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Imprenta Services v. Karll — US10513375 Child-Resistant Container | PatSnap
Patent Litigation

Imprenta Services v. Karll: Willful Infringement Found, Permanent Injunction Entered

Imprenta Services and Mike Sanchez filed for declaratory non-infringement of US10513375, a metal child-resistant container patent held by Nicholas Patrick Karll and Eco Packaging Solutions. The C.D. California court ruled against the declaratory plaintiffs on all claims, found willful infringement, and entered a permanent injunction — awarding defendants $107,620.20 in damages plus $103,722.13 in Rule 11 sanctions against plaintiffs and their counsel.

Resolution time
1077days
1,077 days from filing to final judgment — approximately 3 years of litigation in C.D. California
Patents asserted
1
US10513375 — metal child-resistant container; one patent asserted
Outcome
Injunction Granted
Permanent injunction entered against plaintiffs; willful infringement of '375 Patent adjudicated
Cost ruling
Sanctions: $103,722
Rule 11 sanctions of $103,722.13 imposed jointly and severally against plaintiffs and their counsel
Published by PatSnap Insights Team · Verified by PatSnap Eureka Data
Case overview

Declaratory Action Backfires: Plaintiffs Found to Have Willfully Infringed

Imprenta Services, Inc. and Mike Sanchez filed this action on July 10, 2020 in the U.S. District Court for the Central District of California (Case No. 2:20-cv-06177), seeking a declaratory judgment of non-infringement of US Patent No. 10,513,375, a finding of inequitable conduct against patent holder Nicholas Patrick Karll and Eco Packaging Solutions, and correction of inventorship to name Sanchez as sole or co-inventor of the '375 Patent. The '375 Patent covers a metal child-resistant container.

Defendants counterclaimed for infringement of at least Claim 1 of the '375 Patent. The court granted summary judgment for defendants on plaintiffs' inequitable conduct and inventorship correction claims, found willful infringement by plaintiffs across 22 identified product models (CRC301–CRC318 and CRC703–CRC707), applied a 2.0 willfulness multiplier to increase lost profits to $107,620.20, entered a permanent injunction, and imposed Rule 11 sanctions of $103,722.13 jointly and severally against plaintiffs and their counsel Frederic M. Douglas. Prejudgment interest accrued from December 24, 2019 at California's 7% statutory rate.

The case closed on June 22, 2023, approximately three years after filing. The breadth of the final judgment — encompassing willful infringement, a 2.0 multiplier, a permanent injunction, and substantial Rule 11 sanctions — suggests the court viewed the declaratory action as lacking an adequate factual and legal basis. The specific commercial relationship between Sanchez and Karll regarding the '375 Patent's inventorship dispute, and the full background to the sanctions award, are matters of public record in the docket but are not fully detailed in the available verdict summary.

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Case at a glance
CourtCalifornia Central District Court
JudgeN/A
FiledJuly 10, 2020
ClosedJune 22, 2023
Duration1077 days
OutcomeInjunction Granted
Verdict causeDeclaratory Judgement
BasisInjunction Granted
Prior Art Intelligence
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Case data sourced from PACER / California Central District Court via PatSnap Eureka Litigation Intelligence Explore similar cases ↗
Case timeline

Filing to Injunction Granted in 1077 days

1,077 days from filing to final judgment — approximately 3 years of litigation in C.D. California

Case timeline: Complaint filed JUL 10 2020 — 1077 days total Horizontal timeline showing the three key events in Imprenta Services, Inc. v Nicholas Patrick Karll from filing to resolution. Source: PACER, California Central District Court. JUL 10 2020 Complaint filed Pre-trial proceedings JUN 22 2023 Injunction Granted 1077 DAYS TOTAL
Patent at issue

