Carolina Covertech Inc v. Alp

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Carolina Covertech, Inc. (South Carolina)
  • Defendant: ALP, Inc. (d/b/a ALP Lockdown Shades and ALP Sewing) (New Jersey)
  • Plaintiff’s Counsel: Hellman Yates
• Case Identification: 1:21-cv-02882, D.S.C., 09/07/2021
• Venue Allegations: Venue is alleged to be proper in the District of South Carolina because a substantial part of the events giving rise to the claim occurred in the district and the defendant is subject to personal jurisdiction there.
• Core Dispute: Plaintiff seeks a declaratory judgment that its window shade products do not infringe Defendant's design patent for a roll-up window cover, and that the patent-in-suit is invalid and/or unenforceable.
• Technical Context: The dispute concerns the ornamental design of roll-up window shades, which are marketed for use in school classrooms, a context where quick-deployment privacy or blackout shades can be relevant for safety.
• Key Procedural History: This declaratory judgment action was initiated by Carolina Covertech following its receipt of cease and desist letters from ALP in August 2021, which accused Carolina Covertech and one of its customers of infringing the patent-in-suit. The complaint also asserts that the patent is invalid in view of prior art, including an earlier design patent owned by the Plaintiff.

Case Timeline

Date	Event
2013-03-01	Filing date of U.S. Patent No. D728,264 (cited as prior art)
2015-05-05	Issue date of U.S. Patent No. D728,264
2018-05-14	U.S. Patent No. D860,682 application filing date (Priority Date)
2019-09-24	U.S. Patent No. D860,682 issue date
2021-08-18	Cease and desist letter sent to Plaintiff's customer
2021-08-23	Cease and desist letter sent to Plaintiff's division
2021-09-07	Complaint Filing Date

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

U.S. Design Patent No. D860,682 - "Roll-up window cover with hook and loop fasteners"

The Invention Explained

• Problem Addressed: As a design patent, the '682 Patent does not contain a background section describing a technical problem. The title and figures suggest a design for a window covering that can be easily rolled up and secured.
• The Patented Solution: The patent protects the specific ornamental appearance of a roll-up window cover (’682 Patent, Claim). The claimed design consists of a rectangular panel with a horizontal attachment strip at the top and a distinct, sectioned horizontal strip at the bottom (’682 Patent, FIG. 1). A key feature of the ornamental design is a single, centrally-located strap that hangs from the top portion of the cover and is used to secure the cover in a rolled-up state (’682 Patent, FIG. 8). The patent explicitly states that the broken lines in the drawings, which depict stitching, form a part of the claimed design (’682 Patent, Description).
• Technical Importance: The parties are competitors in the market for window shades intended for school rooms, suggesting a commercial demand for this type of product design (Compl. ¶9).

Key Claims at a Glance

• The complaint asserts non-infringement and invalidity of the patent’s single claim (Compl. ¶2, 18, 20).
• The single claim is for: "The ornamental design for a roll-up window cover with hook and loop fasteners, as shown and described." (’682 Patent, Claim). The scope of this claim is defined by the visual appearance illustrated in the patent’s figures. The key ornamental features include:
  • The overall rectangular shape and proportions of the shade.
  • The appearance of the top and bottom horizontal fastening strips.
  • The presence and appearance of a single, centrally located securing strap.
  • The pattern of stitching, which is expressly included as part of the claimed design.

III. The Accused Instrumentality

Product Identification

The complaint identifies the accused instrumentality as Plaintiff's "window shade product" ("Accused Product") (Compl. ¶10.b).

Functionality and Market Context

The complaint alleges that Plaintiff and Defendant are competitors in selling window shades "particularly suitable for use in school rooms" (Compl. ¶9). It does not provide any specific details, diagrams, or descriptions of the Accused Product's design or construction beyond this general market context.

