DCT
2:17-cv-07665
Jon Kurtz v. Samsung Electronics America Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Jon Kurtz (California)
- Defendant: Samsung Electronics America, Inc. (New York) and Samsung Electronics Co., Ltd. (Republic of Korea)
- Plaintiff’s Counsel: Tucker Ellis LLP
- Case Identification: 2:17-cv-07665, C.D. Cal., 10/19/2017
- Venue Allegations: Venue is alleged to be proper as to Samsung Electronics America based on its commission of infringing acts and having a regular and established place of business in the district. Venue is alleged to be proper as to the foreign parent, Samsung Electronics Co., Ltd., on the basis that suits against foreign entities are proper in any judicial district.
- Core Dispute: Plaintiff alleges that earphone covers sold by Samsung in conjunction with its Galaxy line of mobile phones infringe a patent related to flexible earphone covers.
- Technical Context: The technology concerns accessories for personal audio devices, specifically removable covers for earbuds designed to improve in-ear stability, comfort, and sound delivery.
- Key Procedural History: The patent-in-suit is a continuation of a prior application that issued as U.S. Patent No. 9,307,313. The complaint alleges that Plaintiff sells a commercial product, "EarSkinz," which practices the patent and that its packaging displays the patent number, providing at least constructive notice to Defendants.
Case Timeline
| Date | Event |
|---|---|
| 2014-04-24 | '168 Patent Priority Date |
| 2017-08-22 | U.S. Patent No. 9,743,168 Issues |
| 2017-10-19 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,743,168 - “FLEXIBLE EARPHONE COVER”
The Invention Explained
- Problem Addressed: The patent describes standard-issue earphones, such as Apple's EarPods, as suffering from several drawbacks: they are made of hard plastic, leading to poor fit and discomfort; they can slip out of the user's ear during movement; they do not adequately direct sound into the ear canal; and they do not block ambient noise (’168 Patent, col. 1:37-46).
- The Patented Solution: The invention is a removable, flexible cover designed to fit over an earphone. The cover features a main body to encase the earphone, a specific configuration of three openings of relative sizes to accommodate the earphone and pass sound, and an integrated "ear cone" that defines a converging passageway to direct sound more effectively into the user's ear canal, thereby improving fit and audio quality (’168 Patent, Abstract; col. 2:35-50).
- Technical Importance: The invention aims to enhance the functionality of ubiquitous, standard-issue earphones by providing a single, integrated accessory that simultaneously addresses issues of physical fit, stability, and acoustic performance without requiring replacement of the earphones themselves (’168 Patent, col. 1:55-63).
Key Claims at a Glance
- The complaint asserts at least independent Claim 1 (Compl. ¶14).
- The essential elements of Claim 1 include:
- A flexible main body configured to substantially encase a portion of an earphone.
- The main body defines an internal cavity, a first opening for receiving the earphone, a second smaller opening, and a third even smaller opening for passing sound.
- A critical limitation requires that the main body "defines no other holes therein."
- A flexible "ear cone" extends from the main body.
- The ear cone defines a converging passageway from the second opening to an exit, configured to direct sound into the user's ear canal.
III. The Accused Instrumentality
Product Identification
- The complaint identifies the accused products as "earphone covers in conjunction the sale of their Galaxy line of cell phones" and "additional versions of earphone covers sold by Defendants" (Compl. ¶¶15-16).
Functionality and Market Context
- The complaint alleges the accused products are "designed to cover an earphone" and incorporate the claimed features, including three openings and an ear cone to direct sound (Compl. ¶15). A photograph depicts two white earphone covers, identified as the accused product, showing an outer body and an inner cavity with openings (Compl. p. 5). The complaint alleges these products are sold with Samsung's widely distributed Galaxy line of phones but provides no further detail on their market positioning (Compl. ¶15).
