DCT
4:23-cv-01023
Tough Bags LLC v. Surplus Link 1 LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Tough Bags, LLC (Texas)
- Defendant: Surplus Link 1, LLC, d/b/a RAM Insulation, Inc., et al. (Georgia)
- Plaintiff’s Counsel: WB Mills, PLLC
- Case Identification: 4:23-cv-01023, E.D. Tex., 11/16/2023
- Venue Allegations: Plaintiff alleges venue is proper because Defendants have committed acts of infringement in the district and conduct business there, including selling the accused products to customers in the Eastern District of Texas through online and retail channels.
- Core Dispute: Plaintiff alleges that Defendants’ insulation vacuum bags infringe its U.S. design patent covering the ornamental appearance of an insulation vacuum bag.
- Technical Context: The technology concerns large, disposable bags that attach to industrial vacuums for the collection, removal, and disposal of building insulation materials.
- Key Procedural History: The complaint does not mention prior litigation or administrative proceedings related to the patent-in-suit. It asserts that Plaintiff has complied with patent marking requirements. The complaint also includes a count for common law unfair competition under Texas law.
Case Timeline
| Date | Event |
|---|---|
| 2014 | Plaintiff Tough Bags began business operations. |
| 2017-09-14 | D'397 Patent Priority Date (Filing Date). |
| 2020-01-07 | D'397 Patent Issued. |
| 2023-11-16 | Complaint Filed. |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D872,397 - “Insulation Vacuum Bag,” issued January 7, 2020
The Invention Explained
- Problem Addressed: Design patents protect the ornamental, non-functional appearance of an article of manufacture rather than solving a technical problem. The D'397 patent seeks to protect a specific aesthetic design for an insulation vacuum bag (D’397 Patent, CLAIM).
- The Patented Solution: The patent claims the ornamental design for the bag as depicted in its figures. Key visual features include the elongated, generally rectangular body of the bag, which transitions into a visually distinct, slightly tapered cylindrical collar at the opening (D’397 Patent, Figs. 1, 4, 5). The overall proportions and profile shape constitute the protected design. The broken lines in the patent drawings indicate that the environment (e.g., the vacuum machine in Fig. 8) and certain portions of the bag form no part of the claimed design (D’397 Patent, DESCRIPTION).
- Technical Importance: The complaint alleges that this design is "distinctive" and that Plaintiff has developed "a significant amount of goodwill" associated with it in the construction and insulation industry (Compl. ¶13).
Key Claims at a Glance
- Design patents contain a single claim. The asserted claim is for: "The ornamental design for a insulation vacuum bag, as shown and described" (D’397 Patent, CLAIM).
- This claim protects the overall visual appearance of the bag as depicted in the solid lines of Figures 1-7 and 9 of the patent.
III. The Accused Instrumentality
Product Identification
The accused products are insulation vacuum bags marketed and sold under the "RAM" or "RAMVAC" and "RHINO" brands, specifically identified as the "RAM Insulation Vacuum Bag - 14 FT Flex-Bag + EZ Fill Collar" and the "RHINO Insulation Vacuum Bag 14 FT EZ-FILL COLLAR 125 CF" (Compl. ¶¶17, 28; pp. 6-7).
Functionality and Market Context
The accused products are large-capacity bags used for consumer and professional insulation removal, storage, and disposal (Compl. ¶14). The complaint alleges that these products are sold through Defendants’ websites and third-party retailers and compete directly with Plaintiff’s products, often at a "substantially lower price" for bulk orders to the "same pool of customers" (Compl. ¶¶15, 24). The complaint includes a marketing image of the accused RAM product, showing an elongated white bag with a distinct collar at its opening (Compl. p. 6).
IV. Analysis of Infringement Allegations
The complaint alleges that the accused products are so visually similar to the patented design that they would deceive an ordinary observer, thereby constituting infringement (Compl. ¶¶18, 29). The core of the infringement theory rests on a comparison of the overall ornamental appearance.
