DCT
6:24-cv-00297
Shibumi Shade Inc v. NB Shades LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Shibumi Shade, Inc. (North Carolina)
- Defendant: NB Shades, LLC (Florida); C.L.O. Company LLC (Texas); Bluebonnet Cut & Sew, LLC (Texas)
- Plaintiff’s Counsel: Findlay Craft P.C.; Womble Bond Dickinson (US) LLP
- Case Identification: 6:24-cv-00297, W.D. Tex., 10/10/2024
- Venue Allegations: Plaintiff alleges venue is proper in the Western District of Texas because Defendants conduct business in the district, including making, using, selling, or importing the accused product. The complaint further alleges that two defendants, C.L.O. and Bluebonnet, reside and perform infringing acts of assembly and modification within the district, and that Defendant NB Shades directs and controls these activities, establishing a regular and established place of business in Texas.
- Core Dispute: Plaintiff alleges that Defendants’ Sunsail Shade product infringes two patents related to portable, wind-supported shading systems.
- Technical Context: The technology at issue involves lightweight, portable beach canopies designed to use wind as a lifting force, distinguishing them from traditional, rigid beach umbrellas.
- Key Procedural History: The complaint alleges that Plaintiff notified Defendant NB Shades of its patent rights via a letter on March 21, 2024, prior to the patents issuing. Following correspondence and an alleged product redesign by NB Shades, Plaintiff reiterated its infringement position on May 14, 2024. This history may be relevant to the allegations of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2016-10-18 | Earliest Priority Date for '273 and '876 Patents |
| 2016 | Plaintiff Shibumi Shade, Inc. founded and launched |
| 2024-03-21 | Plaintiff sends pre-suit notice letter to NB Shades |
| 2024-04-02 | U.S. Patent No. 11,946,273 issues |
| 2024-04-05 | NB Shades responds to Plaintiff's letter |
| 2024-04-30 | U.S. Patent No. 11,970,876 issues |
| 2024-05-03 | Alleged launch date for Defendants' "current product" |
| 2024-05-14 | Plaintiff reiterates infringement allegations for "new" product |
| 2024-05-28 | NB Shades responds and refuses to cease infringement |
| 2024-10-10 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,946,273 - "SHADING SYSTEM AND METHOD OF USE," Issued Apr. 2, 2024
The Invention Explained
- Problem Addressed: The patent identifies problems with prior art shading systems, noting they are often "ineffective or impractical," cumbersome to transport and assemble, and susceptible to being shifted or unanchored by wind (ʼ273 Patent, col. 1:38-46).
- The Patented Solution: The invention is a transportable shading system comprising a flexible canopy supported by a single, sectional frame. A key aspect of the design is that it harnesses wind, rather than resisting it; the trailing end of the canopy is aerially lifted and held in shape by the wind, while the frame's ends are secured to the ground ('273 Patent, Abstract; col. 1:30-37).
- Technical Importance: This approach provides a lightweight, easily assembled shade that is inherently stable in the windy conditions typical of beaches and other outdoor environments ('273 Patent, col. 1:47-52).
Key Claims at a Glance
- The complaint asserts independent system Claim 6 (Compl. ¶22).
- The essential elements of Claim 6 include:
- A frame made of multiple sections with an "aligning component" (e.g., a cord) running through them, allowing the frame to be assembled for support or disassembled for transport.
- A canopy with a "suspension end" that engages the frame and an opposing "trailing end."
- The suspension end includes "only a single fastener" to engage the frame.
- The "trailing end of the canopy is spaced apart from the frame" and is "totally supported by wind."
- The "single fastener comprises a loop" extending at least partially along the suspension end.
- A container for housing and transporting the components.
- The complaint does not explicitly reserve the right to assert dependent claims for this patent.
U.S. Patent No. 11,970,876 - "SHADING SYSTEM AND METHOD OF USE," Issued Apr. 30, 2024
The Invention Explained
- Problem Addressed: The patent addresses the same issues as its related '273 Patent: prior art shading systems are cumbersome, difficult to assemble, and perform poorly in windy conditions ('876 Patent, col. 1:36-46).
- The Patented Solution: The invention is a highly similar shading system featuring a sectional, arched frame and a wind-supported canopy. The claims emphasize the frame's maneuverability between transport and supporting configurations and specify that the canopy is attached via a loop that acts as the "only fastener" ('876 Patent, Abstract; col. 1:50-col. 2:3).
