THE UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF NORTH CAROLINA

WESTERN DIVISION

SHIBUMI SHADE, INC.

Plaintiff, Civil Action No: 5:23-cv-0297-FL

v.

BEACH SHADE LLC, and

MATTHEW FINNERAN

Defendants.

DECLARATION OF STEPHEN MELAMED REGARDING

SHIBUMI SHADE, INC.’S MOTION FOR PRELIMINARY INJUNCTION

Case 5:23-cv-00297-FL Document 21 Filed 06/28/23 Page 1 of 50

 TABLE OF CONTENTS

I.  INTRODUCTION ............................................................................................................... 1 

II.  QUALIFICATIONS ............................................................................................................ 1 

III.  COMPENSATION .............................................................................................................. 2 

IV.  PRIOR TESTIMONY AND PUBLICATIONS .................................................................. 3 

V.  MATERIALS CONSIDERED ............................................................................................ 3 

VI.  BASIS FOR TESTIMONY ................................................................................................. 3 

VII.  LEGAL PRINCIPLES ......................................................................................................... 4 

  Utility Patent............................................................................................................. 4 

1.  Person of Ordinary Skill in the Art .............................................................. 4 

2.  Claim Scope and Construction ..................................................................... 4 

3.  Infringement ................................................................................................. 5 

4.  Validity ......................................................................................................... 6 

  Design Patent ............................................................................................................ 8 

1.  Designer of Ordinary Skill in the Art ......................................................... 8 

2.  Claim Scope and Construction.................................................................... 8 

3.  Infringement ................................................................................................ 9 

4.  Validity ..................................................................................................... 10 

VIII.  SUMMARY OF EXPECTED TESTIMONY AND OPINIONS ...................................... 11 

  Likelihood of Success Regarding Utility Patent Infringement .............................. 11 

  Likelihood of Success Regarding Design Patent Infringement.............................. 11 

IX.  PERSON OF SKILL IN THE ART / DESIGNER OF SKILL IN THE ART .................. 12 

X.  THE SHIBUMI PATENTS ............................................................................................... 13 

  The ’924 Patent ...................................................................................................... 13 

  The ’350 Patent ...................................................................................................... 14 

  The ’605 Patent ...................................................................................................... 15 

i
Case 5:23-cv-00297-FL Document 21 Filed 06/28/23 Page 2 of 50
XI.  CLAIM CONSTRUCTION ............................................................................................... 18 

XII.  INFRINGEMENT BY THE ACCUSED PRODUCT ....................................................... 19 

  Overview of the Beach Shade Cordless ................................................................. 19 

  The ’924 Patent ...................................................................................................... 20 

  The Shibumi Design Patents .................................................................................. 30 

1.  The ’350 Patent ......................................................................................... 31 

2.  The ’605 Patent ......................................................................................... 35 

XIII.  VALIDITY ........................................................................................................................ 42 

  The ’924 Patent ...................................................................................................... 42 

  The Shibumi Design Patents .................................................................................. 44 

ii
Case 5:23-cv-00297-FL Document 21 Filed 06/28/23 Page 3 of 50
 I. INTRODUCTION

1. My name is Stephen Melamed. I have been asked by counsel for Shibumi Shade,

Inc. (“Shibumi”) to provide my independent technical analysis and opinions as an expert in the

field of consumer product design. In particular, I have been asked by Shibumi’s counsel to review

and analyze the scope of the invention claimed in U.S. Patent No. 11,634,924 (the “’924 Patent”),

and to review and analyze the scope of the designs claimed in U.S. Patent Nos. D989,350 (the

“’350 Patent”) and D990,605 (the “’605 Patent”) as it relates to the Beach Shade Cordless (or

“Accused Product”), commercialized by Beach Shade, LLC (“Beach Shade”).

II. QUALIFICATIONS

2. I began my studies in theoretical physics at Boston University. I then served as an

apprentice to Bauhaus designer/artist/author Werner Graeff. I later obtained a Bachelor of Fine

Arts and a Master’s Degree with Distinction in Industrial Design from the University of Illinois at

Chicago (UIC). While at UIC I was awarded a Design Fellowship by the National Endowment

for the Arts & Humanities. I also studied with R. Buckminster Fuller for World Game, was a

speaker at the First International Interdisciplinary Design Conference at the United Nations, and

was named one of the Nation’s top 25 most admired design educators by Design Intelligence in

2010.

3. I was inducted into the Academy of Fellows of the Industrial Designers Society of

America (IDSA) in 2016. In 2017, I was named President of the International Society for Design

Thinking (ISDT), a public/private partnership of the Chinese Ministry of Education and IEG

(Innovation Excellence Group) based in Beijing, China. I was also the Keynote Speaker at the XI

International Congress for Design Management & Technology, Mexico City in 2017.

1
Case 5:23-cv-00297-FL Document 21 Filed 06/28/23 Page 4 of 50
 4. I have extensive experience in industrial design and consumer products. For

example, I have worked in manufacturing, corporate, not-for-profit, and consulting across a wide

spectrum of industries, including medical, health & fitness, consumer electronics, housewares,

office equipment, lighting and sporting goods.

5. I was the Founding Chair of the UIC Industrial Design Department in the School

of Design. I am currently Professor Emeritus of Industrial Design and Interdisciplinary Product

Development (IPD) at UIC and formerly the Associate Director of the IPD Program at the UIC

Innovation Center. In 2011, I was honored as the IDSA Midwest Educator of the Year.

6. I was a founding member of the not-for-profit AIGA national design advocacy

group, Design for Democracy (D4D) and have served on its Board of Directors. I have also written

numerous articles on the topics of innovation, industrial design, interdisciplinary product

development, design thinking and design research and have been a featured lecturer at universities

and conferences both domestically and abroad. I am also an LSP (Lego® Serious Play) Certified

Facilitator.

