Alliance Sports Group v. Eb Brands Holdings

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Alliance Sports Group, L.P. (Texas)
  • Defendant: EB Brands Holdings, Inc. (Delaware)
  • Plaintiff’s Counsel: Thorpe, North & Western, LLP
• Case Identification: Alliance Sports Group, L.P. v. EB Brands Holdings, Inc., 2:16-cv-01116, D. Utah, 10/31/2016
• Venue Allegations: Plaintiff alleges venue is proper in the District of Utah based on Defendant’s sales of relevant products into the state and Plaintiff’s employment of numerous individuals within the state.
• Core Dispute: Plaintiff seeks a declaratory judgment that its waist slimming belt product does not infringe Defendant's design patent and that the design patent is invalid.
• Technical Context: The dispute concerns the ornamental design of consumer exercise apparel, specifically waist slimming or support belts.
• Key Procedural History: This declaratory judgment action was filed after Defendant sent cease-and-desist letters to Plaintiff's customers, including Dick's Sporting Goods, alleging infringement of the patent-in-suit. The complaint also alleges the patent is invalid in view of prior art and raises the possibility of a future claim for inequitable conduct based on prior art not considered by the patent office.

Case Timeline

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

U.S. Design Patent No. D598,637 - "WAIST SUPPORT BELT"

• Patent Identification: U.S. Design Patent No. D598,637, titled "WAIST SUPPORT BELT", issued August 25, 2009.

The Invention Explained

• Problem Addressed: As a design patent, the '637 Patent does not describe a technical problem but instead protects a new, original, and ornamental design for an article of manufacture (Compl. Ex. A, '637 Patent).
• The Patented Solution: The patent claims the specific ornamental appearance of a waist support belt. The claimed design consists of a wide, corset-style belt with a pronounced hourglass contour. Its key visual features include a series of vertical, parallel panels defined by stitching, a prominent zipper closure running vertically on one side, and finished top and bottom edges ('637 Patent, Figs. 1-3). The patent's description clarifies that the "dashed lines shown in the drawings represent a stitching line" ('637 Patent, Description).
• Technical Importance: The complaint alleges the patent is for a "waist slimming belt," a product within the broader market for sport-related consumer goods (Compl. ¶¶ 9-10).

Key Claims at a Glance

• The single claim asserted is for: "The ornamental design for a waist support belt, as shown and described" ('637 Patent, Claim). The scope of this claim is defined by the patent’s drawings.
• The primary ornamental features defining the design shown in the patent's figures are:
  • A wide, contoured belt with an hourglass shape.
  • A plurality of vertical, parallel stitched panels.
  • A zipper-based closure mechanism.
  • A finished or piped border along the top and bottom edges.

III. The Accused Instrumentality

Product Identification

• Plaintiff’s "waist slimming belt" sold under the BOLLINGER® brand ("Bollinger Slimming Belt") (Compl. ¶10).

Functionality and Market Context

• The Bollinger Slimming Belt is a sport-related product marketed and distributed to retailers, including those with locations in Utah (Compl. ¶10). The complaint includes a photograph of the accused product, showing it to be a wide, black belt designed to be worn around the waist (Compl. ¶10). This action was initiated after Defendant sent letters to Plaintiff's customers demanding they cease selling the Bollinger Slimming Belt due to alleged infringement (Compl. ¶¶ 14-15). The complaint includes an image of the accused product, which shows a wide black belt with vertical stitched panels. (Compl. ¶10, Image).

IV. Analysis of Infringement Allegations

This is a declaratory judgment action for non-infringement, meaning the Plaintiff (ASG) alleges its product does not infringe the Defendant's (EB's) patent. The analysis compares the accused product's design, as shown in the complaint, to the patented design. The legal test for design patent infringement 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.

'637 Patent Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: The central infringement question will be whether the two designs are "substantially the same" in the eyes of an ordinary observer. A key point of dispute may be the visual impact of the different closure mechanisms—the patented design's prominent zipper versus what appears to be a hook-and-loop closure on the accused product. The court will have to determine if this difference is significant enough to avoid a finding of infringement.
  • Technical Questions: A factual question is whether the overall shape, proportions, and arrangement of the vertical panels on the Bollinger Slimming Belt are close enough to those in the '637 Patent's drawings to create a similar overall visual impression, notwithstanding any differences in the closure system.

V. Key Claim Terms for Construction

The complaint does not provide sufficient detail for analysis of claim construction. As a design patent, there are no textual claim terms whose construction is likely to be a central point of dispute; the scope of protection is defined by the figures as a whole.

VI. Other Allegations

• Patent Invalidity: Plaintiff brings a cause of action for a declaratory judgment of patent invalidity (Compl. ¶¶ 24-28). The complaint alleges the design shown in the '637 Patent is "strikingly similar" to other slimming belt designs that existed before the patent's filing date (Compl. ¶26). It specifically identifies U.S. Design Patent No. D380,588 as an example of invalidating prior art (Compl. ¶26).
• Inequitable Conduct: The complaint states that Plaintiff is "aware of a prior art reference that was not considered during the original prosecution" and "intends to investigate inequitable conduct" (Compl. ¶13). This signals a potential future claim that the patent is unenforceable due to alleged misconduct before the U.S. Patent and Trademark Office.
• Tortious Interference: Plaintiff asserts a state law claim for tortious interference with economic relations under Utah common law (Compl. ¶¶ 29-33). The basis for this claim is the allegation that Defendant sent cease-and-desist letters to Plaintiff's customers with the "improper purpose" of disrupting Plaintiff's business relationships and harming it in the marketplace (Compl. ¶31).

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

1. A core issue will be one of "design similarity": For the purposes of infringement, will an ordinary observer, giving the attention a typical purchaser gives, consider the accused Bollinger belt—with what appears to be a hook-and-loop closure—to be substantially the same as the patented design, which expressly depicts a prominent zipper?
2. A second key issue will be patent validity: Is the overall ornamental design claimed in the '637 Patent novel and non-obvious in light of prior art designs? The court will likely have to compare the patented design to prior art, such as the D380,588 patent cited in the complaint, to determine if the '637 Patent claims a patentably distinct design.