DCT
2:21-cv-00451
William G Sykes v. Nash Distribution Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: William G. Sykes (Virginia)
- Defendant: Nash Distribution, Inc. (Ohio)
- Plaintiff’s Counsel: Patten, Wornom, Hatten & Diamonstein
- Case Identification: 2:21-cv-00451, E.D. Va., 08/05/2021
- Venue Allegations: Plaintiff alleges venue is proper because Defendant sells the accused products in the district, directs substantial activity to the forum through a contractor network, and previously conducted business in the district via a now-terminated license agreement for the patented product.
- Core Dispute: Plaintiff alleges that Defendant’s "Nash Stake" product infringes a design patent for a "Poly Stake" used to secure moisture barriers in building crawl spaces.
- Technical Context: The technology concerns specialized fasteners designed to secure polymer moisture barriers to the ground, a common practice in home construction and maintenance to prevent moisture damage.
- Key Procedural History: The complaint alleges that the parties previously operated under a license agreement for the patented product, which terminated on September 22, 2017. This history may be significant for the Plaintiff's allegation of willful infringement, as it suggests Defendant had pre-suit knowledge of the patent.
Case Timeline
| Date | Event |
|---|---|
| 2014-06-07 | ’692 Patent Application Filing Date |
| 2015-09-29 | ’692 Patent Issue Date |
| 2017-09-22 | License Agreement Termination Date |
| 2021-08-05 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Design Patent No. D739,692 (the "’692 Patent"), "POLY STAKE," issued September 29, 2015.
The Invention Explained
- Problem Addressed: The complaint asserts that during installation, crawl space moisture barriers can move, creating gaps in coverage and increasing the risk of tearing or other damage from physical forces (Compl. ¶9).
- The Patented Solution: The ’692 Patent does not claim a functional solution but rather the specific ornamental appearance of a "poly stake" article of manufacture ('’692 Patent, Claim). The claimed design, as illustrated in the patent's figures, consists of a flat, circular disc through which a two-pronged staple passes, with a small, raised bridge feature on the top surface of the disc ('’692 Patent, Figs. 1-7). The complaint explains that in use, the stake is pushed through a moisture barrier to secure it to the ground (Compl. ¶11).
- Technical Importance: The complaint frames these types of stakes as an "important tool in the construction and maintenance of homes" for overcoming problems with securing moisture barriers (Compl. ¶9).
Key Claims at a Glance
- The single claim of the ’692 Patent is asserted: "The ornamental design for a poly stake, as shown" ('’692 Patent, col. 2:19-20).
- The key ornamental features depicted in the patent's drawings include:
- The overall visual impression of a round disc combined with a staple.
- A thin, flat, circular disc portion.
- A staple portion with two parallel prongs extending perpendicularly from one face of the disc.
- A small, raised, arc-shaped bridge on the top face of the disc, centered between the points where the staple prongs emerge.
III. The Accused Instrumentality
Product Identification
- The "Nash Stake," manufactured and sold by Defendant Nash Distribution, Inc. (Compl. ¶4).
Functionality and Market Context
- The complaint alleges the Nash Stake is used to secure moisture barriers to the ground in a crawl space (Compl. ¶11).
- Plaintiff alleges that the accused Nash Stake and the Plaintiff's own "Sykes Stake" (which embodies the patented design) are "identical in appearance" (Compl. ¶13). Figure 4 of the complaint presents a top-down photograph of the accused Nash Stake, showing its dark-colored disc and staple prongs (Compl. ¶12).
- The complaint further alleges that the disc portions of the two devices are "identical in size," specifying a diameter of three inches and a thickness of one-sixteenth of an inch (Compl. ¶13).
IV. Analysis of Infringement Allegations
Design patent infringement is assessed from the perspective of an "ordinary observer." Infringement is found if the accused design is substantially the same as the patented design, such that an ordinary observer would be deceived into purchasing one believing it to be the other. The complaint alleges the Nash Stake "gives the same overall impression as the Sykes stake" (Compl. ¶17).