US10513375 — Metal Child-Resistant Container Patent

Publication No.US10513375B2
Application No.US16/381904
Patent details
ProductMetal child-resistant container with secure closure mechanism
Cited in actionJuly 10, 2020
Technical brief · sourced from PatSnap patent database
Patent figurePatent figure
Representative claim (1 of 2 independent)
1. A child resistant container, comprising: a container body having a central longitudinal axis, a closed base, an open top and an exterior wall; and a cap assembly configured to couple to the container body for closing the container; wherein the cap assembly comprises a metal inner cap configured to couple to the container body and a metal outer cap coupled to the inner cap, each of the inner and outer caps having a top with a top surface and a bottom surface; a metal plate disposed between the inner cap and the outer cap, wherein the plate is rotationally and axially fixed relative to the outer cap; a first cou…
Technical background
CROSS REFERENCE TO RELATED APPLICATIONS This Application is a continuation-in-part of U.S. patent application Ser. No. 15/951,482 filed on Apr. 12, 2018, and is a continuation-in-part of U.S. patent application Ser. No. 16/011,267 filed on Jun. 18, 2018, which is a continuation-in-part of U.S. patent application Ser. No. 15/951,482 filed on Apr. 12, 2018, the entire contents of which are hereby incorporated by reference. STATEMENT REGARDING FEDERALLY SPONSORED RESEARCH OR DEVELOPMENT Not applicable. REFERENCE TO AP…
Patent family
8 family members across 4 jurisdictions (WO, CA, US, AU)
PatSnap Eureka · FTO Search Agent
Should you run an FTO analysis against US10513375?

Any company designing or sourcing metal child-resistant containers — particularly for cannabis packaging, pharmaceutical dispensing, or regulated consumer goods — should consider an FTO assessment against US10513375. The C.D. California court has confirmed the patent's validity and enforceability. The 22 CRC-model products found to infringe span a broad range of container sizes, suggesting the claim scope may extend to product families beyond those already adjudicated.

