Saxx v. Rhone Apparel — Men’s Underwear Patent Dispute Dismissed With Prejudice
Saxx US Acquisition, Inc. brought a patent infringement action against activewear brand Rhone Apparel, Inc. in the Southern District of New York, asserting US7958571B2 — a patent covering a men’s underwear garment design. The case resolved in 298 days via a joint stipulation of dismissal with prejudice, with each party bearing its own legal costs.
Mutual dismissal with prejudice in men’s performance underwear IP dispute
On 21 April 2023, Saxx US Acquisition, Inc. filed a patent infringement action against Rhone Apparel, Inc. in the United States District Court for the Southern District of New York (Case No. 1:23-cv-03388), presided over by Chief Judge Dale E. Ho. The suit asserted US7958571B2, a patent directed at a men’s underwear garment construction, against Rhone Apparel’s competing underwear products. Saxx was represented by Perkins Coie LLP, while Rhone retained Nelson Mullins Riley & Scarborough LLP.
The case closed on 13 February 2024 — 298 days after filing — when both parties executed a joint stipulation of dismissal with prejudice under Federal Rule of Civil Procedure 41(a)(1)(A)(ii). Under the stipulation, Saxx dismissed all claims and potential claims with prejudice, and Rhone dismissed all actual or potential counterclaims with prejudice, specifically insofar as they relate to the accused underwear products. Each party agreed to bear its own costs and attorneys’ fees.
Resolution in under ten months, without a reported trial or summary judgment ruling, is consistent with a negotiated settlement or a commercial resolution reached outside the formal record. The with-prejudice structure — applied symmetrically to both claims and counterclaims — suggests the parties reached a degree of finality that satisfied both sides. The public record does not disclose any licensing agreement, royalty arrangement, or product design concession, leaving the precise commercial terms unknown.
Filing to dismissal in 298 days
298 days — resolved inside the median SDNY patent case duration
Stipulated dismissal with prejudice — what it means for both parties
FRCP 41(a)(1)(A)(ii) — Stipulated joint dismissal
Rule 41(a)(1)(A)(ii) allows parties to dismiss an action without court approval by filing a signed stipulation. Here, both Saxx and Rhone jointly signed the dismissal, making it effective upon filing. This mechanism is commonly used when parties have reached a private resolution and wish to close the docket cleanly, without memorialising commercial terms in a public court order.
Consensual — no court ruling requiredWith prejudice bars Saxx from refiling on same accused products
A dismissal with prejudice operates as a final adjudication on the merits, preventing Saxx from reasserting the same patent claims against Rhone’s accused underwear products in any future action. Critically, the stipulation extends this bar symmetrically: Rhone’s potential counterclaims — which could include invalidity or non-infringement declarations — are also dismissed with prejudice as to the accused products, giving Saxx reciprocal finality.
Bars refiling — both sides boundEach party bears own costs — no fee-shifting under § 285
The stipulation expressly allocates costs and attorneys’ fees to each party respectively. This is a departure from a § 285 ‘exceptional case’ fee award, which would require court findings of bad faith or objectively unreasonable conduct. The mutual cost-bearing arrangement is typical of commercially negotiated resolutions and suggests neither party conceded liability in the course of settlement discussions.
No § 285 fee awardDismissal scoped to accused underwear products only
The counterclaim dismissal is explicitly limited to claims ‘insofar as they relate to the accused underwear products in this case.’ This product-specific scoping is notable: it suggests Rhone’s potential counterclaims — for example, a broader invalidity challenge to US7958571B2 — may not be fully extinguished as to other product contexts. Patent practitioners should note this boundary when assessing residual risk from the patent.
Product-scoped finalityFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | Saxx US Acquisition, Inc. | Company | Apparel IP holding company — asserting US7958571B2 (men’s underwear garment patent)Search in Eureka ↗ |
| Defendant | Rhone Apparel, Inc. | Company | Rhone Apparel, Inc. — premium men’s performance and activewear brandSearch in Eureka ↗ |
| Plaintiff counsel | Gene W. Lee | Attorney | Counsel for Saxx US Acquisition, Inc.Search in Eureka ↗ |
| Defendant counsel | Ashley Boland Summer | Attorney | Counsel for Rhone Apparel, Inc.Search in Eureka ↗ |
| Presiding judge | Judge Dale E. Ho | Chief Judge | New York Southern District Court — Chief JudgeSearch in Eureka ↗ |
Stipulation of dismissal — official text
The stipulation is tightly drafted: it applies the with-prejudice bar specifically to claims ‘relating to the accused underwear products,’ not to the patent at large. This scoping means US7958571B2 remains valid and enforceable against other potential infringers, and Saxx retains full rights to assert it in future actions against different parties or different products. Rhone, for its part, obtains certainty against further Saxx claims on the products in dispute, but the dismissal does not constitute a court finding of non-infringement or invalidity.
