DCT
8:19-cv-01118
Panasonic Holdings Corp v. Getac Technology Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Panasonic Corporation (Japan)
- Defendant: Getac Technology Corporation (Taiwan) and Getac, Inc. (California)
- Plaintiff’s Counsel: Haynes and Boone, LLP; Brinks Gilson & Lione
- Case Identification: 8:19-cv-01118, C.D. Cal., 03/24/2020
- Venue Allegations: Venue is alleged to be proper because Defendant Getac, Inc. is a California corporation residing in the district, and both Defendants are alleged to have committed acts of infringement and to conduct business within the judicial district.
- Core Dispute: Plaintiff alleges that Defendant’s rugged, convertible portable computers infringe three of Plaintiff's U.S. design patents covering the ornamental appearance of such devices.
- Technical Context: The lawsuit concerns the market for rugged, 2-in-1 portable computers, which feature detachable tablets and keyboard docks designed for durability in demanding industrial or field environments.
- Key Procedural History: The complaint alleges that Plaintiff provided constructive notice of the patents-in-suit via a patent marking website beginning in October 2017. The complaint also asserts that Defendant, as a competitor in the same industry, would have been aware of Plaintiff’s products embodying the patented designs through their respective launches and displays at industry trade shows.
Case Timeline
| Date | Event |
|---|---|
| 2014-10-20 | Priority Date for ’232 and ’998 Patents |
| 2015-07-16 | Priority Date for ’634 Patent |
| 2015-11-09 | Plaintiff's Panasonic CF-20 Product Debut |
| 2016-02-22 | Plaintiff's Panasonic CF-20 Displayed at MWC Barcelona |
| 2016-05-24 | U.S. Patent No. D756,998 Issued |
| 2016-09-13 | U.S. Patent No. D766,232 Issued |
| 2017-02-27 | Plaintiff's Panasonic CF-33 Product Debut |
| 2017-05-02 | U.S. Patent No. D785,634 Issued |
| 2017-10-03 | Plaintiff Alleges Providing Constructive Notice Via Website |
| 2018-09-19 | Defendant's GETAC K120 Product Launch |
| 2019-06-26 | Defendant's GETAC UX10 Product Launch |
| 2020-03-24 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. D766,232 - "Portable Computer," issued September 13, 2016
The Invention Explained
- Problem Addressed: Design patents protect the novel, ornamental appearance of an article of manufacture rather than a technical problem. The '232 Patent addresses the aesthetic design of a convertible, ruggedized portable computer.
- The Patented Solution: The patent claims the ornamental design for a portable computer, as shown in its figures ('232 Patent, Claim 1). The design features a two-part construction comprising a tablet screen and a keyboard dock, which can be used together in a laptop configuration or separated ('232 Patent, Fig. 19). Key visual elements include the shape of the ruggedized casing with pronounced corner bumpers, the appearance of the central hinge and docking mechanism, and the overall proportions of the device in both open and closed states ('232 Patent, Figs. 1, 10). The figures show that elements depicted in broken lines, such as internal components or specific port configurations, are for illustrative purposes and do not form part of the claimed design ('232 Patent, col. 1:54-57).
- Technical Importance: The design aims to create a distinct visual identity in the competitive market for rugged computers, combining an aesthetic of durability with the functionality of a convertible device.
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a portable computer, as shown and described" ('232 Patent, col. 1:26-28).
U.S. Patent No. D756,998 - "Portable Computer," issued May 24, 2016
The Invention Explained
- Problem Addressed: This patent addresses the ornamental design of the tablet, or display portion, of a rugged portable computer, which can function as a standalone device. A Certificate of Correction was issued to change the title from "Potable Computer" to "Portable Computer" ('998 Patent, Certificate of Correction).
- The Patented Solution: The patent claims the ornamental design for the tablet component, as depicted in its figures ('998 Patent, Claim 1). The design is characterized by a rectangular tablet form factor with a thick, protective bezel, distinctive corner bumpers, and a specific arrangement of buttons and sensors on its front face ('998 Patent, Fig. 3). The rear of the tablet features a particular indented pattern on the casing ('998 Patent, Fig. 4). As with the '232 Patent, broken lines illustrate environmental structure and are not part of the claimed design ('998 Patent, col. 1:63-65).
- Technical Importance: The design provides a specific, ruggedized aesthetic for a standalone tablet intended for use in harsh environments, distinguishing it from consumer-grade tablets.
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a portable computer, as shown and described" ('998 Patent, col. 1:57-59).
Multi-Patent Capsule
- Patent Identification: U.S. Patent No. D785,634, "Portable Computer Connection Terminal With Keyboard," issued May 2, 2017 ('634 Patent).
- Technology Synopsis: The '634 Patent claims the ornamental design for the keyboard dock portion of a convertible portable computer. The design includes the keyboard layout, touchpad, and the specific shape of the docking interface and hinge mechanism designed to connect with a tablet screen ('634 Patent, Fig. 1).
- Asserted Claims: The patent asserts a single claim for the ornamental design as shown and described ('634 Patent, col. 1:50-52).
- Accused Features: The complaint alleges that the keyboard dock components of the GETAC K120 and GETAC UX10 have an ornamental design that is deceptively similar to that claimed in the '634 Patent (Compl. ¶¶ 58-59).
III. The Accused Instrumentality
Product Identification
- The GETAC K120 Fully Rugged Tablet and/or Keyboard Dock and the GETAC UX10 Fully Rugged Tablet and/or Keyboard Dock (collectively, the "Accused Products") (Compl. ¶ 6).
