DCT
4:23-cv-04337
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 operates a retail store in Houston, Texas, conducts continuous business in the district, and has committed the alleged acts of infringement there.
- Core Dispute: Plaintiff alleges that Defendant’s "Hammock Pouch" line of men's underwear infringes a patent related to a supportive pouch structure within a garment.
- Technical Context: The technology concerns the structural design of men's undergarments, specifically the use of an internal fabric panel to create a comfortable and supportive pouch for the wearer's genitals.
- Key Procedural History: The complaint alleges that Plaintiff notified Defendant's CEO of the patent-in-suit and the alleged infringement via a letter dated November 20, 2020, three days after the patent issued. This allegation forms the basis for the claim of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2010-12-31 | '974 Patent Priority Date |
| 2020-11-17 | '974 Patent Issue Date |
| 2020-11-20 | Plaintiff allegedly sent notice letter to Defendant |
| 2023-11-17 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,834,974 - Garments for Men (Issued Nov. 17, 2020)
The Invention Explained
- Problem Addressed: The patent's background section identifies the problem of "uncomfortable pressure and/or chafing of the genital area," particularly for active men, which is common in conventional undergarments (’974 Patent, col. 1:24-27).
- The Patented Solution: The invention is a man's garment 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 to be smaller in its unstretched state than the corresponding outer front fabric. When assembled, the tension from the stretch panel gathers the outer fabric, creating a pre-formed, three-dimensional pouch that supports the genitals and holds them away from the wearer's body to enhance comfort and reduce chafing (’974 Patent, Abstract; col. 2:38-43).
- Technical Importance: This design aims to provide a self-aligning pouch that offers support and separation without requiring manual adjustment by the wearer, thereby improving comfort during physical activity (’974 Patent, col. 4:5-15, col. 7:20-29).
Key Claims at a Glance
- The complaint asserts independent Claim 1 (Compl. ¶31).
- Essential elements of Claim 1 include:
- A body with a front portion and leg openings, and a waistband.
- A stretch panel made of "elastically resilient four-way stretch material" attached inside the front portion, with specified edge attachments and an opening for the genitals.
- The stretch panel must be resiliently elastic in both vertical and horizontal directions.
- The stretch panel must have an unstretched length and width that are smaller than the corresponding dimensions of the garment's front portion.
- This size difference must cause the front portion to be "gathered from side-to-side and top-to-bottom by the stretch panel," which in turn "defines a three-dimensional pouch."
- The complaint reserves the right to assert additional claims beyond Claim 1 (Compl. ¶42).
III. The Accused Instrumentality
Product Identification
- The accused products are various styles of Tommy John's underwear featuring what the Defendant markets as the "Hammock Pouch," including the "360 Sport Hammock Pouch," "Second Skin Hammock Pouch," and "Cool Cotton Hammock Pouch" (Compl. ¶5, ¶23).
Functionality and Market Context
- The complaint alleges the accused products incorporate an internal pouch structure designed to provide support for the wearer (Compl. ¶23). An annotated photograph provided in the complaint depicts the interior of an accused product, showing what is identified as a "Stretch Panel" with an "Opening" designed to receive the wearer's genitals (Compl. p. 8). Plaintiff alleges that it and Defendant "compete directly" in the sale of such products (Compl. ¶20).
IV. Analysis of Infringement Allegations
Claim Chart Summary
- The complaint provides annotated photographs to support its infringement allegations for Claim 1. An image of the exterior of the "Tommy John Air Hammock Pouch" is used to identify the body, front portion, and leg openings (Compl. p. 7). A second, more detailed image of the garment's interior is used to identify the constituent parts of the internal pouch system (Compl. p. 8).