- Technical Importance: Like the '273 Patent, this invention provides a portable and wind-resilient shading solution by leveraging aerodynamic principles ('876 Patent, col. 1:47-52).
Key Claims at a Glance
- The complaint asserts independent system Claim 1 (Compl. ¶33).
- The essential elements of Claim 1 include:
- A frame made of multiple sections that is maneuverable between a transport and a supporting configuration.
- The sections include a first and last section for engaging a surface, with adjacent sections coupled between them.
- The adjacent sections comprise an "aligning component" that provides "supporting tension."
- A canopy with a "suspension end" and a "trailing end."
- The "trailing end of the canopy is totally supported by wind."
- A "loop on the suspension end" for engaging the frame, with "the loop being the only fastener" securing the canopy to the frame.
- The complaint does not explicitly reserve the right to assert dependent claims for this patent.
III. The Accused Instrumentality
Product Identification
The accused product is the "Sunsail Shade" (Compl. ¶7).
Functionality and Market Context
The complaint alleges the Sunsail Shade is a portable, wind-powered shading system (Compl. ¶17). An exemplary photograph provided in the complaint shows a large, two-toned canopy arched over a beach, held aloft by wind and supported by a single arced pole anchored in the sand (Compl. p. 5). Plaintiff alleges that the defendants work in concert, with NB Shades directing operations, Bluebonnet modifying the canopy component, and C.L.O. assembling and distributing the final product from facilities within Texas (Compl. ¶¶8-10).
IV. Analysis of Infringement Allegations
'273 Patent Infringement Allegations
| Claim Element (from Independent Claim 6) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a frame defined by a plurality of sections and comprising an aligning component extending through at least a portion of the sections... | The Accused Product allegedly comprises a frame made of multiple sections with an aligning component extending through them. | ¶25 | col. 5:26-34 |
| each of the plurality of sections having one or both of a male end and a female end making the plurality of sections thereby engageable... | The frame sections allegedly have male and female ends allowing them to be engaged for support and disengaged for transport. | ¶26 | col. 5:36-43 |
| a canopy defining a plurality of coupled sections extending between a first end forming a suspension end of the canopy and a second end forming an opposing trailing end of the canopy... | The Accused Product allegedly has a canopy with a suspension end and a trailing end. | ¶27 | col. 4:16-24 |
| the suspension end of the canopy including only a single fastener that engages the canopy with the frame... | The suspension end of the accused canopy allegedly includes a single fastener to engage it with the frame. | ¶28 | col. 9:18-24 |
| wherein the trailing end of the canopy is spaced apart from the frame... such that the canopy is supported by the frame and the trailing end is totally supported by wind... | The trailing end of the accused canopy is allegedly spaced from the frame and is totally supported by wind to provide shade. | ¶29 | col. 9:4-8 |
| wherein the single fastener comprises a loop extending at least partially through a length of suspension end of the canopy from the left end to the right end | The accused single fastener allegedly comprises a loop extending along the suspension end of the canopy. | ¶30 | col. 9:9-13 |
| a container capable of housing and transporting the components of the system therein. | The Accused Product allegedly includes a container for housing and transport. | ¶31 | col. 6:50-55 |
'876 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a frame including a plurality of sections and being maneuverable between a transport configuration and a supporting configuration... | The Accused Product allegedly has a multi-section frame that can be configured for transport or support. | ¶36 | col. 5:22-30 |
| a first section defining a left end of the frame engaged with the surface; a last section defining a right end of the frame engaged with the surface; | The accused frame allegedly has first and last sections that engage with the ground surface. | ¶37 | col. 5:40-42 |
| the one or more adjacent sections... comprising at least one aligning component... providing supporting tension to the align-ment in the supporting configuration... | The accused frame's adjacent sections allegedly include an aligning component providing tension. | ¶39 | col. 5:58-65 |
| a canopy extending between a first end and an second end, the first end of the canopy defining a suspension end... | The Accused Product allegedly comprises a canopy with a suspension end. | ¶41, ¶42 | col. 4:15-19 |
| wherein the second end of the canopy defines a trailing end spaced apart from the frame... the trailing end of the canopy is totally supported by wind... | The accused canopy's trailing end is allegedly spaced from the frame and totally supported by wind. | ¶43 | col. 8:40-46 |
| a loop on the suspension end of the canopy... the loop being the only fastener securing the canopy into position relative to the frame. | The accused canopy allegedly has a loop on its suspension end that is the only fastener securing it to the frame. | ¶44 | col. 8:47-53 |
Identified Points of Contention
- Scope Questions: A central dispute may concern the meaning of "totally supported by wind." The question for the court will be whether this language requires the canopy's trailing edge to be exclusively airborne at all times, or if it can be read to mean that wind is the sole lifting and shaping force, allowing for incidental contact with the ground.
