DCT
1:24-cv-21128
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: 1:24-cv-21128, S.D. Fla., 08/21/2024
- Venue Allegations: Venue is alleged to be proper because Defendants have committed acts of patent infringement in the Southern District of Florida and conduct substantial business there, including directing business activities and selling infringing products to consumers within the district.
- Core Dispute: Plaintiff alleges that numerous e-commerce operators' sales of collapsible containers infringe two of its design patents.
- Technical Context: The dispute concerns the ornamental design of consumer products in the reusable and portable container market, where aesthetic appearance is a significant driver of consumer choice.
- Key Procedural History: U.S. Patent No. D1,002,386 is a divisional of the application that matured into U.S. Patent No. D935,892. The complaint is filed against a group of unnamed defendants, identified on a sealed Schedule A, who are alleged to be interrelated e-commerce operators.
Case Timeline
| Date | Event |
|---|---|
| 2019-11-07 | Priority Date for ’892 and ’386 Patents |
| 2021-11-16 | ’892 Patent Issue Date |
| 2023-10-24 | ’386 Patent Issue Date |
| 2024-08-21 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D1,002,386 - "Collapsible Container," issued October 24, 2023
The Invention Explained
- Problem Addressed: Design patents protect ornamentation rather than solving a technical problem. The patent secures the rights to a specific aesthetic appearance for an article of manufacture (D1,002,386 Patent, Title).
- The Patented Solution: The patent claims the ornamental design for a collapsible container. The design features a generally cylindrical body with a distinctive surface pattern composed of intersecting diagonal and horizontal crease lines, creating an array of triangular and quadrilateral facets (D1,002,386 Patent, FIGs. 1-3). The broken lines depicting the container's top opening indicate that this portion is not part of the claimed design (D1,002,386 Patent, Description).
- Technical Importance: The design provides a unique, geometric aesthetic to a functional item, which may serve as a source identifier and a point of market differentiation (Compl. ¶14).
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a collapsible container, as shown and described" (D1,002,386 Patent, Claim).
- The essential elements of the design as depicted in the figures include:
- A container body of a particular proportion.
- A specific surface ornamentation comprising a repeating pattern of intersecting crease lines.
- The overall visual impression created by the combination of the container's form and its surface geometry.
U.S. Design Patent No. D935,892 - "Collapsible Container," issued November 16, 2021
The Invention Explained
- Problem Addressed: Like the ’386 Patent, the ’892 Patent protects the ornamental appearance of a product, not a functional solution (D935,892 Patent, Title).
- The Patented Solution: The patent claims the ornamental design for a collapsible container, which appears visually identical to the design in the related ’386 Patent. The design consists of a cylindrical container body defined by a geometric pattern of intersecting crease lines (D935,892 Patent, FIGs. 1-3). As with the ’386 Patent, the broken-line illustration of the container's top opening is excluded from the claimed design (D935,892 Patent, Description).
- Technical Importance: The design provides a distinct visual identity for a collapsible container in the consumer marketplace (Compl. ¶¶ 14, 20).
Key Claims at a Glance
- The patent asserts a single claim for "The ornamental design for a collapsible container, as shown and described" (D935,892 Patent, Claim).
- The claimed design is defined by the visual characteristics shown in the drawings, including:
- The overall shape and proportions of the container.
- The specific arrangement and appearance of the geometric surface pattern.
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are "unauthorized and unlicensed products" described as "Infringing Products," specifically collapsible water bottles (Compl. ¶¶ 1-2).
Functionality and Market Context
The complaint alleges that the accused products are "inferior imitations" of Plaintiff's genuine "DiFOLD Products" sold by Defendants through various "Defendant Internet Stores" on platforms like eBay (Compl. ¶¶ 4, 42). The complaint alleges that Defendants design their online stores to appear to be selling genuine DiFOLD products and use identical images to market the accused products (Compl. ¶¶ 23, 43). The complaint includes a composite image showing twelve examples of accused products, such as "DOE 8" which depicts a bottle in both extended and collapsed states (Compl. p. 10).
