DCT

1:22-cv-01602

Tee Turtle LLC v. RMS Intl USA Inc

I. Executive Summary and Procedural Information

Parties & Counsel:
- Plaintiff: Tee Turtle, LLC (Missouri)
- Defendant: RMS International (USA), Inc. (Delaware)
- Plaintiff’s Counsel: Dorsey & Whitney (Delaware) LLP
Case Identification: 1:22-cv-01602, D. Del., 12/16/2022
Venue Allegations: Venue is asserted based on Defendant being a Delaware corporation with a registered agent in the district and allegedly marketing infringing products throughout Delaware.
Core Dispute: Plaintiff alleges that Defendant’s "Reversaplushes" line of reversible plush toys infringes one design patent and three utility patents owned by Plaintiff that cover the ornamental appearance and functional mechanics of such toys.
Technical Context: The technology concerns plush toys constructed to be invertible, allowing them to display one of two different appearances, often with contrasting characters or emotional expressions.
Key Procedural History: Plaintiff alleges it sent a cease and desist letter to Defendant in December 2021 regarding two of the patents-in-suit. Following this notice, Defendant allegedly undertook a "re-design" of its products; however, Plaintiff alleges these re-designed products continue to infringe the original patents as well as two subsequently issued patents, for which notice was also provided. The complaint also notes that one of the asserted utility patents, U.S. Patent No. 10,786,746, recently survived a reexamination by the USPTO, which may strengthen its presumption of validity.

Case Timeline

Date	Event
2017-12-20	Priority Date for ’746, ’215, and ’411 Patents
2018-05-31	Priority Date for ’168 Patent
2018-12-18	'168 Patent Issued
2020-09-29	'746 Patent Issued
2021-11-16	'411 Patent Issued
2021-12-27	Cease & Desist Letter sent regarding '168 and '746 Patents
2022-05-24	'215 Patent Issued
2022-08-29	Notice of '215 and '411 Patents sent to Defendant
2022-12-16	Complaint Filed

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

U.S. Design Patent No. D836,168 - "Reversible Plush Toy", Issued December 18, 2018

The Invention Explained

Problem Addressed: Not applicable for design patents, which protect ornamental appearance rather than functional solutions.
The Patented Solution: The patent claims the ornamental design for a reversible plush toy as depicted in its drawing sheets. The claimed design consists of a soft, rounded head-like body with simple facial features, situated atop a base of tentacle-like appendages. The design is shown in two distinct configurations: a first "happy" state (D’168 Patent, FIG. 1-7) and a second "unhappy" state (D’168 Patent, FIG. 8-14), illustrating the toy's reversible nature. The broken lines in the figures indicate aspects of the toy, such as specific facial features and appendage details, that are not part of the claimed design (D’168 Patent, Description).
Technical Importance: Not applicable for design patents.

Key Claims at a Glance

The patent contains a single claim for "the ornamental design for a reversible plush toy, as shown and described" (D’168 Patent, Claim).

U.S. Patent No. 10,786,746 - "Reversible Toy", Issued September 29, 2020

The Invention Explained

Problem Addressed: The patent's background section notes that while convertible toys exist, it is "important to have a toy that can be easily and quickly reversed between positions to present different appearances or configurations" (’746 Patent, col. 1:23-27).
The Patented Solution: The patent describes a reversible toy constructed from first and second material layers that form a sealed cavity filled with a material like soft stuffing (’746 Patent, col. 5:6-9). The toy is reversed by collapsing the body through an opening, which inverts the structure to display the previously internal surface as the new exterior (’746 Patent, col. 6:5-15). A central element is a "retainer" that defines the diameter of this opening. The opening's diameter is specified to be smaller than the maximum diameter of the body, a design choice intended to help the toy "retain a shape" as it is switched between its two states (’746 Patent, col. 6:40-50; FIG. 7).
Technical Importance: This mechanical structure provides a simple and durable method for a plush toy to be inverted while maintaining a consistent overall shape in both configurations, a feature that may be advantageous for mass production and consumer appeal (’746 Patent, col. 3:7-14).

Key Claims at a Glance

The complaint asserts independent claim 1 and reserves the right to assert others (Compl. ¶42).
The essential elements of independent claim 1 include:
- A body with first and second material layers defining a sealed cavity, where the body is reversible between two positions and defines the same exterior shape in both.
- A fill material that occupies the sealed cavity.
- An opening to an interior cavity, through which the body collapses to move between positions.
- A retainer that defines the opening's diameter, which is smaller than the body's maximum diameter.
- The diameter of the retainer and opening remains "substantially constant" as the body switches positions.

