DCT
3:24-cv-01100
ACCO Brands USA LLC v. Performance Designed Products LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: ACCO Brands USA LLC (Delaware) and Bensussen Deutsch & Associates LLC (Washington)
- Defendant: Performance Designed Products LLC (California)
- Plaintiff’s Counsel: Barnes & Thornburg LLP
- Case Identification: 3:24-cv-01100, S.D. Cal., 06/25/2024
- Venue Allegations: Venue is alleged to be proper in the Southern District of California because the Defendant resides in the district and because a prior Settlement Agreement between the parties allegedly contains a forum selection clause for this court.
- Core Dispute: Plaintiffs seek a declaratory judgment that their FUSION line of video game controllers do not infringe four of the Defendant's patents related to customizable controllers with interchangeable components, and that those patents are invalid.
- Technical Context: The technology at issue involves modular video game controllers that allow users to swap out components like thumbsticks and faceplates, a key feature area in the competitive market for high-performance and professional gaming accessories.
- Key Procedural History: This declaratory judgment action arises from a long-running dispute. The complaint notes an April 2018 Settlement Agreement between Defendant and Plaintiff Bensussen Deutsch & Associates. Following extensive correspondence beginning in August 2022, in which Defendant allegedly threatened patent litigation, Defendant filed a breach of contract suit against Plaintiffs in California state court in February 2023 regarding royalty payments under the 2018 agreement. Plaintiffs allege that during prior correspondence, they raised invalidity challenges against the asserted patents based on prior art, such as the Mad Catz MLG Pro gaming controller.
Case Timeline
| Date | Event |
|---|---|
| 2012-04-09 | Earliest Priority Date for ’435 and ’584 Patents |
| 2017-06-12 | Earliest Priority Date for ’171 and ’938 Patents |
| 2018-04-XX | Settlement Agreement executed between Defendant and Plaintiff BDA |
| 2018-08-07 | ’435 Patent Issued |
| 2020-XX-XX | Plaintiff ACCO acquires PowerA brand from Plaintiff BDA |
| 2020-08-11 | ’171 Patent Issued |
| 2020-12-29 | ’938 Patent Issued |
| 2021-03-09 | ’584 Patent Issued |
| 2021-06-XX | Launch of Accused PowerA FUSION Pro 2 Controller |
| 2022-08-01 | Defendant sends notice letter to Plaintiff ACCO alleging infringement |
| 2022-10-14 | Plaintiff ACCO sends letter to Defendant outlining non-infringement and invalidity positions |
| 2023-02-28 | Defendant files state court action for breach of contract |
| 2024-06-25 | Complaint for Declaratory Judgment Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,042,435 - “Interchangeable input mechanisms for control devices,” issued August 7, 2018 (’435 Patent)
The Invention Explained
- Problem Addressed: The patent background describes a history of users customizing input devices like video game controllers to meet personal preferences for ergonomics, aesthetics, or specific game applications (’435 Patent, col. 1:21-29, 1:47-54).
- The Patented Solution: The invention is an input mechanism, such as a thumbstick, composed of a "base component" and a separate "interchangeable element" that removably couples to the base (’435 Patent, Abstract). This design allows a user to detach and replace a part of the thumbstick—for example, to change its height, shape, or texture—without having to replace the entire controller or its internal electronics (’435 Patent, col. 2:16-31). Figure 10 of the patent illustrates a common base component (1002) being coupled with various interchangeable thumbstick elements (1004a-j) of different shapes and sizes.
- Technical Importance: This modular approach provided a path for greater user customization and easier serviceability of high-wear components in a market where performance and feel are critical.
Key Claims at a Glance
- The complaint asserts non-infringement of independent claims 1, 6, and 13 (Compl. ¶48).
- Independent Claim 1 includes these essential elements:
- A handheld video game controller with a controller body and a pair of thumbsticks.
- At least one thumbstick is interchangeable, comprising a head, a shaft, and a base component.
- The base component includes a dome portion and a plug with a bore.
- The base component couples via the bore to an input device inside the controller body.
