Performance Designed Products LLC v. Okyn Holdings Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Performance Designed Products LLC (California)
  • Defendant: OKYN Holdings, Inc. d/b/a NYKO Technologies (California)
  • Plaintiff’s Counsel: Morgan, Lewis & Bockius LLP
• Case Identification: 3:25-cv-01360, S.D. Cal., 05/28/2025
• Venue Allegations: Plaintiff asserts that venue is proper in the Southern District of California because Defendant resides in the district and allegedly sells products there which Defendant contends are covered by the patents-in-suit.
• Core Dispute: Plaintiff seeks a declaratory judgment that its video game controller charging dock does not infringe four patents owned by Defendant related to video game controller charging systems.
• Technical Context: The technology concerns charging stations for wireless video game controllers, a key accessory market for modern gaming consoles.
• Key Procedural History: The complaint highlights a prior litigation over a decade ago where Defendant (Nyko) sued Plaintiff (PDP) for infringement of U.S. Patent No. 8,143,848, one of the same patents asserted in the current dispute. In that prior case, the complaint states that every asserted claim of the ’848 patent was invalidated on summary judgment based on Nyko’s own public disclosures, a finding affirmed by the Federal Circuit. The current dispute follows a cease-and-desist letter from Nyko in October 2024 and failed mediation in May 2025.

Case Timeline

Date	Event
2006-10-13	Earliest Priority Date for all Patents-in-Suit
2012-03-27	U.S. Patent No. 8,143,848 Issued
2013-09-17	U.S. Patent No. 8,536,832 Issued
2015-11-03	U.S. Patent No. 9,174,121 Issued
2017-07-11	U.S. Patent No. 9,705,344 Issued
2024-10-31	Defendant sends cease-and-desist letter to Plaintiff
2025-05-28	Parties' mediation concludes without resolution
2025-05-28	Complaint for Declaratory Judgment Filed

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

U.S. Patent No. 8,143,848 - Video Game Controller Charging System Having a Docking Structure

The Invention Explained

• Problem Addressed: The patent describes the inconvenience for consumers of managing multiple, distinct power adapters for various electronic devices, and notes that the small, fragile plugs on charging stations can be easily bent or broken, rendering the station inoperable (’848 Patent, col. 1:29-62).
• The Patented Solution: The invention provides a consolidated charging station with a base that includes one or more "docking bays" configured to physically support and charge multiple video game controllers concurrently. The design uses DC ports integrated into the docking structure to create a simple, drop-in charging connection, avoiding the need for individual cables and fragile plugs for each controller (’848 Patent, Abstract; Fig. 11).
• Technical Importance: This approach aimed to simplify the user experience by creating a single, organized station for charging multiple controllers, which became increasingly necessary as multiplayer gaming with wireless controllers grew in popularity (’848 Patent, col. 1:49-51).

Key Claims at a Glance

• The complaint asserts non-infringement of independent claim 25 and any dependent claims (Compl. ¶35).
• Essential elements of independent claim 25 include:
  • A video game controller charging system for charging a plurality of video game controllers using externally supplied power.
  • The system comprises: a base; at least one structure on the base for providing physical support to the controllers; and a plurality of DC ports on the base configured to couple to the controllers.
  • The structure on the base comprises a plurality of docking bays open in a first direction to receive the controllers.
  • The structure further comprises a plurality of pairs of opposite surfaces that define each docking bay.
  • Each DC port is located on the base between a respective pair of these opposite surfaces.

U.S. Patent No. 8,536,832 - Video Game Controller Charging System Having a Docking a Structure

The Invention Explained

• Problem Addressed: As a continuation of the ’848 patent, this patent addresses the same general problem of inconvenient and fragile charging connections for consumer electronics like game controllers (’832 Patent, col. 1:24-65).
• The Patented Solution: This patent discloses a two-part charging system. It consists of a base station with electrical contacts within a docking bay, and a separate, small adapter that physically mounts onto the game controller's existing power port. The controller, with the adapter attached, can then be placed into the docking bay, where an electrical lead on the adapter makes contact with the electrical contact on the base to initiate charging (’832 Patent, Abstract; col. 3:20-28). Figure 17 illustrates this concept, showing the base (510) and the separate adapters (516).
• Technical Importance: This adapter-based design allows for a simple drop-and-charge motion, potentially improving durability by moving the direct connection point from a fragile port on the controller to a more robust contact system between the adapter and the base (’832 Patent, col. 13:8-21).