7. I am also the sole and/or contributing author of over thirteen publications relating

to this field. I am also named as an inventor on over sixty-two U.S. Patents in this and related

fields.

8. A copy of my current curriculum vitae further elaborating on my professional

background and qualifications is attached hereto as Exhibit B-1.

III. COMPENSATION

9. I am being compensated at my customary rate of $400 per hour for my work on this

case including the preparation of this Expert Declaration and any related testimony. I receive

an additional $200 per hour for any work on this case that requires travel. In addition, I am

2
Case 5:23-cv-00297-FL Document 21 Filed 06/28/23 Page 5 of 50
 being reimbursed for my reasonable expenses incurred in connection with my work on this case.

No part of my compensation is dependent on the outcome of this case.

IV. PRIOR TESTIMONY AND PUBLICATIONS

10. A copy of my curriculum vitae is attached as Exhibit B-1 and includes a list of

all publications I have authored including in the last ten years. I have not testified as an expert

at trial or by deposition in the last four years.

V. MATERIALS CONSIDERED

11. The data and other information that I have considered in forming my opinions are

identified in this Expert Declaration and/or in the attached Exhibit B-2. I reserve the right to

supplement, expand, update, and/or refine my opinions and conclusions in light of any additional

information or material that is brought to my attention during the course of this case, including,

but not limited to, any additional declarations or expert reports that the parties might offer,

testimony, or other evidence introduced at a hearing or trial. I reserve the right to supplement this

Expert Declaration to consider any such additional information.

12. The exhibits I intend to use in any testimony I may provide include the documents

referenced in this expert declaration. I may also rely on and use demonstrative exhibits and

summaries that have yet to be prepared. I may also use a variety of other materials to summarize

and support my opinions and testimony. These may include things such as models, studies,

photographs, animations, charts, drawings, or other demonstrative materials.

VI. BASIS FOR TESTIMONY

13. The basis for my testimony and opinions in this matter include: the documents,

data, and other information that I have considered, as set forth in this declaration, and my

background education, training, and years of experience. My testimony also may be based in part

on other sources of information identified in this declaration.

3
Case 5:23-cv-00297-FL Document 21 Filed 06/28/23 Page 6 of 50
 14. I reserve the right to give opinions on facts and other matters arising subsequent to

this declaration, either prior to or during any hearing or trial in this action.

VII. LEGAL PRINCIPLES

15. I am not a lawyer. I have been informed of various legal principles that apply to

these proceedings. Among these principles are the legal standards for infringement and invalidity.

The following understanding of the various relevant legal principles is based on discussions with

counsel for Shibumi.

Utility Patent

1. Person of Ordinary Skill in the Art

16. I understand that with respect to utility patents, a person of ordinary skill in the art

(“POSITA”) is a hypothetical person who is presumed to have known the relevant art at the time

of the invention. I understand that the facts that may be considered in determining the level of

ordinary skill in the art include: (a) the types of problems encountered in the art; (b) prior art

solutions to those problems; (c) the rapidity with which innovations are made; (d) the

sophistication of the technology at issue; and (e) the educational level of active workers in the

field.

2. Claim Scope and Construction

17. Generally, I understand that “claim construction” is a question as to the meaning of

the words in the claims.

18. I understand that claims are to be interpreted in light of a patent’s specification and

prosecution history, and that claim construction starts with the plain language of the claims as

understood by a person having ordinary skill in the relevant art at the time the patent was filed.

4
Case 5:23-cv-00297-FL Document 21 Filed 06/28/23 Page 7 of 50
 19. I also understand that the words of a claim must generally be given their plain and

ordinary meaning as understood by a person of ordinary skill in the art.

20. I further understand that the words in a claim are construed based on the “intrinsic

evidence,” which includes the claim language, language in other claims of the patent in question,

the specification, and the prosecution history. The words of a claim, in view of the intrinsic

evidence, should be construed as they would be understood by a person of ordinary skill in the art

at the time of the alleged invention.

21. I understand that “extrinsic evidence” is all the information that is not “intrinsic

evidence” including, for example, expert testimony, dictionaries, and technical treatises. Extrinsic

evidence may be used to provide additional background for how a person of ordinary skill in the

art would understand the claim terms.

3. Infringement

22. I am informed and understand that determining utility patent infringement is a two-

step analysis. I understand that the first step is for a court to interpret the claims without regard to

the accused product.

23. I understand the second step for determining utility patent infringement is to apply

the construed claims to the accused product to determine whether every element of the claim is

present in the accused product. I understand that for a utility patent claim to be infringed by an

accused product, each and every element of the claim, or a legal equivalent thereof, must be present

in the accused product. I understand that a utility patent claim cannot be infringed if even a single

element of the claim, or its legal equivalent, is not present in the accused device.

24. I understand that direct infringement of a utility patent claim involves making,

using, selling, offering to sell, or importing into the United States a product that infringes literally

5
Case 5:23-cv-00297-FL Document 21 Filed 06/28/23 Page 8 of 50
or under the doctrine of equivalents.

25. I understand that to show infringement a patent holder must prove that every

element of the claim is present in the accused product by a preponderance of the evidence.

26. I further understand that under the “Doctrine of Equivalents,” a claim limitation

may be satisfied if, although not literally the same, an accused product performs substantially the

same function in substantially the same way to obtain substantially the same result.

4. Validity

27. I understand that issued utility patents are presumed valid. I understand that to

demonstrate a utility patent is invalid requires the party challenging validity to make its showing

by clear and convincing evidence.

28. I understand that demonstrating a patent is invalid as anticipated requires the party

challenging validity to show by clear and convincing evidence that every claim limitation be found

in a single prior art reference, either explicitly or inherently. I further understand that in order to

show that an element is inherent, the party challenging validity must show that the missing element

is necessarily present in the prior art. I understand that the mere fact that a certain thing may (but

also may not) result from a given set of circumstances is not sufficient. I also understand that a

prior art reference must be enabling so that the claimed subject matter may be made or used by

one skilled in the art.

