DCT
2:24-cv-09311
Win Elements LLC v. Yondr Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Win Elements LLC and John Nguyen (California)
- Defendant: Yondr Inc (Delaware corporation, principal place of business in California)
- Plaintiff’s Counsel: Frederic M. Douglas
- Case Identification: 2:24-cv-09311, C.D. Cal., 12/16/2024
- Venue Allegations: Venue is alleged to be proper as Defendant maintains its principal place of business in the district and has a regular and established place of business there.
- Core Dispute: Plaintiffs seek a declaratory judgment that their products do not infringe Defendant’s patent, that the patent is invalid, and that the patent is unenforceable due to inequitable conduct during prosecution.
- Technical Context: The technology concerns systems and physical cases, or pouches, designed to limit a user's access to their mobile electronic device in certain locations or during specific times, such as at concerts or in schools.
- Key Procedural History: This action follows pre-suit communications, including an October 9, 2024, letter from Yondr accusing Win Elements of infringement of the then-pending application that would become the patent-in-suit. The complaint alleges that Yondr's counsel was provided with numerous prior art references, including translations of foreign patents, during the patent's prosecution but failed to disclose them to the USPTO, forming the basis for an inequitable conduct claim.
Case Timeline
| Date | Event |
|---|---|
| 2015-04-21 | Earliest Priority Date for '078 Patent (filing date of '788 Patent) |
| 2024-10-09 | Yondr sends letter to Win Elements alleging future infringement |
| 2024-10-29 | U.S. Patent No. 12,133,078 issues |
| 2024-11-25 | Yondr files counterclaims in a related action alleging infringement |
| 2024-12-16 | Plaintiffs file First Amended Complaint for Declaratory Judgment |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 12,133,078 - "System and Apparatus for Selectively Limiting User Control of an Electronic Device"
- Issued: October 29, 2024
The Invention Explained
- Problem Addressed: The patent addresses the problem of mobile electronic devices distracting users and others at communal events (e.g., concerts, social outings) and enabling unauthorized recording of performances ('078 Patent, col. 1:41-61). Existing solutions are described as ineffective or resisted by users who fear theft or missing important notifications ('078 Patent, col. 2:9-21).
- The Patented Solution: The invention is a system and apparatus, typically a physical case or pouch, for housing a mobile device. The case features a locking mechanism that renders the device inaccessible. The lock is configured to disengage only when a "pre-determined condition" is met, such as the case being moved outside a specific geographic area (e.g., leaving a concert venue) or after a certain amount of time has passed ('078 Patent, Abstract; col. 2:60-65). This allows venues to create "phone-free" zones without requiring patrons to surrender their devices entirely.
- Technical Importance: The technology provides a method for event organizers and others to manage mobile device use in a targeted manner, aiming to enhance audience engagement and protect intellectual property without the logistical challenges of device collection. (Compl. ¶7).
Key Claims at a Glance
- The complaint seeks a declaration of non-infringement and invalidity of all claims of the '078 Patent (Compl. ¶¶ 36, 45). The independent claims appear to be Claims 1, 9, and 15.
- Independent Claim 1 (Apparatus): A case for a mobile device comprising:
- a shell defining a cavity for the device, with an opening;
- a lock near the opening, configured to make the device at least partially inaccessible;
- the lock is further configured to unlock based on a "predetermined condition associated with a geographic region."
- Independent Claim 9 (Apparatus): A case substantially similar to Claim 1, with the lock configured to unlock in accordance with a "predetermined condition associated with a geographical region."
- Independent Claim 15 (System): A system comprising a case with a lock that renders a user unable to access a mobile device until a "predetermined condition is met," where the condition is associated with the "physical presence of the case being outside of a defined geographical region."
- The complaint does not explicitly reserve the right to address dependent claims but challenges all claims generally.
III. The Accused Instrumentality
Product Identification
Plaintiffs' "Safe Pouch" product line (Compl. ¶22).
Functionality and Market Context
The Safe Pouch is described as a "smartphone case for locking up smartphones, while unlocking the case with a magnet" (Compl. ¶22). The complaint affirmatively pleads that its products are non-infringing because they lack specific features recited in the '078 Patent's claims. Specifically, Plaintiffs contend their pouches do not utilize unlocking mechanisms based on geographic regions, time periods, RFID tags, microprocessors, or disabling functions of the mobile device itself (Compl. ¶37). The product is positioned as a simple, mechanical solution in contrast to the allegedly more complex, electronically controlled system claimed in the patent.
IV. Analysis of Infringement Allegations
This is a declaratory judgment action for non-infringement. The complaint outlines its non-infringement theory by identifying claim elements that its products allegedly lack. The following table summarizes these negative allegations for a representative independent claim.