- Critically, "at least a portion of the thumbstick is replaceable" to vary the shaft length.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 10,942,584 - “Interchangeable input mechanisms for control devices,” issued March 9, 2021 (’584 Patent)
The Invention Explained
- Problem Addressed: As a member of the same patent family as the ’435 Patent, the ’584 Patent addresses the same general need for customizable human input devices (’584 Patent, col. 1:21-29).
- The Patented Solution: The patented solution is materially similar to that of the ’435 Patent, describing a thumbstick with an interchangeable element that can be removably coupled to a base component (’584 Patent, Abstract). The claims focus on specific structural details, such as a "monolithic shaft" that forms a single piece with the thumbstick head (’584 Patent, col. 15:13-16). This allows users to alter the controller's physical characteristics by swapping out thumbstick modules.
- Technical Importance: This technology allows gamers to modify controller ergonomics and performance characteristics, such as thumbstick height and surface texture, to suit their preferences.
Key Claims at a Glance
- The complaint asserts non-infringement of independent claims 1, 8, and 15 (Compl. ¶64).
- Independent Claim 1 includes these essential elements:
- A video game controller with a controller body and a pair of thumbsticks.
- At least one thumbstick is interchangeable and comprises a head, a "monolithic shaft" attached to the head, and a base attached to the shaft.
- The base has a curved dome portion and a plug with a bore for coupling to an internal input device.
- Critically, "at least a portion of the thumbstick is replaceable" to vary the shaft length.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 10,737,171 - “Video game controller,” issued August 11, 2020 (’171 Patent)
- Technology Synopsis: This patent addresses the difficulty and cost of repairing modern complex video game controllers when individual components fail (’171 Patent, col. 1:37-45). The invention is a controller with a readily removable faceplate that allows modular control inputs (e.g., thumbsticks, directional pads) to be decoupled from the controller body and replaced without tools or full disassembly (’171 Patent, col. 2:50-60).
- Asserted Claims: Independent claims 1 and 11 (Compl. ¶80).
- Accused Features: The complaint alleges that the FUSION Pro 2 Controller does not have a control input that is both removably mounted and extends through a "cross shape" opening in the faceplate, as required by the claims (Compl. ¶80).
U.S. Patent No. 10,874,938 - “Video game controller,” issued December 29, 2020 (’938 Patent)
- Technology Synopsis: This patent, related to the ’171 Patent, also focuses on improving the serviceability and modularity of game controllers. The invention specifically describes a controller with a "detachable paddle unit" on its underside, allowing for tool-free removal and replacement of paddle inputs, which are commonly used in professional-style controllers for additional functions (’938 Patent, col. 2:52-59, col. 3:55-63).
- Asserted Claims: Independent claims 1 and 11 (Compl. ¶96).
- Accused Features: The complaint alleges that the accused controller's "Mappable Pro Pack" is a complex electromechanical module, not the claimed simple "detachable paddle unit" (Compl. ¶¶16, 96).
III. The Accused Instrumentality
Product Identification
- The primary accused product identified is the PowerA FUSION Pro 2 Wired Controller for the Xbox gaming platform, along with other "Fusion controllers" (Compl. ¶¶16, 18).
Functionality and Market Context
- The FUSION Pro 2 is described as a high-performance controller featuring a "Mappable Pro Pack" with four customizable paddles, dual rumble motors, and magnetic impulse triggers (Compl. ¶16). The complaint includes a photograph showing the top-down view of the accused FUSION Pro 2 Controller (Compl. p. 5). The core of the dispute centers on the replaceability of its input mechanisms, such as the thumbsticks and directional pad, and the modularity of its paddle pack.