US7958571B2 — Men’s Underwear Garment Construction Patent
US7958571B2 (application number US12/000966) is a United States utility patent directed at a men’s underwear garment. The patent covers structural or functional aspects of the garment construction — commonly associated in this category with internal support structures, pouch configurations, or ergonomic design elements intended to improve fit and comfort for male wearers. The patent’s application number and grant history place it within a competitive wave of functional innerwear patents that emerged as performance apparel brands differentiated through garment engineering rather than fabric alone.
In the men’s activewear segment, functional underwear construction patents carry significant commercial weight: they protect the core product differentiation of direct-to-consumer brands whose value proposition rests on fit technology rather than brand heritage. Saxx’s decision to assert this patent against Rhone — a premium DTC competitor — is consistent with a strategy of using IP to defend market position in a crowded category. Any brand developing men’s underwear with internal structural features should treat this patent as a material freedom-to-operate reference point.
Should your product team run an FTO check against US7958571B2?
Any company designing or sourcing men’s underwear garments with functional construction features — particularly internal support structures, ergonomic shaping, or pouch systems — should evaluate US7958571B2 before commercial launch. The Saxx v. Rhone action demonstrates that this patent has been asserted in active litigation, confirming it is a live enforcement asset, not a dormant registration. Brands entering the performance underwear market, or expanding existing lines, face non-trivial assertion risk if their garment architecture overlaps with the patent’s claims.
PatSnap Eureka’s FTO Search Agent can map your product’s structural features against the claim language of US7958571B2, identify prior art that may bear on validity, and flag continuation applications in the same family that could extend coverage. Ongoing claim monitoring through Eureka ensures your team receives alerts if new continuation claims publish that could bring previously cleared products back into scope — a critical capability in a category where claim families evolve over time.
Run a freedom-to-operate analysis on US7958571B2 to assess your product’s exposure
Run FTO in Eureka →Similar patent infringement cases in men’s apparel and garment construction
PatSnap Eureka tracks related litigation across truck body equipment, vehicle accessories, and comparable infringement actions in the Georgia district system.
What this case signals for the performance apparel IP landscape
Saxx’s assertion of a garment construction patent against a direct-to-consumer activewear brand reflects an active enforcement posture in men’s performance apparel.
Performance underwear patents are being actively enforced in US courts
Saxx’s willingness to litigate US7958571B2 in the SDNY signals that functional garment construction patents — not just brand trademarks — are now litigation-grade IP assets in the men’s activewear segment. Brands building in this category should conduct proactive FTO analysis before launching new underwear styles, particularly those incorporating internal support or pouch structures.
Bilateral with-prejudice dismissals often conceal commercial resolutions
The symmetrical with-prejudice structure — extinguishing both infringement claims and validity counterclaims as to the accused products — is a hallmark of negotiated resolution. This pattern typically signals that the parties reached a private commercial arrangement, such as a cross-licence, royalty agreement, or product redesign commitment, none of which are publicly disclosed.
Saxx v Rhone — key questions answered
The case was dismissed with prejudice by joint stipulation under FRCP 41(a)(1)(A)(ii) on 13 February 2024, 298 days after filing. Both Saxx’s infringement claims and Rhone’s potential counterclaims were dismissed with prejudice as to the accused underwear products. Each party bears its own costs and attorneys’ fees.
Saxx US Acquisition asserted US7958571B2 (application no. US12/000966), a patent directed at a men’s underwear garment construction, against Rhone Apparel’s competing underwear products. The patent covers functional or structural aspects of underwear design for male wearers.
A dismissal with prejudice is a final adjudication on the merits. It prevents Saxx from refiling the same patent infringement claims against Rhone’s accused underwear products in any future proceeding. Rhone’s potential counterclaims — including any invalidity challenge — are likewise dismissed with prejudice insofar as they relate to the accused products, providing mutual finality.
The stipulation dismissed Rhone’s counterclaims ‘insofar as they relate to the accused underwear products in this case.’ This product-specific language suggests the parties intended to preserve some residual optionality outside the specific accused product scope, rather than extinguishing all potential future claims regarding US7958571B2 across all possible contexts.
The case lasted 298 days from filing (21 April 2023) to closure (13 February 2024). This is a relatively swift resolution for patent litigation in the Southern District of New York, where cases frequently extend beyond 18–24 months through claim construction and trial. Resolution in under ten months is consistent with early-stage settlement or commercial negotiation prior to significant discovery expenditure.
PatSnap Eureka searches patents and litigation data to answer instantly.