DCT
2:23-cv-00831
Smarttray Intl LLC v. Astronics Advanced Electronics Systems Corp
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: SmartTray International, LLC (Arizona)
- Defendant: Astronics Advanced Electronics Systems Corp. (Washington)
- Plaintiff’s Counsel: Rose Law Group PC
- Case Identification: 2:23-cv-00831, D. Ariz., 08/11/2023
- Venue Allegations: Plaintiff alleges venue is proper in the District of Arizona because a substantial part of the acts or omissions giving rise to the claims occurred in the state.
- Core Dispute: Plaintiff alleges that Defendant's continued sublicensing of aircraft passenger seat PED holders constitutes patent infringement because Defendant's underlying license was terminated due to non-payment of royalties.
- Technical Context: The technology involves integrated holders for personal electronic devices (PEDs) in passenger transportation seating, a key feature for passenger convenience in the aviation industry.
- Key Procedural History: The dispute is rooted in an April 2015 exclusive license agreement between the parties. Plaintiff alleges Defendant failed to make required minimum royalty payments, which voided its authority to use or sublicense the patented technology and forms the basis for the current infringement claims.
Case Timeline
| Date | Event |
|---|---|
| 2011-10-13 | Earliest Priority Date for ’395, ’619, ’459, and ’910 Patents |
| 2014-08-06 | SmartTray and United Airlines enter into a licensing agreement |
| 2015-04-06 | SmartTray and AES enter into the exclusive Licensing Agreement |
| 2015-07-16 | AES sublicenses Zodiac Aerospace to manufacture PED holders |
| 2015-11-11 | SmartTray and AES enter into a Common Interest Agreement |
| 2016-11-17 | "November Meeting" to amend agreement terms |
| 2017-05-01 | AES and SmartTray agree to amend the United Agreement ("First Amendment") |
| 2018-06-01 | AES enters into a sublicensing agreement with Zodiac Aerospace |
| 2018-09-01 | AES enters into a sublicensing agreement with HAECO |
| 2018-12-11 | U.S. Patent No. 10,150,395 Issues |
| 2019-10-01 | U.S. Patent No. 10,427,619 Issues |
| 2019-11-05 | U.S. Patent No. 10,464,459 Issues |
| 2022-12-20 | U.S. Patent No. 11,529,910 Issues |
| 2023-08-11 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,150,395 - Electronic Device Support for Vehicles
The Invention Explained
- Problem Addressed: The patent’s background section notes that traditional airplane tray tables have been "largely unchanged for decades" and are limited in their functionality beyond simply supporting items like food and drink (Compl. ¶4; ’395 Patent, col. 1:28-35).
- The Patented Solution: The invention is a support for portable electronic devices integrated into a vehicle component like a tray table. It features a "collapsible cavity" for receiving and securing a device, which is formed by a fixed wall and a "sliding wall" that moves away from the fixed wall to create the device-holding space (’395 Patent, Abstract; col. 2:5-17). This mechanism allows passengers to secure their personal devices for hands-free viewing.
- Technical Importance: The patented solution aimed to enhance passenger comfort and convenience by providing a dedicated and secure holder for personal electronic devices within the limited space of a vehicle cabin (’395 Patent, col. 1:46-56).
Key Claims at a Glance
- The complaint does not identify any specific claims of the asserted patents. The independent claims of the ’395 Patent are Claims 1 and 3.
- Claim 1 requires, in part:
- A body having a planar shape
- A fixed wall formed by a back end of the body
- A sliding wall that slides from a first position engaging the fixed wall to a second position away from the fixed wall
- A cavity formed between the fixed and sliding walls
- A bottom between the walls that engages an edge of the electronic device
- Claim 3 requires, in part:
- A body with a front and back end
- A collapsible cavity comprising a fixed wall and a sliding wall
- A bottom between the walls that engages an edge of the electronic device
U.S. Patent No. 10,427,619 - Electronic Device Support for Vehicles
The Invention Explained
- Problem Addressed: Similar to the ’395 Patent, the invention addresses the limited functionality of traditional vehicular tray tables, which have not kept pace with passengers' use of personal electronics (’619 Patent, col. 1:29-38).
- The Patented Solution: This invention discloses a holding assembly with two independently rotatable walls—a front wall and a back wall—that receive an electronic device between them. The front wall is typically biased to apply pressure to the device, securing it in place. The assembly can also include features like an induction charger (’619 Patent, Abstract; col. 2:3-12).
- Technical Importance: This design provides an adjustable and secure holding mechanism for PEDs that can be integrated into a vehicle tray table, offering passengers enhanced convenience and comfort (’619 Patent, col. 1:40-49).