IV. Analysis of Infringement Allegations
’435 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a handheld video game controller, comprising: ... at least one of the pair of thumbsticks being interchangeable... | The complaint alleges the accused FUSION Pro 2 Controller has an input mechanism that is replaceable. | ¶48 | col. 15:20-22 |
| wherein at least a portion of the thumbstick is replaceable via one of the plurality of openings of the controller body to vary the length of the shaft to thereby vary a height of a pre-installed thumbstick of the controller for a given head shape and size. | The complaint alleges that the FUSION Pro 2 Controller's "entire input mechanism is replaceable, rather than only a portion of the input mechanism," and therefore does not meet this limitation. | ¶48 | col. 15:58-62 |
’584 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a video game controller, comprising: ... at least one of the pair of thumbsticks being interchangeable... | The complaint alleges the accused FUSION Pro 2 Controller has an input mechanism that is replaceable. | ¶64 | col. 15:11-13 |
| wherein at least a portion of the thumbstick is replaceable to vary the length of the shaft to thereby vary a height of the thumbstick for the same head shape or size. | The complaint alleges that the FUSION Pro 2 Controller's "entire input mechanism is replaceable, rather than only a portion," which does not meet the claim limitation. | ¶64 | col. 15:34-38 |
Identified Points of Contention
- Scope Questions: The central non-infringement argument for the ’435 and ’584 patents is based on claim scope. Plaintiff argues that its controller, where the "entire input mechanism is replaceable," does not meet the claim limitation "at least a portion... is replaceable" (Compl. ¶¶48, 64). This raises the core legal question of whether replacing an entire unit can satisfy a claim requiring the replacement of a "portion" of that unit.
- Technical Questions: For the ’171 and ’938 patents, the dispute appears more factual. A question for the court will be whether the accused FUSION Pro 2's directional pad is "removably mounted" in the manner required by the ’171 Patent's claims (Compl. ¶80). Similarly, it will be a technical question whether the product's "Mappable Pro Pack" is structurally and functionally equivalent to the "detachable paddle unit" claimed in the ’938 Patent (Compl. ¶96). The photograph of the accused controller may serve as initial evidence on these points (Compl. p. 5).
V. Key Claim Terms for Construction
- The Term: "at least a portion of the thumbstick is replaceable" ('435 Patent, Claim 1; '584 Patent, Claim 1).
- Context and Importance: The construction of this phrase is central to the non-infringement defense for two of the four patents-in-suit. Plaintiff's case rests on the argument that its product, which allegedly has a fully replaceable input module, does not have a "portion" that is replaceable, but rather the whole unit. Practitioners may focus on this term because its interpretation—whether "portion" requires divisibility or can include the whole—could be dispositive.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The Defendant may argue that the ordinary meaning of "at least a portion" includes the whole, as the whole is necessarily "at least a portion." The patent abstract describes the invention as having "interchangeable elements" that are "removably couple[d]," which could be interpreted broadly to cover entire modules (’435 Patent, Abstract).
- Evidence for a Narrower Interpretation: The Plaintiff may argue that the specification consistently depicts the invention as a divisible assembly. For instance, Figure 2 shows an "interchangeable thumbstick element" (202) that is separate from the "base component" (204), suggesting the "portion" being replaced is a distinct sub-component (’435 Patent, Fig. 2; col. 2:20-31). This could support a construction requiring that the thumbstick be divisible into at least a replaceable part and a part that remains.
VI. Other Allegations
- Indirect Infringement: The declaratory judgment complaint preemptively denies any liability for indirect infringement, stating that Plaintiffs do not "induce infringement, or contribute to the infringement of any valid and enforceable claim" of the asserted patents (Compl. ¶¶47, 63, 79, 95). The complaint does not detail specific allegations of inducement or contribution that may have been made by the Defendant.
- Willful Infringement: As a declaratory judgment action filed by the accused infringer, the complaint does not allege willfulness. However, it extensively documents pre-suit communications, including a notice letter from Defendant dated August 1, 2022, which explicitly alleged infringement (Compl. ¶18). This documentation of pre-suit knowledge could form the basis for a future willfulness claim by the Defendant.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the claim term "at least a portion of the thumbstick is replaceable" be construed to read on a product where the entire thumbstick module is replaced as a single, indivisible unit? The outcome of this claim construction dispute may determine infringement for the '435 and '584 patents.
- A key evidentiary question will be one of technical and functional comparison: do the accused FUSION Pro 2 controller's features, such as its directional pad and "Mappable Pro Pack," meet the specific structural and functional limitations recited in the claims of the '171 and '938 patents concerning removability and design?
- A central background issue will be the interplay between contract and patent law: how will the ongoing state court litigation over the 2018 Settlement Agreement impact the strategies, claims, and potential resolutions in this federal patent case, particularly concerning royalties and the scope of any prior license?