BROADWAY Pine Brands LLC v. MUSTB Toy Store

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: BROADWAY Pine Brands LLC (Delaware)
  • Defendant: MUSTB TOY STORE, et al. (Alleged foreign jurisdictions)
  • Plaintiff’s Counsel: FERENCE & ASSOCIATES Associates
• Case Identification: 2:21-cv-01736, W.D. Pa., 11/30/2021
• Venue Allegations: Venue is asserted based on allegations that Defendants transact business in and direct infringing activities toward consumers in the judicial district, and that personal jurisdiction is proper over the non-resident Defendants.
• Core Dispute: Plaintiff alleges that Defendants’ toy storage bins, sold through various online marketplaces, infringe a patent related to a storage container with an integrated, retractable play mat.
• Technical Context: The technology addresses the consumer market for children's toy storage, specifically providing an integrated solution to contain small toy parts during play and simplify the cleanup process.
• Key Procedural History: The complaint notes that the patent-in-suit issued after a first office action allowance with the original published claims and no amendments, potentially suggesting a straightforward prosecution history. The Plaintiff alleges that Defendants had actual notice of the patent's claims as of its publication date, over two years before the complaint was filed, which forms the basis of its willfulness allegations.

Case Timeline

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

U.S. Patent No. 11,154,128 - "STORAGE CONTAINER WITH AN INTEGRATED MAT", issued October 26, 2021

The Invention Explained

• Problem Addressed: The patent's background identifies the common problem of toys with numerous small components becoming "scattered and lost" when children dump them onto a floor for play, which can also create injury hazards when parts are stepped on (’128 Patent, col. 1:33-40).
• The Patented Solution: The invention is a combination storage container and play mat. A mat is connected to the opening of a container (e.g., a basket). The mat has a rim around its perimeter containing a drawstring. A user can pour toys from the container onto the deployed mat, where the rim helps contain them. For cleanup, pulling on handles connected to the drawstring transforms the mat into a chute, funneling the toys back into the attached container for storage (’128 Patent, Abstract; col. 5:19-35). Figure 3B illustrates this chute-like transformation, showing a user lifting the mat by handles to slide objects (101) back into the receptacle (102) (’128 Patent, Fig. 3B).
• Technical Importance: The invention provides a single, integrated product designed to "corral" toys during play and automate their collection, aiming to prevent loss and simplify cleanup (’128 Patent, col. 1:41-43).

Key Claims at a Glance

• The complaint asserts at least independent Claim 1 (Compl. ¶49).
• The essential elements of independent Claim 1 include:
  • A "receptacle" for holding objects, having a base, side walls, and an opening with a predefined circumference.
  • An "integrated mat" comprising a top surface, a bottom surface, and four defined ends.
  • A "rim" disposed along the length of three of the mat's ends.
  • A "draw string" configured to run internally along the length of the rim.
  • The mat is "connected to a portion of and along the predefined circumference of the opening" of the receptacle.
• The complaint does not explicitly reserve the right to assert other claims, but its language ("at least one claim") leaves this possibility open (Compl. ¶28).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are "knock-off versions of Plaintiff’s SLIDEAWAY® toy bin," sold by numerous online storefronts under various names (Compl. ¶1; Schedule A).

Functionality and Market Context

• The complaint alleges the accused products are "substantially similar" to Plaintiff's product, functioning as a combination toy storage bin and integrated play mat (Compl. ¶8). Visuals provided in the complaint depict products with a cylindrical fabric bin and an attached circular mat that can be gathered using a drawstring mechanism. For example, a marketing image for an infringing product shows the item used to "Pour Play SlideAway," mirroring the function of Plaintiff's product (Compl. p. 3). Another image shows a product with a 52-inch play mat and a 12-inch tall basket, indicating the product's scale (Compl. p. 13).
• Plaintiff alleges these products are "poorly designed and manufactured" and sold at "significantly below-market prices," which threatens Plaintiff's reputation and goodwill (Compl. ¶3, ¶7b). A visual from the "INFRINGING LISTING OF DEFENDANT OBOWAN8" shows the separate components (bin and mat) and the assembled, functioning product, which supports the allegation that it is a direct copy (Compl. p. 3).