'692 Patent Infringement Allegations
| Claim Element (from Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a poly stake, as shown. | The complaint alleges the Nash Stake is "identical in appearance" to the patented design and that it "gives the same overall impression as the Sykes stake." Figure 3 provides an isometric view of the accused Nash Stake, which visually corresponds to the patented design (Compl. ¶12). | ¶13, ¶17 | col. 2:19-20 |
| - A round, flattened disc portion | The accused product is alleged to have a "round, flattened disc portion" that is "identical in size" to the Plaintiff's product, with a three-inch diameter. | ¶10, ¶13 | col. 2:25-29 |
| - A staple portion that runs through the disc | The accused product is described as having a "staple portion that runs through two corresponding holes in the flattened disc." Figure 5 shows a side-view photograph of the accused Nash Stake illustrating this feature (Compl. ¶12). | ¶10, ¶12 | col. 2:25-29 |
- Identified Points of Contention:
- Scope Questions: A central issue will be whether the scope of the patented design is broad enough to cover the accused product. A defense may argue that the scope should be narrowed by prior art, though the complaint does not reference any. The question for the court will be whether an ordinary observer, viewing the two designs in the context of the prior art, would find them substantially the same.
- Technical Questions: The primary factual question is the degree of visual similarity. The complaint's allegations of the products being "identical in appearance" and "identical in size" (Compl. ¶13) frame this as a direct comparison. The defense may need to produce evidence of perceptible visual differences that would be apparent to an ordinary observer.
V. Key Claim Terms for Construction
Claim construction for design patents is not a matter of defining textual terms but of determining the scope of the claimed design as a whole, often by distinguishing protected ornamental features from unprotected functional aspects.
- The Issue: Scope of the "ornamental design."
- Context and Importance: A likely defense strategy is to argue that the fundamental features of the design—a disc and a staple—are dictated by function and are therefore not protectable. The outcome of the case may depend on whether the specific visual implementation of these features is deemed ornamental or purely functional.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader (Ornamental) Interpretation: The patent protects the overall visual appearance created by the specific combination of the elements as shown in the drawings ('’692 Patent, Figs. 1-7). A party could argue that while a disc and staple are functional, the specific proportions, the thinness of the disc, the smooth surfaces, and the particular shape of the raised bridge on top are arbitrary, non-functional choices that create a unique, protectable ornamental design.
- Evidence for a Narrower (Functional) Interpretation: The complaint itself explains the function: "to secure the barrier to the ground" and to use a "flattened disc in combination with the staple [to] hold the barrier to the ground" (Compl. ¶11). A party could argue that a round disc is a common and efficient shape for distributing force and that a two-pronged staple is a standard means of fastening, suggesting these core features are dictated by function.
VI. Other Allegations
- Indirect Infringement: The complaint does not contain allegations of indirect infringement (inducement or contributory infringement).
- Willful Infringement: The complaint alleges that Nash "willfully and knowingly" infringes the ’692 Patent (Compl. ¶16). This allegation is supported by the claim that Defendant previously entered into a license agreement to manufacture and sell the patented device, which was terminated on September 22, 2017, suggesting pre-suit knowledge of the patent and its applicability to the product (Compl. ¶8, fn. 2).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of infringement under the "ordinary observer" test: Faced with allegations that the products are "identical in appearance," can the Defendant identify legally significant visual differences or successfully argue that the similarities reside only in unprotectable functional elements common to the prior art?
- A second key question will relate to willfulness and damages: Given the alleged prior license agreement, what evidence will determine whether Defendant's post-termination sales constituted willful infringement, potentially exposing it to enhanced damages and attorney's fees?
- Finally, the case may turn on the legal question of functionality: To what extent are the features of the patented design—the circular disc, the staple configuration—dictated by their utilitarian purpose, and to what extent do they represent protectable, ornamental design choices?