29. I understand that a patent claim is invalid as obvious if the patent challenger

establishes by clear and convincing evidence that differences between the claimed invention and

the prior art are such that the subject matter as a whole would have been obvious at the time the

invention was made to a POSITA. I understand that in making a determination whether a given

patent claim is obvious, one must take into account (1) the scope and content of the prior art; (2) the

6
Case 5:23-cv-00297-FL Document 21 Filed 06/28/23 Page 9 of 50
differences between the prior art and the claims; (3) the level of ordinary skill in the art; and (4) any

objective evidence (called “secondary considerations”) that may have existed at the time of the

invention and afterwards that shed light on the nonobviousness of the claimed invention, including:

(a) whether the invention was commercially successful as a result of the merits of the claimed

invention; (b) whether the invention satisfied a long-felt need; (c) whether others had tried and

failed to make the invention; (d) whether others copied the invention; (e) whether the invention

achieved unexpected results; and (f) whether others in the field praised the invention. I further

understand that a party seeking to invalidate a patent claim based on obviousness must demonstrate

by clear and convincing evidence that a POSITA would have been motivated to combine the

teachings of the prior art references to achieve the claimed invention and would have had a

reasonable expectation of success in doing so.

30. It is my understanding that a valid patent must satisfy certain requirements. I

understand that to show an issued patent is invalid, the party challenging validity must demonstrate

one of the following requirements is not met: (1) the specification must describe the invention

sufficiently to convey to a POSITA that the applicant had possession of the claimed invention at

the time of the application, i.e., that the applicant invented what is claimed (the “written

description” requirement); (2) the specification must describe the manner and process of making

and using the invention so as to enable a POSITA to make and use the full scope of the invention

without undue experimentation (the “enablement” requirement); and (3) the patent’s claims, read

in light of the specification delineating the patent, and the prosecution history, must not fail to

inform, with reasonable certainty, those skilled in the art about the scope of the invention

(“indefiniteness”).

7
Case 5:23-cv-00297-FL Document 21 Filed 06/28/23 Page 10 of 50
 Design Patent

1. Designer of Ordinary Skill in the Art

31. I understand that with respect to design patents, a designer of ordinary skill in the

art (“DOSA”) is a hypothetical person who is presumed to be familiar with the prior art designs

that have been determined to be reasonably relevant.

2. Claim Scope and Construction

32. I understand that a design patent claims and protects the ornamental design for an

article of manufacture, and that an article of manufacture presumably has a function or functional

features.

33. I understand that the claims of a patent define the scope of the invention, and that

for a design patent, the claims protect the novel, ornamental aspects of the claimed design in its

entirety. I also understand that determining whether a patent claim has been infringed requires

that a court first properly construe the meaning and scope of the patent claims. To construe design

patents, I understand that a court examines the ornamental features of the design shown in the

patent drawings from a visual perspective and typically does not attempt to construe the claims

with a detailed verbal description of the design elements.

34. I understand that in addition to the drawings of the claimed design, the Court may

look at what is known as intrinsic evidence to construe the claims, which constitutes the patent’s

specification and prosecution history.

35. I understand that a court may examine evidence other than intrinsic evidence when

construing a claim, but only if the claim remains ambiguous after considering the intrinsic

evidence. I understand that this type of evidence is called extrinsic evidence.

8
Case 5:23-cv-00297-FL Document 21 Filed 06/28/23 Page 11 of 50
 36. I understand that in construing a design patent claim, a court will limit the scope to

the overall ornamental visual impression of the article shown in the drawings, rather than the

functional features of the article. I understand that any wholly functional concepts may be factored

out of a design patent claim during claim construction.

37. I understand that while a design patent does not protect the functional concepts

underlying any utility-related features shown in the drawings, the scope of the claim includes the

overall appearance of all claimed elements in the design, whether they have a functional purpose

or not. I understand that as a result, the appearance of any utilitarian or functional features of a

claimed design contributes to the overall ornamentation and thus the claim’s scope, just as any

features that may not have an underlying function

38. I also understand that in the preparation of design patent applications, patent

applicants are entitled to claim or disclaim portions of the designs by using solid lines (to claim a

design) and dotted lines (to disclaim a portion of a design), respectively. The solid lines in a design

patent figure are the only aspects of the design claimed by the inventor.

3. Infringement

39. It is my understanding that the test for determining infringement in design patent

cases is the “Ordinary Observer” test. The test requires a determination to be made as to whether,

in the eye of an ordinary observer, giving such attention as a purchaser usually gives and familiar

with the prior art, two designs are substantially the same in their overall appearance. The reaction

to the design in the marketplace depends on their impression of that product’s overall impression.

If the resemblance deceives the observer, inducing him or her to purchase one supposing it to be

the other, the designs are substantially the same. If the designs are substantially the same, the

accused products infringe the patent.

9
Case 5:23-cv-00297-FL Document 21 Filed 06/28/23 Page 12 of 50
 40. It is my understanding that it is the overall appearance of the design and that

design’s effect on the eye of an ordinary observer that determines infringement, not the specific

differences in particular details (assuming there are any) between the designs. Thus, minor

differences between a patented design and an accused product cannot prevent a finding of

infringement because not every individual detail or design element on a product contributes to its

overall design, much less this ordinary observer’s overall impression.

41. It is my further understanding that where the claimed and accused designs are not

plainly similar, resolution of the question whether the ordinary observer would consider the two

designs to be substantially the same benefits from a comparison of the claimed and accused designs

with the prior art. In general, if the accused product is closer to the claimed design than it is to the

prior art, infringement is more likely.

42. The Ordinary Observer test applies to the patented design in its entirety, and proper

analysis requires a side-by-side comparison of the drawings of the design patent and the accused

product or the prior art in question.

