HBI Branded Apparel v. Stateside Merchants — Dismissed With Prejudice After 441 Days
HBI Branded Apparel Enterprises filed suit in the Central District of California against Stateside Merchants alleging infringement of two patents covering underwear support element design and construction. The parties reached a stipulated dismissal with prejudice after 441 days, with each side bearing its own fees and costs.
Underwear IP battle ends in stipulated dismissal — no merits ruling
HBI Branded Apparel Enterprises, LLC — the IP holding vehicle behind major innerwear brands — filed this infringement action on December 15, 2023 in the Central District of California against Stateside Merchants, LLC. The complaint asserted two patents: design patent USD0894530S covering the ornamental appearance of a lower torso garment with a support element, and utility patent US10986877B2 directed to the support element construction itself. The products at issue were lower torso garments and their integrated support elements.
The case closed on February 28, 2025 via a court order granting the parties’ joint stipulation to dismiss the action with prejudice in its entirety. A dismissal with prejudice is a final adjudication on the merits as a matter of law — HBI is permanently barred from reasserting the same patent claims against Stateside Merchants on the same accused products. Critically, the order provided that each party shall bear its own attorneys’ fees and costs, suggesting neither side extracted a clear financial concession from the other.
The 441-day duration before stipulated resolution is notable: the timeline is consistent with early-stage settlement negotiations following initial case management, though the public record does not disclose whether a licence, design-around, product discontinuation, or confidential payment was part of the parties’ arrangement. The mutual fee-bearing term is a common feature of negotiated resolutions and does not, on its own, indicate which party held the stronger legal position. The underlying commercial terms, if any, remain undisclosed.
Filing to Dismissed with Prejudice in 441 days
441 days — above the median for stipulated dismissals in C.D. Cal. patent cases
Stipulated dismissal with prejudice: what the order means for both parties
Dismissal with prejudice forecloses refiling on identical claims
A dismissal with prejudice entered by stipulation operates as a final judgment on the merits under federal procedure. HBI Branded Apparel cannot bring the same patent claims — under USD0894530S or US10986877B2 — against Stateside Merchants for the same accused conduct. This is a permanent bar, distinguishable from a without-prejudice dismissal that would preserve HBI’s right to refile.
Rule 41(a)(1)(A)(ii) stipulated dismissalHBI relinquishes all claims — but public terms remain silent on consideration
By agreeing to dismiss with prejudice, HBI has surrendered its ability to pursue these specific infringement claims against Stateside Merchants. However, dismissals of this type are frequently accompanied by confidential licence agreements, royalty payments, or product discontinuation undertakings that do not appear on the public docket. The absence of a fee award against the defendant does not necessarily indicate HBI received nothing of commercial value.
Commercial terms undisclosedStateside Merchants achieves finality — litigation risk extinguished on these patents
For Stateside Merchants, the with-prejudice dismissal provides certainty: HBI cannot reassert USD0894530S or US10986877B2 against the same accused products under this action. The mutual fee-bearing arrangement avoids any adverse cost order. However, if Stateside continues selling the accused products, HBI retains the right to assert these patents against new acts of infringement through a fresh action, as a with-prejudice dismissal bars re-litigation of past claims, not future conduct.
Future conduct still at riskDesign and utility coverage on innerwear creates layered enforcement risk
HBI’s dual-patent strategy — pairing a design patent on ornamental appearance with a utility patent on functional construction — is a common enforcement tactic in apparel IP that raises the cost and complexity of defence. Competitors and merchants in the innerwear category should note that both aesthetic and functional aspects of garment support elements are actively asserted IP. A design-around must satisfy both patent types simultaneously to eliminate infringement risk.
Layered design + utility enforcementFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | HBI Branded Apparel Enterprises, LLC | Company | Innerwear IP holding entity — holder of USD0894530S and US10986877B2Search in Eureka ↗ |
| Defendant | Stateside Merchants, LLC | Company | Stateside Merchants, LLC — apparel merchant accused of infringing underwear support element patentsSearch in Eureka ↗ |
| Plaintiff counsel | Brendan G. McDermott | Attorney | Counsel for HBI Branded Apparel Enterprises, LLCSearch in Eureka ↗ |
| Plaintiff counsel | Jennifer E. Hoekel | Attorney | Counsel for HBI Branded Apparel Enterprises, LLCSearch in Eureka ↗ |
| Plaintiff counsel | Karen Luong | Attorney | Counsel for HBI Branded Apparel Enterprises, LLCSearch in Eureka ↗ |
| Plaintiff counsel | Matthew M. Kamps | Attorney | Counsel for HBI Branded Apparel Enterprises, LLCSearch in Eureka ↗ |
| Plaintiff law firm | Husch Blackwell LLP | Law Firm | Representing HBI Branded Apparel Enterprises, LLCSearch in Eureka ↗ |
| Defendant counsel | Alexander P Swanson | Attorney | Counsel for Stateside Merchants, LLCSearch in Eureka ↗ |
| Defendant counsel | Cameron Patel | Attorney | Counsel for Stateside Merchants, LLCSearch in Eureka ↗ |
| Defendant counsel | Ronald P. Oines | Attorney | Counsel for Stateside Merchants, LLCSearch in Eureka ↗ |
| Defendant law firm | Rutan & Tucker, LLP | Law Firm | Representing Stateside Merchants, LLCSearch in Eureka ↗ |
| Presiding judge | Judge N/A | Judge | California Central District CourtSearch in Eureka ↗ |
Official order — verbatim text
The court’s order adopts the parties’ stipulation verbatim, providing dismissal with prejudice ‘in its entirety’ — language that sweeps all asserted claims under both patents. The mutual cost-bearing provision is consistent with an arm’s-length negotiated resolution rather than capitulation by either side. Notably, the order is silent on any injunction, royalty, or product undertaking, which are typically embodied in a confidential side agreement. The with-prejudice designation means the order carries res judicata effect for the specific claims and accused conduct at issue.