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Official verdict

Official order — verbatim text

Plaintiffs Imprenta Services, Inc. (“Imprenta”) and Mike Sanchez (“Sanchez”; collectively with Imprenta, “Plaintiffs”) filed this action seeking declaratory judgment of non-infringement of U.S. Patent No. 10,513,375 (“the ’375 Patent”), a finding of inequitable conduct against Defendants, and to have Sanchez declared the sole inventor or a co-inventor of the ’375 Patent. See generally Dkt. No. 1. Defendants Nicholas Patrick Karll (“Karll”) and Eco Packaging Solutions (“Eco Packaging”; collectively with Karll, “Defendants”) filed their answer and counterclaims alleging, inter alia, that Plaintiffs infringe at least Claim 1 of the ’375 Patent. See generally Dkt. No. 41 (“Answer”). The Court granted Defendants’ motion for summary judgment as to Plaintiffs’ claims for inequitable conduct and correction of inventorship, granted Defendants’ motion for summary judgment as to Plaintiffs’ willful infringement of the ’375 Patent, and granted-in-part Defendants’ motion for Rule 11 sanctions. See generally Dkt. No. 95. The Court imposed Rule 11 sanctions against Plaintiffs and their counsel jointly and severally in the amount of $103,722.13. See Dkt. No. 106, p. 12. The Court also granted Defendants’ motion to dismiss without prejudice their state law counterclaims pursuant to 28 U.S.C. § 1367(c), and Defendants’ motion for a permanent injunction. See Dkt. Nos. 146, 154 & 156. The Court further granted Defendants’ motion for partial summary judgment of infringement damages in the amount of $53,810.10, and granted-in-part Defendants’ motion for determination of the willfulness multiplier, applying a willfulness multiplier of 2.0 and thus increasing the lost profits award to $107,620.20. See Dkt. Nos. 154 & 156. Under 35 U.S.C. § 284 and Supreme Court precedent, Defendants are entitled to prejudgment interest on the actual damages award of $53,810.10 from the date of first infringement, which was December 24, 2019, until the date judgment is entered. See General Motors Corp. v. Devex Corp., 461 U.S. 648, 657 (1983) (“prejudgment interest should be awarded under § 284 absent some justification for withholding such an award.”); Nickson Indus., Inc. v. Rol Mfg. Co., Ltd., 847 F.2d 795, 800 (Fed. Cir. 1988) (citing Devex, 461 U.S. at 656) (other citation omitted) (“prejudgment interest should be awarded from the date of infringement to the date of judgment.”). In an exercise of its discretion, the Court finds that the California state statutory rate of 7% per annum is appropriate for this prejudgment interest; the Court concludes that using the much lower T-Bill rate, as advocated by Plaintiffs, would not even cover inflation let alone a conservative rate of return. See, e.g., Evolusion Concepts, Inc. v. HOC Events, Inc., No. 2:19-cv-02736-JLS-DFM, 2022 U.S. Dist. LEXIS 204666, at *31 (C.D. Cal. Oct. 28, 2022) (citing EcoServices, LLC v. Certified Aviation Servs., LLC, 340 F. Supp. 3d 1004, 1033 (C.D. Cal. Oct. 26, 2018) (rejecting accused infringer’s request to apply T-Bill rate, and noting that “[m]any courts in the Ninth Circuit have calculated prejudgment interest based upon the California state statutory rate of seven percent”), aff’d in part, vacated in part on other grounds, and remanded, 830 F. App’x 634 (Fed. Cir. 2020)). NOW, THEREFORE, IT IS ORDERED, ADJUDGED AND DECREED THAT JUDGMENT IS HEREBY ENTERED IN THIS MATTER AS FOLLOWS: 1. The Court has subject matter jurisdiction over this action and personal jurisdiction over the parties. 2. Once this Final Judgment and Permanent Injunction is signed by the Court and served upon Plaintiffs, any failure by Plaintiffs to comply herewith shall constitute contempt of court. 3. Plaintiffs have received actual notice of the entire contents of this Final Judgment and Permanent Injunction and, upon entry of this Final Judgment and Permanent Injunction by the Court, Plaintiffs will be served via the Court’s CM/ECF system, whether directly or through Plaintiffs’ attorney. Defendants need not take any further action to serve this Final Judgment and Permanent Injunction on any of Plaintiffs. This Final Judgment and Permanent Injunction is valid and enforceable against each of Plaintiffs immediately upon entry by the Court. 4. Plaintiffs Imprenta Services, Inc. and Mike Sanchez (aka Mike C. Sanchez, Michael C. Sanchez, Miguel Sanchez and Miguel C. Sanchez) have willfully infringed at least claim 1 of the ’375 Patent by way of making, using, offering to sell and/or selling within the United States, and/or importing into the United States, each of the following products (referred to herein by Plaintiffs’ Model Nos.): CRC301, CRC302, CRC303, CRC304, CRC305, CRC306, CRC307, CRC308, CRC310, CRC311, CRC312, CRC313, CRC314, CRC315, CRC316, CRC317, CRC318, CRC703, CRC704, CRC705, CRC706, CRC707 (collectively, the “Infringing Products”). 5. Plaintiffs Imprenta Services, Inc. and Mike Sanchez (aka Mike C. Sanchez, Michael C. Sanchez, Miguel Sanchez and Miguel C. Sanchez), together with their respective officers, agents, servants, employees, and attorneys, and those persons in active concert or participation with any of them, who receive actual notice of this Final Judgment and Permanent Injunction by personal service or otherwise, are and shall remain restrained and enjoined, pursuant to 35 U.S.C. § 283 and Fed. R. Civ. P. 65, from making, using, offering to sell, and/or selling within the United States, and from importing into the United States, any of the Infringing Products, and from otherwise infringing or inducing others to infringe the ’375 Patent. 6. Plaintiffs Imprenta Services, Inc. and Mike Sanchez (aka Mike C. Sanchez, Michael C. Sanchez, Miguel Sanchez and Miguel C. Sanchez), together with their respective officers, agents, servants, employees, and attorneys, and those persons in active concert or participation with any of them, who receive actual notice of this Final Judgment and Permanent Injunction by personal service or otherwise, are and shall forever remain restrained and enjoined from knowingly causing, aiding, assisting or abetting any other person or entity to take any action prohibited by the foregoing paragraph 5. 7. The foregoing paragraphs 5-6 of this Final Judgment and Permanent Injunction shall expire upon expiration of the ’375 Patent. 8. Plaintiffs shall take nothing by their Complaint. Judgment is entered against Plaintiffs on their claims and/or defenses for non-infringement of the ’375 Patent, for a finding of inequitable conduct against Defendants, and to have Sanchez declared the sole inventor or a co-inventor of the ’375 Patent. 9. Pursuant to Rule 11 of the Federal Rules of Civil Procedure, Defendants shall recover from Plaintiffs and their counsel, Frederic M. Douglas, jointly and severally, $103,722.13 in sanctions. 10. Pursuant to 35 U.S.C. § 284, Defendants shall recover from Plaintiffs, jointly and severally, $107,620.20, as damages owing to Plaintiffs’ willful patent infringement. 11. Pursuant to 35 U.S.C. § 284, Defendants shall also recover from Plaintiffs, jointly and severally, pre-judgment interest on the actual damages amount of $53,810.10, based on the California state statutory rate of 7% per annum and starting from December 24, 2019 until the date this Final Judgment and Permanent Injunction is entered, for a pre-judgment interest award of: a. $13,089.31, if entered on June 15, 2023. b. $13,120.70, if entered on June 18, 2023. c. $13,131.16, if entered on June 19, 2023. d. $13,141.62, if entered on June 20, 2023. e. $13,152.09, if entered on June 21, 2023. f. $13,162.55, if entered on June 22, 2023. See L.R. 58-7. 12. Pursuant to 28 U.S.C. § 1961, Defendants shall also recover from Plaintiffs, jointly and severally, post-judgment interest on all amounts awarded in paragraphs 10-11 above, running from the date of this Final Judgment and Permanent Injunction until paid in full, at a rate equal to the weekly average one-year constant maturity Treasury yield for the calendar week preceding the date of this Final Judgment and Permanent Injunction, compounded annually, as provided in 28 U.S.C. § 1961
Source: PACER Docket, Case 2:20-cv-06177, California Central District Court

