Difold Inc v. Individuals Corps Ltd

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Difold Inc. (Delaware, with a principal place of business in Bulgaria)
  • 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-61997, S.D. Fla., 02/05/2025
• Venue Allegations: Plaintiff alleges venue is proper because Defendants have committed acts of patent infringement and conduct substantial business in the Southern District of Florida, including by targeting and selling products to consumers within the district.
• Core Dispute: Plaintiff alleges that Defendants’ e-commerce sales of collapsible water bottles infringe two U.S. design patents covering the ornamental appearance of such bottles.
• Technical Context: The dispute concerns the ornamental design of consumer goods, specifically reusable and portable beverage containers that feature a collapsible structure for storage.
• Key Procedural History: The complaint does not reference any prior litigation, licensing history, or post-grant proceedings involving the patents-in-suit.

Case Timeline

Date	Event
2019-11-07	Earliest Patent Priority Date ('892 and '386 Patents)
2021-11-16	U.S. Patent No. D935,892 Issued
2023-10-24	U.S. Patent No. D1,002,386 Issued
2025-02-05	Complaint Filed

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

U.S. Design Patent No. D935,892 - "Collapsible container," Issued November 16, 2021 (’892 Patent)

The Invention Explained

• Problem Addressed: Design patents protect ornamental appearance rather than functional utility. As such, the patent does not describe a technical problem but instead claims a novel ornamental design for an article of manufacture. (’892 Patent, Claim).
• The Patented Solution: The patent claims a specific ornamental design for a collapsible container. The design's primary visual features, depicted in the patent's figures, include a cylindrical body divided into segments by horizontal creases and a distinctive pattern of intersecting diagonal creases within these segments, which creates a repeating diamond-like aesthetic on the container's surface. (’892 Patent, Figs. 1-3).
• Design Importance: The claimed design provides a unique visual identity for what is otherwise a functional product, serving to distinguish the container from other products in the competitive market for reusable water bottles. (Compl. ¶13).

Key Claims at a Glance

• The single claim is for "The ornamental design for a collapsible container, as shown and described." (’892 Patent, Claim).
• Key ornamental features of the claimed design include:
  • A generally cylindrical container body with a slightly tapered neck section.
  • A series of horizontal creases that divide the container body into multiple collapsible segments.
  • A pattern of intersecting diagonal creases within each segment.
  • The combination of these features creates an overall visual impression of a textured, geometric, and collapsible structure.

U.S. Design Patent No. D1,002,386 - "Collapsible container," Issued October 24, 2023 (’386 Patent)

The Invention Explained

• Problem Addressed: Similar to the ’892 Patent, the ’386 Patent claims a new, original, and ornamental design for an article of manufacture rather than addressing a technical problem. (’386 Patent, Claim).
• The Patented Solution: The patent claims an ornamental design for a collapsible container that is visually similar to the design of the ’892 Patent. The solution is embodied in the specific visual appearance of the container, which is characterized by its overall shape and the particular arrangement of horizontal and diagonal crease lines shown in the figures. (’386 Patent, Figs. 1-3).
• Design Importance: This design also provides a distinct visual appearance intended to differentiate the product in the consumer marketplace. (Compl. ¶13).

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 ornamental features comprising the design are visually related to those of the ’892 Patent and include:
  • A cylindrical container body.
  • Horizontal creases defining collapsible sections.
  • Intersecting diagonal creases on the surface of the body.

III. The Accused Instrumentality

Product Identification

The accused products are identified as "Collapsible Water Bottles Leakproof Lid Food-Grade BPA-Free Silicone Water Bottles for Travel" sold through Defendants' online stores. (Compl. ¶2; p. 10).

Functionality and Market Context

The complaint alleges the accused products are "inferior imitations" of Plaintiff's DiFOLD Products that are sold through various online marketplaces, including Walmart. (Compl. ¶¶4, 10a). The complaint provides a screenshot of an online product listing for the accused bottles, which are depicted as collapsible silicone containers for travel. (Compl. p. 10). Plaintiff alleges these products are sold through "Defendant Internet Stores" designed to appear as if they are authorized retailers. (Compl. ¶22).

