BROADWAY Pine Brands LLC v. Bonjin

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Broadway Pine Brands LLC (a Delaware LLC with a principal place of business in Washington)
  • Defendant: Bonjin-US, et al. (a collection of numerous individuals, partnerships, and unincorporated associations, many of whom are alleged to operate from foreign jurisdictions)
  • Plaintiff’s Counsel: Ference & Associates LLC
• Case Identification: 2:22-cv-01609, W.D. Pa., 11/15/2022
• Venue Allegations: Plaintiff alleges venue is proper because Defendants conduct business in the district, a substantial part of the infringing events occurred there, and personal jurisdiction exists over the Defendants, including those not resident in the United States.
• Core Dispute: Plaintiff alleges that Defendants’ toy storage bins, which feature an integrated, collapsible play mat, infringe a patent covering this combination product design.
• Technical Context: The technology addresses the consumer market for toy organization, specifically providing a combined storage container and play mat that simplifies the cleanup of small toys.
• Key Procedural History: The complaint notes that the patent-in-suit issued from an application that was allowed after a first office action and that the allowed claims were identical to the published claims. Plaintiff asserts this history provided Defendants with notice of the claimed invention prior to the patent's issuance date.

Case Timeline

Date	Event
2019-02-05	’128 Patent Priority Date (Provisional Application)
2019-11-21	’128 Patent Application Publication Date
2021-10-26	’128 Patent Issue Date
2022-11-15	Complaint Filing Date

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

U.S. Patent No. 11,154,128 - "Storage Container with an Integrated Mat"

The Invention Explained

• Problem Addressed: The patent background describes the common problem of children's small toy parts becoming scattered, lost, or creating a hazard on the floor when dumped from a conventional toy box (’128 Patent, col. 1:32-43).
• The Patented Solution: The invention is a storage container featuring an integrated mat that can be pulled out to create a contained play area. To clean up, a user pulls on a drawstring mechanism embedded in the mat's rim, which transforms the flat mat into a chute, funneling the toys back into the attached storage container with ease (’128 Patent, Abstract; col. 6:18-35; Fig. 3B).
• Technical Importance: The invention provides an integrated, "user friendly combination feature" that corrals toys during play and simplifies the cleanup process, preventing parts from being lost or stepped on (’128 Patent, col. 2:5-7).

Key Claims at a Glance

• The complaint asserts infringement of at least Claim 1 of the ’128 Patent (Compl. ¶49).
• Independent Claim 1 requires:
  • A "receptacle" for holding objects, comprising a base, side walls, and an opening with a predefined circumference.
  • An "integrated mat" with a top surface, a bottom surface, and defined ends.
  • A "rim" disposed along the perimeter 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 and along the predefined circumference of the opening of the receptacle".
• The complaint alleges infringement of "one or more of the claims," suggesting the right to assert dependent claims is implicitly reserved (Compl. ¶1).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are "knock-off versions of Plaintiff's SLIDEAWAY® toy bin," sold by numerous online sellers and referred to collectively as the "Infringing Products" (Compl. ¶1-2).

Functionality and Market Context

• The complaint describes the Infringing Products as toy storage containers combined with an integrated play mat, allowing a user to pour toys onto the mat and subsequently use handles to retract the mat and toys back into the container (Compl. ¶25).
• A composite image provided in the complaint depicts the plaintiff's product in use, its transformation from a flat play mat to a chute for cleanup, and key features such as its capacity and dimensions (Compl. p. 14).
• The complaint alleges that the Defendants are numerous, often anonymous or foreign, sellers operating through e-commerce platforms such as Amazon.com, eBay.com, and Aliexpress.com (Compl. ¶1, ¶17). An image of an "INFRINGING LISTING OF DEFENDANT BONJIN-US" shows a product with a visual design and function that appears to mirror the Plaintiff's product (Compl. p. 3).

IV. Analysis of Infringement Allegations

The complaint references a claim chart (Exhibit 4) that was not included with the filed complaint (Compl. ¶49, p. 24). In its absence, the infringement theory is derived from the complaint's narrative allegations and visual evidence.

