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 (Texas)
  • Plaintiff’s Counsel: Baker Botts L.L.P.
• Case Identification: 4:25-cv-00128, N.D. Tex., 03/07/2025
• Venue Allegations: Plaintiff alleges venue is proper in the Northern District of Texas because Defendant has a regular and established place of business in the district, from which it has allegedly committed acts of infringement.
• Core Dispute: Plaintiff alleges that Defendant’s rolling tote bags infringe a patent related to a collapsible tote bag with a removable rolling support assembly.
• Technical Context: The technology concerns the market for consumer goods, specifically collapsible and portable rolling tote bags used for shopping, groceries, or laundry.
• Key Procedural History: The complaint alleges that this lawsuit follows a prior case between the same parties (4:24-cv-00956-P), which was dismissed without prejudice following a settlement agreement. Plaintiff alleges Defendant breached this agreement and continued infringing after an agreed-upon "Phaze Out Date," which may form the basis for the willfulness allegations.

Case Timeline

Date	Event
2023-02-28	’071 Patent Priority Date
2024-08-06	’071 Patent Issue Date
2024-10-09	Defendant notified of alleged infringement via prior lawsuit
2024-11-26	Settlement Agreement effective date
2024-12-03	Prior lawsuit dismissed without prejudice
2025-01-01	Alleged infringement by Defendant commences
2025-03-07	Complaint Filing Date

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

U.S. Patent No. 12,053,071 - “ROLLING TOTE BAG” (issued Aug. 6, 2024)

The Invention Explained

• Problem Addressed: The patent describes limitations in prior art rolling tote bags, including the tendency for unsupported bottom corners to sag and wear out, and the presence of apertures in the bag’s bottom panel to accommodate caster wheels, which can allow dust and foreign substances to enter the main storage compartment (’071 Patent, col. 1:47-60).
• The Patented Solution: The invention proposes a rolling tote bag with a removable rolling support assembly (a plate with caster wheels) that is held in place by a "retaining structure" located entirely underneath the bag's main bottom panel (’071 Patent, Abstract). This structure, typically a system of fabric flaps, encases the support plate, securing it to the bag's exterior bottom surface without requiring holes in the panel itself, thereby improving durability and protecting the inner storage volume (’071 Patent, col. 3:6-14; Fig. 2D).
• Technical Importance: This design aims to improve the bag's resistance to wear and tear and prevent the intrusion of debris, while retaining the convenience of a removable rolling assembly (’071 Patent, col. 2:51-58).

Key Claims at a Glance

• The complaint asserts independent Claim 1 and dependent Claims 4-13 (Compl. ¶22).
• Independent Claim 1 recites the following essential elements for a rolling tote bag:
  • A collapsible container body made of fabric panels that define an inner storage volume.
  • A rolling support assembly with a support plate and caster wheels.
  • A "retaining structure" made 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 attachable to encase the support plate.
  • A specific fastener arrangement: a "first fastening element" on the inner side of the first flap and a "complementary, second fastening element" on the outer side of the second flap.
  • The retaining structure also includes third and fourth "releasable securing flaps" on opposite longitudinal ends of the bottom panel to hold the support plate.
  • A further specific fastener arrangement for the third and fourth flaps and the support plate.

III. The Accused Instrumentality

Product Identification

• The accused products are "Simply Southern rolling tote bags," sold in various colors and designs (Compl. ¶¶ 2, 13). The complaint includes an image from an Amazon.com listing for a "Simply Southern Collapsible & Colorful Rolling Tote Bag" (Compl. ¶14; p. 12).

Functionality and Market Context

• The accused products are collapsible tote bags with a removable bottom plate fitted with four caster wheels (Compl. p. 17). The complaint alleges, through annotated photographs, that the underside of the bag features a system of fabric flaps with hook-and-loop fasteners designed to secure the wheeled support plate to the exterior of the bag's bottom panel (Compl. pp. 18-20). The complaint identifies these products as being sold through Defendant's own website, its physical retail stores, and on Amazon.com (Compl. ¶¶ 10-11, 14).

