DCT
2:23-cv-01750
BROADWAY Pine Brands LLC v. OATSLIKEME
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Broadway Pine Brands LLC (Delaware)
- Defendant: Oatslikeme, Babys We, Bessle, et al. (Jurisdictions Unknown/Foreign)
- Plaintiff’s Counsel: Ference & Associates LLC
- Case Identification: 2:23-cv-01750, W.D. Pa., 10/10/2023
- Venue Allegations: Plaintiff alleges venue is proper because Defendants conduct business in the district, a substantial part of the infringing acts occurred there, and Defendants not resident in the U.S. may be sued in any judicial district.
- Core Dispute: Plaintiff alleges that Defendants’ toy storage bins, sold through various online storefronts, infringe a patent related to a storage container with an integrated, cinching play mat.
- Technical Context: The technology addresses the consumer market for toy storage, specifically providing a combined storage and play solution that simplifies the cleanup of small, numerous items like building blocks.
- Key Procedural History: The complaint alleges that the patent-in-suit issued from an application whose claims were allowed after a first office action without amendment. Plaintiff asserts this fact, along with the application's publication date, to support its allegation that Defendants had actual notice of the patent's claims before the patent issued.
Case Timeline
| Date | Event |
|---|---|
| 2019-02-05 | U.S. Patent No. 11,154,128 Priority Date |
| 2019-11-21 | Patent Application Publication Date |
| 2021-10-26 | U.S. Patent No. 11,154,128 Issue Date |
| 2023-10-10 | Complaint Filing Date |
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 background describes the common problem of toys with many small components becoming "scattered and lost when children dump containers full of such parts out on a floor" (’128 Patent, col. 1:35-38). This creates clutter and potential for injury when parts are stepped on ('128 Patent, col. 1:40-41).
- The Patented Solution: The invention is a storage container, such as a basket, with a permanently integrated play mat that is foldably stored inside ('128 Patent, Abstract). The mat has a raised perimeter rim and an internal drawstring; when the user pulls on the drawstring handles, the mat transforms into a "chute," funneling the toys on its surface back into the attached container with "great ease" (’128 Patent, col. 1:21-25; col. 5:36-41). FIG. 3B illustrates this chute-like transformation, showing toys sliding (S) from the gathered mat back into the receptacle (102).
- Technical Importance: The invention provides a "user friendly combination feature" that integrates both toy storage and a contained play area, aiming to prevent the loss of toy parts and simplify cleanup ('128 Patent, col. 2:5-6, col. 1:41-44).
Key Claims at a Glance
- The complaint asserts infringement of at least Claim 1 (Compl. ¶53).
- Independent Claim 1 requires:
- A receptacle with a base, side walls, and an opening.
- An integrated mat with a top surface, a bottom surface, and four defined ends.
- A rim disposed along the length of three of the mat's ends.
- A drawstring with two extremities, configured to run internally along the length of the rim.
- The integrated mat is connected to a portion of the receptacle's opening.
- The complaint does not explicitly reserve the right to assert dependent claims but makes a general allegation of infringement of "one or more of the claims" (Compl. ¶2).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are "knock-off versions of Plaintiff's SLIDEAWAY® toy bin" referred to as "Infringing Products," sold by numerous defendants through online storefronts on platforms like Amazon.com, Aliexpress.com, and Temu (Compl. ¶2, ¶p.4-5).
Functionality and Market Context
- Based on the complaint's descriptions and images, the accused products are fabric toy storage baskets with a built-in circular play mat (Compl. ¶1-2, ¶25). One visual provided in the complaint shows an accused product with a "57" Built-in Play Mat" attached to a "Toy Storage Basket" (Compl. p. 4). Another diagram illustrates the intended "Pour • Play • SlideAway®" functionality, depicting toys being poured onto the mat and then gathered back into the basket by pulling on the mat's edges (Compl. p. 14).
- Plaintiff alleges these products are "the same or substantially similar" and are sold as low-cost alternatives that directly compete with Plaintiff's product, trading on its reputation and market presence (Compl. ¶8, ¶36).
IV. Analysis of Infringement Allegations
The complaint references a claim chart in Exhibit 4, which was not filed with the complaint document (Compl. ¶53). The following analysis is based on the narrative allegations and the visual depictions of the accused products provided within the complaint.
