BROADWAY Pine Brands LLC v. Amtoy Store

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Broadway Pine Brands LLC (Delaware)
  • Defendant: Multiple storefronts and companies as listed in Schedule A (Jurisdictions primarily described as foreign)
  • Plaintiff’s Counsel: Ference & Associates LLC
• Case Identification: 2:22-cv-00358, W.D. Pa., 02/28/2022
• Venue Allegations: Plaintiff alleges venue is proper because Defendants systematically direct business activities to and transact with consumers in Pennsylvania via interactive e-commerce storefronts, ship products into the district, and cause tortious injury within the Commonwealth.
• Core Dispute: Plaintiff alleges that Defendants’ toy storage bins with integrated play mats infringe a patent related to the same technology.
• Technical Context: The technology addresses the common problem of cleaning up and storing toys with numerous small parts, such as building blocks, by combining a storage container and a play mat into a single, user-friendly product.
• Key Procedural History: The complaint alleges that the patent-in-suit issued from an application that was published on November 21, 2019, and that the allowed claims are identical to the published claims. Plaintiff asserts this publication provided Defendants with actual notice of the patent's subject matter prior to its issuance.

Case Timeline

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

U.S. Patent No. 11,154,128 - "Storage container with an integrated mat"

• Patent Identification: U.S. Patent No. 11,154,128, "Storage container with an integrated mat", issued October 26, 2021.

The Invention Explained

• Problem Addressed: The patent describes the problem of toys with many small components becoming scattered, lost, or causing injury when children dump them onto a floor for play, noting that existing containers and mats lack a user-friendly, integrated solution (’128 Patent, col. 1:31-42).
• The Patented Solution: The invention is a storage container, such as a basket, with an attached play mat that can be pulled out and spread on the floor. The mat includes a raised rim and an embedded drawstring. After play, a user can pull on the drawstring handles, which transforms the flat mat into a chute, funneling the toys directly back into the attached container for rapid and contained cleanup (’128 Patent, Abstract; Fig. 3B).
• Technical Importance: The design provides a single, combined product to manage the entire lifecycle of play, from storage to play-space containment to cleanup, thereby preventing the loss of toy parts and simplifying tidiness (’128 Patent, col. 1:38-42).

Key Claims at a Glance

• The complaint asserts independent claim 1 (’128 Patent, col. 7:20-54) and reserves the right to assert other claims (Compl. ¶2).
• The essential elements of independent claim 1 are:
  • A receptacle adapted for holding objects, comprising 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 (first, second, third, and fourth).
  • A rim disposed along the length of the second, third, and fourth ends of the mat.
  • A draw string configured to run internally along the length of the rim.
  • The integrated mat is connected to a portion of the receptacle's opening using its first end and the two ends of the rim.

III. The Accused Instrumentality

Product Identification

• The accused instrumentalities are "knock-off versions of Plaintiff's SLIDEAWAY® toy bin" sold by the numerous Defendants on e-commerce platforms including Amazon.com, Aliexpress.com, and wish.com (Compl. ¶2, ¶3). These are collectively referred to as the "Infringing Products" (Compl. ¶2).

Functionality and Market Context

• The complaint alleges the accused products are toy storage containers with an integrated play mat function, designed to be "the same or substantially similar" to Plaintiff's own product (Compl. ¶8). Visual evidence provided in the complaint depicts the accused products as fabric bins sold with a circular mat that has a peripheral drawstring, allowing it to be cinched closed to contain toys. An image from an online listing for Defendant Amtoy’s product shows a cylindrical basket and a mat with a drawstring being gathered into a bag. (Compl. p. 4). The complaint alleges these products are marketed online to the same consumers as Plaintiff's product, threatening Plaintiff's reputation and goodwill (Compl. ¶4, ¶15).

IV. Analysis of Infringement Allegations

The complaint alleges that physically examined samples of the Infringing Products infringe at least Claim 1 of the ’128 Patent (Compl. ¶43). The allegations are detailed by reference to "Complaint Exhibit 4," a visual chart mapping claim elements to the patented product, and by images of the accused products.