IV. Analysis of Infringement Allegations

’071 Patent 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... 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 side and bottom panels defining an inner storage volume.	¶23; p. 16	col. 5:36-41
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 support assembly, consisting of a support plate with caster wheels on its underside. The complaint includes a photo of this assembly detached from the bag.	¶23; p. 17	col. 5:48-54
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...	The accused product allegedly has a retaining structure made of fabric panels on the exterior underside of the bottom panel, which holds the support plate. An annotated photo depicts this structure.	¶23; p. 18	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 allegedly includes two releasable flaps positioned on what the complaint identifies as the opposite lateral ends of the bottom panel.	¶23; p. 19	col. 6:55-59
wherein the first and second releasable securing flaps are partially overlapping and releasably attachable to one another to encase the support plate...	The accused product's first and second flaps are shown in photographs to overlap and attach to each other, allegedly encasing the support plate.	¶23; p. 20	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 complaint alleges the first flap has a fastening element on its inner-facing side, as shown in an annotated photograph.	¶23; p. 21	col. 7:6-14
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...	The complaint alleges the second flap has a complementary fastener on its outer-facing side to engage with the fastener on the first flap.	¶23; p. 22	col. 7:10-14
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 third and fourth flaps on the longitudinal ends of the bottom panel. An annotated photo points to these features.	¶23; p. 23	col. 7:25-31
wherein each of the third and fourth releasable securing flaps is provided with an inner fastening element positioned on an inner side thereof,	The complaint alleges these third and fourth flaps have fastening elements on their inner sides.	¶23; p. 24	col. 7:31-34
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 is alleged to have complementary fasteners to engage with the fasteners on the third and fourth flaps.	¶23; p. 25	col. 7:34-39

Identified Points of Contention

• Scope Questions: The complaint's infringement theory relies on its interpretation of "lateral ends" and "longitudinal ends" of the bottom panel. A dispute may arise over whether the accused product's flap geometry strictly corresponds to the orientation required by Claim 1, as defined by the patent's specification and figures.
• Technical Questions: A key factual question will be whether the accused product's flaps and fasteners function in the precise manner claimed. For example, does the first flap's fastener being on the "inner side" and the second's on the "outer side" create the specific overlapping and encasing structure described in the patent, or is there a functional or structural difference? The court will need to determine if the visual evidence in the complaint (Compl. p. 20) showing the flaps overlapping is sufficient to meet this limitation.

V. Key Claim Terms for Construction

The Term: "retaining structure"

• Context and Importance: This term is the central feature of the invention, distinguishing it from prior art that placed support structures inside the bag or required apertures. The precise definition of what constitutes this "structure" will be fundamental to the infringement analysis.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claim language defines it as being "formed of one or more fabric panels" (col. 11:32-33), which could suggest that any configuration of fabric panels on the underside that holds the support plate might qualify, not just the specific four-flap embodiment.
  • Evidence for a Narrower Interpretation: The specification consistently describes the structure as a system of four distinct flaps (21, 22, 31, 32) that cooperate in a specific way (’071 Patent, col. 6:44-51). A defendant may argue that the term should be limited to this disclosed four-flap arrangement, as it is the only embodiment described in detail.

The Term: "partially overlapping"

• Context and Importance: This term describes the required interaction between the first and second securing flaps. Its meaning is critical for determining if the way the accused product's flaps close meets the claim limitation. Practitioners may focus on this term because the degree and manner of overlap could be a point of non-infringement.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The plain meaning of "partially" suggests that any amount of overlap, as long as it is not total, could satisfy the limitation.
  • Evidence for a Narrower Interpretation: The patent states the flaps "mutually cooperate to encase the support plate P between the bottom panel 15 and the first and second securing flaps 21, 22" (’071 Patent, col. 6:61-63). This functional language, combined with the figures, could be used to argue for a more specific type of overlap that is sufficient to "encase" the plate, rather than merely touch.

VI. Other Allegations

Willful Infringement

• The complaint alleges that Defendant had knowledge of the ’071 Patent and its potential infringement no later than October 9, 2024, when it was served with a complaint in a prior lawsuit (Compl. ¶12). It further alleges that after entering a settlement agreement that included a "Phaze Out Date" of December 31, 2024, Defendant continued to infringe "since January 1, 2025" (Compl. ¶¶ 2, 12, 33). These allegations of knowledge from a prior suit and infringement in alleged violation of a settlement agreement form the basis of the willfulness claim (Compl. ¶26).

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

• A core issue will be one of claim construction and scope: can the terms "lateral ends" and "longitudinal ends" be construed in a way that maps precisely onto the accused product's design, and does the accused product's flap system, which appears visually similar, meet every specific structural and relational limitation of Claim 1, such as the "partially overlapping" nature and the inner/outer fastener placement?
• A second central question will revolve around willfulness and potential breach of contract: given the detailed allegations regarding the prior lawsuit and subsequent settlement agreement, if infringement is found, the court's focus will likely shift to whether Defendant's conduct was willful, justifying enhanced damages, and whether it constituted a breach of the settlement agreement.
• A key evidentiary question will be one of direct comparison: the complaint provides compelling side-by-side visual comparisons between the patent figures and the accused products (Compl. pp. 2-5). The case may turn on whether these visual similarities hold up under the exacting scrutiny of claim-by-claim element matching, or if Defendant can demonstrate subtle but dispositive technical differences.