Key Claims at a Glance

• The complaint asserts non-infringement of independent claim 1 and any dependent claims (Compl. ¶42).
• Essential elements of independent claim 1 include:
  • A video game controller charging system for charging a video game controller.
  • The system comprises a base with at least one electrical contact and a power input.
  • The system also comprises an adapter with a connector to couple to the controller's power port and at least one electrical lead.
  • The adapter is physically mountable on the video game controller.
  • The base includes a structure defining a docking bay configured to receive the controller with the adapter mounted on it, such that the adapter's electrical lead contacts the base's electrical contact.

Multi-Patent Capsule: U.S. Patent No. 9,705,344

• Patent Identification: U.S. Patent No. 9,705,344, Video Game Controller Charging System Having a Docking Structure, issued July 11, 2017.
• Technology Synopsis: This patent describes a charging system comprising a base with recesses and at least one adapter. The adapter has a male DC port that couples to a female power receptacle on a game controller, allowing the controller to be charged in the base's recess without an external or retractable cable (Compl. ¶49).
• Asserted Claims: Independent claim 1 (Compl. ¶49).
• Accused Features: The complaint alleges non-infringement of the overall charging system, specifically noting that the Accused Product does not include "at least one video game controller" (Compl. ¶49-50).

Multi-Patent Capsule: U.S. Patent No. 9,174,121

• Patent Identification: U.S. Patent No. 9,174,121, Video Game Controller Charging System Having a Docking Structure, issued November 3, 2015.
• Technology Synopsis: This patent discloses a system for charging multiple controllers using a base with recesses and "intervening portions" (adapters). These adapters mount on the controllers and feature protruding male DC ports that plug into the controllers, allowing them to be charged when placed in the base's recesses (Compl. ¶56).
• Asserted Claims: Independent claim 1 (Compl. ¶56).
• Accused Features: The complaint alleges non-infringement of the overall charging system, specifically noting that the Accused Product does not include "a plurality of video game controllers" (Compl. ¶56-57).

III. The Accused Instrumentality

Product Identification

• Plaintiff's Ultra Slim Charge System for PlayStation 4 (the "Accused Product") (Compl. ¶12).

Functionality and Market Context

• The Accused Product is a charging dock designed for the PlayStation 4 gaming console (Compl. ¶15). The complaint includes an image of the product's packaging, which shows a base station, a power supply, and what appear to be two small dongle-style adapters that connect to the controllers before they are placed on the dock (Compl. ¶15). Plaintiff PDP is described as one of the "world's best-known providers of third-party gaming peripherals" (Compl. ¶8).

IV. Analysis of Infringement Allegations

’848 Patent Infringement Allegations

Claim Element (from Independent Claim 25)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
A video game controller charging system for charging a plurality of video game controllers...	Plaintiff alleges its Accused Product does not include "a plurality of video game controllers."	¶36	col. 15:30-32
...the video game controller charging system comprising: a base;	Plaintiff asserts the Accused Product lacks this structure, as the claim would be properly construed.	¶35	col. 15:33-34
at least one structure on the base for providing physical support to the plurality of video game controllers...	Plaintiff asserts the Accused Product lacks this structure, as the claim would be properly construed.	¶35	col. 15:35-37
a plurality of DC ports on the base, each of the DC ports configured to couple to and provide DC power to a power input port of a respective one of the plurality of video game controllers...	Plaintiff asserts the Accused Product lacks this structure, as the claim would be properly construed.	¶35	col. 15:40-44
...the at least one structure on the base comprises a plurality of docking bays open in a first direction and configured to receive respective ones of the plurality of video game controllers...	Plaintiff asserts the Accused Product lacks this structure, as the claim would be properly construed.	¶35	col. 15:45-48
...the at least one structure on the base further comprises a plurality of pairs of opposite surfaces, each pair of surfaces defining a respective docking bay...	Plaintiff asserts the Accused Product lacks this structure, as the claim would be properly construed.	¶35	col. 15:48-52
...each of the DC ports being on the base between a respective one of the pairs of surfaces.	Plaintiff asserts the Accused Product lacks this structure, as the claim would be properly construed.	¶35	col. 15:50-52

