Difold Inc v. Individuals Corps Ltd

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Difold Inc. (Delaware)
  • Defendant: The Individuals, Corporations, Limited Liability Companies, Partnerships, and Unincorporated Associations Identified on Schedule A
  • Plaintiff’s Counsel: Boies Schiller Flexner LLP
• Case Identification: 0:24-cv-61292, S.D. Fla., 07/19/2024
• Venue Allegations: Venue is based on allegations that Defendants conduct substantial business in the district and have committed acts of patent infringement, including offering to sell and shipping infringing products to consumers in Florida.
• Core Dispute: Plaintiff alleges that numerous e-commerce store operators are selling and importing unauthorized collapsible water bottles that infringe the ornamental designs claimed in two of Plaintiff's U.S. design patents.
• Technical Context: The case concerns the market for reusable, portable beverage containers, specifically collapsible water bottles whose design is intended to be both functional and aesthetically distinctive.
• Key Procedural History: The complaint asserts U.S. Patent No. D1,002,386, which is a divisional of the application that matured into the co-asserted U.S. Patent No. D935,892, indicating the designs share a common origin. The suit targets a group of defendants listed on a sealed Schedule A, a common procedural approach in actions against large networks of online sellers alleged to be counterfeiters.

Case Timeline

Date	Event
2019-11-07	Priority Date for ’892 and ’386 Patents
2021-11-16	’892 Patent Issued
2023-10-24	’386 Patent Issued
2024-07-19	Complaint Filing Date

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

U.S. Patent No. D935,892 - "Collapsible container"

• Patent Identification: U.S. Design Patent No. D935,892 (the "’892 Patent"), titled "Collapsible container", issued on November 16, 2021.

The Invention Explained

• Problem Addressed: As a design patent, the '892 Patent does not contain a background section describing a specific technical problem. The implicit goal is to provide a new, original, and ornamental design for an article of manufacture (Compl., Ex. 1, '892 Patent at p. 1).
• The Patented Solution: The patent claims the unique ornamental appearance of a collapsible container. The design consists of a generally cylindrical body featuring a distinct pattern of intersecting diagonal lines that create collapsing segments. The entire surface of the container body is shown with stippling, indicating a uniform texture, and the top section has an asymmetrical shape leading to a spout and cap area, which are depicted in broken lines and are not part of the claimed design ('892 Patent, FIGS. 1-3, Description). The image of Plaintiff's DiFOLD product shows the design in both an expanded and a collapsed state (Compl. ¶15).
• Technical Importance: The complaint asserts that Plaintiff is a "leading supplier and manufacturer of unique foldable water bottles," suggesting the patented design is a key aspect of its product identity and market position (Compl. ¶14).

Key Claims at a Glance

• The single claim is for "The ornamental design for a collapsible container, as shown and described" ('892 Patent, Claim).
• The key ornamental features "as shown" include:
  • A cylindrical body.
  • A repeating pattern of intersecting diagonal lines forming creases.
  • An asymmetrical upper portion.
  • A stippled surface texture across the body.
• The patent explicitly states that "The broken lines are for illustrative purposes only and form no part of the claimed design" ('892 Patent, Description).

U.S. Patent No. D1,002,386 - "Collapsible container"

• Patent Identification: U.S. Design Patent No. D1,002,386 (the "’386 Patent"), titled "Collapsible container", issued on October 24, 2023.

The Invention Explained

• Problem Addressed: Similar to the '892 Patent, the '386 Patent protects an ornamental design and does not articulate a technical problem.
• The Patented Solution: The '386 Patent claims an ornamental design for a collapsible container that is visually very similar to the design in the '892 Patent. It features the same cylindrical shape, intersecting diagonal crease lines, and asymmetrical top. The primary visual distinction is the surface treatment; the '386 Patent shows the body panels as unadorned (unshaded and without stippling), while a specific portion of the asymmetrical top is shaded ('386 Patent, FIGS. 1-3). This suggests the '386 Patent protects a variation of the design that focuses on form and line pattern without a specific surface texture.
• Technical Importance: As a divisional of the application for the '892 Patent, this design shares the same commercial context and is part of Plaintiff's asserted portfolio for its "unique foldable water bottles" (Compl. ¶14; '386 Patent, p. 1).

Key Claims at a Glance

• The single claim is for "The ornamental design for a collapsible container, as shown and described" ('386 Patent, Claim).
• The key ornamental features "as shown" are nearly identical in form to the '892 Patent, but differ in surface appearance:
  • A cylindrical body.
  • A repeating pattern of intersecting diagonal lines.
  • An asymmetrical upper portion, with shading on one segment.
  • An unadorned surface on the main body panels.
• This patent also disclaims the elements shown in broken lines, stating they "form no part of the claimed design" ('386 Patent, Description).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are "unauthorized and unlicensed products" described as "Infringing Products" that are sold through the "Defendant Internet Stores" on e-commerce sites like Alibaba, AliExpress, Amazon, and Temu (Compl. ¶1, ¶21). A specific example provided is a "600ml Silicone Sports Drink Water Bottle Bpa-free Collapsible Foldable Drinking Water Bottle" offered for sale on Alibaba.com (Compl., p. 11).

Functionality and Market Context

The accused products are collapsible water bottles made of silicone (Compl., p. 11). The complaint alleges they are "inferior imitations" of Plaintiff's genuine "DiFOLD Products" and are marketed in a way that makes it "very difficult for consumers to distinguish such infringement sites from an authorized website" (Compl. ¶4, ¶24). An image from an Alibaba.com listing shows an accused green silicone bottle, its packaging, and various color options, indicating it is a commercially available product (Compl., p. 11).

