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-21632, S.D. Fla., 04/09/2025
• Venue Allegations: Plaintiff alleges venue is proper because Defendants have committed acts of patent infringement in the Southern District of Florida and do substantial business in the district, including by offering to sell and shipping infringing products to consumers in the district through online marketplace platforms.
• Core Dispute: Plaintiff alleges that numerous e-commerce store operators are selling and importing unauthorized "collapsible water bottles" that infringe the ornamental designs of two of Plaintiff's U.S. design patents.
• Technical Context: The dispute centers on the ornamental design of consumer products, specifically collapsible containers like water bottles, a market where unique aesthetic appearance can be a significant driver of consumer choice.
• Key Procedural History: The complaint is a "Schedule A" action, targeting a collective of largely anonymous online sellers, a common strategy for combating widespread infringement on e-commerce platforms. Plaintiff has filed a motion to seal the list of defendants. U.S. Patent No. D1,002,386 is a divisional of the application that led to U.S. Patent No. D935,892.

Case Timeline

Date	Event
2019-11-07	Earliest Priority Date for '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
2025-04-09	Complaint Filed

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

U.S. Design Patent No. D935,892 - “Collapsible Container,” Issued November 16, 2021

The Invention Explained

This patent does not claim a functional invention but rather the specific ornamental design for a "collapsible container" (Compl., Ex. 1; '892 Patent). The design features a generally cylindrical body composed of segments defined by a pattern of intersecting diagonal and horizontal crease lines ('892 Patent, FIG. 1-3). The visual effect is a geometric, faceted surface that suggests the object's collapsibility. The design includes a contrasting stippled texture on certain facets, creating a distinct visual pattern ('892 Patent, FIG. 1). The patent disclaims the broken-line portions, indicating that the cap and opening are not part of the claimed design ('892 Patent, Description).

Asserted Claims

The complaint asserts the single claim of the '892 Patent, which covers the ornamental design for a collapsible container as shown and described in the patent's figures (Compl. ¶42; '892 Patent, Claim).

U.S. Design Patent No. D1,002,386 - “Collapsible Container,” Issued October 24, 2023

The Invention Explained

This patent claims an ornamental design for a "collapsible container" that is visually related to the '892 Patent (Compl., Ex. 1; '386 Patent). The design features a similar cylindrical body with intersecting diagonal crease lines that create a faceted, collapsible appearance ('386 Patent, FIG. 1-2). A key difference from the '892 patent is the pattern of the stippled surface texturing; in the '386 design, the stippling is applied to a different set of facets, creating an alternative visual pattern ('386 Patent, FIG. 1). As with the parent patent, broken lines showing the container's cap and opening are for illustrative purposes and are not part of the claimed design ('386 Patent, Description).

Asserted Claims

The complaint asserts the single claim of the '386 Patent, which covers the ornamental design for a collapsible container as shown and described in the patent's figures (Compl. ¶42; '386 Patent, Claim).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are "unauthorized and unlicensed products," specifically "Collapsible Water Bottle" products, sold by the Defendants through online marketplace accounts on platforms like Amazon, eBay, Shein, Temu, and Walmart (Compl. ¶¶1, 3, 21).

Functionality and Market Context

The complaint alleges these are "inferior imitations" of Plaintiff's DiFOLD Products (Compl. ¶4). The accused products are collapsible water bottles made of silicone, designed to be compressed for travel (Compl. p. 11). The complaint provides a screenshot from an Amazon product listing as an example of an "Infringing Product" (Compl. p. 11). This product listing describes the bottle as a "Convenient Travel Companion" that can be "compressed to up to 1/5 of their original size" (Compl. p. 11). Plaintiff alleges that Defendants design their online stores to appear as if they are selling genuine DiFOLD products, thereby trading on Plaintiff's reputation (Compl. ¶¶4, 23).

IV. Analysis of Infringement Allegations

The complaint does not provide a formal claim chart. Instead, it asserts that an ordinary observer would find the designs of the accused products to be substantially the same as the designs claimed in the patents. The core of the infringement allegation is presented through a visual comparison.

