DCT

5:18-cv-03150

Sanho Corp v. Kaijet Technology Intl Ltd Inc

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Key Events
Amended Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 5:18-cv-03150, N.D. Cal., 08/29/2018
  • Venue Allegations: Venue is asserted based on Defendant doing business in California, the occurrence of alleged infringing acts within the judicial district, and Defendant having expressly aimed its conduct at the district.
  • Core Dispute: Plaintiff alleges that the ornamental design of Defendant’s "UltraDrive" multi-function docking station infringes Plaintiff's design patent, alongside claims of copyright infringement and unfair competition related to Plaintiff's "HyperDrive" product.
  • Technical Context: The lawsuit concerns the market for computer peripherals, specifically compact, multi-port docking stations designed to expand the connectivity of modern laptops.
  • Key Procedural History: The complaint alleges that Plaintiff sent a written cease and desist notice to Defendant regarding the alleged infringement on November 20, 2017, prior to filing suit.

Case Timeline

Date Event
2016-12-05 Plaintiff's "HyperDrive" product released (approx.)
2016-12-13 '875 Patent Priority Date
2017-01-01 Plaintiff's "HyperDrive" product began shipping (approx.)
2017-10-01 Defendant's "UltraDrive" product launched (approx.)
2017-11-20 Plaintiff sent cease and desist letter to Defendant (approx.)
2018-03-27 U.S. Design Patent No. D813,875 issued
2018-08-29 First Amended Complaint filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Design Patent No. D813,875 - "Multi-function docking station"

  • Patent Identification: U.S. Design Patent No. D813,875, "Multi-function docking station," issued March 27, 2018.

The Invention Explained

  • Problem Addressed: Design patents do not solve technical problems; they protect the non-functional, ornamental appearance of an article of manufacture. The goal is to create a unique and aesthetically pleasing visual appearance for a product.
  • The Patented Solution: The '875 Patent claims the specific ornamental design for a multi-function docking station. The design, as depicted in the patent's figures, consists of a slim, rectangular body with rounded corners. A key feature is a pair of male connectors protruding from one of the shorter sides, designed to plug directly into a host device. The longer sides of the device feature an arrangement of various I/O ports in specific shapes and positions ('875 Patent, FIGs. 1, 7, 8). The overall impression is one of a compact, flush-mounting peripheral.
  • Technical Importance: The design provides a specific, minimalist aesthetic for a docking station intended to integrate closely with the form factor of modern laptops (Compl. ¶18, p.5). Plaintiff alleges it is the assignee of the '875 Patent (Compl. ¶13).

Key Claims at a Glance

  • Design patents typically have a single claim. The asserted claim is: "The ornamental design for a multi-function docking station, as shown and described." ('875 Patent, Claim).
  • The scope of this claim is defined by the visual depictions in Figures 1-8 of the patent.

III. The Accused Instrumentality

Product Identification

  • Defendant’s "UltraDrive" or "Ultradrive" multi-function docking station (Compl. ¶17, ¶51).

Functionality and Market Context

  • The complaint describes the "UltraDrive" as a "counterfeit version" of Plaintiff's "HyperDrive" product (Compl. ¶17).
  • The accused functionality is its overall ornamental design. The complaint alleges the "UltraDrive" copies the "overall design, and various details including the 2 USB-C input connectors, the same 7 output ports, and the blue LED light" (Compl. ¶18).
  • The complaint alleges that Defendant targeted Plaintiff's market and intended to deceive consumers into believing they were purchasing the genuine "HyperDrive" product (Compl. ¶18). The complaint references Exhibit D, which it alleges provides a side-by-side comparison of the two products and their packaging (Compl. ¶53).

IV. Analysis of Infringement Allegations

The standard for design patent infringement is whether, in the eye of an "ordinary observer" giving such attention as a purchaser usually gives, the two designs are substantially the same, such that the resemblance is sufficient to deceive the observer into purchasing one supposing it to be the other.

The complaint alleges that Defendant’s "UltraDrive" product infringes the '875 Patent because "the overall shape and/or appearance of the patented article and infringing product is identical, or substantially the same" (Compl. ¶51). The complaint asserts that an ordinary observer "could find the designs substantially similar, and thus be induced to mistakenly purchase Defendant's product" (Compl. ¶51). To support this, the complaint points to alleged copying of specific features, including the dual USB-C input connectors and the number and general layout of output ports (Compl. ¶18). The complaint references visual evidence in Exhibit E, which allegedly depicts the accused product and demonstrates its substantial similarity to the patented design (Compl. ¶51).

  • Identified Points of Contention:
    • Visual Scope: A central question will be whether the overall visual impression of the "UltraDrive" is substantially the same as the design claimed in the '875 Patent. This will involve a detailed comparison of the products' shapes, proportions, and the arrangement of their surface features.
    • Technical Questions: The analysis will question whether any functional aspects of the design, such as the number or type of ports, should be discounted from the ornamental comparison. The focus of the legal test is on the non-functional, ornamental aspects of the design.

V. Key Claim Terms for Construction

The complaint does not provide sufficient detail for analysis of claim term construction. In design patent cases, formal claim construction is rare, as the figures in the patent define the scope of the claimed design. The infringement analysis typically proceeds directly to a comparison of the accused product with the patent's drawings. The dispute will likely focus on the application of the "ordinary observer" test rather than the definition of specific words.

VI. Other Allegations

  • Indirect Infringement: The complaint focuses on direct infringement under 35 U.S.C. § 271 by alleging Defendant is "using, selling, and offering for sale products embodying the '875 Patent" (Compl. ¶51). It does not contain specific factual allegations to support a separate claim for indirect patent infringement.
  • Willful Infringement: The complaint alleges that Plaintiff provided Defendant with pre-suit notice of infringement via a cease and desist letter on or around November 20, 2017 (Compl. ¶31). It further alleges that Defendant "refused to cease and desist and expressly stated that it would not" (Compl. ¶32). These allegations, if proven, may support a finding of willful infringement based on post-notice conduct.

VII. Analyst’s Conclusion: Key Questions for the Case

  • A core issue will be one of visual comparison: Applying the "ordinary observer" test, is the overall ornamental design of the accused "UltraDrive" substantially the same as the specific design claimed in the '875 Patent, or are there differences sufficient to distinguish them in the eye of a typical consumer?
  • A related question will concern the influence of prior art: The scope of a design patent is viewed in the context of prior art designs. The case may therefore turn on how the court and the finder of fact perceive the novelty of the '875 Patent's design and whether any similarities between the accused product and the patent are found in the broader field of existing computer docking stations.
  • A key evidentiary question will be the proof of intent: What evidence will be presented to support the allegations of intentional "copying" and "counterfeiting" (Compl. ¶17, ¶22), and how will that evidence influence the analyses of infringement, willfulness, and the related state-law claims of unfair competition?