'128 Patent Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: A primary question will be whether the claim term "connected to" requires a permanent physical attachment between the mat and the receptacle. Visuals of the accused products (Compl. p. 4) suggest the mat and bin may be separate components. The patent specification contemplates both "fixedly connected" and "removably connected" embodiments, which may create a focal point for claim construction arguments (’128 Patent, col. 5:39-46).
  • Technical Questions: Claim 1 recites a mat with four distinct "ends" and a rim disposed along three of them, language that appears to describe the teardrop-shaped embodiment in the patent's figures (’128 Patent, Fig. 2A). The accused products are depicted with what appear to be circular mats. This raises the question of whether a circular mat, which lacks distinct "ends" in a geometric sense, can be found to meet this limitation, or if the claim is limited to the specific non-circular geometry disclosed.

V. Key Claim Terms for Construction

• The Term: "integrated mat... connected to a portion of... the receptacle"

• Context and Importance: The interpretation of these terms is central to the infringement analysis. If "integrated" and "connected to" are construed to require a permanent, inseparable physical attachment, the infringement case may be significantly impacted, as the accused products may be sold and used as a two-piece system.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: Plaintiff may argue that "integrated" should be construed functionally, meaning "designed to operate as a single system," rather than structurally. The patent's summary describes the mat as "foldably storable inside the container," which does not explicitly require a permanent physical bond (’128 Patent, col. 2:23-24). The specification also discloses that the mat may be "removably connected" (’128 Patent, col. 5:42-43).
  • Evidence for a Narrower Interpretation: Defendants may argue that the claim's plain language and the patent's primary embodiments point to a physical connection. The specification repeatedly uses phrases like "integrally connected" (col. 4:14) and "fixedly connected" (’128 Patent, col. 4:34-35), and the core function of automatically funneling toys into the receptacle (Fig. 3B) may imply a required connection point.

• The Term: "a rim ... disposed along the length of the second end (104d), the third end (104e), and the fourth end (104f) of the integrated mat (104)"

• Context and Importance: This limitation defines the structure of the drawstring channel. Practitioners may focus on this term because the accused products appear to use simple circular mats, which do not have the distinct "ends" described in the claim and depicted in the patent's teardrop-shaped embodiment.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: Plaintiff may argue that the "ends" language should not be read so literally as to exclude other shapes that achieve the same result, and that it should be interpreted to mean a rim that runs along a majority, but not all, of the mat's periphery to create the chute function.
  • Evidence for a Narrower Interpretation: Defendants will likely argue that the plain language of the claim is precise and limiting. They may contend that a circular mat has a single, continuous edge and therefore cannot have a "second end," "third end," and "fourth end," and thus the accused products do not meet this limitation as a matter of law.

VI. Other Allegations

• Indirect Infringement: The complaint alleges that Defendants contributorily infringe and induce infringement by "making, using, selling, importing and/or offering to sell" the accused products (Compl. ¶44). The factual basis includes allegations that Defendants are "actively participating in a conspiracy to distribute and sell Infringing Products" (Compl. ¶8) and that they are aware their actions cause infringement by others, presumably end-users (Compl. ¶44).
• Willful Infringement: The complaint alleges willful infringement on the basis that Defendants had "actual notice of the publication of this patent" as early as November 21, 2019, and therefore knew of or were willfully blind to Plaintiff's patent rights (Compl. ¶6, ¶26, ¶35, ¶46).

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

• A core issue will be one of claim scope: can the term "connected to," as recited in Claim 1, be construed to cover a two-piece system of a bin and a mat that are not physically attached but are designed and sold to be used together? The resolution of this question will likely depend on how the court interprets the interplay between the patent's disclosure of "fixedly" and "removably" connected embodiments.
• A second key question will be one of structural equivalence: does the accused products' circular mat design meet the specific claim limitation of a rim disposed along a "second end," "third end," and "fourth end" of the mat? This will turn on whether that language is interpreted as being strictly tied to the patent's non-circular, teardrop-shaped embodiment or if it can be read more broadly to cover other peripheral rim configurations.