DCT
3:20-cv-02166
Wrethink Inc v. Seeminexcom Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Wrethink, Inc. (California)
- Defendant: Seeminex.com, Inc. (California); Seeminex Co. Ltd. (Korea)
- Plaintiff’s Counsel: Sheppard, Mullin, Richter & Hampton LLP
- Case Identification: 3:20-cv-02166, S.D. Cal., 11/04/2020
- Venue Allegations: Venue is based on Defendant Seeminex.com, Inc.'s location in San Diego, the parties' submission to jurisdiction in prior state court litigation, an alleged contractual consent to jurisdiction, and the substantial part of events giving rise to the action occurring in the district.
- Core Dispute: Plaintiff alleges its former contractor, Defendant, misappropriated Plaintiff's proprietary designs and inventions for a countertop device and wrongfully filed for and obtained a patent on those inventions in its own name, and seeks correction of inventorship and a declaration of ownership.
- Technical Context: The technology concerns a multi-function countertop appliance designed to integrate a digital display, document scanner, and communication features for managing family photos, documents, and other media.
- Key Procedural History: The complaint is founded upon a prior business relationship between the parties from approximately February to November 2018, governed by alleged confidentiality and independent contractor agreements (ICSA). Wrethink alleges that under these agreements, any inventions conceived by Seeminex during the project were to be owned by and assigned to Wrethink. Wrethink also notes it filed its own design patent application on the device's design months before Seeminex filed the provisional application that led to the patent-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2013-01-01 | Wrethink alleges initial conception of its "Rosy" device. |
| 2018-02-12 | Wrethink and Defendant enter into a Confidentiality Agreement. |
| 2018-03-12 | Wrethink and Defendant enter into an Independent Contractor Services Agreement (ICSA). |
| 2018-06-21 | Wrethink alleges it presented a new, detailed design for Rosy to Seeminex. |
| 2018-08-27 | Seeminex delivers "DP2" prototype to Wrethink, allegedly embodying Wrethink's design. |
| 2018-11-01 | Parties' working relationship allegedly ends. |
| 2019-04-10 | Wrethink files its design patent application. |
| 2019-07-31 | U.S. Patent No. 10,778,856 Priority Date (Provisional Filing). |
| 2020-04-01 | U.S. Patent No. 10,778,856 Application Filing Date. |
| 2020-09-15 | U.S. Patent No. 10,778,856 Issue Date. |
| 2020-10-27 | Wrethink's U.S. Design Patent No. D900,089 issues. |
| 2020-11-04 | Complaint Filing Date. |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,778,856 - Multi-purpose/multi-function portable electronic device..., Issued Sep. 15, 2020
The Invention Explained
- Problem Addressed: The patent's background section notes that consumers often must purchase separate devices—such as a portable terminal (e.g., tablet) and a stand-alone scanner—to manage both digital and physical media like photo prints. This approach is described as increasing cost, space requirements, and decreasing portability (’856 Patent, col. 1:32-42).
- The Patented Solution: The invention described is an integrated, portable electronic device that combines these functions into a single unit with a specific physical configuration. The device features a display monitor mounted above an elongated, cylindrical scanner, all supported by a base that also houses a speaker and is connected to the monitor via a curved support arm (’856 Patent, Abstract; Fig. 1). The arrangement of the components, such as the scanner being positioned below the display and the speaker being in an inclined portion of the base, is a key aspect of the described solution (’856 Patent, col. 6:31-38; col. 7:24-34).
- Technical Importance: The claimed invention provides a single, cohesive industrial design for a countertop appliance that consolidates scanning, display, and audio output functions, aiming to simplify the user experience for managing various media types.
Key Claims at a Glance
- The complaint seeks correction of inventorship for all claims of the patent, 1 through 24 (Compl. ¶35). The patent contains two independent claims, 1 and 21.
- Independent Claim 1 recites a multi-function device comprising the following essential elements:
- A display monitor with a screen and a rear surface.
- A scanner disposed below the monitor, comprising an "elongated cylindrical body," first and second touch pads on its ends, and surrounding light pipes.
- A base below the scanner with a "planar portion" and a thicker "inclined portion."
- A speaker disposed "only in the inclined portion of the base."
- A scanner support extending from the base.
- A power source in the base.
- A "curved connector" extending from the scanner support to the rear of the display, with specific spatial relationships to the speaker and base.
- A controller for the device's operations.
- The complaint does not explicitly reserve the right to assert dependent claims, as the action is for correction of inventorship of the entire patent.
III. The Accused Instrumentality
Product Identification
- The subject of the dispute is the invention embodied in the '856 Patent, which Wrethink alleges is its own "Rosy" device concept (Compl. ¶¶1-3).
Functionality and Market Context
- The complaint describes Rosy as a "revolutionary new consumer product" conceived by Wrethink as an "integrated, easy-to-use countertop device for storing, organizing, protecting and selectively sharing a person's family photographs, data, documents and memorabilia" (Compl. ¶1). Wrethink alleges it hired Seeminex to implement a specific list of features for Rosy, including a "large LCD touchscreen," an "integrated color duplex scanner," cameras, speakers, and a specific physical design (Compl. ¶¶17, 32). The complaint asserts that Seeminex was hired only to implement these pre-conceived features and build prototypes, not to invent (Compl. ¶15). The complaint includes a photograph of the "DP2" prototype delivered by Seeminex, which allegedly captures Wrethink's proprietary design that is now in the public domain via the '856 patent (Compl. ¶28, p. 12).
