DCT

1:23-cv-00745

Flipsi Ltd v. TOMY Intl Inc

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Key Events
Amended Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: Flipsi, Ltd. v. TOMY International, Inc., 1:23-cv-00745, N.D. Ill., 03/23/2023
  • Venue Allegations: Venue is alleged to be proper in the Northern District of Illinois because Defendant resides there, has committed alleged acts of infringement in the district, and maintains a regular and established place of business there.
  • Core Dispute: Plaintiff alleges that Defendant’s line of BOON NURSH baby bottle inserts infringes its design patent for a beverage container insert.
  • Technical Context: The lawsuit concerns the ornamental design of disposable or reusable inserts for baby bottles, a component in the competitive consumer market for infant care products.
  • Key Procedural History: The complaint alleges that in 2016, the parties engaged in collaboration discussions regarding a potential partnership to produce a baby bottle with an insert, governed by a Mutual Confidentiality Agreement. After these discussions ended, Plaintiff alleges Defendant launched the accused product line. Plaintiff also alleges it sent Defendant a notice letter detailing the alleged infringement in September 2020.

Case Timeline

Date Event
2015-09-03 Priority Date for U.S. Patent No. D890,574
2016-10-17 Parties enter into a Mutual Confidentiality Agreement (MCA)
2016-10-27 Parties meet to discuss potential collaboration
2017-03-08 Defendant notifies Plaintiff it is not pursuing collaboration
2018-03-28 Plaintiff allegedly learns of Defendant's accused BOON NURSH line
2020-07-21 U.S. Patent No. D890,574 issues
2020-09-14 Plaintiff sends Defendant notice of alleged infringement
2023-03-23 First Amended Complaint filed

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

U.S. Design Patent No. D890,574 - "Beverage Container Insert"

  • Patent Identification: U.S. Design Patent No. D890,574, "Beverage Container Insert", issued July 21, 2020.

The Invention Explained

  • Problem Addressed: Design patents protect ornamental appearance rather than functional solutions. The implicit goal is to provide a new, original, and ornamental design for an article of manufacture, in this case, a beverage container insert (D'574 Patent, Title).
  • The Patented Solution: The patent claims the specific ornamental design for a "beverage container insert" as depicted in its seven figures (D'574 Patent, Claim, Figs. 1-7). The claimed design, shown in solid lines, features a generally cylindrical, cup-like body with a slight taper, a distinct flared or rolled top lip, and a base with specific recessed geometric features (D'574 Patent, Figs. 1, 7). The patent's description clarifies that the broken lines in the drawings represent unclaimed subject matter or boundaries and form no part of the claimed design (D'574 Patent, Description).
  • Technical Importance: The complaint alleges that Plaintiff's innovative, fully reversible bottle inserts were an "immediate hit" upon their 2016 introduction, suggesting the design resonated in the consumer market (Compl. ¶9).

Key Claims at a Glance

  • Design patents contain a single claim. The asserted claim is: "The ornamental design for a beverage container insert, as shown and described." (D'574 Patent, Claim).
  • The scope of the claim is defined by the visual characteristics depicted in the solid-line drawings of the patent, including:
    • The overall shape and proportions of the insert.
    • The profile of the flared top lip.
    • The slight taper of the cylindrical sidewalls.
    • The specific configuration of recessed shapes on the bottom surface.

III. The Accused Instrumentality

Product Identification

  • The accused products are "Infringing TOMY Bottle Inserts," which include TOMY's "BOON NURSH reusable silicone pouches" and other "substantially similar baby bottle inserts" used throughout TOMY's NURSH product line (Compl. ¶¶19, 23). Specific product numbers are identified, including B11230 and B11231 (Compl. ¶23).

Functionality and Market Context

  • The accused products are flexible silicone inserts designed to be placed inside a baby bottle shell (Compl. ¶23). They function as the primary container for liquid. The complaint alleges these inserts are sold on major online retail platforms like amazon.com and are used in a wide range of TOMY's NURSH-branded products (Compl. ¶23).

IV. Analysis of Infringement Allegations

The central test for design patent infringement is the "ordinary observer" test, which asks whether an ordinary observer, familiar with the prior art, would be deceived into purchasing the accused product thinking it was the patented design. The complaint alleges that the accused inserts have an "overall appearance that is confusingly similar to" and "substantially the same as" the claimed design (Compl. ¶¶ 25, 26).

