DCT
5:21-cv-02105
Focally LLC v. Win Elements LLC
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Yondr, Inc. (Delaware)
- Defendant: Win Elements LLC (California); John Nguyen (individual)
- Plaintiff’s Counsel: OMNI LEGAL GROUP
- Case Identification: 5:21-cv-2105, C.D. Cal., 03/08/2022
- Venue Allegations: Venue is alleged to be proper in the Central District of California because the Defendants reside in the district and have committed alleged acts of infringement there, including offering the accused products for sale from an established place of business within the district.
- Core Dispute: Plaintiff alleges that Defendant’s "Safe Pouch" products, which are lockable cases for mobile phones, infringe a patent related to systems for selectively limiting user control of an electronic device.
- Technical Context: The technology addresses the social problem of distraction and unauthorized recording by mobile devices at communal events by physically securing the device in a pouch that can only be unlocked under specific conditions.
- Key Procedural History: The complaint alleges that Plaintiff sent cease and desist letters to Defendants in October and November 2021, which Defendants allegedly ignored. The complaint also includes a count for a declaratory judgment that a patent owned by Defendant Nguyen, U.S. Patent No. 10,980,324, is invalid as anticipated and/or obvious in view of Plaintiff’s asserted patent and its own commercial "Yondr" product.
Case Timeline
| Date | Event |
|---|---|
| 2014-04-22 | Priority Date for U.S. Patent No. 9,819,788 |
| 2017-11-14 | U.S. Patent No. 9,819,788 Issued |
| 2021-10-01 | Alleged launch of Accused Products ("Safe Pouch") |
| 2021-10-01 | Plaintiff sends first cease and desist letter |
| 2021-11-16 | Plaintiff sends second cease and desist letter |
| 2022-03-08 | Plaintiff's First Amended Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,819,788 - System and Apparatus for Selectively Limiting User Control of an Electronic Device, issued November 14, 2017
The Invention Explained
- Problem Addressed: The patent’s background section identifies the problem of mobile electronic devices distracting users at social outings and live events, detracting from the experience and enabling unauthorized recording of performances (’788 Patent, col. 1:45-65). It notes that prior solutions were deficient because they either completely cut off users from emergency notifications or failed to physically block the device's screen to reduce temptation ('788 Patent, col. 2:1-11).
- The Patented Solution: The invention is a case for a mobile device that includes a locking mechanism to render the device inaccessible to the user ('788 Patent, Abstract). The core concept is that the case can only be unlocked upon the occurrence of a "predetermined condition," such as leaving a defined geographical area (e.g., a concert venue) or the passage of a specific amount of time ('788 Patent, col. 3:1-11). The patent describes both manual unlocking systems (e.g., by venue staff) and automated systems using technologies like RFID ('788 Patent, col. 6:39-65).
- Technical Importance: The technology provides a method to create device-free zones without requiring patrons to surrender their devices, aiming to enhance audience engagement and protect intellectual property at live events ('788 Patent, col. 3:37-43).
Key Claims at a Glance
- The complaint asserts independent claims 2 and 3 and reserves the right to assert others (Compl. ¶¶ 20, 55).
- Independent Claim 2: The essential elements are:
- A case with a shell defining a cavity and an opening for a mobile device.
- A "locking means" that secures the opening, makes the device inaccessible, and is "non-disengageable by the user."
- Wherein the "predetermined condition" for disengagement is the "passage of time."
- Independent Claim 3: The essential elements are:
- A system comprising a case with a specific construction (front/rear panels, secured edges defining an opening) that becomes locked until a "predetermined condition is met."
- A "locking means" for securing the opening.
- A "means for unlocking the case."
III. The Accused Instrumentality
Product Identification
- The accused products are Defendants' "Safe Pouch" products (Compl. ¶10).
Functionality and Market Context
- The complaint alleges the "Safe Pouch" is a case sized to hold a mobile device, marketed for use in schools to create "phone-free classrooms" (Compl. ¶19). Functionally, the product is alleged to feature a locking mechanism that secures the phone inside the pouch, rendering it inaccessible to the student user (Compl. ¶23). The complaint states that the means for unlocking the pouch is a separate, "strong-enough magnet," which would be possessed by a teacher or administrator (Compl. ¶¶ 23, 26). The complaint includes a labeled photograph of the accused product, showing a fabric case with a magnetic-style lock. This image shows the "Shell/case" containing a mobile device, a "Cavity/opening sized to accommodate" the device, and the "Locking means" securing the flap. (Compl. p. 7).