The final judgment is comprehensive and punitive in scope: the court entered summary judgment for defendants on every substantive issue, applied a 2.0 willfulness multiplier, imposed a permanent injunction covering 22 named product models, and sanctioned plaintiffs and their counsel under Rule 11. The use of both § 284 enhanced damages and Rule 11 sanctions simultaneously is notable — it reflects the court's assessment not only of the infringement itself but of the litigation conduct underlying the declaratory action.

PACER case 2:20-cv-06177 · Public docket record Explore in Eureka ↗
Court ruling

Injunction granted: what the final judgment means for both parties

Legal mechanism

Permanent injunction following willful infringement finding

A permanent injunction under 35 U.S.C. § 283 prohibits the enjoined party from making, using, selling, or importing the infringing products for the life of the patent. The court entered the injunction after finding willful infringement of Claim 1 of the '375 Patent and granting defendants' summary judgment motions. Non-compliance constitutes contempt of court. The injunction expires upon expiration of the '375 Patent.

Injunction under 35 U.S.C. § 283
Patent holder outcome

Karll and Eco Packaging recover damages, injunction, and sanctions

Defendants prevailed on all counterclaims. They recovered $107,620.20 in willfulness-enhanced damages (2.0 multiplier on $53,810.10 actual damages), prejudgment interest at 7% p.a. from December 24, 2019, post-judgment interest, and $103,722.13 in Rule 11 sanctions. The permanent injunction bars plaintiffs and their associates from continuing to make or sell the 22 identified infringing products. The '375 Patent's enforceability is confirmed.

Full defendant win — damages + injunction
Plaintiff outcome

Plaintiffs' declaratory claims fail; significant financial exposure imposed

All three of plaintiffs' affirmative claims — non-infringement, inequitable conduct, and inventorship correction — were dismissed on summary judgment. Plaintiffs and their counsel are jointly and severally liable for $103,722.13 in Rule 11 sanctions, $107,620.20 in enhanced damages, plus prejudgment and post-judgment interest. The 22 CRC-model products are permanently enjoined from U.S. manufacture, sale, and importation.

Plaintiffs took nothing; sanctions imposed
Commercial implications

Patent holds — metal child-resistant container IP landscape reinforced

The court's willfulness finding and 2.0 multiplier signal that filing a declaratory action without a strong non-infringement or invalidity basis carries significant downside risk. Companies operating in the child-resistant packaging space should treat US10513375 as an enforceable, court-confirmed patent. The Rule 11 sanctions against counsel also signal judicial scrutiny of weak declaratory judgment strategies in this district.

Enforceable patent confirmed
Legal analysis based on PACER docket records for case 2:20-cv-06177 and PatSnap Eureka litigation intelligence Search PatSnap Eureka ↗
Parties and representation

Full party and counsel information

RoleNameTypeDetail
PlaintiffImprenta Services, Inc.Company/Search in Eureka ↗
Co-PlaintiffMike SanchezIndividualSearch in Eureka ↗
DefendantNicholas Patrick KarllIndividual/Search in Eureka ↗
Co-DefendantDoesIndividualSearch in Eureka ↗
Co-DefendantEco Packaging SolutionsCompanySearch in Eureka ↗
Plaintiff counselFrederic March DouglasAttorneyCounsel for Imprenta Services, Inc.Search in Eureka ↗
Plaintiff law firmLaw Offices of Frederic M DouglasLaw FirmRepresenting Imprenta Services, Inc.Search in Eureka ↗
Defendant counselBrandon J. WitkowAttorneyCounsel for Nicholas Patrick KarllSearch in Eureka ↗
Defendant counselMichael C. MackeyAttorneyCounsel for Nicholas Patrick KarllSearch in Eureka ↗
Defendant law firmMackey Law Firm PLLCLaw FirmRepresenting Nicholas Patrick KarllSearch in Eureka ↗
Defendant law firmWitkow Baskin APLCLaw FirmRepresenting Nicholas Patrick KarllSearch in Eureka ↗
Presiding judgeJudge N/AJudgeCalifornia Central District CourtSearch in Eureka ↗
R&D signals

R&D signals in the child-resistant container patent space

Forward-looking patent and innovation intelligence derived from US10513375 and the portfolios of Karll, Eco Packaging Solutions, and Imprenta Services in the metal child-resistant packaging domain.

