DCT
1:24-cv-08860
Hangzhou Right Play Kids Product Co Ltd v. Progressive Intl Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Hangzhou Right Play Kids Products Co., Ltd. (People's Republic of China)
- Defendant: Progressive International Corp. (Delaware)
- Plaintiff’s Counsel: Cross-Border Counselor LLP
- Case Identification: 1:24-cv-08860, N.D. Ill., 09/25/2024
- Venue Allegations: Plaintiff alleges venue is proper because Defendant transacts business in the district and previously asserted the patent-in-suit in the same district.
- Core Dispute: Plaintiff seeks a declaratory judgment that its collapsible storage bins do not infringe Defendant’s patent on collapsible kitchenware and/or that the patent is invalid, following Defendant’s successful request to have Plaintiff’s products delisted from Amazon.com.
- Technical Context: The technology concerns collapsible containers, such as bowls and colanders, designed with a combination of rigid and flexible materials to be stable when expanded but compact for storage.
- Key Procedural History: The action was precipitated by Defendant's patent infringement complaint submitted to Amazon, which resulted in the delisting of Plaintiff's products. The complaint notes that Defendant previously litigated the same patent in the Northern District of Illinois in 2011, a fact used to support personal jurisdiction allegations.
Case Timeline
| Date | Event |
|---|---|
| 2007-02-20 | Earliest Priority Date ('271 Patent) |
| 2010-03-16 | Issue Date ('271 Patent) |
| 2011-03-07 | Prior litigation on '271 Patent filed by Progressive in N.D. Ill. |
| 2024-06-04 | Amazon notifies Plaintiff of product delisting |
| 2024-09-25 | Complaint for Declaratory Judgment Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,678,271 - "Collapsible colander and bowl"
- Patent Identification: U.S. Patent No. 7,678,271, "Collapsible colander and bowl," issued March 16, 2010.
The Invention Explained
- Problem Addressed: The patent addresses the difficulty of storing large kitchen items like bowls and colanders. It notes that prior collapsible containers were often made of a single, relatively stiff material, making them hard to collapse, or were made of entirely flexible material, rendering them unstable and not self-supporting when placed on a surface (’271 Patent, col. 1:17-36).
- The Patented Solution: The invention is a container constructed from three distinct parts: a "substantially rigid rim," a "substantially rigid base," and a "flexible membrane" connecting them (’271 Patent, col. 5:64-6:1). This composite structure is designed to allow the container to collapse easily for storage while remaining stable and "fully self-supporting" when expanded for use (’271 Patent, col. 1:32-36). The flexible membrane incorporates specific "living hinges"—areas designed to be more susceptible to folding—to control the collapse (’271 Patent, col. 5:14-23).
- Technical Importance: The claimed design sought to provide a practical balance between the flexibility needed for compact storage and the structural integrity required for use, a key usability challenge for collapsible housewares (’271 Patent, col. 1:22-36).
Key Claims at a Glance
- The complaint seeks a declaration of non-infringement of "any claim" of the patent (’271 Patent, Compl. ¶18). Independent claim 1 is representative.
- Independent Claim 1 elements:
- A substantially rigid rim.
- A substantially rigid base.
- A flexible membrane connecting the rim and base.
- The membrane has "no more than two living hinges."
- The two living hinges are positioned to divide the container's height into "three portions of substantially equal length."
- The container is configurable in an expanded position and a fully collapsed position, where it is folded "only [at] the first living hinge and the second living hinge."
III. The Accused Instrumentality
Product Identification
- The complaint identifies "Right Play's Accused Products" as "collapsable storage bins" sold on Amazon.com under several Amazon Standard Identification Numbers (ASINs), including B0CG647P4J and B0CG636M43 (Compl. ¶14, ¶16).
Functionality and Market Context
- The products are described as collapsible storage bins available in various sizes (Compl. ¶16). The complaint includes a side-view photograph showing one of the accused products in its expanded state, illustrating a container with a wide upper rim, a smaller base, and a flexible, multi-tiered sidewall that allows for collapse (Compl. ¶17, Fig. 1). Another image shows the products from above in their expanded state (Compl. ¶17, Fig. 2).
- The complaint alleges that the delisting of these products from Amazon has caused "significant financial loss," suggesting their commercial importance to the Plaintiff (Compl. ¶12).
IV. Analysis of Infringement Allegations
The complaint is for declaratory judgment of non-infringement and does not contain a detailed infringement theory from the patent holder (Progressive). Instead, the Plaintiff (Right Play) makes a general assertion that its products "lack one or more of the elements of the claims" (Compl. ¶18). The following table outlines the elements of claim 1 and describes the corresponding features of the accused product as depicted in the complaint, which Right Play contends do not infringe.
