1:25-cv-20514
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: 1:25-cv-20514, S.D. Fla., 02/04/2025
- Venue Allegations: Venue is asserted based on Defendants allegedly committing acts of patent infringement in the district, such as offering to sell and shipping products to consumers in Florida, and conducting substantial business within the district through online marketplace platforms.
- Core Dispute: Plaintiff alleges that numerous unidentified e-commerce store operators are selling collapsible containers that infringe two of Plaintiff's U.S. design patents.
- Technical Context: The technology relates to collapsible containers, such as water bottles, a consumer product category where unique ornamental design serves as a significant market differentiator.
- Key Procedural History: U.S. Patent No. D1,002,386 is a divisional of the application that resulted in U.S. Patent No. D935,892. The complaint is brought against a group of currently unidentified defendants, whose identities are listed on a "Schedule A" that the Plaintiff intends to file under seal, a procedural approach common in actions targeting large networks of online sellers.
Case Timeline
| Date | Event |
|---|---|
| 2019-11-07 | Priority Date for D935,892 Patent |
| 2019-11-07 | Priority Date for D1,002,386 Patent |
| 2021-11-16 | U.S. Patent No. D935,892 Issued |
| 2023-10-24 | U.S. Patent No. D1,002,386 Issued |
| 2025-02-04 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D935,892 - "Collapsible container"
- Patent Identification: U.S. Patent No. D935,892, "Collapsible container," issued November 16, 2021.
The Invention Explained
- Problem Addressed: Design patents protect the ornamental appearance of an article of manufacture rather than a technical problem. The complaint indicates Plaintiff is a supplier of "unique foldable water bottles" (Compl. ¶14), suggesting the goal was to create a novel and distinctive visual appearance for such a product.
- The Patented Solution: The patent claims the ornamental design for a container, characterized by a generally cylindrical body featuring a repeating pattern of intersecting diagonal crease lines that form triangular and diamond-shaped facets (D935,892 Patent, FIG. 1, 2). The figures show the design from perspective, front, and side views, establishing its three-dimensional appearance (D935,892 Patent, Description). The broken lines depicting the container's cap and opening indicate these elements are not part of the claimed design (D935,892 Patent, Description).
- Technical Importance: The design provides a distinct and recognizable aesthetic for a consumer product in a competitive market (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" (D935,892 Patent, Claim).
- The claimed design consists of the visual ornamental characteristics embodied in the drawings, including the container's overall proportions and the specific pattern of surface faceting created by the intersecting lines.
U.S. Design Patent No. D1,002,386 - "Collapsible container"
- Patent Identification: U.S. Patent No. D1,002,386, "Collapsible container," issued October 24, 2023.
The Invention Explained
- Problem Addressed: As with the parent ’892 Patent, this patent protects the ornamental appearance of a container.
- The Patented Solution: The ’386 Patent claims a nearly identical ornamental design for a collapsible container, featuring the same overall form and pattern of intersecting diagonal crease lines as the ’892 Patent (D1,002,386 Patent, FIG. 1, 2). A subtle distinction is the use of stippling (shading) on only certain facets of the container, creating a visual contrast between textured and un-textured surfaces that is not explicitly shown in the ’892 Patent's figures (D1,002,386 Patent, FIG. 1). As with the parent patent, the cap and opening are disclaimed via broken lines (D1,002,386 Patent, Description).
- Technical Importance: The design provides an alternative aesthetic to the related ’892 Patent, potentially broadening the scope of DiFOLD's design protection for its product line (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 claimed design encompasses the visual elements shown in solid lines in the drawings, including the container's shape, crease pattern, and the contrasting surface textures.
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are "unauthorized and unlicensed products" described as collapsible water bottles and containers (the "Infringing Products") (Compl. ¶1, ¶2). These products are allegedly sold through numerous "Defendant Internet Stores" on e-commerce sites including Amazon, Alibaba, AliExpress, eBay, Shein, Temu, and Walmart (Compl. ¶3, ¶21).
Functionality and Market Context
The complaint alleges that Defendants sell "inferior imitations" of Plaintiff's genuine products (Compl. ¶4). An image of an exemplary infringing product listing shows a "Collapsible Water Bottles Leakproof Valve ReusableSilicone Foldable" product offered for sale (Compl. p. 11). This product listing shows a pink, collapsible silicone bottle with a design visually similar to the patented designs (Compl. p. 11). The complaint alleges that the success of Plaintiff's DiFOLD Products, which embody the patented designs, has led to this infringement (Compl. ¶17, ¶20).