Functionality and Market Context
- The Accused Products are rugged, 2-in-1 convertible computers designed for use in demanding field conditions (Compl. ¶ 8). They consist of a tablet component that can be detached from a keyboard dock, allowing them to function as either a laptop or a standalone tablet (Compl. ¶ 6). The complaint positions these products as direct competitors to Panasonic's own TOUGHBOOK line of rugged computers, which Plaintiff alleges practice the patents-in-suit (Compl. ¶¶ 25, 42). The complaint includes a side-by-side comparison of the patented design from the '232 Patent and the GETAC K120, highlighting their visual similarities (Compl. ¶ 38, p. 7).
IV. Analysis of Infringement Allegations
D'232 Patent Infringement Allegations
| Claim Element (from Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a portable computer, as shown and described. | The complaint alleges that the overall ornamental design of the GETAC K120 and GETAC UX10 is "deceptively similar and substantially the same" as the design claimed in the '232 Patent, as viewed by an ordinary observer. This is supported by a side-by-side visual comparison between the patented design (specifically referencing an image corresponding to Fig. 19) and a photograph of the GETAC K120. | ¶¶ 38, 41 | col. 1:26-28 |
D'998 Patent Infringement Allegations
| Claim Element (from Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a portable computer, as shown and described. | The complaint alleges that the tablet portions of the GETAC K120 and GETAC UX10 employ a design that is "deceptively similar and substantially the same" as the patented design of the '998 Patent. The complaint provides visual comparisons of the front of the patented design (from Fig. 3) with the GETAC UX10 tablet, and a perspective view (from Fig. 1) with the GETAC K120 tablet. | ¶¶ 50, 51 | col. 1:57-59 |
Identified Points of Contention
- Scope Questions: A central issue will be the scope of the design claimed. The patents disclaim certain elements using broken lines ('232 Patent, col. 1:54-57). The litigation may focus on whether the claimed design is limited to the exact visual representation in the solid lines or if it encompasses a broader overall aesthetic impression where minor differences in the accused products are immaterial.
- Technical Questions: A key question for the fact-finder will be whether an "ordinary observer" would find the designs to be substantially the same. This raises the question of what specific points of novelty distinguish the patented designs from the prior art, and whether those points are appropriated in the Accused Products. For example, are the shape and contour of the corner bumpers or the visual characteristics of the hinge assembly in the Accused Products so similar to the patented designs as to cause confusion? The complaint's visual comparison between the D'634 patent's keyboard dock design and the GETAC UX10's keyboard dock invites such a granular analysis (Compl. ¶ 58, p. 12).
V. Key Claim Terms for Construction
For design patents, the "claim" is the visual design as a whole, rather than a set of text-based terms. The central analysis is a comparison of the overall ornamental appearance.
- The Term: "The ornamental design... as shown and described"
- Context and Importance: The construction of this "term" is the entire infringement analysis. It defines the scope of protection and dictates how the patented design is compared to the accused product. The outcome of the case will depend on whether the court adopts a broad or narrow view of the overall visual impression protected by the patents.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that the claim covers the overall visual impression created by the combination of features shown in solid lines, suggesting that the design's essence lies in the general ruggedized aesthetic, the convertible form factor, and the specific interplay of major shapes. Plaintiff alleges that the GETAC products are "deceptively similar... when viewed through the eyes of the ordinary observer and considering the infringing product as a whole" (Compl. ¶ 41). This language supports an argument for focusing on the overall impression rather than minute details.
- Evidence for a Narrower Interpretation: A party could argue that the design is limited to the precise ornamental features depicted in the patent drawings. The patent explicitly states that "The broken lines shown in the figures represent environment only and form no part of the claimed design" ('232 Patent, col. 1:54-57). This language could be used to argue that the design is narrowly defined by what is shown in solid lines, and any deviation in an accused product, particularly in those solid-line features, is sufficient to avoid infringement.
VI. Other Allegations
- Indirect Infringement: The prayer for relief requests an injunction against "otherwise contributing to or inducing the infringement" of the patents-in-suit (Compl. p. 13, ¶c). However, the complaint does not plead specific facts to support separate counts of induced or contributory infringement, focusing instead on allegations of direct infringement.
- Willful Infringement: The complaint alleges that Defendant's infringement has been and continues to be "willful and deliberate" (e.g., Compl. ¶ 47, 55, 63). The allegations are based on two main grounds: first, constructive notice via Plaintiff's patent marking on its website since at least October 3, 2017 (Compl. ¶ 35); and second, alleged actual knowledge arising from Defendant's status as a direct competitor and its alleged awareness of Plaintiff's commercial products from industry events (Compl. ¶¶ 31-34). The complaint further alleges that Defendant "copied the designs" covered by the patents (Compl. ¶ 42).
VII. Analyst’s Conclusion: Key Questions for the Case
This dispute appears to center on the classic design patent infringement test and the line between inspiration and appropriation in a competitive product market. The key questions for the court will likely be:
- The Ordinary Observer Test: Will an ordinary observer, taking into account the prior art, be deceived into purchasing one of Defendant's products believing it to be one of Plaintiff's? The case will likely depend heavily on visual evidence and testimony regarding the overall impression created by the competing designs.
- Functionality vs. Ornamentation: A core issue will be how to distinguish the unprotectable functional requirements of a rugged, convertible computer (e.g., the need for protective bumpers, a secure latch) from the purely ornamental aspects of the designs claimed in the patents. The court will need to determine the extent to which the claimed designs are dictated by function, which may limit the scope of their protection.
- Willfulness and Copying: A key evidentiary question will be whether Plaintiff can prove that Defendant had pre-suit knowledge of the patents and deliberately copied the patented designs, as alleged. The outcome of this question will determine Plaintiff's ability to recover enhanced damages.