4. Validity

43. I understand that issued design patents are presumed valid. I understand that to

demonstrate a design patent is invalid requires the patent challenging validity to make its showing

by clear and convincing evidence.

44. I understand that to show a design patent is invalid as anticipated, the party

challenging validity must show by clear and convincing evidence that the prior art reference, when

viewed as a whole by an ordinary observer, is substantially the same as the claimed design.

45. I understand that in determining whether a design patent is obvious based on the

prior art, and therefore not patentable, the basic consideration is similarity of appearance.

10
Case 5:23-cv-00297-FL Document 21 Filed 06/28/23 Page 13 of 50
 Therefore, I understand that to demonstrate obviousness the party challenging validity must first

show by clear and convincing evidence that there is a single reference that creates basically the

same visual impression as the claimed design. To be basically the same, I understand that the

designs at issue cannot have substantial differences in their overall visual appearances or require

major modifications; any differences must instead be slight. Second, if an appropriate primary

reference exists, the party challenging validity must show that a designer of ordinary skill in the

art would have combined the prior art references (including items in public use or on sale in this

country more than one year prior to the date of the application for patent in the United States) to

create the same overall visual appearance as the claimed design. If the combined references suggest

only components of the claimed design, but not its overall appearance, the design is patentable. It

is also my understanding that the secondary considerations discussed above with respect to utility

patents must also be considered with respect to the obviousness of design patents.

VIII. SUMMARY OF EXPECTED TESTIMONY AND OPINIONS

Likelihood of Success Regarding Utility Patent Infringement

46. In my opinion, the Beach Shade Cordless infringes at least Claim 13 of the ’924

Patent.

47. In my opinion there is not clear and convincing evidence of invalidity such that the

presumption of invalidity can be overcome with respect to Claim 13 of the ’924 Patent.

48. As a result, it is my opinion that Shibumi has a high likelihood of success in meeting

its burden to show that the Beach Shade Cordless infringes at least one valid claim of the ’924

Patent.

Likelihood of Success Regarding Design Patent Infringement

49. In my opinion, the overall visual appearance created by the Beach Shade Cordless

design is substantially the same as the designs claimed in the ’350 and ’605 Patents in the eye of

11
Case 5:23-cv-00297-FL Document 21 Filed 06/28/23 Page 14 of 50
the ordinary observer. Thus, applying the Ordinary Observer test, the Beach Shade Cordless

infringes the ’350 and ’605 Patents.

50. In my opinion, the asserted and relevant prior art varies significantly in overall

visual appearance from the figures of the ’350 and ’605 Patents such that the claims of the ’350

and ’605 Patents are sufficiently broad to permit them to encompass the type of minor variations

in overall visual appearance present in the Accused Product.

51. In my opinion there is not clear and convincing evidence of invalidity such that the

presumption of invalidity can be overcome with respect to the ’350 and ’605 Patents.

52. As a result, it is my opinion that Shibumi has a high likelihood of success in meeting

its burden to show that the Beach Shade Cordless infringes the ’350 and ’605 Patents.

IX. PERSON OF SKILL IN THE ART / DESIGNER OF SKILL IN THE ART

53. Here, a POSITA at the time of the claimed invention in the ’924 Patent would be

someone familiar with industrial design principles relating to beach and leisure equipment. This

could be obtained in the form of a bachelor’s or advanced degree in industrial design, two or more

years of experience designing consumer products in this or related fields, or a particular interest or

experience in the problems encountered in this field and efforts to remedy them. An industrial

designer is typically trained as a generalist (industry agnostic), but as a specialist in the process of

product design and development.

54. Here, it is it is my opinion that a designer of ordinary skill in the art at the time of

the claimed inventions in the Shibumi Design Patents would be someone familiar with industrial

design principles relating to beach and leisure equipment. This could be obtained in the form of a

bachelor’s or advanced degree in industrial design, two or more years of experience designing

consumer products in this or related fields, or a particular interest or experience in the problems

12
Case 5:23-cv-00297-FL Document 21 Filed 06/28/23 Page 15 of 50
encountered in this field and efforts to remedy them. An industrial designer is typically trained as

a generalist (industry agnostic), but as a specialist in the process of product design and

development.

55. It is further my opinion, that the “Ordinary Observer” for the accused products in

this case is a typical buyer who purchases beach and leisure equipment.

X. THE SHIBUMI PATENTS

The ’924 Patent

56. The ’924 Patent claims priority to Provisional Application No. 62/409,426 filed

October 18, 2016 (the “’426 Application”).

57. The ’924 Patent is generally directed to a transportable system and method for

providing shade onto a surface. ’924 Patent at 1:17-19. In particular, the patent is focused on a

canopy supported by a single frame.

’924 Patent, Fig. 9.

13
Case 5:23-cv-00297-FL Document 21 Filed 06/28/23 Page 16 of 50
 The ’350 Patent

58. The Figures of the ’350 Patent are as follows, with the patent claiming the

ornamental design for a shading system, as shown and described:

14
Case 5:23-cv-00297-FL Document 21 Filed 06/28/23 Page 17 of 50
 59. Several broken lines in the claimed design of the ’350 Patent depict environmental

subject matter and are not part of the claimed design.1 For example, the ’350 Patent does not claim

the features such as a cord, an anchor at the end of the cord, and a trailing edge of the shade, which

are shown in the uniform broken lines.

The ’605 Patent

60. The Figures of the first embodiment of the ’605 Patent are as follows, with the

patent claiming the ornamental design for a shading system, as shown and described:

1
’350 Patent at 2 (“The dashed lines shown herein depict environmental subject matter or a portion of the shading
system that forms no part of the claimed design. The dot-dashed lines shown herein define the bounds of the claimed
design and form no part thereof.”).