IV. Analysis of Infringement Allegations

The complaint alleges that the accused products embody the ornamental designs of both the '892 and '386 Patents. The core of the allegation is presented visually, with side-by-side comparisons of the patent figures and images of an accused product. A composite image compares figures from the patents directly with an accused product (Compl. ¶43, p. 10).

'892 Patent Infringement Allegations

Claimed Ornamental Feature (from FIGS. 1-3)	Alleged Infringing Feature	Complaint Citation	Patent Citation
The overall visual impression of the ornamental design for a collapsible container.	The accused product sold on Defendant Internet Stores allegedly creates the same overall visual impression, sufficient to deceive an ordinary observer.	¶43, p. 11	FIGS. 1-3
A generally cylindrical body with a pattern of intersecting diagonal score lines that define foldable segments.	The accused product incorporates a visually identical pattern of intersecting diagonal score lines on its cylindrical body.	¶43, p. 10-11	FIGS. 1-2
An asymmetrical upper portion located below the disclaimed cap area.	The accused product displays the same asymmetrical shape at its upper portion.	¶43, p. 10-11	FIGS. 1, 3
A uniform stippled surface texture covering the body of the container.	The complaint's photographic evidence depicts a product with a matte silicone finish that may be perceived by an observer as similar to the claimed stippled texture.	¶43, p. 11	FIGS. 1-3

'386 Patent Infringement Allegations

Claimed Ornamental Feature (from FIGS. 1-3)	Alleged Infringing Feature	Complaint Citation	Patent Citation
The overall visual impression of the ornamental design for a collapsible container, focusing on line-work and form.	The accused product allegedly embodies the overall shape, proportions, and line-work of the claimed design.	¶43, p. 10-11	FIGS. 1-3
A pattern of intersecting diagonal lines on a surface that is otherwise unadorned.	The accused product's design is defined by its crease pattern on smooth-appearing panels, consistent with the '386 Patent’s focus on form over texture.	¶43, p. 10-11	FIGS. 1-2
A shaded surface on one part of the asymmetrical top element.	The lighting in the photograph of the accused product creates shadows that an observer might perceive as corresponding to the shaded portion of the claimed design.	¶43, p. 11	FIGS. 1, 3

Identified Points of Contention:

• The Ordinary Observer Test: The central issue will be whether an ordinary observer, giving the attention a typical purchaser would, would find the accused products "substantially the same" as the patented designs. The analysis will depend heavily on the visual evidence presented.
• Scope and Distinction: A question may arise as to whether the accused products infringe both patents, which differ primarily in their claimed surface treatment (stippled vs. unadorned). The court may need to consider if the design of the accused products is close enough to embody both claimed variations or is closer to one than the other.

V. Key Claim Terms for Construction

In design patent cases, claim construction focuses on the scope of the claimed design as a whole, rather than on discrete text-based terms.

• The "Term": The scope of the claimed "ornamental design" as defined by the solid lines in the patent figures.
• Context and Importance: The most critical aspect for construction is the distinction between what is claimed (solid lines) and what is not (broken lines). Practitioners may focus on this distinction because the patents disclaim the cap and spout area ('892 Patent, Description; '386 Patent, Description). This clarification is central to the infringement analysis, as it means the design of the bottle's body is protected irrespective of the particular cap used on an accused product.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The express disclaimer of the cap and spout via broken lines supports a construction where the claim covers any collapsible container embodying the patented body design, regardless of the cap configuration. This allows the patent to cover products with a variety of different closures.
  • Evidence for a Narrower Interpretation: A defendant could argue that the claim scope is limited to designs that replicate the exact proportions, line angles, and surface features (stippling for the '892 patent) shown in the solid-line drawings. Any deviation in these details could be argued to place an accused product outside the scope of the claim.

VI. Other Allegations

• Indirect Infringement: The complaint makes a general allegation of direct and/or indirect infringement (Compl. ¶42) and seeks to enjoin aiding and abetting (Compl. ¶48.d). However, the pleading does not set forth a detailed factual basis for either induced or contributory infringement, focusing instead on Defendants' direct acts of making, using, selling, and importing.
• Willful Infringement: Plaintiff alleges that Defendants have "knowingly and willfully used" the DiFOLD patents (Compl. ¶39, ¶44). The basis for this allegation appears to be the general assertion that Defendants operate as counterfeiters, creating stores that are "very difficult for consumers to distinguish" from authorized sites (Compl. ¶24). The complaint does not allege specific facts demonstrating Defendants' pre-suit knowledge of the '892 or '386 patents themselves.

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

• A core issue will be one of visual comparison: Applying the ordinary observer test, is the overall ornamental appearance of the accused collapsible bottles substantially the same as the specific designs claimed in the ’892 and ’386 patents? The case will likely depend on a side-by-side visual analysis by the fact-finder.
• A secondary question involves claim scope and differentiation: Given that the two patents claim designs differing primarily in surface treatment (stippled vs. unadorned), a key issue may be whether the accused products, with their matte silicone finish, are similar enough to infringe the claims of both patents, or if their appearance is demonstrably closer to one design over the other.
• Finally, a central procedural and enforcement challenge will be the viability of obtaining and enforcing relief against a large, diffuse, and allegedly foreign-based group of sellers identified only on a sealed schedule, which is a characteristic feature of modern e-commerce patent enforcement actions.