D'397 Patent Infringement Allegations
| Claimed Ornamental Feature (from D'397 Patent) | Alleged Infringing Feature (from Accused Products) | Complaint Citation | Patent Citation |
|---|---|---|---|
| An elongated, generally rectangular bag body with a specific profile. | The accused RAM and RHINO bags are described as 14-foot bags with an elongated shape that mirrors the patented design's overall profile. The complaint provides an image showing Plaintiff's own "ToughBags + Collar" product embodying the patented design (¶13; p. 4). | ¶¶17-18; p. 6-7 | Figs. 1, 4, 5 |
| A distinct, slightly tapered cylindrical collar at the bag's opening. | The accused products are explicitly marketed as having a "Collar" or "EZ Fill Collar." Product images show a reinforced, cylindrical opening that appears visually distinct from the main bag body. The complaint includes a product image of the accused "RHINO" bag that shows this feature (¶17; p. 7). | ¶¶17-18; p. 6-7 | Figs. 1, 2 |
| The overall visual impression created by the combination of the bag's shape, proportions, and collar design. | The complaint asserts that an ordinary observer, comparing the accused products to the patent drawings, would be "deceived into believing that each of the Infringing Products is the same as the patented design." (¶18). | ¶¶18, 29 | Figs. 1-7, 9 |
Identified Points of Contention
- Scope Questions: The infringement analysis will depend heavily on the scope of the design patent as determined by the prior art. The complaint alleges an ordinary observer "with an understanding of the relevant prior art" would be deceived (Compl. ¶18), framing the dispute around how novel the D'397 design is compared to earlier insulation bags.
- Technical Questions: A central question will be whether the similarities between the products are purely ornamental, as required for design patent protection, or are dictated by function. Defendants may argue that features like the bag's elongated shape and the collar's cylindrical form are functional necessities for holding insulation and attaching to a vacuum hose, and thus should be excluded from the infringement analysis.
V. Key Claim Terms for Construction
In design patent litigation, the "claim" is the visual design itself, so traditional claim term construction is rare. The analysis instead focuses on the scope of the patented design as a whole.
- The Term: The overall ornamental design of the "insulation vacuum bag."
- Context and Importance: The central issue is defining the scope of the visual appearance protected by the D'397 patent. The court must determine which visual elements are ornamental and non-functional, as only those elements can support a finding of infringement. The outcome of the "ordinary observer" test depends on this determination.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Plaintiff may argue that the claim covers the overall visual impression created by the unique combination of the bag's profile, its proportions, and the specific transition to the collar, as shown across multiple figures (D'397 Patent, Figs. 1, 4, 5). From this perspective, minor differences in material or construction would not defeat infringement if the overall aesthetic is the same.
- Evidence for a Narrower Interpretation: Defendants may argue that protection is limited to the exact contours and proportions depicted in the patent drawings. They may also argue that the design is largely dictated by function—the need to create a large-volume container with an opening that securely attaches to a standard vacuum—which would narrow the scope of protectable ornamental features. The complaint’s own allegation that Defendants "slightly modified" the design may be used to argue that the accused products are different enough to avoid infringement (Compl. ¶35).
VI. Other Allegations
Indirect Infringement
The complaint does not contain allegations of indirect or induced infringement. It alleges direct infringement through acts of making, using, selling, offering for sale, and importing the accused bags (Compl. ¶28).
Willful Infringement
The complaint alleges that Defendants' infringement was willful. This allegation is based on the assertion that Defendants "were aware, should have been aware or were willfully blind" of their infringing acts and acted "knowingly, intentionally, or with reckless disregard" for Plaintiff's patent rights (Compl. ¶¶21, 22, 31).
VII. Analyst’s Conclusion: Key Questions for the Case
- Scope in Light of Prior Art: A core issue will be one of design scope: how different is the D'397 patent's ornamental design from the prior art for insulation vacuum bags? The answer will define the novelty of the design and frame the entire "ordinary observer" infringement analysis.
- Functionality vs. Ornamentality: The case will likely involve a significant dispute over whether the key visual features of the bag—particularly the shape of the collar and the transition from the collar to the bag body—are primarily functional or ornamental. A finding that these features are dictated by function would severely limit the scope of the patent's protection.
- Visual Deception: A key evidentiary question will be one of visual comparison: are the differences between the accused RAM and RHINO bags and the patented design significant enough to prevent an ordinary observer from being deceived into believing the designs are the same? The complaint's characterization of the accused products as "nearly identical" (Compl. ¶24) but also as "slightly modified" (Compl. ¶35) suggests this factual comparison will be a central point of contention.