IV. Analysis of Infringement Allegations
The complaint asserts that the accused products are "substantially the same" as the patented designs. Instead of a traditional claim chart, the infringement theory is presented through a visual comparison.
DiFOLD Patents Infringement Allegations
| Claimed Design Feature (from D935,892 & D1,002,386 Patents) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a collapsible container, as shown and described. | The complaint alleges infringement by providing images of accused products offered for sale online that appear to embody the patented design. The complaint presents figures from the patents and images of the accused products to support its infringement claim. An exemplary listing for an accused product shows a collapsible bottle with a body defined by a pattern of intersecting diagonal crease lines. | ¶43; p. 11 | D935,892, FIG. 1; D1,002,386, FIG. 1 |
Identified Points of Contention
- Visual Similarity: The central question for design patent infringement is whether an ordinary observer, giving the attention a purchaser usually gives, would be deceived into purchasing the accused product believing it to be the patented design. The court will compare the overall visual impression of the accused products, as shown in evidence like the online store screenshot (Compl. p. 11), with the claimed designs in the ’892 and ’386 patents.
- Scope Questions: The analysis may focus on whether any minor differences in proportion, color, material, or the appearance of the disclaimed cap between the accused products and the patent drawings are sufficient to avoid a finding of infringement in the eye of an ordinary observer.
V. Key Claim Terms for Construction
In design patent cases, the "claim" is understood to be the visual representation in the drawings, not a set of text-based limitations. Claim construction is therefore focused on determining the scope of the claimed design as a whole.
- The "Term": The overall ornamental design for a "collapsible container."
- Context and Importance: The construction will define the scope of the protected design. The critical inquiry is what visual elements constitute the patented design and how they are distinguished from purely functional aspects. Practitioners may focus on this issue because the separation of ornamental and functional features is a common battleground in design patent litigation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that the core of the design is the general visual impression of a cylindrical container with an intersecting diagonal crease pattern, and that the claim should not be limited to the exact angles or number of facets shown. The patent title, "Collapsible container," supports this broader categorization (’892 Patent, (54)).
- Evidence for a Narrower Interpretation: A party could argue the claim is precisely limited to the specific proportions, curvatures, and facet arrangement depicted in the drawings. The description explicitly states that "The broken lines are for illustrative purposes only and form no part of the claimed design," which narrows the claim's scope by excluding the cap and opening from the protected design and focusing the infringement analysis entirely on the container's body (’892 Patent, Description).
VI. Other Allegations
- Indirect Infringement: The complaint makes a general allegation of indirect infringement (Compl. ¶42) and seeks to enjoin those "aiding, abetting, contributing to, or otherwise assisting anyone in infringing" (Compl., Prayer ¶1.d). However, the complaint does not plead specific facts to support the elements of induced or contributory infringement, such as knowledge of the patents and specific intent to encourage infringement by third parties.
- Willful Infringement: The complaint alleges that "Defendants' activities constitute willful patent infringement" and that they have "knowingly and willfully used" the patents (Compl. ¶39, ¶44). The factual basis for this allegation appears to rest on the general assertion that Defendants operate a large, deceptive network of online stores designed to appear as legitimate retailers (Compl. ¶23, ¶28). The complaint does not allege specific facts demonstrating Defendants' pre-suit knowledge of the DiFOLD patents.
VII. Analyst’s Conclusion: Key Questions for the Case
A core issue will be one of visual identity: From the perspective of an ordinary observer of collapsible water bottles, is the overall ornamental design of the accused products "substantially the same" as the designs claimed in the ’892 and ’386 patents? The outcome will depend on a holistic comparison rather than a dissection of minor differences.
A significant procedural question will be one of enforcement: Given that the Defendants are alleged to be a large and diffuse network of foreign online sellers who conceal their identities (Compl. ¶6, ¶18, ¶28), a central challenge for the Plaintiff will be the effective identification, service, and enforcement of any potential judgment or injunction against these entities.
The case raises a key question on remedies: If infringement is found, the court will need to determine the applicability and scope of 35 U.S.C. § 289, which permits the patent owner to recover the infringer’s total profit from the sale of the articles of manufacture bearing the infringing design. Calculating and collecting these profits from numerous, potentially anonymous online sellers will present a substantial evidentiary challenge.