IV. Analysis of Infringement Allegations
The complaint asserts that the accused products are "substantially the same" as the patented designs and that an ordinary observer would be deceived (Compl. ¶49). The complaint provides a side-by-side comparison, placing figures from the patents next to a screenshot of an eBay listing for an accused product (Compl. p. 12).
D1,002,386 Infringement Allegations
| Claim Element (from Single Claim) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a collapsible container, as shown and described. | The accused products are collapsible containers that allegedly embody a design substantially the same as the patented design, including a similar cylindrical shape and a geometric surface pattern of intersecting crease lines, creating a visual appearance likely to deceive an ordinary observer. | ¶¶ 48-49, p. 12 | [See CLAIM and FIGs. 1-3] |
D935,892 Infringement Allegations
| Claim Element (from Single Claim) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a collapsible container, as shown and described. | The accused products are collapsible containers that allegedly embody a design substantially the same as the patented design, including a similar cylindrical shape and a geometric surface pattern of intersecting crease lines, creating a visual appearance likely to deceive an ordinary observer. | ¶¶ 48-49, p. 12 | [See CLAIM and FIGs. 1-3] |
Identified Points of Contention
- Factual Question (Ordinary Observer Test): The central dispute will be whether an ordinary observer, giving such attention as a purchaser usually gives, would be induced to purchase an accused product supposing it to be the patented design. The analysis will compare the overall ornamental appearance of the accused products with the designs claimed in the ’386 and ’892 patents.
- Scope Questions: A potential issue may be the effect of any minor differences between the accused products and the patent figures, such as slight variations in the proportions or the angles of the crease lines. The question for the court will be whether such differences are sufficient to change the overall visual impression so as to avoid infringement.
V. Key Claim Terms for Construction
In design patent litigation, formal claim construction of specific terms is uncommon, as the claim is understood to be the design itself as depicted in the drawings. The court's "construction" is typically a verbal description of the claimed design.
- The Term: "collapsible container"
- Context and Importance: This phrase from the patent title and claim defines the article of manufacture to which the ornamental design is applied. Its construction is important for defining the scope of the prior art that an ordinary observer is presumed to have been aware of when comparing the patented and accused designs.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term "container" itself is broad. The complaint refers to Plaintiff as a supplier of "foldable water bottles and other containers," suggesting the design could be applied to a category of goods beyond just bottles (Compl. ¶14).
- Evidence for a Narrower Interpretation: The figures in both patents consistently depict a specific, bottle-like object with a narrow opening, suggesting the design is intended for an article with this particular form factor (D1,002,386 Patent, FIGs. 1-3; D935,892 Patent, FIGs. 1-3).
VI. Other Allegations
- Indirect Infringement: The complaint makes conclusory allegations of indirect infringement and prays for relief against inducing or contributing to infringement (Compl. ¶48; p. 13, ¶¶1.b, 1.d). However, it does not plead specific facts detailing how any Defendant caused a third party (e.g., a customer or another seller) to directly infringe.
- Willful Infringement: Willfulness is alleged based on Defendants having "knowingly and willfully" used the patented designs (Compl. ¶¶ 39, 50). The complaint supports this by alleging that Defendants operate online stores designed to mimic authorized sellers and use images of Plaintiff's products to sell "inferior imitations," which suggests deliberate copying of the commercial embodiment of the patented designs (Compl. ¶¶ 4, 43).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of visual similarity: Applying the ordinary observer test, is the overall ornamental appearance of the accused containers substantially the same as the designs claimed in the ’386 and ’892 patents, or are there sufficient visual differences to avoid a finding of infringement?
- A second key question will be one of intent and damages: Can the Plaintiff produce sufficient evidence to demonstrate that the Defendants' alleged infringement was willful, which would be critical for a potential award of enhanced damages under 35 U.S.C. § 284 or a recovery of the Defendants' total profits under 35 U.S.C. § 289?
- A foundational procedural question for the litigation is one of enforceability: Given that the Defendants are identified as a diffuse group of foreign-based e-commerce entities operating under concealed identities, will the Plaintiff be able to successfully establish personal jurisdiction and ultimately enforce any judgment that may be rendered?