IV. Analysis of Infringement Allegations
The complaint does not allege patent infringement. Instead, it alleges that the subject matter claimed in the '856 patent was invented by Wrethink's employees and misappropriated by Seeminex. The following chart summarizes the allegations in Paragraph 32 of the complaint, which maps features of Wrethink's "Rosy" device to the patented invention. The complaint provides a side-by-side visual comparison of a figure from Wrethink's own design patent application and Figure 1 of the ’856 Patent to support its allegation that the patented design was stolen from Wrethink (Compl. p. 14).
'856 Patent Inventorship Allegations
| Claim Element (from Independent Claim 1) | Alleged Wrethink Conception / 'Rosy' Feature | Complaint Citation | Patent Citation |
|---|---|---|---|
| a display monitor including a display screen configured to display an image | A display monitor, which can be configured to rotate horizontally and/or vertically. | ¶32(i) | col. 15:2-4 |
| a scanner disposed below the display monitor and configured to scan a document; the scanner including... an elongated cylindrical body | A scanner disposed below the display monitor, consisting of an elongated body. | ¶32(iii) | col. 15:5-9 |
| first and second touch pads respectively disposed on the first and second ends of the elongated cylindrical body | Touch pads at opposite ends of the elongated body. | ¶32(iv) | col. 15:9-11 |
| first and second light pipes surrounding the first and second touch pads | Lights surrounding the touch pads that change colors in response to a touch. | ¶32(vi) | col. 15:11-15 |
| a base disposed below the scanner | A base and support for the scanner and display assembly. | ¶32(xiii) | col. 15:16 |
| a speaker disposed only in the inclined portion of the base | A speaker with a semicircular shape in its cross-section. | ¶32(v) | col. 15:19-20 |
| a curved connector extending from the scanner support and connected to the rear surface of the display monitor | A device connected by a curved connector to the scanner. | ¶32(ii) | col. 15:22-24 |
| a controller configured to control operations | A controller for the device. | ¶32(xv) | col. 16:1-2 |
- Identified Points of Contention:
- Factual Question (Conception vs. Reduction to Practice): The central dispute is factual: who "conceived" of the claimed invention as defined by patent law? Wrethink alleges it conceived every element and that Seeminex was merely hired to "implement" the design using "ordinary skill in the art" (Compl. ¶¶15, 32). Seeminex may argue that its work went beyond mere reduction to practice and involved inventive contributions to the final, claimed design, justifying its employee being named as inventor. The whiteboard drawings presented by Wrethink to Seeminex will be key evidence (Compl. ¶26, p. 11).
- Legal Question (Contractual Assignment): A key legal issue will be the interpretation of the ICSA between the parties. Wrethink alleges the contract required Seeminex to assign all "Company Innovations" to Wrethink (Compl. ¶¶21, 47). The court may need to determine if the work Seeminex performed falls under the contract's definition of "Innovations" and whether the assignment clause is enforceable as to the '856 patent.
V. Key Claim Terms for Construction
In an inventorship dispute, the construction of claim terms helps define the metes and bounds of the invention that is the subject of the dispute.
The Term: "curved connector"
Context and Importance: The specific geometry and arrangement of this component are recited in detail in claim 1 (e.g., "curved to be concave with respect to the scanner," "a gap between the lower portion... and the inclined portion of the base varies") ('856 Patent, col. 15:25-33). The novelty of the overall industrial design is tied to this element. Practitioners may focus on this term because the dispute will likely involve pinpointing who conceived of this specific, structurally-defined connector, as opposed to a generic connector.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term "curved connector" itself is general, and the detailed description covers multiple embodiments (e.g., '856 Patent, Figs. 1-6), which may suggest the term is not limited to a single, precise shape.
- Evidence for a Narrower Interpretation: The language in claim 1 adds very specific functional and spatial limitations. The figures consistently depict a C-shaped arm ('856 Patent, Figs. 1-6). A party could argue these details limit the term to the specific arrangements shown and described.
The Term: "elongated cylindrical body" (of the scanner)
Context and Importance: This term defines the core shape of the scanner unit, a central feature of the device's aesthetic and structure. Wrethink alleges it conceived of this design element (Compl. ¶32(iii)). Whether Wrethink's early concepts, such as the sketch showing a more rectangular base, meet this definition could be a point of contention (Compl. p. 7).
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification does not provide a specific definition of "cylindrical," which could allow for shapes that are generally tube-like but not perfect geometric cylinders.
- Evidence for a Narrower Interpretation: The term "cylindrical" has a plain geometric meaning. All figures in the patent depict a scanner with a circular cross-section ('856 Patent, e.g., Fig. 3B). A party could argue that if Wrethink conceived of a boxy or non-cylindrical scanner, it did not conceive of this claimed element.
VI. Other Allegations
- Indirect Infringement: Not alleged in the complaint.
- Willful Infringement: The complaint does not allege willful infringement but does plead facts to establish this is an "exceptional case" under 35 U.S.C. § 285, seeking attorneys' fees (Compl., p. 20, ¶(f)). The basis for this allegation is Seeminex's purported "willful and deceptive misconduct," including the "surreptitious" filing of the patent application after the parties' relationship ended and "deceptively failing to name any Wrethink employee as an inventor" (Compl. ¶3). The complaint further alleges Seeminex "redacted the name 'Rosy' from all images in the patent application" in an "attempt to conceal Wrethink's ownership" (Compl. ¶3).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of inventorship contribution: Did Seeminex's work in building prototypes constitute the conception of the claimed invention, or was it merely the reduction to practice of a design already conceived and communicated by Wrethink? The resolution will depend on a fact-intensive inquiry into the communications and agreements between the parties.
- A dispositive question may be one of contractual obligation: Even if Seeminex is found to have made an inventive contribution, did the Independent Contractor Services Agreement (ICSA) create an overriding obligation for Seeminex to assign its rights in any such invention to Wrethink, thereby making Wrethink the rightful owner of the '856 patent?