The core of the infringement allegation is that the Defendants' products embody all elements of Claim 1 of the ’128 Patent. The complaint alleges that the accused products are "substantially similar" or identical copies of the Plaintiff's SLIDEAWAY® product (Compl. ¶8). Visuals of the accused products depict a storage basket with an attached, circular mat that appears to have a raised edge (the "rim") and a gathering mechanism (the "draw string") for cleanup (Compl. pp. 3-4). The theory is that these products directly map onto the claim elements: the basket is the "receptacle", the attached fabric sheet is the "integrated mat", the raised edge is the "rim", and the gathering cord is the "draw string" that runs "internally" within that rim.

Identified Points of Contention

• Technical Questions: A primary factual question for the court will be whether the internal construction of the accused products meets the claim limitations. Discovery will be necessary to determine if the gathering cord is "configured to run internally along the length of the rim," as required, or if it uses an alternative mechanism that falls outside the claim's scope.
• Scope Questions: The term "connected", which describes the relationship between the mat and the receptacle, may become a point of contention. The analysis will question whether this term requires a permanent bond or if it can also read on a removably attached configuration, and whether the accused products meet the determined scope.

V. Key Claim Terms for Construction

"integrated mat"

• Context and Importance: This term defines the fundamental relationship between the two main components of the invention. Its construction will determine whether products with detachable mats could be considered infringing. Practitioners may focus on this term because the method of attachment is a key design choice that could differentiate competing products.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification suggests the connection need not be permanent, stating in one embodiment that "the mat 104 may be removably connected with the receptacle 102" (’128 Patent, col. 4:39-41). This could support a construction that encompasses both permanently and detachably connected mats.
  • Evidence for a Narrower Interpretation: The word "integrated" itself implies a single, unified article. The primary embodiment describes the mat as "fixedly connected" to the receptacle, which could support a narrower construction limited to permanently attached mats (’128 Patent, col. 5:39-40).

"draw string... configured to run internally along the length of the rim"

• Context and Importance: This limitation defines the specific cleanup mechanism. The infringement analysis for many products will likely depend on whether their gathering cord is "internal" to the rim.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification consistently describes the drawstring running "internally along the length of the rim" without further qualification, suggesting the common and ordinary meaning of being enclosed within the hem or channel that forms the rim (’128 Patent, col. 5:1-2).
  • Evidence for a Narrower Interpretation: A defendant could argue that "internally" requires a specific configuration not present in its product. However, the patent figures depict a conventional construction where the drawstring (105) is threaded through the hemmed edge of the mat (103), which appears to align with the plain meaning of the term (’128 Patent, Fig. 5).

VI. Other Allegations

Indirect Infringement

The complaint includes a general allegation of "contributory infringement or inducement" but does not plead specific facts to support these claims, such as citing user manuals or advertisements that instruct consumers on how to perform an infringing act (Compl. ¶50). The primary focus of the allegations is on direct infringement by making and selling the accused products.

Willful Infringement

Willfulness is alleged based on the claim that Defendants had "actual notice of the publication of the Plaintiff's Patent" as early as November 21, 2019, and proceeded with infringing activities "knowingly and intentionally or with reckless disregard or willful blindness" (Compl. ¶35, ¶48, ¶52). This alleges pre-suit knowledge based on the published patent application.

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

• A central issue will be one of evidentiary proof: can the Plaintiff, through discovery, obtain and demonstrate that the internal construction of the products sold by a large and disparate group of online sellers—many of whom are allegedly foreign—practices every limitation of the asserted claims, particularly the "internal" drawstring mechanism?
• A key legal question will be one of definitional scope: will the term "integrated mat" be construed to require a permanent, inseparable connection, or will it be interpreted more broadly to also cover products where the mat is removably attached to the receptacle? The resolution of this question will define the outer boundary of infringing products.
• A critical factual question for willfulness and damages will be notice: can the Plaintiff prove that the Defendants had knowledge of the patent or its published application prior to the lawsuit, as alleged, or will the infringement be deemed unknowing?