15
Case 5:23-cv-00297-FL Document 21 Filed 06/28/23 Page 18 of 50
61. The figures of the second embodiment of the ’605 Patent are as follows:

16
Case 5:23-cv-00297-FL Document 21 Filed 06/28/23 Page 19 of 50
 62. Several broken lines in the claimed design of the ’605 Patent depict environmental

subject matter and are not part of the claimed design,2 For example, the ’605 Patent does not claim

2
’605 Patent at 1 (“The dashed lines shown herein depict environmental subject matter or a portion of the shading
system that forms no part of the claimed design. The dot-dashed lines shown herein define the bounds of the claimed
design and form no part thereof.”).

17
Case 5:23-cv-00297-FL Document 21 Filed 06/28/23 Page 20 of 50
the features such as a cord, an anchor at the end of the cord, a trailing edge of the shade, or a seam

of the shade which are all shown in the uniform broken lines.

XI. CLAIM CONSTRUCTION

63. I have reviewed the claimed limitations in Claim 13 of the ’924 Patent and it is my

opinion all terms of Claim 13 should be given their plain and ordinary meaning as understood by

a person of ordinary skill in the art.

64. Specifically with respect to the term “coefficient of friction,” this phrase has been

specifically considered by the examiner during the prosecution of the related United States Patent

No. 11,536,046 (the “’046 Patent”). There, the examiner stated as follows:

Claims 21, and 55 recite “the at least one elastic fastener having a higher
coefficient of friction with respect to the frame” Claim 61 recites “the at least
one elastic fastener having a higher coefficient of friction with respect to the
plurality of sections of the frame” and Claim 62 recites “the at least one elastic
strap having a higher coefficient of friction with respect to the plurality of
sections of the frame.” All of these phrases renders the claims indefinite, as it is
unclear what other coefficient of friction is reference. What is the elastic
strap/fastener being compared to when the coefficient of friction is described?
The claims do not answer this question and are therefore indefinite.

’046 Patent Prosecution History at 45-46 (emphasis added). In response, Shibumi amended the

claim to add the underlined language shown below to clarify that the “other coefficient of friction”

previously claimed is with respect to a coefficient of friction of the plurality of sections of the

frame:

at least one elastic strap that is engageable with or coupled to the suspension end
of the canopy for securing the canopy to the frame, the at least one elastic strap
having a higher coefficient of friction with respect to a coefficient of friction of
the plurality of sections of the frame.

’046 Patent Prosecution History at 32. The examiner subsequently allowed the amended claims,

concluding that the claim language was clear as amended. ’046 Patent at Claim 19. Thus, a

POSITA would understand the plain and ordinary meaning of the limitation of Claim 13 of the

18
Case 5:23-cv-00297-FL Document 21 Filed 06/28/23 Page 21 of 50
’924 Patent stating “wherein the at least one fastener has a higher coefficient of friction with

respect to a coefficient of friction of the plurality of sections of the frame” to be sufficiently clear

and to require that the claimed fastener would utilize a higher coefficient of friction as compared

to the frame to keep the shade from sliding up the frame.

65. Further with respect to the term “engageable with or coupleable to an anchor for

securing the canopy into position,” a POSITA would understand this term to have its plain and

ordinary meaning, which is “may be engaged with or coupled to an additional anchor 34 for

securing the canopy 12 into position.” See ’924 Patent at 7:37-40. In other words, a POSITA

would understand that the plain and ordinary meaning of this term requires that a practicing

product must be capable of carrying out this limitation, but it is not required that it be shown to

have been used or be advertised for use in this manner.

66. Taking all of the claimed design elements in combination into consideration, in my

opinion the ’350 Patent should be construed as the overall ornamental appearance of the design

for a shading system shown in the drawings identified as Figures 1-7.

67. Taking all of the claimed design elements in combination into consideration, in my

opinion the ’605 Patent should be construed as the overall ornamental appearance of the

embodiment of the design for a shading system shown in the drawings identified as Figures 1-7

and as the overall ornamental appearance of the embodiment of the design for a shading system

shown in the drawings identified as Figures 8-14.

XII. INFRINGEMENT BY THE ACCUSED PRODUCT

Overview of the Beach Shade Cordless

68. I understand that the accused product in this case is the Beach Shade Cordless.

Exemplary photos of the Beach Shade Cordless are as follows:

19
Case 5:23-cv-00297-FL Document 21 Filed 06/28/23 Page 22 of 50
 69. I understand that a previous version of the Beach Shade product was enjoined from

further sales on February 8, 2022 due to likely infringement of Shibumi’s United States Patent

Nos. 10,190,330 and 10,753,117. I understand that Beach Shade introduced the Beach Shade

Cordless product in or around May of 2023.

The ’924 Patent

70. Upon review of Beach Shade’s marketing and other materials for the Beach Shade

Cordless, I am of the opinion that the Beach Shade Cordless includes each and every element—

and therefore infringes—at least claim 13 of the ’924 Patent for all the reasons set forth below and

in the claim chart attached as Exhibit B-3.

71. Claim 13 of the ’924 Patent recites:

13. A system for providing shade onto a surface, the system comprising:

a frame defined by a plurality of sections and comprising a

cable extending therethrough, each of the plurality of sections being
engageable with at least one adjacent section to define the frame in
a supporting configuration and thereby disengageable to define the
frame in a transport configuration, wherein each of a left end and a
right end of the frame in the supporting configuration has a
corkscrew shape for engaging a surface;

20
Case 5:23-cv-00297-FL Document 21 Filed 06/28/23 Page 23 of 50
 a canopy extending between a first end and an opposing
second end, the first end of the canopy extending between a left end
and a right end; and
at least one fastener that secures the canopy in position
relative to the frame, wherein the second end of the canopy is spaced
apart from the frame in the supporting configuration such that the
canopy is supportable by the frame and at least partially supportable
by wind in a first configuration for providing shade to the surface,
wherein the at least one fastener has a higher coefficient of
friction with respect to a coefficient of friction of the plurality of
sections of the frame, and
wherein the second end of the canopy defines a tail, the tail
being engageable with or coupleable to an anchor for securing the
canopy into position.