IV. Analysis of Infringement Allegations
’168 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a flexible earphone cover, comprising: a flexible main body configured to substantially encase a portion of an earphone... | The complaint alleges Defendants sell "infringing earphone covers" and provides a photo of a product that appears to be a flexible cover designed to encase an earbud-style earphone. | ¶15 | col. 7:50-52 |
| wherein the flexible body defines: an internal cavity for receiving the earphone; a first opening at a side of the cavity for receiving the earphone there-through; a second opening at a side of the cavity, the second opening being smaller than the first opening; and a third opening at a side of the cavity... | The complaint alleges the accused product "incorporates three openings" and provides a photograph purporting to show these features. | ¶15 | col. 7:52-60 |
| wherein the third opening is configured to pass sound from a hole in the earphone into the ear of the user, and wherein the main body defines no other holes therein; | The complaint makes a general allegation that the accused product incorporates "every element of Claim 1," which would include this limitation. The provided photograph does not offer a complete view to confirm the absence of other holes. | ¶15 | col. 7:60-64 |
| a flexible ear cone extending from the main body, the flexible ear cone defining a converging passageway from the second opening to an exit configured to direct sound into an ear canal of a user. | The complaint alleges the product incorporates an "ear cone to direct sound into the user's ear canal." | ¶15 | col. 7:64-67 |
- Identified Points of Contention:
- Scope Questions: A primary dispute may arise over the negative limitation "wherein the main body defines no other holes therein." The complaint provides a single, limited-view photograph as evidence (Compl. p. 5). The question for the court will be whether the accused products, in reality, contain other apertures (e.g., for microphones or sensors common in modern earbuds) not visible in the provided image.
- Technical Questions: The complaint's allegations are conclusory and directly track the claim language (Compl. ¶15). A technical question will be what evidence the plaintiff can provide to show that the accused product's physical structures meet the specific relational requirements of the claims, such as the "second opening being smaller than the first opening" and the "third opening being smaller than the first opening and the second opening."
V. Key Claim Terms for Construction
The Term: "no other holes therein"
Context and Importance: This negative limitation is a potential vulnerability for the infringement claim. If the accused product has any aperture that qualifies as a "hole," infringement of Claim 1 is defeated. Practitioners may focus on this term because the functionality of modern earphones often relies on additional vents or microphone ports, which could be considered "holes."
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patentee may argue the term should be functionally limited to openings of a similar nature to the three explicitly recited openings. The specification's statement that "the main body 108 is configured not to cover any vent holes in the earphone" could suggest that an opening in the cover designed to align with a vent is distinct from the type of "hole" the limitation is meant to exclude (’168 Patent, col. 5:58-60).
- Evidence for a Narrower Interpretation: A defendant may argue for the term's plain and ordinary meaning: any perforation or opening. This is supported by specification language contemplating earphones with additional holes for microphones or sensors and noting that "covering these hole(s) may hinder" their operation, suggesting the inventor deliberately chose to claim a cover without any such additional openings (’168 Patent, col. 4:35-39).
The Term: "ear cone"
Context and Importance: The structure and function of this element are central to the invention's purported improvement in sound delivery. The infringement analysis will depend on whether the accused product's corresponding feature can be properly characterized as an "ear cone."
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim itself defines the term functionally as "defining a converging passageway from the second opening to an exit configured to direct sound into an ear canal" (’168 Patent, col. 7:65-67). The patentee could argue that any structure performing this function meets the limitation.
- Evidence for a Narrower Interpretation: A defendant may point to the specification, which describes a "preferable embodiment" where the angle of the ear cone is "between about 55 degrees and about 80 degrees," arguing these specifics are necessary for the cone to function as intended and should therefore limit the claim's scope (’168 Patent, col. 6:1-3).
VI. Other Allegations
- Willful Infringement: The complaint alleges willful infringement "on information and belief" (Compl. ¶18). It further alleges that the patent number is displayed on the packaging of Plaintiff's "EarSkinz" products, which may support a claim of at least constructive notice of the ’168 patent after its issuance date (Compl. ¶10).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of factual proof and definition: does the accused Samsung product in fact have "no other holes" besides the three required by Claim 1? This question combines a factual inquiry into the product's actual design with a legal one concerning the proper construction of the term "hole" in the context of the patent.
- A key evidentiary question will be one of structural correspondence: can the plaintiff produce evidence beyond the conclusory allegations and single photograph in the complaint to demonstrate that the accused product's physical features map onto every element of Claim 1, particularly the specific hierarchy of relative sizes for the three claimed openings?