- Technical Questions: The infringement analysis may turn on the claim limitations "only a single fastener" ('273 Patent) and "the loop being the only fastener" ('876 Patent). What evidence does the complaint provide that the Sunsail Shade's attachment mechanism has no secondary components that could be construed as additional "fasteners," thereby distinguishing it from the claimed invention?
V. Key Claim Terms for Construction
The Term: "totally supported by wind"
Context and Importance: This phrase appears in the independent claims of both asserted patents and captures the core functional principle of the invention. The construction of "totally" will be critical for determining the scope of the claims and whether the accused product infringes.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patents' background sections contrast the invention with prior art that is "susceptible to being shifted or unanchored by wind" ('273 Patent, col. 1:41-42). This may support an interpretation where "totally supported" refers to the primary operative force that provides lift and stability, rather than requiring that the canopy never make incidental contact with the ground.
- Evidence for a Narrower Interpretation: The plain meaning of "totally" suggests absolute and complete support. The figures, such as Figure 1 in both patents, depict the canopy flying freely like a kite, with a visible gap between the entire trailing edge and the ground surface, which may support a narrower construction requiring the trailing end to be entirely airborne.
The Term: "only a single fastener" ('273 Patent) / "the only fastener" ('876 Patent)
Context and Importance: These limitations define the simplicity of the canopy-to-frame attachment. Practitioners may focus on this term because it presents a clear potential path for a non-infringing design-around. The presence of any component that could be legally construed as a second "fastener" could defeat a literal infringement claim.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification discusses straps that "wrap about the frame" to secure the canopy ('273 Patent, col. 4:50-56). A party could argue that "fastener" should be construed narrowly to mean a specific type of connecting device, and that other securing means like a high-friction strap do not constitute a "fastener" in the context of the claim.
- Evidence for a Narrower Interpretation: The claims use the restrictive words "only" and "single." The specification itself distinguishes between a "loop" on the canopy and a separate "strap" ('273 Patent, FIG. 1, FIG. 3). A party could argue that if a product uses both a loop and a strap-like feature to secure the canopy, it uses more than the "single" or "only" fastener recited in the claims.
VI. Other Allegations
- Indirect Infringement: The complaint alleges NB Shades induces infringement by providing instructional materials (e.g., a "How to Setup" video) that encourage customers to use the product in an infringing manner (Compl. ¶54, ¶63). It further alleges that Bluebonnet induces and contributes to infringement by manufacturing and supplying the canopy, which is alleged to be a non-staple component especially adapted for use in the infringing system, with knowledge of its intended infringing use (Compl. ¶55-56, ¶64-65).
- Willful Infringement: The complaint alleges willful infringement based on Defendants' knowledge of the patents. This knowledge is alleged to have been established through pre-suit notice letters sent starting on March 21, 2024, as well as constructively from the patents' issue dates (Compl. ¶58, ¶67). The allegation that Defendants proceeded with a "redesigned" product after receiving notice forms a core part of the willfulness claim (Compl. ¶47-48).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: Can the phrase "totally supported by wind," which is central to both asserted patents, be construed to read on a product whose canopy may make incidental or intermittent contact with the ground, or does it require the trailing edge to be exclusively airborne during use?
- A key evidentiary question will be one of factual correspondence: Does the accused Sunsail Shade's design meet the strict "only a single fastener" and "the only fastener" limitations of the asserted claims, or does it incorporate any secondary securing elements that would place it outside the literal scope of the claims?
- The dispute over willfulness will likely focus on the nature of Defendants' alleged product redesign. The central question will be whether the redesign was a good-faith attempt to avoid infringement or a colorable change that was objectively reckless in view of the notice provided by the Plaintiff.