The complaint provides a side-by-side comparison of figures from the patents and an image of an accused product (Compl. p. 10). The image of the "Infringing Product" on page 11 of the complaint shows a collapsible bottle with a pattern of intersecting diagonal crease lines on its body, which Plaintiff alleges is a "colorable imitation" of the patented designs (Compl. ¶43, Prayer for Relief ¶1.a). The complaint asserts that Defendants' products embody the designs depicted in the patents and that this visual similarity is likely to cause confusion, mistake, and deception among consumers (Compl. ¶¶2, 40). The infringement test for design patents centers on whether an ordinary observer, familiar with the prior art, would be deceived into purchasing the accused product believing it to be the patented one. The provided images are intended to support this conclusion.

• Identified Points of Contention:
  • Visual Similarity: The central question will be whether the overall ornamental appearance of the accused products is substantially the same as the claimed designs in the '892 and '386 Patents. The court will compare the visual impression of the accused products' crease patterns and overall shape with the designs depicted in the patent figures.
  • Ordinary Observer Perspective: The dispute will focus on the perspective of the ordinary observer. Defendants may argue that differences in the specific angles of the creases, the proportions of the segments, or other subtle visual features are significant enough that an ordinary observer would not be confused. Plaintiff will argue these are minor variations that do not change the overall visual impression.

V. Key Claim Terms for Construction

In design patent litigation, there are no traditional claim terms to construe as in a utility patent case. The "claim" is the design itself, and its scope is defined by the solid lines in the patent drawings.

• The "Claim": The ornamental design for a "collapsible container" as depicted in the figures of the '892 and '386 Patents.
• Context and Importance: The scope of the claim is defined entirely by the visual representations in the patent figures. The analysis will not involve defining words but rather interpreting the visual scope of the drawings. The key legal determination is how closely an accused product must resemble the drawings to infringe.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patents claim the overall ornamental design. A court may find that the design's general visual impression—a cylindrical, faceted body with a geometric pattern of intersecting diagonal creases—is the dominant feature, allowing the claim to cover products with minor variations that retain this overall look.
  • Evidence for a Narrower Interpretation: The scope is limited by the specific visual details shown in solid lines. The precise number, arrangement, and curvature of the lines, as well as the specific pattern of surface texturing shown in each patent, define the boundaries of the claim. The broken lines showing the cap and opening explicitly disclaim those features from the patent's scope, meaning infringement cannot be based on similarities in the cap design ('892 Patent, Description; '386 Patent, Description).

VI. Other Allegations

• Indirect Infringement: The complaint includes a general allegation of direct and indirect infringement (Compl. ¶42). However, it does not plead specific facts to support a claim for induced or contributory infringement, such as knowledge of the patents and specific intent to encourage infringement by others. The prayer for relief seeks to enjoin Defendants from inducing or enabling others to infringe (Prayer for Relief ¶1.b).
• Willful Infringement: Plaintiff alleges that Defendants' infringement was and is willful (Compl. ¶44). The factual basis for this allegation appears to be the assertion that Defendants are selling "inferior imitations" and designing their online stores to mimic authorized retailers, suggesting an intent to copy Plaintiff's successful commercial products which embody the patented designs (Compl. ¶¶4, 23).

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

1. A question of deceptive similarity: The central issue is whether an ordinary observer, giving such attention as a purchaser usually gives, would be induced to purchase one of the Defendants' collapsible bottles supposing it to be the DiFOLD product embodying the patented designs. The case will depend heavily on a visual comparison between the accused products and the patent figures.
2. A question of scope: Will the court view the core of the patented design as the general concept of a faceted, collapsible bottle, or will it limit the scope to the very specific line work and texture patterns shown in the '892 and '386 patents? How a court defines the "overall visual impression" will be critical to the outcome.
3. An evidentiary and procedural question: Given the "Schedule A" nature of the case against numerous foreign online sellers, a key challenge for the Plaintiff will be effectuating service, establishing jurisdiction, and obtaining meaningful discovery and enforcement against the largely anonymous Defendants.