Codefine Intl SA v. Simply Southern Holdings LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Codefine International SA (Switzerland)
  • Defendant: Simply Southern Holdings, LLC (United States)
  • Plaintiff’s Counsel: Baker Botts LLP.
• Case Identification: 4:24-cv-00956, N.D. Tex., 10/08/2024
• Venue Allegations: Plaintiff alleges venue is proper because Defendant maintains a regular and established place of business in the district—a physical retail store in Fort Worth—and has committed the alleged acts of infringement in the district through in-person and online sales.
• Core Dispute: Plaintiff alleges that Defendant’s rolling tote bags infringe a patent related to a collapsible tote bag with a specific external retaining structure for a removable, wheeled support plate.
• Technical Context: The technology concerns consumer goods, specifically collapsible rolling tote bags used for shopping or transport, focusing on the method of attaching the wheeled base to the fabric body.
• Key Procedural History: The complaint does not mention any prior litigation, inter partes review proceedings, or licensing history involving the patent-in-suit. The patent was issued approximately two months prior to the filing of the complaint.

Case Timeline

Date	Event
2023-02-28	U.S. Patent No. 12,053,071 Priority Date
2024-08-06	U.S. Patent No. 12,053,071 Issue Date
2024-10-08	Complaint Filing Date

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

U.S. Patent No. 12,053,071 - "ROLLING TOTE BAG"

• Patent Identification: U.S. Patent No. 12053071, “ROLLING TOTE BAG,” issued August 6, 2024.

The Invention Explained

• Problem Addressed: The patent’s background section identifies limitations in prior art rolling tote bags, including the tendency for bottom corners to sag and suffer from wear, and the use of apertures in the bag's bottom panel to accommodate caster wheels, which can introduce structural weaknesses and allow dust or debris to enter the main storage compartment ('071 Patent, col. 1:47-59).
• The Patented Solution: The invention is a rolling tote bag where the wheeled support plate is secured entirely outside of and underneath the bag’s main fabric body. This is accomplished by a dedicated "retaining structure" of fabric flaps that are part of the container body and attach to the support plate, eliminating the need for apertures in the bag's bottom panel ('071 Patent, Abstract; col. 6:40-48). This design aims to protect the bag's contents and improve structural integrity by isolating the rolling assembly from the inner storage volume, as illustrated in the exploded view of Figure 2D ('071 Patent, Fig. 2D).
• Technical Importance: This approach seeks to create a more durable and protective rolling tote by avoiding holes in the main container and providing better support to the bag's structure, while allowing for a cost-efficient design ('071 Patent, col. 2:46-59).

Key Claims at a Glance

• The complaint asserts independent claim 1 and dependent claims 4-13 (Compl. ¶22).
• Independent Claim 1 of the ’071 Patent recites the following essential elements:
  • A rolling tote bag with a collapsible container body defining an inner storage volume.
  • A rolling support assembly with a support plate and caster wheels on its underside.
  • A "retaining structure" of fabric panels located underneath the container body's bottom panel, configured to hold the support plate outside the inner storage volume.
  • The retaining structure includes "first and second releasable securing flaps" on opposite lateral ends of the bottom panel.
  • These first and second flaps are "partially overlapping and releasably attachable" to "encase" the support plate.
  • The first flap has a "first fastening element" on its "inner side."
  • The second flap has a "complementary, second fastening element" on its "outer side" to cooperate with the first.
  • The retaining structure also includes "third and fourth releasable securing flaps" on opposite longitudinal ends of the bottom panel to hold the support plate's longitudinal ends.
  • These third and fourth flaps each have an "inner fastening element" on their "inner side."
  • The support plate has complementary fastening elements on its longitudinal ends to cooperate with the inner fastening elements on the third and fourth flaps.
• The complaint reserves the right to assert other claims, including dependent claims 4-13 which add limitations such as the use of hook-and-loop fasteners, specific flap positioning, and material compositions (Compl. ¶22).

III. The Accused Instrumentality

Product Identification

• The accused products are a line of "rolling tote bags" sold by Defendant Simply Southern, identified in the complaint by various SKUs, including "0124-BAG-ROLLTOTE" and "0224-BAG-ROLLTOTE-PINK" (Compl. ¶¶ 2, 13). The complaint presents side-by-side photographic comparisons of Plaintiff's product, the patent figures, and the accused bags (Compl. p. 2).

Functionality and Market Context

• The complaint alleges the accused products are collapsible tote bags featuring a removable, wheeled base plate that attaches to the underside of the fabric bag (Compl. ¶¶ 16-25, claim chart). They are sold through Defendant's physical retail stores, its own website, and third-party online retailers like Amazon (Compl. ¶¶ 11-12, 14). To support its venue allegation, the complaint provides a screenshot showing the location of a Simply Southern retail store in Fort Worth, Texas (Compl. ¶10).

IV. Analysis of Infringement Allegations

The complaint provides a detailed, element-by-element breakdown of its infringement theory for several claims. The allegations for independent claim 1 are summarized below.