IV. Analysis of Infringement Allegations
9,819,788 Infringement Allegations (Claim 2)
| Claim Element (from Independent Claim 2) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A case for selectively limiting a user's ability to control such user's own mobile electronic device, comprising, | The accused "Safe Pouch" products are alleged to selectively limit a student's ability to control their phone, while allowing access in an emergency. | ¶22 | col. 10:55-56 |
| a shell defining a cavity sized to accommodate the user's mobile electronic device and having an opening to receive the user's mobile electronic device therein; | The accused products are alleged to be a case with a shell and cavity sized for a mobile device. A photograph provided in the complaint depicts this structure. | ¶23; p. 7 | col. 2:46-53 |
| a locking means for at least partially securing the opening of the shell so that the electronic device is rendered inaccessible to the user, the locking means being further non-disengageable by the user of the mobile electronic device; | The accused products allegedly have a locking means that is "non-disengageable by the user" because it requires a separate unlocking device ("any strong-enough magnet") not in the user's possession. | ¶23 | col. 2:59-66 |
| wherein the predetermined condition is the passage of time. | The complaint alleges this is met because students using the pouch are unable to access their phone until "after school," which is a specified time period, thereby constituting a "passage of time" as the condition for access. | ¶24 | col. 11:1-2 |
9,819,788 Infringement Allegations (Claim 3)
| Claim Element (from Independent Claim 3) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a case sized to receive the user's mobile electronic device having a front and a rear panel each having first and second longitudinally opposed side edges and laterally opposed lower edges, the first, second, and lower edges being secured together to define an opening... | The complaint alleges the accused products have this specific structure, providing annotated photographs showing the "Front panel," "Rear panel," and "Longitudinally opposed side edge[s]" and "Laterally opposed lower edge." | ¶28; p. 9 | col. 2:47-53 |
| the case operative to become locked so that the user is unable to access his own mobile electronic device contained therein until a predetermined condition is met; | The accused products are alleged to become locked to prevent user access until a predetermined condition is met, such as the passage of time ("after school") or the student locating a teacher with the unlocking magnet. | ¶28 | col. 3:8-15 |
| a locking means for at least partially securing the opening; | The complaint alleges the accused products have a locking means, which is depicted in photographs as a magnetic-style clasp. | ¶28 | col. 2:53-54 |
| and means for unlocking the case. | The complaint alleges the unlocking means is "any strong-enough magnet" held by a third party (e.g., a teacher). An annotated photograph shows a circular magnetic unlocking device labeled "Means for unlocking the case." | ¶29; p. 10 | col. 6:45-51 |
Identified Points of Contention
- Scope Questions: A central dispute may concern the scope of the term "predetermined condition." For Claim 2, the question is whether the social convention of an "after school" period, which is not controlled by the device itself, can satisfy the claim limitation "the predetermined condition is the passage of time." For Claim 3, the question is whether a student needing to find a teacher with a magnet constitutes a "predetermined condition" in the manner contemplated by the patent.
- Technical Questions: A factual question may arise over whether the accused product's magnetic lock is truly "non-disengageable by the user." The complaint alleges it is because the user lacks the required strong magnet, but a court may need to consider whether the user could disengage it through other means.
V. Key Claim Terms for Construction
- The Term: "predetermined condition" (Claim 3) and "wherein the predetermined condition is the passage of time" (Claim 2)
- Context and Importance: The definition of this term appears central to the infringement analysis. The patent ties the unlocking event to specific triggers. The complaint's infringement theory depends on interpreting this term broadly enough to cover external, social circumstances like the end of a school day or the act of finding a person with a key. Practitioners may focus on this term because its construction could determine whether the accused product's manual, third-party unlocking system falls within the scope of claims that also describe automated, geographically- or time-based unlocking.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states that one predetermined condition can require "the user of the electronic device to locate venue staff or other members in possession of the key to manually unlock the case" ('788 Patent, col. 6:49-51). This language may support the Plaintiff's theory that requiring a student to find a teacher with a magnet meets the "predetermined condition" limitation.
- Evidence for a Narrower Interpretation: The patent repeatedly frames the conditions in the context of automated systems, such as "physical presence of the case outside of a defined geographical region" (Claim 1) or being linked to a "proximity transmitter" or "beacon" ('788 Patent, col. 3:19-35). The abstract emphasizes conditions like detection "within a certain geographical region or even during a specified time." A defendant may argue these examples limit the term's scope to conditions that are technologically enforced by the system, not merely administrative policies like school schedules.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement by asserting that Defendants knew of the '788 patent and intended for their customers (e.g., schools) to infringe by providing them with "technical and/or installation guides, hardware specifications, demonstrations, and other actions" that encourage the infringing use (Compl. ¶¶ 65-67). Contributory infringement is alleged on the basis that the "Safe Pouch" is a material part of the invention, is not a staple article of commerce, and was known by Defendants to be especially made for an infringing use (Compl. ¶¶ 70-72).
- Willful Infringement: Willfulness is alleged based on Defendants' purported knowledge of the '788 patent. The complaint alleges this knowledge arises at least from the cease and desist letters sent on October 1, 2021, and November 16, 2021, and that Defendants’ continued alleged infringement thereafter constitutes willful and reckless disregard of Plaintiff's patent rights (Compl. ¶¶ 31-34, 57).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction: Can the term "predetermined condition," particularly the "passage of time" variant in Claim 2, be construed to cover an external social convention like the end of a school day, or is its meaning limited to a technologically-defined trigger integral to the patented system itself?
- A second central question will be factual and legal: Does the requirement for a user to locate a third party (a teacher) who possesses a generic unlocking tool (a strong magnet) satisfy the claim element of a "means for unlocking the case" that is tied to a "predetermined condition" as taught in the '788 patent?
- A key evidentiary question will be one of knowledge and intent: What evidence, beyond the receipt of cease and desist letters, will be presented to establish that Defendants knowingly induced infringement and that their conduct rose to the level of willfulness?