’078 Patent Non-Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a shell defining a cavity sized to accommodate a mobile device, the shell having an opening to receive the mobile device; and a lock positioned proximate to the opening of the shell, the lock configured to render the mobile device at least partially inaccessible... | Plaintiff's "Safe Pouch" is a smartphone case for locking phones, but its unlocking mechanism is a simple magnet, not the electronically controlled system described in the patent (Compl. ¶22). | ¶22 | col. 10:41-49 |
| the lock further configured to unlock to enable access to the mobile device based on a predetermined condition associated with a geographic region. | Plaintiff alleges its pouches "fail to incorporate" this element, stating their products do not unlock based on a geographic region. The complaint also alleges the patent fails to provide sufficient written description or enablement for this structure (Compl. ¶¶ 37, 49, 50). | ¶37, ¶49 | col. 10:50-53 |
| Other representative limitations from various claims | Plaintiff further alleges its products do not incorporate unlocking based on a time period, interaction with a detacher, an RFID tag, a microprocessor, disabling a function of the mobile device, a female/male plate combination, unlocking based on passage of time, or receiving instructions to disable coded functions on the device (Compl. ¶37). | ¶37 | col. 11:1-8, col. 11:30-33, col. 12:17-21, col. 12:30-34 |
No probative visual evidence provided in complaint.
- Identified Points of Contention:
- Scope Questions: A central dispute will be the proper construction of "predetermined condition associated with a geographic region." The complaint suggests Yondr may advocate for a broad interpretation that covers merely leaving a location like a school, while Plaintiffs will likely argue for a narrower scope requiring the specific RFID, GPS, or transmitter-based technologies described in the patent's specification (Compl. ¶101-104; '078 Patent, col. 7:6-18).
- Technical Questions: The case will turn on whether Plaintiffs' magnet-based unlocking mechanism falls within the scope of the claims. The court will need to determine if the purely mechanical "Safe Pouch" contains any equivalent to the electronically-triggered locking and unlocking systems detailed in the patent.
V. Key Claim Terms for Construction
- The Term: "a predetermined condition associated with a geographic region" (Claim 1).
- Context and Importance: This term is the lynchpin of the non-infringement and invalidity arguments. The definition will determine whether a simple mechanical lock that can be opened anywhere (once a user has a magnet) is non-infringing, and whether prior art that discusses location-based access (like in classrooms) anticipates or renders the claim obvious. Practitioners may focus on this term because its breadth is a primary point of contention, as highlighted by the complaint's discussion of Yondr's arguments in a related prosecution (Compl. ¶101).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself does not specify the type of technology used to associate the condition with the geography, which could support a construction not limited to the specific embodiments. The term "venue" is used, which could be argued to be a broad concept (e.g., a "school ground") ('078 Patent, col. 10:57).
- Evidence for a Narrower Interpretation: The specification repeatedly describes the "geographic region" in the context of specific electronic systems, such as RFID proximity transmitters, Bluetooth beacons, and GPS-defined geofences ('078 Patent, col. 7:6-18, col. 8:10-16). The abstract also frames the invention this way. This could support a narrower construction limited to electronically determined and enforced geographic boundaries.
VI. Other Allegations
- Indirect Infringement: The complaint does not contain allegations of indirect infringement by Plaintiff. It seeks a declaration that it does not indirectly infringe (Compl. ¶38). The underlying dispute arose from Yondr's allegations, which presumably included claims of direct and indirect infringement against Win Elements.
- Willful Infringement: The complaint seeks a declaration that it has not willfully infringed. Yondr's pre-suit letter of October 9, 2024, put Win Elements on notice of the patent before it issued, and Yondr's stated intent to seek treble damages suggests Yondr will allege willful infringement based on post-issuance conduct (Compl. ¶¶ 12, 23).
- Inequitable Conduct: This is a central cause of action brought by Plaintiffs against Yondr. Plaintiffs allege that during prosecution of the '078 patent, Yondr and its counsel intentionally withheld material prior art from the USPTO with the intent to deceive the examiner (Compl., Third Cause of Action, ¶¶72-132).
- Materiality: The primary withheld reference is alleged to be Korean Patent Application KR-2007-0041248-A ("Shin '248"). Plaintiffs allege Shin '248 was highly material because it disclosed a mobile phone bag that blocks access based on location ("public places that require quiet, such as courtrooms, churches") and time ("automatically opening...after a preset time")—the very combination of features the USPTO examiner relied upon to allow the '078 patent claims (Compl. ¶¶ 93, 96, 99, 108).
- Knowledge and Intent: Plaintiffs allege that Yondr's counsel was provided with a copy of Shin '248, an English translation, and a "concise explanation" of its relevance on or about December 8, 2023, well before the patent issued (Compl. ¶¶ 89-92, 116). The complaint alleges that the failure to disclose this known, material, and non-cumulative reference gives rise to a strong inference of deceptive intent (Compl. ¶¶ 110, 114, 130).
VII. Analyst’s Conclusion: Key Questions for the Case
- Inequitable Conduct: A dispositive issue will be whether Yondr and its counsel engaged in inequitable conduct by withholding the Shin '248 reference. This will be a fact-intensive inquiry into what they knew, when they knew it, and whether their failure to disclose the reference to the USPTO was done with an intent to deceive.
- Claim Construction: The case will heavily depend on a question of definitional scope: will the term "predetermined condition associated with a geographic region" be narrowly construed to require the specific electronic enforcement mechanisms (RFID, GPS) detailed in the specification, or will it be given a broader meaning that could potentially cover more abstract location-based rules?
- Invalidity: Beyond inequitable conduct, the validity of the '078 patent will be heavily contested. The complaint identifies a significant body of prior art, raising the question of whether the claimed invention was truly novel and non-obvious at the time of filing, particularly in light of references like Shin '248 that allegedly teach the core concepts of time and location-based mobile device restriction.