U.S. Patent No. 12,053,071 Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
A rolling tote bag comprising a collapsible container body made of a foldable assembly of fabric panels, including a bottom panel and side panels, that jointly define an inner storage volume when in an expanded state	The accused product is a rolling tote bag with a collapsible body made of fabric panels that create an inner storage area.	¶23	col. 5:37-43
wherein the rolling tote bag further comprises a rolling support assembly to provide rolling support...the rolling support assembly including a support plate and a plurality of caster wheels provided on an underside of the support plate	The accused product includes a removable rolling assembly with a wheeled support plate.	¶23	col. 5:50-54
wherein the collapsible container body further comprises a retaining structure formed of one or more fabric panels, which retaining structure is provided underneath the bottom panel and is configured to securely hold the support plate outside of the inner storage volume against an underside of the bottom panel	The accused product has a retaining structure made of fabric flaps on its underside, which holds the support plate externally.	¶23	col. 6:40-48
wherein the retaining structure includes first and second releasable securing flaps attached to and positioned along opposite lateral ends of the bottom panel	The accused product’s retaining structure includes two flaps on opposite lateral (short) ends of the bottom panel. A complaint photograph labels these flaps on the accused product (Compl. p. 19).	¶23	col. 6:55-58
wherein the first and second releasable securing flaps are partially overlapping and releasably attachable to one another to encase the support plate between the bottom panel and the first and second releasable securing flaps	The complaint alleges these two flaps overlap and attach to each other to secure the support plate against the bag's bottom panel.	¶23	col. 6:59-63
wherein a distal end section of the first releasable securing flap is provided with a first fastening element positioned on an inner side of the first releasable securing flap	The first lateral flap on the accused product is alleged to have a fastening element on its inner-facing side.	¶23	col. 7:1-4
wherein a distal end section of the second releasable securing flap is provided with a complementary, second fastening element positioned on an outer side of the second releasable securing flap for releasable cooperation with the first fastening element	The second lateral flap on the accused product is alleged to have a complementary fastener on its outer-facing side, positioned to engage the fastener on the first flap.	¶23	col. 7:5-9
wherein the retaining structure further includes third and fourth releasable securing flaps attached to and positioned along opposite longitudinal ends of the bottom panel to hold corresponding longitudinal end sections of the support plate	The accused product’s retaining structure is alleged to have two additional flaps on the opposite longitudinal (long) ends of the bottom panel, as depicted in a complaint photograph (Compl. p. 23).	¶23	col. 7:27-31
wherein each of the third and fourth releasable securing flaps is provided with an inner fastening element positioned on an inner side thereof	These longitudinal flaps on the accused product allegedly have fastening elements on their inner-facing sides.	¶23	col. 7:32-35
and wherein opposite longitudinal end sections of the support plate are each provided with a complementary fastening element for releasable cooperation with a corresponding one of the inner fastening elements.	The support plate of the accused product allegedly has complementary fasteners that attach to the fasteners on the third and fourth flaps.	¶23	col. 7:35-39

Identified Points of Contention

• Scope Questions: The infringement analysis may focus on the precise structural requirements of the "retaining structure." A question for the court could be whether the accused product's flaps are truly "partially overlapping" and "encase" the support plate in the manner required by the claim.
• Technical Questions: While the complaint's photographs suggest a high degree of similarity, the court will need to examine the physical evidence. A key factual question will be whether the placement of the fastening elements on the accused product's flaps—specifically, on the "inner side" of the first flap and the "outer side" of the second—matches the claim language exactly. The complaint's evidence on this point will be critical (Compl. pp. 21-22).

V. Key Claim Terms for Construction

"retaining structure"

• Context and Importance: This term is foundational to the patent, as it describes the core component that distinguishes the invention from prior art that placed support structures inside the bag or required apertures. The precise definition of what constitutes this structure will be central to the infringement analysis.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification introduces the structure as being "formed of one or more fabric panels" ('071 Patent, col. 3:9-10). Plaintiff may argue this supports a more flexible interpretation of the configuration.
  • Evidence for a Narrower Interpretation: Practitioners may focus on the fact that independent claim 1 itself provides a highly detailed definition of the structure, reciting first, second, third, and fourth flaps with specific locations and fastening mechanisms. Defendant may argue that the term "retaining structure" must be limited to this specific four-flap embodiment described in the claim and illustrated in the patent's figures (e.g., Fig. 4B).

"encase"

• Context and Importance: Claim 1 requires the first and second lateral flaps to be attachable to one another to "encase" the support plate. The interpretation of this term could determine whether the lateral flaps alone must form a full enclosure or if they merely contribute to an overall enclosure.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: Plaintiff may argue that "encase" should be given its plain and ordinary meaning of "enclose or cover," and that the flaps, in cooperation with the bag's bottom panel, achieve this function.
  • Evidence for a Narrower Interpretation: Defendant may point to the full claim language, which states the flaps cooperate "to encase the support plate between the bottom panel and the first and second releasable securing flaps" ('071 Patent, col. 6:61-63). This could suggest that the "encasing" action is performed by the combination of the flaps and the bottom panel, potentially creating ambiguity about what the term "encase" requires of the flaps themselves.

VI. Other Allegations

Indirect Infringement

• The complaint does not plead specific facts to support a claim for indirect infringement, such as knowledge of the patent combined with active steps to encourage infringement by others.

Willful Infringement

• The complaint does not contain an explicit count for willful infringement or allege facts demonstrating that Defendant had pre- or post-suit knowledge of the patent and nonetheless engaged in conduct rising to the level of wanton, malicious, or bad-faith behavior. The prayer for relief includes a request for enhanced damages pursuant to 35 U.S.C. § 284, which is the statutory basis for willfulness awards, but the body of the complaint does not lay the traditional factual groundwork for such a claim (Compl. ¶29(c)).

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

• A core issue will be one of claim construction and scope: can the term "retaining structure" be interpreted to cover any configuration of external flaps holding a support plate, or is it strictly limited by the claim's detailed recitation of a specific four-flap system with precisely located fasteners? The outcome of this question will likely dictate the infringement result.
• A key evidentiary question will be one of factual identity: assuming the court adopts a narrow construction, does the accused product, upon physical inspection, meet every specific limitation of the claims? The complaint's photographic evidence, which alleges features like specific material compositions and construction methods (Compl. p. 31), suggests the case will involve a granular, feature-by-feature comparison between the physical product and the patent's claims.