’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; [2] a waistband attached by a waistband seam at an upper edge of the body; | The accused underwear includes a body with a front portion, leg openings, and a waistband attached at the upper edge. | ¶34, ¶35 | col. 2:35-38 |
| [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 "Hammock Pouch" allegedly includes an internal stretch panel made of resilient four-way stretch material, with top, bottom, and side edge attachments, and an opening for genitals. | ¶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... | The accused product's stretch panel is allegedly resiliently elastic and has smaller dimensions than the front portion, which gathers the front portion to define a three-dimensional pouch. | ¶37 | col. 6:17-20 |
Identified Points of Contention
- Scope Questions: A potential dispute may arise over the term "four-way stretch material." The parties may contest the proper test for measuring this property and whether the accused material meets the definition. A further question may be the scope of "defines a three-dimensional pouch," and whether that pouch must be formed exclusively by the "gathering" mechanism as described in the patent.
- Technical Questions: The complaint alleges the accused pouch is formed by a smaller internal panel gathering a larger external panel. A central factual question for the court will be whether the accused products are actually constructed this way. This will likely require physical inspection, measurement of the component parts in both stretched and unstretched states, and expert testimony to determine if the accused pouch functions as claimed.
V. Key Claim Terms for Construction
The Term: "gathered from side-to-side and top-to-bottom by the stretch panel"
- Context and Importance: This phrase describes the specific functional result that allegedly "defines" the claimed pouch. Infringement will depend on whether the accused products achieve a three-dimensional pouch via this particular gathering mechanism. Practitioners may focus on this term because it links the structure (the stretch panel) to the required function (gathering in two dimensions) that creates the final claimed pouch.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue that any puckering or bunching of the front fabric caused by the internal panel meets this limitation, pointing to general descriptions of the pouch's purpose, such as providing "enhanced comfort for the wearer" (’974 Patent, col. 2:34).
- Evidence for a Narrower Interpretation: A party could argue the term requires a specific, quantifiable gathering effect. The patent states that the stretch panel's unstretched length and width are smaller than the front portion's, and this dimensional mismatch is what causes the gathering. The specification notes this "gathers the material of front portion 18 and helps to form pouch 20" (’974 Patent, col. 6:17-18). This suggests the gathering is a direct and necessary consequence of the claimed dimensional differences, not just an incidental effect.
The Term: "elastically resilient four-way stretch material"
- Context and Importance: The properties of the stretch panel material are critical, as they enable the gathering function. The defendant may argue its material does not meet the "four-way stretch" requirement.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification discloses common elastic blends like "cotton-Spandex™" and "Modal™ and Spandex™" (’974 Patent, col. 5:22-25), which could support an argument that the term encompasses standard materials used in the industry.
- Evidence for a Narrower Interpretation: Claim 1 itself states the panel must be "resiliently elastic both in a direction between the top edge and the bottom edge and in a direction between the side edges" (’974 Patent, col. 8:42-45). Further, the specification discusses fabrics with a specific "stretch of at least 30%" (dependent claim 4) and even 70% or more (’974 Patent, col. 5:47-49). A party could argue these passages limit the term to materials with specific, measurable, multi-directional elastic properties sufficient to perform the claimed gathering function.
VI. Other Allegations
Indirect Infringement
- The complaint includes a conclusory allegation of induced infringement but does not plead specific facts, such as references to user manuals or advertising, that would show Defendant actively encouraged its customers to infringe (Compl. ¶29).
Willful Infringement
- The complaint alleges that Plaintiff sent a notice letter regarding the '974 Patent and the accused "Hammock Pouch" products directly to Defendant's CEO on November 20, 2020 (Compl. ¶38). It further alleges that Defendant knew of or was willfully blind to its infringement but refused to cease its activities, thus rendering the ongoing infringement willful (Compl. ¶25, ¶39).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction and technical proof: Can the term "gathered from side-to-side and top-to-bottom" be defined with sufficient precision, and will Plaintiff be able to prove through technical evidence (e.g., measurements of unstretched fabric components) that the accused products actually employ this specific mechanism to form their "Hammock Pouch"?
- A second key question will be one of material properties: Does the fabric used for the internal panel in Defendant's products meet the claim requirement of being an "elastically resilient four-way stretch material", and how will the parties and the court define and measure this property?
- Finally, a significant question for damages will be willfulness: Did the Defendant receive the alleged notice letter in November 2020, and if so, did its continued sale of the accused products for three years before a suit was filed constitute willful infringement, potentially exposing it to enhanced damages?