scope may point to the disclaimer of certain elements shown in broken lines (e.g., '688 Patent, FIG. 7) as evidence that the claim is limited to the specific features shown in solid lines. They may also argue that common features in pop-up shelters are functional or belong to the prior art, thereby narrowing the scope of what is novel and ornamental in the claimed designs.
VI. Other Allegations
- Willful Infringement: The complaint alleges that the defendants' infringement has been and continues to be "intentional, willful, and without regard to Under the Weather's rights" (Compl. ¶¶ 25-26, 35-36, 45-46, 55-56). The basis for this allegation is a claim, made "on information and belief," that both defendants were aware of all four patents-in-suit prior to the filing of the complaint (Compl. ¶¶ 23-24, 33-34, 43-44, 53-54).
VII. Analyst’s Conclusion: Key Questions for the Case
- The Ordinary Observer Test: The central issue will be a factual one of visual comparison: would an ordinary observer, giving the attention a purchaser usually gives, be deceived into purchasing the Lion Sports Pop-Up Pod believing it to be the product embodying the patented designs? The case will likely turn on a comparison of the overall aesthetic impression versus any specific visual differences between the products.
- Scope of Protection (Ornamentality vs. Functionality): A core legal question will be the extent to which the claimed designs are ornamental rather than dictated by function. The court's filtering of functional elements will define the scope of the patent rights and shape the infringement analysis.
- Evidence of Willfulness: A key evidentiary question will be whether the plaintiff can substantiate its "information and belief" allegations of pre-suit knowledge to support its claim for willful infringement, which requires a showing of conduct that is egregious, reckless, or malicious.