IV. Analysis of Infringement Allegations

The complaint refers to a claim chart in Exhibit 4, which was not filed with the public version of the complaint. The following chart is constructed based on the complaint's narrative allegations, product descriptions, and visual evidence.

'128 Patent Infringement Allegations

Identified Points of Contention

• Scope Questions: Claim 1 requires the mat to be connected "to a portion of and along the predefined circumference of the opening" of the receptacle. The precise nature, extent, and permanence of this connection in the various accused products will likely be a central point of factual dispute. The patent specification contemplates both fixed and removable connections, which may broaden the scope but also create ambiguity for the court to resolve (’128 Patent, col. 4:39-40, col. 5:41-44).
• Technical Questions: Claim 1 recites a specific structure for the mat and rim, including four defined ends (104c-104f). The accused products appear to use a simple circular mat. A potential issue is whether the accused circular mat can be mapped onto the claimed four-ended, "teardrop shaped" embodiment described in the patent, or if there is a fundamental structural mismatch (’128 Patent, col. 4:36-37).

V. Key Claim Terms for Construction

• The Term: "rim"

  • Context and Importance: Claim 1 requires a "rim" disposed along three specific ends of the mat. The functionality of this rim—to form a boundary wall and to house the drawstring—is critical to the invention's cleanup feature. Practitioners may focus on this term because the accused products appear to have a simple circular lip, and the infringement analysis will depend on whether this structure meets the more specific geometric limitations described in the patent.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent describes the purpose of the rim is to "project upward in a way to form a boundary wall" to retain objects, suggesting a functional definition that could cover various shapes of raised edges (’128 Patent, col. 4:46-50).
    • Evidence for a Narrower Interpretation: The claim explicitly ties the rim's location to the "second end (104d), the third end (104e), and the fourth end (104f)" of the mat, and the detailed description primarily illustrates a "teardrop shaped" mat, which could support a narrower construction tied to this specific geometry (’128 Patent, col. 4:36-37, col. 8:14-18).

• The Term: "connected to a portion of and along the predefined circumference"

  • Context and Importance: This phrase defines the physical relationship between the mat and the receptacle, which is the core of the "integrated" product. The case may turn on whether the attachment method used in the accused products falls within the scope of this language.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent itself discloses multiple possibilities, stating the mat can be "fixedly connected" or "removably connected" using mechanisms like a zipper or Velcro, and can be attached to "½ of the length of the circumference or ⅔ of the length... or full length," suggesting the term "connected" is not limited to a single, permanent method or extent (’128 Patent, col. 5:41-44, col. 5:50-55).
    • Evidence for a Narrower Interpretation: Claim 1 links the connection to "the first end (104c) along with the two ends (103c, 103d) of the rim (103)." A defendant could argue this requires a specific interface geometry matching the patent's preferred embodiment, potentially excluding products with a simpler attachment scheme (’128 Patent, col. 8:37-43).

VI. Other Allegations

Indirect Infringement

The complaint alleges contributory infringement and inducement, stating Defendants act "directly or indirectly" (Compl. ¶50). The factual basis appears to rest on allegations that Defendants are selling products whose primary function is to be used in the patented manner and that Defendants are aware of the infringing nature of this use (Compl. ¶29, ¶34).

Willful Infringement

The complaint alleges willful and deliberate infringement (Compl. ¶52). This allegation is primarily based on the claim that Defendants had "actual notice of the publication" of the patent application on November 21, 2019, and continued their infringing activities despite this knowledge (Compl. ¶6, ¶26, ¶48).

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

• A core issue will be one of structural scope: can the claim language describing a "teardrop shaped" mat with four distinct ends and a specifically placed rim be construed to read on the accused products, which appear to utilize a simpler circular mat and lip design? The outcome may depend on whether the court views the claims as tied to the specific geometry of the preferred embodiment or to the broader function of an integrated container and retractable play mat.
• A key evidentiary question will be one of knowledge and willfulness: given the large number of foreign-based, anonymous-seeming defendants, can the Plaintiff produce sufficient evidence to establish that each defendant had the pre-suit knowledge of the patent required to sustain a claim for willful infringement, particularly based on the constructive notice of a published patent application?