’832 Patent Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
A video game controller charging system for charging a video game controller...	Plaintiff alleges its Accused Product does not include "a video game controller."	¶43	col. 15:30-32
...a base comprising at least one electrical contact, and a power input...	Plaintiff asserts the Accused Product lacks this structure, as the claim would be properly construed.	¶42	col. 15:33-37
an adapter comprising a connector configured to couple to the power input port of the video game controller, the adapter further comprising at least one electrical lead,	Plaintiff asserts the Accused Product lacks this structure, as the claim would be properly construed.	¶42	col. 15:38-41
herein the adapter is physically mountable on the video game controller when the connector is coupled to the power input port...	Plaintiff asserts the Accused Product lacks this structure, as the claim would be properly construed.	¶42	col. 15:42-44
...the base further comprises at least one structure defining a docking bay configured to receive the video game controller having the adapter mounted thereon such that the at least one electrical lead of the adapter contacts the at least one electrical contact of the base.	Plaintiff asserts the Accused Product lacks this structure, as the claim would be properly construed.	¶42	col. 15:45-50

Identified Points of Contention

• Scope Questions: A central question is whether a product sold as a charging dock can directly infringe a claim for a "system comprising...a plurality of video game controllers." Plaintiff's repeated argument that its product does not include controllers suggests its non-infringement theory relies on the interpretation that the controllers must be supplied with the accused product at the time of sale to meet the claim limitations (Compl. ¶36, ¶43, ¶50, ¶57).
• Technical Questions: The complaint's blanket assertion that the Accused Product lacks the claimed structures "as that term would be properly construed" provides little technical detail (Compl. ¶35, ¶42). However, analysis of the ’832 Patent claims versus the visual evidence of the Accused Product (Compl. ¶15) raises the question of whether the product's dongle-style adapters meet the claim limitations for the recited "adapter," and whether the dock itself meets the limitations for the recited "base."

V. Key Claim Terms for Construction

• The Term: "...system comprising...a plurality of video game controllers" (’848 Patent, cl. 25) and "...system for charging a video game controller" (’832 Patent, cl. 1).
• Context and Importance: The construction of this language appears to be dispositive for direct infringement. Plaintiff’s non-infringement defense for all four patents relies on the argument that its product is only a charging dock and does not itself include the "video game controller(s)" recited in the claims (Compl. ¶36, ¶43, ¶50, ¶57). Practitioners may focus on whether these elements, listed in both the preamble and the body of some claims, require the controllers to be part of the infringing article as sold, or if they merely define the system's intended use and environment.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party could argue that the phrase "for charging" indicates the system's purpose and capability, not a requirement that the controller be part of the apparatus itself. The detailed descriptions and figures focus heavily on the structure of the base and/or adapter as the core of the invention.
  • Evidence for a Narrower Interpretation: The use of the transitional phrase "comprising" followed by an explicit listing of "a plurality of video game controllers" suggests that the controllers are an essential element of the claimed combination (’848 Patent, cl. 25). The patent figures consistently depict the controllers as part of the inventive system (e.g., ’848 Patent, Fig. 14; ’832 Patent, Fig. 20), which may support an interpretation that the claim covers the complete operational assembly.

VI. Other Allegations

The complaint does not provide sufficient detail for analysis of indirect or willful infringement allegations. However, the Plaintiff seeks a judgment that this is an "exceptional case" under 35 U.S.C. § 285, entitling it to recover attorneys' fees (Compl. Prayer for Relief ¶B). This request may be based on the allegation that Defendant is re-litigating a patent family after claims from the parent ’848 patent were previously invalidated in litigation between the same parties (Compl. ¶11, ¶19).

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

• A central issue will be one of claim scope: does a "system comprising...a plurality of video game controllers" require, for a finding of direct infringement, that the accused product be sold with the controllers, or can the claim be read on a charging dock sold alone but intended for use with controllers?
• A second core issue will be the legal effect of prior litigation: what preclusive effect, if any, does the prior summary judgment invalidation of claims in the parent ’848 patent have on the enforceability of the asserted claims in the ’848 patent and its continuations (’832, ’344, and ’121 patents), particularly given the invalidity was based on the patentee's own public disclosures?