IV. Analysis of Infringement Allegations

As this case involves a design patent, the infringement analysis does not rely on a traditional element-by-element claim chart. Instead, the central test is whether an "ordinary observer," familiar with the prior art, would be deceived into purchasing the accused product believing it to be the patented design. The complaint frames its non-infringement allegations using this standard.

The Plaintiff alleges its Accused Product does not infringe the '682 Patent because "in the eye of an ordinary observer, giving such attention as a purchaser usually gives, the two designs are not substantially the same, and the ordinary observer would not be deceived thereby" (Compl. ¶16). The complaint also asserts that the accused product does not include "each of the elements claimed" in the patent and is "not substantially the same in design" (Compl. ¶15). The complaint does not provide sufficient detail for analysis of how the Accused Product's design specifically differs from the patented design.

No probative visual evidence provided in complaint.

• Identified Points of Contention:
  • Overall Visual Appearance: The core dispute will involve a visual comparison between the Accused Product and the figures in the '682 Patent. The question for the court is whether the overall ornamental impression of the two designs is substantially the same.
  • Role of Prior Art: The complaint identifies Plaintiff's own earlier patent, D728,264, as relevant prior art (Compl. ¶11). The infringement comparison will need to be conducted in the context of this and other prior art, which may narrow the effective scope of the '682 Patent's design by highlighting features that were already known.

V. Key Claim Terms for Construction

In design patent litigation, claim construction does not focus on defining textual terms but on determining the overall scope of the claimed ornamental design and distinguishing it from purely functional elements.

• The Issue: The scope of the claimed "ornamental design."
• Context and Importance: The determination of infringement will depend on which aspects of the window cover shown in the '682 Patent are considered ornamental and protected, versus which are considered dictated by function and therefore un-protectable by a design patent. Practitioners may focus on this issue because the title's reference to "roll-up window cover with hook and loop fasteners" suggests inherent functionality.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Scope: The claim covers the design "as shown and described," suggesting that the entire visual appearance depicted in the solid lines of Figures 1-8, including the specific shape, proportions, and arrangement of all parts, constitutes the protected design (’682 Patent, Claim, FIGs. 1-8).
  • Evidence for a Narrower Scope: A party could argue that basic elements such as a rectangular shade, the ability to roll up, and the use of hook-and-loop fasteners are functional necessities for such a product. Under this view, the scope of protection would be limited to the purely aesthetic and non-functional choices, such as the specific visual appearance of the single strap and the particular look of the stitching patterns (’682 Patent, Description).

VI. Other Allegations

• Indirect Infringement: This declaratory judgment action does not contain allegations of indirect infringement. However, the complaint notes that Defendant’s cease and desist letters accused Plaintiff's customer of infringement for "selling the Accused Product," which implicates potential future claims of induced or contributory infringement against the Plaintiff (Compl. ¶10.c).
• Willful Infringement: No allegation of willful infringement is made, as this is a declaratory judgment action filed by the accused infringer. The defendant’s letters from August 2021 serve as notice of the patent, a fact that could become relevant to willfulness if the defendant files a counterclaim for infringement (Compl. ¶10).

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

1. The Ordinary Observer Test: The primary question for the court will be one of visual comparison: is the overall ornamental design of the Plaintiff's accused product substantially the same as the design claimed in the '682 Patent, such that an ordinary observer, acquainted with the prior art (including the D728,264 patent), would be deceived?
2. Validity in View of Prior Art: A key invalidity challenge will be whether the '682 Patent's design is obvious under 35 U.S.C. § 103. This will require a factual comparison between the claimed design and prior art designs, such as that shown in the D728,264 patent, from the perspective of a designer of ordinary skill.
3. Functionality vs. Ornamentality: A foundational issue for both infringement and validity will be determining the boundary between the functional and ornamental aspects of the claimed design. The extent to which features like the roll-up mechanism or fastener type are deemed functional will directly impact the scope of the design protection and the subsequent infringement and validity analyses.