IV. Analysis of Infringement Allegations

The infringement test for a design patent is whether an "ordinary observer," familiar with the prior art designs, would be deceived into believing the accused product is the same as the patented design. The complaint alleges infringement by presenting visual comparisons.

The complaint includes a side-by-side visual comparison of figures from the patents and an image of an accused product. (Compl. ¶39, p. 9). Another visual is a screenshot from an online store showing the accused product, which the complaint titles "Exemplary Infringing Products Sold on Defendant Internet Store." (Compl. p. 10).

'892 Patent and '386 Patent Infringement Allegations

Since the designs of both patents are visually similar and the allegations are parallel, the analysis is combined. The infringement allegation rests on the substantial similarity of the overall visual appearance.

Key Ornamental Feature (from Patented Design)	Alleged Infringing Functionality (from Accused Product)	Complaint Citation	Patent Citation
A generally cylindrical container body with a slightly tapered neck and distinct collapsible segments.	The accused product is a generally cylindrical collapsible container with a similar overall shape and segmented body.	¶39; pp. 9-10	'892 Patent, Fig. 1
A repeating surface pattern created by intersecting diagonal crease lines within each segment.	The accused product displays a surface pattern of intersecting diagonal lines that creates a substantially similar visual impression.	¶39; pp. 9-10	'892 Patent, Fig. 2
The overall ornamental appearance resulting from the combination of shape, proportions, and surface pattern.	The accused product's overall appearance is alleged to be a "colorable imitation" of the patented designs.	¶38; Prayer ¶1a	'386 Patent, Fig.1

• Identified Points of Contention:
  • Scope Questions: The central question will be whether the overall visual impression of the accused product is "substantially the same" as the patented designs in the eyes of an ordinary observer. Any analysis will need to account for potential minor differences in proportions, cap design, or surface textures that may distinguish the accused product from the patent figures.
  • Technical Questions: A potential issue is the extent to which the claimed design features, such as the crease patterns, are dictated by the container's function of collapsing. While design patents protect ornamental features, features dictated solely by function are not protected. The dispute may raise the question of whether the specific aesthetic implementation of the creases is ornamental, even if the existence of creases is functional.

V. Key Claim Terms for Construction

Analysis of design patent infringement does not involve the construction of claim terms in the same manner as utility patents. Instead, the inquiry focuses on the overall ornamental appearance of the claimed design and whether it is substantially similar to the accused product from the perspective of an ordinary observer. Therefore, no specific claim terms are identified for construction.

VI. Other Allegations

• Indirect Infringement: The complaint makes a passing allegation of direct "and/or" indirect infringement, and the prayer for relief requests an injunction against "inducing, or enabling others to sell" infringing products. (Compl. ¶38; Prayer ¶1.b). However, the complaint does not plead specific facts to support the knowledge and intent elements required for a claim of induced or contributory infringement.
• Willful Infringement: The complaint alleges that Defendants' infringement was "knowing[] and willful[]," which could support a claim for enhanced damages. (Compl. ¶¶35, 40). The basis for this allegation appears to be the contention that Defendants operate online stores selling "inferior imitations" and take steps to conceal their identities. (Compl. ¶¶4, 5, 27). The complaint does not allege that Defendants had pre-suit knowledge of the specific patents-in-suit.

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

The resolution of this dispute will likely depend on the answers to two central questions:

1. Similarity of Overall Impression: The core issue is one of visual comparison: Would an ordinary observer, giving such attention as a purchaser usually gives, find the overall aesthetic appearance of the accused collapsible bottles to be substantially the same as the designs shown in the '892 and '386 patents, such that the observer would be deceived into purchasing the accused product?
2. Ornamentality vs. Functionality: A key legal question may be the extent to which the distinctive crease patterns are ornamental versus functional. While the function of a bottle is to hold liquid and the function of the creases is to allow it to collapse, the court may need to determine whether the specific artistic and geometric arrangement of those creases is a matter of protectable ornamental design or is instead dictated solely by its utilitarian purpose.