72. Specifically, as shown below and in Exhibit B-3 (element [pre]), the Beach Shade

Cordless is a system for providing shade onto a surface.

73. As shown below and in Exhibit B-3 (element [a]), the Beach Shade Cordless

consists of a frame defined by a plurality of sections and comprising a cable extending

therethrough.

21
Case 5:23-cv-00297-FL Document 21 Filed 06/28/23 Page 24 of 50
 74. As shown below and in Exhibit B-3 (element [b]), each of the plurality of sections

of the Beach Shade Cordless are engageable with at least one adjacent section to define the frame

in a supporting configuration and thereby disengageable to define the frame in a transport

configuration.

22
Case 5:23-cv-00297-FL Document 21 Filed 06/28/23 Page 25 of 50
 75. As shown below and in Exhibit B-3 (element [c]), the Beach Shade Cordless

consists of a left end and a right end of the frame in the supporting configuration with a corkscrew

shape for engaging a surface.

23
Case 5:23-cv-00297-FL Document 21 Filed 06/28/23 Page 26 of 50
 24
Case 5:23-cv-00297-FL Document 21 Filed 06/28/23 Page 27 of 50
 76. As shown below and in Exhibit B-3 (element [d]), the Beach Shade Cordless

canopy extends between a first end and an opposing second end, the first end of the canopy

extending between a left end and a right end.

77. As shown below and in Exhibit B-3 (element [e]), the Beach Shade Cordless

consists of fabric that is wrapped around the end of the pole to fasten and secure the canopy in

position relative to the frame, constituting a fastener that secures the canopy in position relative to

the frame.

25
Case 5:23-cv-00297-FL Document 21 Filed 06/28/23 Page 28 of 50
 78. As shown below and in Exhibit B-3 (element [f]), the second end of the canopy of

the Beach Shade Cordless is spaced apart from the frame in the supporting configuration such that

the canopy is supportable by the frame and at least partially supportable by wind in a first

configuration for providing shade to the surface.

79. As shown below and in Exhibit B-3 (element [g]), the Beach Shade Cordless has a

fastener that is wrapped around the end of the frame and over onto itself so that friction prevents

the canopy from sliding up along the plurality of sections of the frame. As discussed in Section

XI above, this falls within the plain and ordinary meaning of the claimed limitation “wherein the

at least one fastener has a higher coefficient of friction with respect to a coefficient of friction of

the plurality of sections of the frame.”

26
Case 5:23-cv-00297-FL Document 21 Filed 06/28/23 Page 29 of 50
To the extent it is argued that “the at least one fastener [that] has a higher coefficient of friction

with respect to a coefficient of friction of the plurality of sections of the frame” is not literally

present in the Beach Shade Cordless, in my opinion it is met under the doctrine of equivalents.

The fabric that is wrapped around the end of the pole before placing it into the corkscrew to fasten

and secure the canopy in position relative to the frame, as shown in the still shot from the setup

instructions above, performs substantially the same function in substantially the same way to

obtain the same result. This language in claim 13 means that the claimed beach shade must

perform the function of preventing the canopy from sliding up the frame and bunching up

27
Case 5:23-cv-00297-FL Document 21 Filed 06/28/23 Page 30 of 50
(function), thereby preventing the reduction of shade coverage (result). In the ’924 Patent, this

function is performed and result achieved in a number of ways, including by using straps to tightly

wrap around the frame and secure the canopy in place. The Accused Product performs the same

function to achieve the same result in a substantially similar way -- by wrapping the fabric around

the end of the frame. In that event, the Accused Product meets this limitation under the doctrine

of equivalents.

80. As shown below and in Exhibit B-3 (element [h]), the second end of the canopy of

the Beach Shade Cordless defines a tail that is engageable with or coupleable to an anchor for

securing the canopy into position. As discussed in Section XI above, a POSITA would understand

the requirement that the tail “be engageable with or coupleable to an anchor for securing the canopy

into position” to have its plain and ordinary meaning, which means capable of engaging with or

coupling to an anchor for securing the canopy into position. This language does not require the

presence of an anchor, whether in the product as sold or as actually used and engaged, in order to

meet this claim limitation. In most uses and environments, there is enough wind to lift the canopy

and prevent the need to use any sort of anchor to secure the tail end of the canopy in place. On

very low or no wind days, however, some have observed the benefit to coupling an anchor to the

tail end to ensure shade coverage. In fact, Beach Shade itself recognized this with its first Beach

Shade product when it was advertised as having a “no wind” solution with poles to engage a tail

end of the canopy:

Exhibit B-4 at 1. While these same assembly instructions do not appear to accompany the Beach

28
Case 5:23-cv-00297-FL Document 21 Filed 06/28/23 Page 31 of 50
Shade Cordless, this optional functionality is equally applicable. Further, there are multiple

publicly available solutions that can be used to tie down the tail or trailing end of a canopy as

another alternative “no wind” solution. For example, the below tarp clips are advertised on

Amazon:

See https://www.amazon.com/gp/product/B0829PS4M8/. The below photos show the Beach

Shade Cordless engaged with or coupled to an anchor and secured into place using such clips:

29
Case 5:23-cv-00297-FL Document 21 Filed 06/28/23 Page 32 of 50
Relatedly, another company, SunSail Shade, also advertised on its Instagram that clamps can be

purchased from a hardware store and a rope and anchor can be attached to the tail or trailing end

of the canopy. Therefore, it is my opinion that the Beach Shade Cordless satisfies the claim

limitation of “the tail being engageable with or coupleable to an anchor for securing the canopy

into position.”

81. As a result, and as further set forth in Exhibit B-3, it is my opinion that the Beach

Shade Cordless infringes Claim 13 of the ’924 Patent.