U.S. Patent No. 11,338,215 - "Reversible Toy", Issued May 24, 2022

Technology Synopsis: This patent describes a reversible toy comprising a body with two material layers defining a sealed, filled cavity. The invention focuses on the opening, which is defined by a "stitched edge" that also constitutes the "terminal bottom edge" of both material layers. This construction allows the toy to be reversed by collapsing it through the opening while the fill material defines the toy’s shape in both states (’215 Patent, Abstract; Compl. ¶51).
Asserted Claims: Claims 1, 8, and 15 are asserted against the "Re-Designed Reversaplush Products" (Compl. ¶52).
Accused Features: The complaint alleges that the Re-Designed Reversaplush Products practice the claims by having a body with a stitched edge that defines the opening and allows for the claimed method of reversal (Compl. ¶52).

U.S. Patent No. 11,173,411 - "Dual Body Convertible Toy with Flexible Bottom Edge", Issued November 16, 2021

Technology Synopsis: This patent claims a reversible toy where a "retainer" couples the first and second material layers and, critically, defines an "undulating terminal bottom edge" of the toy's body. The claim specifies this undulating edge defines a "sinusoidal edge of the opening," which facilitates the reversal between the toy's two positions (’411 Patent, Abstract; Compl. ¶53).
Asserted Claims: Claims 1, 8, and 15 are asserted against the "Re-Designed Reversaplush Products" (Compl. ¶54).
Accused Features: The complaint alleges that the retainer on the Re-Designed Reversaplush Products creates an "undulating terminal bottom edge," which it contends reads directly on the patent's claims (Compl. ¶54).

III. The Accused Instrumentality

Product Identification

The complaint names Defendant's "Reversaplushes" and subsequent "Re-Designed Reversaplush Products" as the accused instrumentalities (Compl. ¶15, ¶36).

Functionality and Market Context

The accused products are reversible plush toys that can be flipped inside-out to reveal a different design, with advertisements stating, "Double sided design allows you to flip your soft toy to reveal a smile or frown" (Compl. ¶16). The complaint alleges these products are "close cop[ies]" of Plaintiff's popular "Reversible Plushies" and are sold in direct competition through online and retail stores (Compl. ¶15, ¶56). A photograph in the complaint shows the defendant's product being inverted, with an outer layer collapsing inward through a bottom opening (Compl. ¶43, p. 15).

IV. Analysis of Infringement Allegations

D836,168 Infringement Allegations

The complaint alleges that the overall ornamental appearance of the accused Reversaplush products is substantially the same as the claimed design, such that an ordinary observer would be deceived (Compl. ¶31). The complaint provides a side-by-side visual comparison between Defendant's "Reversible Emotions Dog" and figures from the ’168 Patent to support this allegation (Compl. ¶32). A separate visual comparison is provided to allege that the opening or "crevice" of the "Re-Designed Reversaplush" product remains substantially the same as the design shown in the patent's bottom view (Compl. ¶37, FIG. 7).

10,786,746 Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
A body including first and second material layers defining opposing first and second surfaces, the first and second material layers defining a sealed cavity...	The accused products have a body made of first and second material layers that are joined to define a sealed cavity between them.	¶43, p. 13	col. 4:49-54
wherein the body reversible between first and second positions to alternatingly present the first and second surfaces as an outer body surface...the other of the first and second surfaces alternatingly defining a stored body surface...	The product is reversible, with one surface forming the outer body while the other surface is stored inside as an interior cavity. A complaint photograph depicts the accused product partially inverted, showing both the outer surface and the stored inner surface (Compl. ¶43, p. 14).	¶43, p. 14	col. 4:35-45
wherein the exterior of the body defines the same shape in both the first and second positions;	The complaint alleges and provides photographs to show that the product's exterior defines the same overall shape in both its first and second reversed positions.	¶43, p. 14	col. 4:5-9
a fill material occupying the sealed cavity...	The accused products are alleged to contain a fill material that occupies the entire space within the sealed cavity.	¶43, p. 15	col. 5:6-15
an opening to the interior cavity, having a diameter, wherein at least portions of the body collapse through the opening when the body is moved between the first and second positions;	The products have an opening through which the body collapses when it is inverted between its two positions, as shown in a complaint photograph.	¶43, p. 15	col. 6:5-15
a retainer defining the diameter of the opening, the diameter of the opening being smaller than a maximum diameter of the body to retain a shape of the body...	Stitching between the material layers is alleged to act as a retainer, defining the opening's diameter. A complaint photograph with annotations purports to show this opening diameter is smaller than the body's maximum diameter (Compl. ¶43, p. 16).	¶43, p. 16	col. 6:40-50
wherein a diameter of the retainer and the opening remains substantially constant as the body switches between the first and second positions.	The complaint alleges the diameter of the opening and retainer remains substantially constant during reversal.	¶43, p. 16	col. 6:55-59