To support its allegations, the complaint provides a visual comparison of the patented design and two of the accused products. The first visual shows the patent's Figure 1 next to a photograph of the "Infringing TOMY Bottle Inserts (B11230)" (Compl. p. 5). A second, similar visual comparison is provided for the "Infringing TOMY Bottle Inserts (B11231)" (Compl. p. 5).

'574 Patent Infringement Allegations

Claim Element (from the '574 Patent Design) Alleged Infringing Functionality Complaint Citation Patent Citation
The overall ornamental appearance of the beverage container insert. The Infringing TOMY Bottle Inserts are alleged to have an overall appearance that is "confusingly similar" and "substantially the same" as the patented design. ¶¶25, 26 Figs. 1-7
The top lip and sidewall profile of the insert. The complaint specifically alleges that the accused inserts "violate the '574 patent because they have a top lip and sidewall profile that are confusingly similar to the claimed design." ¶25 Figs. 1-5
All aspects of the claimed ornamental design. The complaint alleges that "The Infringing TOMY Bottle Inserts contain each and every aspect of the claimed ornamental design in the '574 patent." ¶24 Figs. 1-7
  • Identified Points of Contention:
    • Scope Questions: A primary issue will be the application of the ordinary observer test. The question for the court will be whether the overall visual impression created by the accused NURSH inserts is substantially the same as the visual impression of the '574 patent's design.
    • Technical Questions: The complaint's infringement theory rests on broad allegations of similarity. A key question will be whether specific differences in proportion, curvature, or features between the accused products and the patent drawings are significant enough to avoid infringement in the eyes of an ordinary observer. The influence of prior art designs, not detailed in the complaint, will be critical in defining the scope of the patent's novelty and what differences matter.

V. Key Claim Terms for Construction

In design patent litigation, formal claim construction is less common than in utility patent cases because the claim's scope is defined by the drawings. The analysis focuses on the overall visual appearance rather than the definition of specific words.

However, a key aspect of interpreting the claim's scope will involve the distinction between the solid and broken lines in the patent's drawings.

  • The Term: The scope of "the ornamental design... as shown and described."
  • Context and Importance: The determination of what is and is not part of the claimed design is fundamental. Practitioners will focus on this because any features of the accused product that correspond to unclaimed portions of the drawings (depicted in broken lines) cannot be a basis for infringement.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim covers the overall visual impression of the design shown in the figures. An argument could be made that minor variations in the accused product do not alter this overall impression.
    • Evidence for a Narrower Interpretation: The patent's description explicitly states, "The ornamental design which is claimed is shown in solid lines... The broken lines in the drawings form no part of the claimed design" (D'574 Patent, Description). This language limits the legally protectable design strictly to the features rendered in solid lines, such as the specific shape of the base and the profile of the lip, and excludes any other aspects.

VI. Other Allegations

  • Willful Infringement: The complaint alleges that Defendant’s infringement has been and continues to be willful (Compl. ¶28). This allegation is based on alleged pre-suit knowledge of the '574 patent. Specifically, Plaintiff claims it sent Defendant a copy of the patent and detailed its infringement allegations in a letter dated September 14, 2020, to which Defendant allegedly did not respond (Compl. ¶27). The complaint also asserts that Defendant was aware of Plaintiff's intellectual property portfolio from collaboration discussions in 2016 (Compl. ¶¶ 14, 16-17).

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

  1. A core issue will be one of visual similarity: Will an ordinary observer, taking into account the prior art, find the overall ornamental design of TOMY's NURSH inserts to be substantially the same as the design claimed in the '574 patent? The resolution will depend on a side-by-side comparison and the perceived importance of any visual differences.
  2. A second key question relates to the impact of prior art: The scope of protection afforded to the '574 patent's design will be heavily dependent on how novel it is compared to earlier baby bottle insert designs. The case may turn on whether the accused product is closer to the prior art than it is to the patented design.
  3. Finally, a central question for damages will be willfulness: Do the complaint's allegations of a prior failed collaboration, followed by the launch of the accused products and an ignored notice letter, constitute the kind of "egregious" conduct that could support a finding of willfulness and lead to enhanced damages if infringement is found?