The Shibumi Design Patents

82. To establish whether the Beach Shade Cordless infringes the ’350 and ’605 Patents,

I compared the patent drawings to the Beach Shade Cordless to determine if the patented and

accused design were substantially the same in their overall appearance in the eye of the ordinary

observer as further described in the Legal Principles section above.3 Below, I include photographs

of the Beach Shade Cordless to correspond to the views and angles shown in Figures 1-7 of the

’350 Patent, as well as Figures 1-14 of the ’605 Patent.

3
See Section VII.B, supra.

30
Case 5:23-cv-00297-FL Document 21 Filed 06/28/23 Page 33 of 50
 1. The ’350 Patent

83. A side-by-side comparison of the ’350 Patent with a physical sample of the Beach

Shade Cordless is as follows:

’350 Patent Claim Figures Beach Shade Cordless

31
Case 5:23-cv-00297-FL Document 21 Filed 06/28/23 Page 34 of 50
’350 Patent Claim Figures Beach Shade Cordless

32
Case 5:23-cv-00297-FL Document 21 Filed 06/28/23 Page 35 of 50
’350 Patent Claim Figures Beach Shade Cordless

33
Case 5:23-cv-00297-FL Document 21 Filed 06/28/23 Page 36 of 50
’350 Patent Claim Figures Beach Shade Cordless

34
Case 5:23-cv-00297-FL Document 21 Filed 06/28/23 Page 37 of 50
 84. In my opinion, the impact of the initial impression on an ordinary observer would

cause it to view these designs as the same. Therefore, having considered the overall visual

appearance of the designs in Figures 1-7 of the ’350 Patent and the design of the Beach Shade

Cordless, it is my opinion that an ordinary observer would view the design of the Beach Shade

Cordless to have substantially the same overall appearance, particularly in view of the differences

from the prior art as discussed in Section XIII below.

85. I am also aware of actual customer confusion that has occurred as between the

Beach Shade Cordless and the Shibumi beach shade, further confirming that these products have

substantially the same overall appearance. See Declaration of Dane Barnes (“Barnes Decl.”) ¶¶ 27

and 38 and referenced exhibits.

86. Thus, it is my opinion that the Beach Shade Cordless infringes the ’350 Patent.

2. The ’605 Patent

87. A side-by-side comparison of the first embodiment of the ’605 Patent with a

physical sample of the Beach Shade Cordless is as follows:

’605 Patent Claim Figures Beach Shade Cordless

35
Case 5:23-cv-00297-FL Document 21 Filed 06/28/23 Page 38 of 50
’605 Patent Claim Figures Beach Shade Cordless

36
Case 5:23-cv-00297-FL Document 21 Filed 06/28/23 Page 39 of 50
’605 Patent Claim Figures Beach Shade Cordless

37
Case 5:23-cv-00297-FL Document 21 Filed 06/28/23 Page 40 of 50
 ’605 Patent Claim Figures Beach Shade Cordless

88. A side-by-side comparison of the second embodiment of the ’605 Patent with a

physical sample of the Beach Shade Cordless is as follows:

’605 Patent Claim Figures Beach Shade Cordless

38
Case 5:23-cv-00297-FL Document 21 Filed 06/28/23 Page 41 of 50
’605 Patent Claim Figures Beach Shade Cordless

39
Case 5:23-cv-00297-FL Document 21 Filed 06/28/23 Page 42 of 50
’605 Patent Claim Figures Beach Shade Cordless

40
Case 5:23-cv-00297-FL Document 21 Filed 06/28/23 Page 43 of 50
’605 Patent Claim Figures Beach Shade Cordless

41
Case 5:23-cv-00297-FL Document 21 Filed 06/28/23 Page 44 of 50
 89. In my opinion, the impact of the initial impression on an ordinary observer would

cause it to view these designs as the same. Therefore, having considered the visual appearance of

the designs claimed in Figures 1-14 of the ’605 Patent and the design of the Beach Shade Cordless,

it is my opinion that an ordinary observer would view the design of the Beach Shade Cordless to

have substantially the same overall appearance, particularly in view of the differences from the

prior art as discussed in Section XIII below.

90. I am also aware of actual customer confusion that has occurred as between the

Beach Shade Cordless and the Shibumi beach shades, further confirming that these products have

substantially the same overall appearance. See Barnes Decl. ¶¶ 27 and 38 and referenced exhibits.

91. Thus, it is my opinion that the Beach Shade Cordless infringes the ’605 Patent.

XIII. VALIDITY

The ’924 Patent

92. In connection with forming my opinions, I have reviewed the prosecution history

of the ’924 Patent. I have also reviewed the prior art reviewed by the examiner. Over 200

references were submitted during prosecution. See ’924 Prosecution History at 75-76, 189-95,

241-43, 269-70. In particular, on July 6, 2022 the examiner rejected the pending claims of the

application that led to the ’924 Patent for various reasons under Section 112. See id. at 167-69. It

further rejected the various claims of the pending application as obvious over KR10-1315166

(“Kang”) in view of U.S. Patent No. 4,924,893 (“Furey”). U.S. Pat. Pub. 2003/0089390 (“Seo”),

and U.S. Patent No. 3,394,720 (“Moss”). See id. at 169-74. The examiner further considered the

following references, Vollweiler (U.S. Patent No. 2,554,688), Perreault (U.S. Patent No.

5,046,699), Parent (U.S. Patent No. 9,447,599), Rise (U.S. Patent No. 5,291,640), and Swetish

(U.S. Patent No. 5,771,912). Id. at 174. On November 7, 2022, Shibumi amended the specification

42
Case 5:23-cv-00297-FL Document 21 Filed 06/28/23 Page 45 of 50
and claims to address the examiner’s rejections. Specifically, Shibumi added new claim 43 which

ultimately issued as Claim 13 of the ’924 Patent. See id. at 38, 151-152. Following this

amendment, the examiner entered a notice of allowance with respect to the ’924 Patent stating as

follows:

the prior art made of record has failed to teach, either singly or in combination,
a novel canopy with a multi-part corded frame supporting a canopy at one end
of the canopy, the canopy having an frictional elastic strap wrapping around the
frame to secure the canopy along the frame, the canopy being partially supported
by the wind, a container for housing and transporting components of the device,
a cord attached at one end to either the frame or the canopy and at the other end
to a first anchor, and a tail at the opposite end of the canopy having a second
anchor in contact with the surface.