Identified Points of Contention:
- Scope Questions: The complaint anticipates a dispute over the term "retainer," particularly regarding the "Re-Designed" products. It raises the question of whether a retainer with an "undulating or sinusoidal shape" (Compl. ¶47) falls within the scope of the term as used in the ’746 Patent, which does not explicitly describe such a shape. This suggests a central claim construction dispute.
- Technical Questions: A potential issue is whether the opening of the accused products "remains substantially constant" during reversal, as required by claim 1 of the ’746 Patent. The defense may argue that the material around the opening stretches or deforms, and therefore its diameter is not "substantially constant." Similarly, whether the accused toy defines the "same shape" in both positions could be contested with evidence of minor puckering or deformation.

V. Key Claim Terms for Construction

The Term: "retainer" (from '746 Patent, claim 1)
- Context and Importance: This term is critical because Defendant allegedly modified the opening of its "Re-Designed" products in an attempt to avoid infringement (Compl. ¶46). The complaint argues this modified feature—an "undulating" edge—still functions as a "retainer" (Compl. ¶47). Therefore, the construction of this term will likely be decisive for infringement of the ’746 Patent by the re-designed products.
- Intrinsic Evidence for Interpretation:
  - Evidence for a Broader Interpretation: The specification supports a functional definition, stating a retainer may be "substantially any element or structure operable to set or determine the diameter D of the opening," including simply a "line of stitching" or being "defined by the length of the terminal edges" of the body material (’746 Patent, col. 6:36-47).
  - Evidence for a Narrower Interpretation: The embodiments depicted in the patent's figures (e.g., ’746 Patent, FIG. 3, 7) show a retainer that forms a relatively regular, circular opening. A defendant may argue that the term, in the context of these figures, should be limited to structures that create such a regular shape, and not the "undulating" shape alleged for the re-designed product.
The Term: "the same shape" (from '746 Patent, claim 1)
- Context and Importance: Infringement of this limitation requires that the accused toy's overall form is preserved when it is inverted. Practitioners may focus on this term because even slight differences in the toy's appearance between its two states could form the basis of a non-infringement argument.
- Intrinsic Evidence for Interpretation:
  - Evidence for a Broader Interpretation: The patent's objective is to create two distinct appearances on a single toy (’746 Patent, col. 1:23-27). This context may support an interpretation where "same shape" means the toy retains its general character (e.g., an octopus-like form) rather than being geometrically identical in both states.
  - Evidence for a Narrower Interpretation: The claim language does not include qualifiers like "substantially" or "generally." A defendant could argue this requires a strict, literal interpretation, meaning the dimensions and proportions of the toy in its first position must be identical to those in its second position.

VI. Other Allegations

Indirect Infringement: The complaint includes a general allegation of indirect infringement, but does not provide specific facts to support a theory of either inducement (e.g., instructions encouraging infringement) or contributory infringement (e.g., supplying a non-staple component) (Compl. ¶2).
Willful Infringement: The complaint alleges willful infringement based on Defendant's purported knowledge of the patents. It cites a cease and desist letter from December 27, 2021, as evidence of pre-suit notice for the ’168 and ’746 patents (Compl. ¶34). It further alleges that after receiving this notice, Defendant "deliberately re-designed" its products but continued to infringe, and was subsequently notified of the ’215 and ’411 patents, making ongoing infringement willful (Compl. ¶55).

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

A core issue will be one of claim construction and design-around effectiveness: The case for the "Re-Designed" products will likely depend on whether the term "retainer," as claimed in the ’746 Patent, is broad enough to encompass the "undulating terminal bottom edge" of the accused products, or if Defendant’s re-design was sufficient to take it outside the patent's scope.
A second central question will be one of willfulness and intent: Given the allegation that Defendant was notified of infringement and subsequently "re-designed" its products in a way that Plaintiff alleges still infringes, the court will need to evaluate whether Defendant's conduct was an unsuccessful but good-faith attempt to avoid infringement or constituted objective recklessness.
For the design patent claim, a key question for the fact-finder will be one of visual perception: Does the overall ornamental appearance of Defendant's "Reversaplushes" create an impression that is substantially the same as the D'168 patented design in the eyes of an ordinary observer, leading to potential market confusion?