Otter Products LLC v. Flygrip Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Otter Products LLC (Colorado)
  • Defendant: Flygrip, Inc. (Texas)
  • Plaintiff’s Counsel: Faegre Drinker Biddle & Reath LLP
• Case Identification: 1:21-cv-03298, D. Colo., 01/20/2023
• Venue Allegations: Venue is alleged to be proper in the District of Colorado because Plaintiff Otter Products LLC maintains its principal place of business in the district.
• Core Dispute: Plaintiff seeks a declaratory judgment that its products do not infringe Defendant's patent related to collapsible grips for handheld devices, and that the patent-in-suit is invalid.
• Technical Context: The technology concerns accessory grips that attach to the back of handheld electronic devices, such as smartphones, to facilitate secure, one-handed operation.
• Key Procedural History: This declaratory judgment action was filed after Defendant Flygrip sent notice letters to Plaintiff Otter and its partner PopSockets LLC alleging infringement of the patent-in-suit. Flygrip also filed a separate infringement lawsuit against Amazon.com in the Western District of Texas, in which it identified "The OtterBox Otter+PopSocket line" of products as infringing instrumentalities.

Case Timeline

Date	Event
2010-08-19	U.S. Patent No. 10,800,024 Priority Date
2020-10-13	U.S. Patent No. 10,800,024 Issue Date
2020-10-26	Letter sent to Otter offering to sell the '024 patent
2021-03-25	Flygrip allegedly notified Amazon of the '024 patent
2021-10-12	Flygrip's counsel sent infringement notice letters to Otter and PopSockets
2021-10-18	Flygrip filed infringement suit against Amazon in W.D. Texas
2023-01-20	Otter filed Amended Complaint for Declaratory Judgment

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

• Patent Identification: U.S. Patent No. 10,800,024, "Compacting Grip for Handheld Devices," issued October 13, 2020.

The Invention Explained

• Problem Addressed: The patent describes the difficulty users face in securely gripping large, "bar-shaped" smartphones with a single hand while simultaneously maintaining the thumb's ability to reach and operate the entire front surface, particularly touchscreens ('024 Patent, col. 1:36-51). Conventional grips that require wrapping fingers around the device are described as limiting the thumb's range of motion ('024 Patent, col. 1:46-51).
• The Patented Solution: The patent proposes a collapsible "one hand gripping apparatus" that attaches to the back of a handheld device ('024 Patent, Abstract). The apparatus consists of a base affixed to the device, an extension that moves perpendicularly away from the base, and a disc-shaped grip on the end of the extension. In its extended state, the apparatus creates a space for a user's fingers, which frees the thumb to move across the device's screen ('024 Patent, col. 4:50-59). The '024 Patent specifically claims an extension that is a "telescoping structure with annular pieces that slide over one-another" to allow it to move between a collapsed and an extended position ('024 Patent, col. 8:60-64).
• Technical Importance: This technology sought to improve the ergonomics of increasingly large smartphones, enabling secure one-handed use without sacrificing the ability to interact with the full touchscreen ('024 Patent, col. 2:13-20).

Key Claims at a Glance

• The complaint notes that Flygrip's infringement allegations identified "at least claim 2" of the '024 patent (Compl. ¶15, ¶23). Claim 2 depends from independent claim 1.
• The essential elements of independent claim 1, as modified by the Certificate of Correction, include:
  • A collapsing and expanding one hand gripping apparatus.
  • A base fastened to or built into the back of a handheld device or its case.
  • An extension that extends perpendicularly from the base, "consisting essentially of a telescoping structure with annular pieces that slide over one-another."
  • The extension is movable between a collapsed, closed position and an extended, open position.
  • A disc-shaped grip mounted perpendicularly to the end of the extension.
  • The grip has an outer perimeter that is not in contact with the extension and extends radially past the extension.
  • In the collapsed position, the apparatus lies flat to the handheld device.
• The complaint, being a declaratory judgment action, does not reserve the right to assert other claims but seeks a declaration of non-infringement for all claims of the '024 patent (Compl. ¶44).

III. The Accused Instrumentality

Product Identification

The accused products are identified as the "OtterBox with Popsockets products," the "Otter+PopSockets line of handheld device cases," and products incorporating the "pull-out grip design" (Compl. ¶¶15, 21).