’128 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a receptacle (102) adapted for holding one or more objects (101), wherein the receptacle (102) comprises of a base (102b), side walls (102c), and an opening (102d) with a predefined circumference | The accused products include a "Toy Storage Basket" or "decorative storage bin" to hold toys. An image shows a cylindrical basket with side walls and an opening. | ¶1; p. 4 | col. 4:16-18 |
| an integrated mat (104) | The accused products feature a "play mat integrated into it." Visuals show a large mat physically attached to the storage basket. | ¶1; p. 4 | col. 4:35-40 |
| a rim (103) ... disposed along the length of the [mat] | The accused products' mat has a raised lip or edge. The complaint's diagram of Plaintiff's product, which it alleges is copied, shows a "3" Lip" on the mat. | ¶25; p. 14 | col. 4:46-50 |
| a draw string (105) having two extremities, wherein the draw string (105) is configured to run internally along the length of the rim (103) | The complaint alleges a cleanup function where "draw string handles are pulled to gather the mat," suggesting a cinching mechanism. An image of an accused product shows the mat being gathered into a chute, consistent with a drawstring function. | ¶1; p. 4 | col. 4:62-64 |
| wherein, the integrated mat (104) is connected to a portion of and along the predefined circumference of the opening (102d) of the receptacle (102) | The infringing products are described as having a play mat "integrated" into the storage bin. Visuals show the mat as an extension of the bin's fabric opening. | ¶1; p. 4 | col. 5:39-44 |
Identified Points of Contention
- Technical Question: A central factual question may be whether the accused products' drawstrings are "configured to run internally along the length of the rim," as required by the claim. Discovery would be needed to determine if the string is enclosed within the fabric of the rim itself, or if it is merely threaded through external loops, which could present a non-infringement argument.
- Scope Question: The claim requires the mat to be "integrated" with and "connected to" the receptacle. The parties may dispute the scope of these terms. For example, a defendant could argue its method of sewing the mat to the bin does not meet the specific type of connection disclosed in the patent's embodiments, raising a question of claim construction.
V. Key Claim Terms for Construction
The Term: "integrated mat"
- Context and Importance: This term is foundational to the invention. Its construction will determine whether the connection between the mat and the receptacle in the accused products falls within the scope of the claims. Practitioners may focus on this term because the patent specification includes language that could support both broad and narrow interpretations.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification suggests the connection does not have to be permanent, stating "the mat 104 may be removably connected with the receptacle 102" (’128 Patent, col. 4:39-40). This could support an interpretation that "integrated" encompasses a wide range of attachment methods, including non-permanent ones.
- Evidence for a Narrower Interpretation: The abstract describes a "storage container with an integrated mat" and the summary focuses on an "integral mat foldably storable inside the container" (’128 Patent, Abstract; col. 2:23-24). A defendant might argue that the ordinary meaning of "integrated" implies a unitary, inseparable construction, and that the "removably connected" language describes an alternative embodiment not covered by the plain meaning of the term used in the claim itself.
The Term: "draw string ... configured to run internally along the length of the rim"
- Context and Importance: This limitation defines the specific mechanism that enables the mat to be gathered into a "chute" for cleanup. The infringement analysis will turn on whether the accused products' cinching mechanism operates in the same way.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent's objective is to "augment the shape of the mat, changing it to a chute" (’128 Patent, col. 6:22-24). Plaintiff may argue that any drawstring configuration that achieves this chute-forming function by running along the rim should be considered "internal" to the overall rim structure.
- Evidence for a Narrower Interpretation: Claim 1 distinguishes between the "rim" and the "draw string." Figure 5 and its description show the drawstring running inside a channel formed by the rim's fabric ('128 Patent, FIG. 5; col. 4:62-64). A defendant could argue "internally" requires the string to be enclosed within the fabric of the rim, not merely passing through grommets or loops attached to it.
VI. Other Allegations
- Indirect Infringement: The complaint makes a general allegation of infringement "either directly or indirectly through acts of contributory infringement or inducement" (Compl. ¶54). However, it does not plead specific facts to support the knowledge and intent elements, such as pointing to instructions or manuals that direct users to perform the infringing action.
- Willful Infringement: The complaint alleges willful infringement based on Defendants having "actual notice of the publication of this patent" as early as November 21, 2019, and "full knowledge of Plaintiff's ownership of the Plaintiff's Patent" (Compl. ¶6, ¶26, ¶37, ¶56). The allegation is that Defendants knew of the claimed invention and deliberately infringed, supporting a claim for enhanced damages.
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of technical evidence: Does the construction of the accused products meet the specific claim limitation requiring a drawstring that runs "internally along the length of the rim"? The answer will likely depend on physical inspection and discovery into how the products are manufactured, distinguishing between a string enclosed within the rim's fabric versus one threaded through external guides.
- The case may also hinge on claim construction: How broadly will a court construe the term "integrated mat"? The resolution of this question will determine whether the sewn-on nature of the accused mats is sufficient to meet the claim language, particularly in light of specification language that contemplates both fixed and "removably connected" embodiments.
- A key question for damages will be willfulness: Plaintiff has asserted pre-suit knowledge based on the patent application's publication date. If infringement is found, the court will need to determine whether Defendants' conduct was "willful and deliberate," which could expose them to treble damages.