USD0894530S & US10986877B2 — Underwear Support Element Design and Utility Patents
USD0894530S is a design patent — filed under application US29/734324 — protecting the ornamental appearance of a lower torso garment incorporating a support element. Design patents in the US protect the visual, non-functional characteristics of an article of manufacture and carry a term of 15 years from grant. US10986877B2, filed under application US16/090539, is a utility patent covering the structural and functional aspects of the support element itself — the mechanism by which the garment provides shaping or support to the wearer.
The combination of a design patent on appearance and a utility patent on function is a deliberate IP strategy that significantly complicates competitive design-arounds. For the innerwear sector — where product differentiation often resides in subtle construction details — these patents represent meaningful competitive barriers. Any apparel brand or private-label merchant sourcing or developing lower torso garments with integrated support structures should treat both patents as live enforcement risk, particularly given HBI’s demonstrated willingness to litigate in the Central District of California.
Should you run an FTO against USD0894530S and US10986877B2?
Any brand, retailer, or contract manufacturer developing or sourcing lower torso garments — including underwear, shapewear, or athletic bottoms — with integrated support elements should treat these patents as priority FTO targets. The design patent covers ornamental appearance while the utility patent addresses functional construction, meaning a meaningful clearance analysis must address both layers. Companies currently selling or planning to launch products in this category in the US market face non-trivial infringement exposure if these patents are not specifically cleared.
PatSnap Eureka’s FTO Search Agent can map the full patent family around USD0894530S and US10986877B2 — identifying continuation applications, design patent variants, and related utility filings that may extend HBI’s coverage beyond these two asserted patents. Eureka’s claim-mapping tools allow product and legal teams to compare garment construction features against the asserted claims, supporting faster, evidence-based FTO conclusions without manual prior art trawling.
Run a freedom-to-operate analysis on USD0894530S to assess your product’s exposure
Run FTO in Eureka →Similar Apparel Design & Utility Patent Cases in Federal District Courts
Cases involving concurrent design and utility patent assertions over apparel construction in U.S. district courts, including the Central District of California.
What this case signals for the innerwear and apparel IP landscape
HBI’s dual-patent enforcement strategy in the C.D. Cal. sets a precedent worth tracking for apparel brands and merchants alike.
Stipulated dismissal with prejudice is not a clean defendant win
The with-prejudice term prevents HBI from refiling on these specific claims, but it does not reveal whether Stateside made a commercial concession. Merchants facing similar actions should recognise that the public order rarely reflects the full settlement picture — confidential terms are standard in apparel IP resolutions.
Dual design + utility patent assertions raise the bar for design-arounds
HBI’s use of both a design patent (USD0894530S) and a utility patent (US10986877B2) on the same product category means a competitor must clear both IP layers. A product change that avoids the ornamental design may still infringe the functional support element claims. Apparel brands should run FTO analyses covering both patent types before launching competing products.
HBI v Stateside — key questions answered
The dismissal with prejudice, entered by stipulation on February 28, 2025, permanently bars HBI Branded Apparel from reasserting the same patent claims — under USD0894530S and US10986877B2 — against Stateside Merchants for the same accused conduct. It does not prevent HBI from asserting these patents against other parties or against new infringing acts by Stateside.
HBI asserted two patents: USD0894530S (application US29/734324), a design patent covering the ornamental appearance of a lower torso garment with a support element, and US10986877B2 (application US16/090539), a utility patent directed to the functional support element for underwear and lower torso garments.
HBI Branded Apparel was represented by Husch Blackwell LLP, with attorneys Brendan G. McDermott, Jennifer E. Hoekel, Karen Luong, and Matthew M. Kamps. Stateside Merchants was represented by Rutan & Tucker, LLP, with attorneys Alexander P. Swanson, Cameron Patel, and Ronald P. Oines.
Not necessarily. The order that each party bear its own attorneys’ fees and costs is a standard feature of negotiated resolutions and does not indicate relative bargaining strength. Confidential settlement terms — including any licence, royalty, or product discontinuation undertaking — are not disclosed on the public docket and may reflect a more nuanced outcome for either side.
Under the with-prejudice dismissal, HBI cannot refile the same claims regarding the same accused past conduct. However, if Stateside Merchants continues or resumes selling accused products after the dismissal date, HBI could potentially assert USD0894530S and US10986877B2 in a new action based on those new acts of infringement — the dismissal bars re-litigation of adjudicated claims, not future independent infringement.
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