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.
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.
See Complete Case & Patent Analysis →Filing to Injunction Granted in 1077 days
1,077 days from filing to final judgment — approximately 3 years of litigation in C.D. California
US10513375 — Metal Child-Resistant Container Patent


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.
Official order — verbatim text
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.
Injunction granted: what the final judgment means for both parties
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. § 283Karll 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 + injunctionPlaintiffs' 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 imposedPatent 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 confirmedFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | Imprenta Services, Inc. | Company | /Search in Eureka ↗ |
| Co-Plaintiff | Mike Sanchez | Individual | Search in Eureka ↗ |
| Defendant | Nicholas Patrick Karll | Individual | /Search in Eureka ↗ |
| Co-Defendant | Does | Individual | Search in Eureka ↗ |
| Co-Defendant | Eco Packaging Solutions | Company | Search in Eureka ↗ |
| Plaintiff counsel | Frederic March Douglas | Attorney | Counsel for Imprenta Services, Inc.Search in Eureka ↗ |
| Plaintiff law firm | Law Offices of Frederic M Douglas | Law Firm | Representing Imprenta Services, Inc.Search in Eureka ↗ |
| Defendant counsel | Brandon J. Witkow | Attorney | Counsel for Nicholas Patrick KarllSearch in Eureka ↗ |
| Defendant counsel | Michael C. Mackey | Attorney | Counsel for Nicholas Patrick KarllSearch in Eureka ↗ |
| Defendant law firm | Mackey Law Firm PLLC | Law Firm | Representing Nicholas Patrick KarllSearch in Eureka ↗ |
| Defendant law firm | Witkow Baskin APLC | Law Firm | Representing Nicholas Patrick KarllSearch in Eureka ↗ |
| Presiding judge | Judge N/A | Judge | California Central District CourtSearch in Eureka ↗ |
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.
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 monitoringFiling 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 trendsImprenta 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 activityDesign-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 opportunitySimilar 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.
Related patent case — similar technology
Comparable case in the same technology domain. Patent holder and defendant reached resolution after proceedings.
SettledRelated infringement action — same court
Comparable Metal child resistant container-adjacent infringement action. Patent enforcement dynamics analysed in depth.
Active · District CourtRelated invalidity challenge — appellate outcome
Combined invalidity and infringement action in the same technology space. Decided after substantive proceedings.
DecidedImprenta Services, Inc.'s broader IP enforcement history
Imprenta Services, Inc.'s full litigation history covering prior enforcement, licensing activity, and inter partes review proceedings.
Portfolio viewWhat 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.
Willfulness multipliers reshape damages calculus in packaging patent disputes
The court applied a 2.0 willfulness multiplier, doubling actual damages to $107,620.20. For companies selling competing products in the child-resistant container market, this case illustrates that knowledge of a patent — particularly where inventorship is contested — can convert a borderline infringement into a significant enhanced-damages liability.
Inventorship and inequitable conduct defences both failed on summary judgment
Two of plaintiffs' three affirmative claims were disposed of at summary judgment, suggesting the court found no genuine issue of material fact on either inequitable conduct or co-inventorship. Competitors seeking to challenge US10513375 going forward face a higher evidentiary bar — both defences have now been tested and rejected in this district.
Imprenta v Nicholas — key questions answered
The C.D. California court ruled entirely in favour of defendants Karll and Eco Packaging Solutions. The court found willful infringement of US10513375, awarded $107,620.20 in enhanced damages (2.0 multiplier), entered a permanent injunction barring plaintiffs from making or selling 22 named CRC-model products, and imposed $103,722.13 in Rule 11 sanctions against plaintiffs and their counsel jointly and severally.
US10513375 (Application No. US16/381,904) is a patent covering a metal child-resistant container. The patent is held by Nicholas Patrick Karll and is commercially associated with Eco Packaging Solutions. The court confirmed at least Claim 1 of the patent was infringed by 22 distinct CRC-model products made and sold by Imprenta Services.
The court granted defendants' motion for Rule 11 sanctions in part and imposed $103,722.13 jointly and severally against plaintiffs Imprenta Services and Mike Sanchez and their counsel Frederic M. Douglas. The specific factual findings underlying the sanctions are set out in the docket but the verdict summary records the amount and the joint and several liability. Rule 11 sanctions are imposed where the court finds a pleading, motion, or claim lacked an adequate factual or legal basis.
No. The court granted defendants' motion for summary judgment on both plaintiffs' claim for correction of inventorship (to have Sanchez declared sole or co-inventor of US10513375) and plaintiffs' inequitable conduct claim. Both defences were disposed of at the summary judgment stage, meaning the court found no genuine issue of material fact sufficient to proceed to trial on either claim.
The court granted defendants' motion for partial summary judgment of infringement damages in the amount of $53,810.10 in actual lost profits. The court then applied a willfulness multiplier of 2.0 under 35 U.S.C. § 284, increasing the award to $107,620.20. Prejudgment interest accrued at California's statutory rate of 7% per annum from the date of first infringement (December 24, 2019). Post-judgment interest was also awarded under 28 U.S.C. § 1961.
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.
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