See id. at 29. I wholly agree with the examiner’s assessment and, thus, it is my opinion that Beach

Shade is unable to show by clear and convincing evidence that Claim 13 of the ’924 Patent is

invalid over the prior art.

93. I am further aware of the invalidity contentions served on May 8, 2023 by Beach

Shade in case No. 21-cv-0256, another pending patent infringement action involving related

patents. The art asserted by Beach Shade in these invalidity contentions was largely duplicative

of the art considered by the examiner during the prosecution of the patents asserted in that action.

To date, no more pertinent art has been identified by Beach Shade and I am aware of none.

94. I have reviewed the Barnes Declaration and the supporting materials. It is clear

from the information presented in that Declaration that Shibumi’s intellectual property associated

with the Shibumi beach shade, including the ’924 Patent, has experienced tremendous success in

the market, satisfied a long-felt, unmet need that others had tried and failed to satisfy, achieved

unexpected results, been copied by others, and has been praised by others in the field. It is my

opinion that there is a nexus between the invention claimed in the ’924 Patent and these facts.

Specifically, the claimed invention facilitated and simplified the user experience for beachgoers,

43
Case 5:23-cv-00297-FL Document 21 Filed 06/28/23 Page 46 of 50
and this innovative design led to unexpectedly easy assembly and resulting commercial success.

Therefore, these additional considerations further support a finding of non-obviousness with

respect to the ’924 Patent.

95. Similarly, the examiner did not identify any potential issues with respect to the

written description requirement, the enablement requirement, or indefiniteness, nor have I

identified any.

96. It is therefore my opinion that Beach Shade cannot carry its burden to show by clear

and convincing evidence that the ’924 Patent is invalid. Thus, Shibumi has a high likelihood of

success with respect to its claim for infringement of the ’924 Patent.

The Shibumi Design Patents

97. In connection with forming my opinions I have reviewed a number of published

materials that predate the ’350 and ’605 Patents (together, the “Shibumi Design Patents”) for

purposes of considering the differences between the designs contained in these references, the

claimed designs, and the accused Beach Shade Cordless product. I understand that these references

were already considered by the U.S. Patent & Trademark Office (“USPTO”) during prosecution

of the Shibumi Design Patents.

98. I also understand that whether or not references constitute “prior art” to the Shibumi

Design Patents is determined by particular legal standards which is beyond the scope of my expert

opinion. In discussing the below references, I am not opining that they each meet those legal

standards. I also reserve the right to further express and support my opinions regarding the

differences between the designs claimed in the Shibumi Design Patents and the references

discussed herein in rebuttal to any expert testimony submitted by Beach Shade regarding validity.

44
Case 5:23-cv-00297-FL Document 21 Filed 06/28/23 Page 47 of 50
 99. I note that neither of the Shibumi Design Patents were subject to prior-art based

rejections during their prosecution.

100. Below are some exemplary figures of prior art references that I reviewed.

KR10-1315166 (Kang)

WO 2011/012969 (De Pasquale) D544,065 (Baker)

45
Case 5:23-cv-00297-FL Document 21 Filed 06/28/23 Page 48 of 50
 D739, 555 (McAlister)

101. The references I reviewed do not disclose design elements creating an overall visual

appearance that is at all similar to the one claimed in the Shibumi Design Patents resulting in

differences that an ordinary observer would most certainly notice. In other words, the impact of

the initial impression on an ordinary observer would be to view these designs as being very

different such that they are not anticipated by the prior art.

102. Because in my opinion there are numerous important differences between the

claimed design and the prior art discussed, there is no appropriate primary reference having

basically the same visual impression as the claimed designs. Further, a designer of ordinary skill

in the art would not have modified any prior art reference to create a design that has the same

overall visual appearance as the Shibumi Design Patents. Thus, the prior art does not render the

Shibumi Design Patents obvious.

103. Further, to the extent these references are determined to be relevant prior art, it is

my opinion that the relevant prior art varies significantly in overall visual appearance from the

claimed designs in the Shibumi Design Patents such that an ordinary observer familiar with the

prior art would view the design of the Beach Shade Cordless and the designs claimed in the

46
Case 5:23-cv-00297-FL Document 21 Filed 06/28/23 Page 49 of 50
Shibumi Design Patents to be substantially the same despite certain minor variations in details and

overall visual appearance present in the Beach Shade Cordless as discussed in detail above.

104. Further, as discussed in Section XII.A above, I have reviewed the Barnes

Declaration and supporting materials. It is clear from the information presented in that Declaration

that Shibumi’s intellectual property associated with the Shibumi beach shade, including the

Shibumi Design Patents, has experienced tremendous success in the market, satisfied a long-felt

and unmet need that others had tried and failed to satisfy, achieved unexpected results been copied

by others, and been praised by others in the field. It is my opinion that there is a nexus between

the design claimed in the Shibumi Design Patents and these facts. Therefore, these additional

considerations further support a finding of non-obviousness with respect to the Shibumi Design

Patents.

105. It is therefore my opinion that Beach Shade cannot carry its burden to show by clear

and convincing evidence that the Shibumi Design Patents are invalid. Thus, Shibumi has a high

likelihood of success with respect to its claim for infringement of the Shibumi Design Patents.

I declare under penalty of perjury that the foregoing is true and correct.

Dated: June 28, 2023 _______________________

Stephen Melamed, FIDSA

47
Case 5:23-cv-00297-FL Document 21 Filed 06/28/23 Page 50 of 50