'271 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a collapsible container, comprising: a substantially rigid rim; a substantially rigid base; and a flexible membrane having an upper end secured to the rim and a lower end secured to the base... | The accused products are collapsible bins composed of a rim, a base, and a flexible sidewall, as shown in the provided photographs (Compl. ¶17, Fig. 1). | ¶16, ¶17 | col. 5:64 - 6:11 |
| ...the flexible membrane having... no more than two living hinges, the living hinges comprising a first living hinge adjacent the lower edge of the rim, and a second living hinge adjacent upper edge of the base... | The flexible sidewall of the accused product appears to have two distinct folds or tiers between the rim and the base (Compl. ¶17, Fig. 1). The complaint asserts these features do not meet the "living hinges" limitation as claimed (Compl. ¶18). | ¶17, ¶18 | col. 6:12 - 6:19 |
| ...the first and second living hinges being positioned to divide the height into three portions of substantially equal length, including a first portion between the highest point on the rim and the first living hinge, a second portion between the first living hinge and the second living hinge, and a third portion between the second living hinge and the lower surface of the foundation... | The visual depiction of the accused product shows three vertical sections: one near the rim, a middle section, and one near the base (Compl. ¶17, Fig. 1). The complaint denies that these sections are of "substantially equal length" as required by the claim (Compl. ¶18). | ¶17, ¶18 | col. 6:20 - 6:29 |
| whereby the container is configurable in either a first position in which the container is expanded and a second position in which the container is fully collapsed, the container in the fully collapsed position being folded at only the first living hinge and the second living hinge... | The accused products are described as "collapsable" (Compl. ¶16). The complaint denies that the structure and method of collapse infringe the patent's claims (Compl. ¶18). | ¶16, ¶18 | col. 6:30 - 6:38 |
Identified Points of Contention
- Scope Questions: A central dispute will likely involve the construction of "living hinge." The question is whether the folding mechanisms of the accused products, as depicted in Figure 1 of the complaint, fall within the patent's definition of a "living hinge," which is described in the specification as potentially being a region of "thinner material" (’271 Patent, col. 5:14-23).
- Technical Questions: A key factual question is whether the three vertical portions of the accused products are of "substantially equal length." This limitation is highly specific and quantitative, and its resolution may depend on expert measurement and testimony comparing the product's dimensions to the claim language. The complaint provides no data on this point, leaving it as a central open question.
V. Key Claim Terms for Construction
The Term: "living hinge"
- Context and Importance: This term is central to the claimed structure. Infringement will depend on whether the folds in the accused product's flexible wall constitute "living hinges" as defined by the patent. Practitioners may focus on this term because the patent provides a specific structural basis for it, which may be narrower than a generic "fold."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent states that folding sections can be fashioned in multiple ways "to urge the membrane to fold," such as by being scored or having surrounding thickened regions, which could support a construction that is not limited to a single manufacturing method (’271 Patent, col. 3:45-48).
- Evidence for a Narrower Interpretation: The specification discloses that in the "preferred embodiment," the living hinge is formed by "a thinner section of material," suggesting a specific structural characteristic (’271 Patent, col. 5:18-20). This could support a narrower definition that the accused products may not meet.
The Term: "substantially equal length"
- Context and Importance: This term of degree defines the proportional relationship between the three vertical sections of the container. A narrow interpretation would make infringement harder to prove, while a broad one would make it easier. The visual evidence in the complaint (Fig. 1) suggests the sections may not be perfectly equal, making the scope of "substantially" critical.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification uses the term "approximately the same in magnitude," which may suggest that some deviation from perfect equality is contemplated (’271 Patent, col. 5:41-42).
- Evidence for a Narrower Interpretation: The same passage explicitly connects this approximation to "dividing the container into thirds," which implies a geometric relationship that is close to a 1:1:1 ratio (’271 Patent, col. 5:42-43). The patent's Figure 17 also depicts three vertical lengths—l1, l2, and l3—that appear visually similar, reinforcing a stricter interpretation.
VI. Other Allegations
- Invalidity: The complaint includes a count for a declaratory judgment of invalidity, alleging that the claims of the '271 Patent are invalid under 35 U.S.C. §§ 102 (novelty), 103 (non-obviousness), and/or 112 (written description/enablement), but provides no specific factual basis or prior art references to support these allegations (Compl. ¶20).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of claim construction and technical comparison: Does the term "living hinge," as defined by the patent's specification, read on the folding structure of the accused products? This will likely require a detailed analysis of both the patent's language and the physical construction of the accused bins.
- A key evidentiary question will be one of dimensional compliance: Do the accused products meet the "substantially equal length" limitation for the three vertical portions of the container? The resolution of this issue may turn on expert analysis and the degree of variance permitted by the term "substantially."
- A third question, raised by the invalidity count, will be the validity of the patent itself: Given the state of the art in collapsible containers at the time of the invention, is the specific combination of a rigid rim, a rigid base, and a flexible membrane with precisely two hinges dividing the height into thirds a non-obvious design? The plaintiff has not yet provided evidence, but this remains a fundamental issue for the court.