Key Claims at a Glance
- The complaint does not identify any specific claims of the asserted patents. The independent claims of the ’619 Patent are Claims 1, 4, and 8.
- Claim 1 requires, in part:
- A body with a first and second end
- A first wall rotatably mounted to the body
- A second wall adjacent to the first wall and also rotatably mounted
- An induction charger
- Wherein the first and second walls are independently rotatable
- Claim 4 requires, in part:
- A body with a first and second end
- A first wall rotatably mounted to the body
- A second wall adjacent to the first wall and also rotatably mounted
- Wherein the first and second walls are independently rotatable
- Claim 8 is a method claim requiring, in part:
- Providing a holding assembly with a rotating back wall and a rotating front wall
- Receiving a portable electronic device between the walls
- Wherein the front wall is biased to apply pressure to the device
U.S. Patent No. 10,464,459 - Tray Table With Electronic Device Support for Vehicles
- Technology Synopsis: This patent describes a tray table with a removable portion, which can be completely separated from the main body for cleaning or replacement. The invention also includes a wireless battery charger for charging one or more portable electronic devices (’459 Patent, Abstract).
- Asserted Claims: The complaint does not identify any specific claims of the asserted patents.
- Accused Features: The complaint makes a general allegation that various airlines are flying with products that utilize "SmartTray's patents" (Compl. ¶134).
U.S. Patent No. 11,529,910 - Low-Profile Electronic Device Holding Assembly for Vehicles
- Technology Synopsis: This patent discloses a low-profile holding assembly for PEDs that comprises a plurality of independently movable planar members. These members engage the device to hold it, and a portion of the assembly may be received within an open portion of a planar member to achieve a low-profile geometry when not in use (’910 Patent, Abstract).
- Asserted Claims: The complaint does not identify any specific claims of the asserted patents.
- Accused Features: The complaint makes a general allegation that various airlines are flying with products that utilize "SmartTray's patents" (Compl. ¶134).
III. The Accused Instrumentality
Product Identification
The complaint does not accuse a specific product manufactured by Defendant AES of direct infringement. Instead, it alleges that AES induced infringement by sublicensing SmartTray's patented technology to third parties—including aerospace companies like Zodiac Aerospace (now Safran) and HAECO—and selling licensed products to various airlines and seat OEMs (Compl. ¶¶30, 33, 136, 139). The accused instrumentalities are therefore the PED holder products manufactured and sold by these third parties.
Functionality and Market Context
The complaint references licensed products described in the 2015 agreement, such as the "X1 Tray," "X2 Tray," and associated kits (Compl. Ex. A, p. 14). These products are described as aircraft tray tables or kits that utilize an "expandable position mechanism that expands and retracts automatically to the thickness of a portable electronic device" to facilitate hands-free use of PEDs (Compl. Ex. A, p. 14). A visual in the complaint's exhibit shows a PED holder with a groove and a movable jaw for gripping a device (Compl. Ex. A, p. 14, "Schedule 5B - Trays and Kits"). The complaint alleges these products are used by numerous airlines, including Cathay Pacific, United Airlines, and Qantas Airways (Compl. ¶134).
IV. Analysis of Infringement Allegations
The complaint does not provide a claim chart or specific allegations mapping elements of any asserted claim to the functionality of an accused product. The core of the infringement allegation is contractual: that AES’s authority to sublicense the patents was terminated for non-payment, rendering any subsequent sublicensing an act of inducement (Compl. ¶¶131, 139). The following chart is a plausible, though not explicit, interpretation of how the technology described in the complaint's exhibit might map to an exemplary claim.
U.S. Patent No. 10,150,395 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a body having a planar shape | The accused products are described as aircraft tray tables, which have a planar body to support items (Compl. Ex. A, p. 14). | Ex. A, p. 14 | col. 2:5-6 |
| a sliding wall proximate the back end of the body... | The licensed products are described as having an "expandable position mechanism that expands and retracts automatically," which includes a movable "jaw" to grip a device (Compl. Ex. A, p. 14). This may be alleged to function as the claimed "sliding wall." | Ex. A, p. 14 | col. 2:12-14 |
| wherein a cavity is formed between the fixed wall and the sliding wall for receiving the planar portable electronic device | The space created by the "expandable position mechanism" between its fixed and movable parts forms a cavity or groove to receive the PED (Compl. Ex. A, p. 14). | Ex. A, p. 14 | col. 2:8-12 |
| a bottom between the fixed wall and the sliding wall that engages an edge of the planar portable electronic device | The base of the groove in the described "X1 Kit" or "X1 Tray" provides a surface upon which the edge of the PED rests (Compl. Ex. A, p. 14). | Ex. A, p. 14 | col. 2:15-17 |
The complaint does not provide sufficient detail for analysis of infringement of the ’619 Patent, as the licensed products described in its exhibits appear to use a sliding or expanding jaw mechanism, whereas the independent claims of the ’619 Patent require two independently rotatable walls.