Patent portfolio

Karll and Eco Packaging's IP footprint in child-resistant packaging

US10513375 is the patent at the centre of this dispute, held by Nicholas Patrick Karll and commercialised through Eco Packaging Solutions. Monitoring Karll's broader filing activity in child-resistant container design and closure mechanisms may reveal continuation patents or divisionals that extend protection beyond the '375 Patent's current claim scope — material intelligence for any competitor in this space.

Portfolio monitoring
Technology landscape

Filing trends in metal child-resistant container innovations

The child-resistant packaging sector has seen increased filing activity driven by cannabis legalisation and pharmaceutical regulatory requirements. Tracking CPC classification trends around metal container closures and child-resistant mechanisms can help R&D teams identify crowded claim areas versus white-space opportunities for next-generation packaging designs that avoid the '375 Patent's claim scope.

Sector filing trends
Competitor IP posture

Imprenta Services' patent activity post-litigation

Imprenta Services was found to have willfully infringed US10513375 across 22 product models and is now permanently enjoined in the U.S. market. Monitoring whether Imprenta or Mike Sanchez subsequently filed design-around patents or pursued alternative closure technologies could indicate where the competitive product development has shifted following this adverse judgment.

Post-litigation IP activity
White-space opportunity

Design-around space near US10513375 claim scope

With Claim 1 of US10513375 now adjudicated as infringed by a broad product family, identifying structural or functional design variations that fall outside the '375 Patent's claim language presents a commercial opportunity. Eureka can map adjacent claim space in child-resistant metal container patents to surface freedom-to-operate white space for new product development.

Design-around opportunity
Related litigation

Similar patent cases: child-resistant packaging disputes in U.S. district courts

Explore related declaratory judgment and infringement cases involving child-resistant container patents litigated in U.S. district courts, including C.D. California.

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Imprenta Services, Inc. patent enforcement history, California Central District Court case history, Imprenta Services, Inc.'s full IP portfolio, and comparable case analysis
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Strategic implications

What this case signals for the child-resistant packaging IP landscape

A failed declaratory action resulting in a permanent injunction, enhanced damages, and attorney sanctions sets a cautionary precedent for packaging IP disputes.

Declaratory actions can accelerate liability — audit infringement risk first

Filing for declaratory non-infringement without a strong claim construction or invalidity argument can consolidate the patent holder's position. In this case, the declaratory action gave the patent holder a forum to assert counterclaims and win enhanced damages. Companies considering DJ actions against packaging patents should conduct rigorous FTO and invalidity analysis before filing.

Rule 11 sanctions exposure is real — counsel must assess claims carefully

The $103,722.13 sanction imposed jointly and severally on plaintiffs and their counsel is a direct reminder that courts will scrutinise whether declaratory claims — including inequitable conduct and inventorship correction — are grounded in fact. Law firms advising clients in IP-adjacent product disputes should document the evidentiary basis for each claim before filing.

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Willfulness multiplier riskInventorship challenge barPackaging patent enforcement trends
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Frequently asked questions

Imprenta v Nicholas — key questions answered

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Run an FTO before entering the child-resistant container market

US10513375 is now backed by a court-entered permanent injunction. Use PatSnap Eureka to assess your product's clearance against the '375 Patent's claims and monitor the broader child-resistant packaging IP landscape before launch.

Disclaimer

This page is compiled from public court dockets and third-party patent and litigation data via PatSnap Eureka, and is provided for general informational purposes only. The information shown — including party names, patent and application numbers, dates, case status, outcomes, and any analysis — may be incomplete, may not reflect the most recent filings or legal status, and may contain errors or omissions. Verify all details against official court records (for example, PACER) and the relevant patent office before relying on them.

Nothing on this page constitutes legal advice or a legal opinion on the validity, infringement, enforceability, or scope of any patent or case, and no attorney‑client relationship is created by its use. Any description of an outcome (such as a dismissal, settlement, or consent judgment) is a general summary, not a legal determination. All patents, trademarks, and company or law‑firm names are the property of their respective owners. PatSnap makes no warranty as to the accuracy or completeness of this content and disclaims, to the fullest extent permitted by law, all liability for reliance on it. For advice on a specific matter, consult qualified legal counsel.

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