Identified Points of Contention
- Contractual Questions: The primary point of contention is not technical but contractual. A threshold issue will be whether Defendant’s alleged non-payment of royalties was a material breach sufficient to terminate its authority under the license agreement, thereby rendering its subsequent sublicensing activities unauthorized acts of inducement.
- Scope Questions: Should the infringement analysis proceed, a key question will be one of definitional scope. For the ’395 Patent, the issue may be whether the "expandable position mechanism" with a "movable jaw" described in the license agreement (Compl. Ex. A, p. 14) constitutes a "sliding wall" as claimed and described in the patent's specification.
- Technical Questions: For the ’619 Patent, a central question may be whether the accused products, as made by sublicensees, incorporate the claimed structure of two "independently rotatable" walls. The complaint provides no specific facts to suggest they do, which may indicate a mismatch in technical operation between the patent's claims and the accused instrumentalities.
V. Key Claim Terms for Construction
"sliding wall" (’395 Patent, Claim 1)
- Context and Importance: This term is central because the licensed products are described as having an "expandable position mechanism" with a "movable 'jaw'" (Compl. Ex. A, p. 14). Whether this structure meets the "sliding wall" limitation will be critical to the infringement analysis for the ’395 Patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the function broadly, stating the "sliding wall is slideably attached... and slides from a first position... to a second position" to form a cavity (’395 Patent, col. 2:12-17). This language could support an interpretation that covers any component that moves translationally to create a device-receiving space.
- Evidence for a Narrower Interpretation: Specific embodiments in the patent, such as the bracket (704) shown in FIGS. 7A-7D, illustrate a specific linear sliding mechanism on rails and pegs. A defendant may argue that the term should be limited to such linear sliding structures, potentially excluding the pivoting "jaw" mechanism depicted in the complaint's exhibit (Compl. Ex. A, p. 14).
"independently rotatable" (’619 Patent, Claims 1 and 4)
- Context and Importance: This term requires that both the first and second walls of the holding assembly rotate independently. Practitioners may focus on this term because the products described in the license agreement do not appear to have two rotatable components, but rather a single expanding mechanism (Compl. Ex. A, p. 14). This raises a question of whether the accused technology falls within the claim's scope.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The plain language of the claim requires two walls that are each "rotatably mounted" and can rotate independently of one another (’619 Patent, col. 20:5-11).
- Evidence for a Narrower Interpretation: The embodiments in the patent, such as FIG. 8B, show a first wall (140) and a second wall (144) each attached to the body via distinct rotating mounts (820, 824), allowing them to pivot. A defendant may argue this requires two physically separate, hinged walls, which may not read on a mechanism where one part slides relative to another.
VI. Other Allegations
Indirect Infringement
The complaint's patent count is exclusively for induced infringement. It alleges AES had knowledge of the patents through the 2015 License Agreement (Compl. ¶126) and intentionally induced infringement by entering into sublicensing agreements and selling licensed products to third parties like Zodiac, HAECO, and various airlines after its own license was allegedly terminated (Compl. ¶¶131, 136, 139).
Willful Infringement
The complaint alleges that AES "has acted in willful, deliberate disregard of SmartTray's patent rights" (Compl. ¶141). The basis for this allegation is AES's pre-existing knowledge of the patents from the license agreement and its alleged continuation of sublicensing activities after its authority to do so was purportedly revoked due to non-payment (Compl. ¶¶129-131).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue appears to be contractual, not technical: was the 2015 License Agreement validly terminated due to Defendant's alleged non-payment? If the license remained in force, the patent infringement claim may fail for lack of an underlying infringing act.
- A key evidentiary question will be one of mechanistic scope: assuming the license was terminated, does the "expandable position mechanism" of the sublicensed products meet the specific claim requirements of a "sliding wall" (’395 Patent) or two "independently rotatable" walls (’619 Patent), or is there a fundamental mismatch in the patented and accused modes of operation?
- A potential procedural question is the sufficiency of the pleadings: does the complaint’s failure to identify specific asserted patents, claims, and accused products in its patent infringement count meet the pleading standards required by federal rules to proceed with a detailed infringement analysis?