Functionality and Market Context

• The complaint describes the accused products as a line of phone cases that "incorporate the pull-out grip design" (Compl. ¶15). This functionality allows a user to extend a grip from the back of the phone case to insert their fingers for a more secure hold.
• The products are the result of a collaboration between Otter Products LLC and PopSockets LLC, two prominent companies in the mobile accessory market, suggesting a significant commercial product line (Compl. ¶22).
• No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint states that Flygrip’s lawsuit against Amazon included claim charts comparing the '024 patent to the OtterBox products, but these charts are not included with the complaint (Compl. ¶23). The infringement theory is therefore based on the narrative allegations. Flygrip's central allegation is that the "OtterBox Products satisfy all claim limitations of one or more of the claims of the '024 Patent, including at least claim 2" (Compl. ¶23). This theory appears to map the base, collapsible extension, and disc-shaped grip of the accused PopSocket design onto the corresponding elements of claim 1 of the '024 patent.

Identified Points of Contention:

• Scope Questions: A central question is whether the flexible, accordion-style bellows of the accused PopSockets grip falls within the scope of the claim term "a telescoping structure with annular pieces that slide over one-another." The interpretation of this limitation may be outcome-determinative for infringement.
• Technical Questions: What evidence exists to show that the accused product's flexible, folding structure operates as a "telescoping structure" where "annular pieces... slide over one-another"? The claim language suggests a mechanism of rigid, concentric parts, raising the question of whether there is a fundamental mismatch with the technical operation of the accused product's single-piece, flexible bellows.

V. Key Claim Terms for Construction

The Term: "a telescoping structure with annular pieces that slide over one-another"

Context and Importance: The infringement analysis will likely turn on the construction of this term. Practitioners may focus on this term because the accused PopSockets products utilize a flexible, accordion-like bellows, which differs from the common understanding of a telescoping structure made of rigid, sliding pieces. Plaintiff Otter will likely advocate for a narrow construction limited to rigid, sliding rings, while Defendant Flygrip may argue for a broader definition that encompasses any structure that axially collapses and extends.

Intrinsic Evidence for Interpretation:

• Evidence for a Broader Interpretation: The specification, when describing mechanisms for moving the grip, mentions "a spring and/or telescoping pieces, or other similar mechanisms," which could suggest that "telescoping pieces" is exemplary, not exhaustive ('024 Patent, col. 5:15-23). Flygrip may argue this supports a broader functional interpretation.
• Evidence for a Narrower Interpretation: The claim language itself is highly specific, requiring not just a "telescoping structure" but one "with annular pieces that slide over one-another." The patent's own figures depict an embodiment with distinct, ring-like "telescopic pieces 124" ('024 Patent, Fig. 20a). Otter may argue this specific disclosure limits the claim scope to such rigid, sliding structures.

The Term: "consisting essentially of"

Context and Importance: This transitional phrase limits the claim to the recited elements and any unrecited elements that do not materially affect the basic and novel properties of the invention. Practitioners may focus on this term to determine if any features of the accused products, such as the ability to swap the top disc ("PopTop"), introduce a material difference that places the product outside the claim's scope.

Intrinsic Evidence for Interpretation:

• Evidence for a Broader Interpretation: Flygrip may argue that the "basic and novel" property is simply the provision of a collapsible grip for one-handed use, and that features like a swappable top are ancillary and do not materially affect this core function. The patent does not define the basic and novel properties.
• Evidence for a Narrower Interpretation: Otter may argue that the specific interlocking mechanism for a swappable top is a material feature that fundamentally alters the structure and operation from the permanently affixed grip described and claimed in the patent, thereby avoiding infringement under this "consisting essentially of" limitation.

VI. Other Allegations

• Indirect Infringement: The complaint references Flygrip's allegations from its suit against Amazon, which form the basis for Otter's request for a declaratory judgment of non-infringement. Flygrip alleged inducement by asserting that the accused products' instructions on packaging and the internet teach customers to use the product in an infringing manner (Compl. ¶32, ¶34). Flygrip also alleged contributory infringement by claiming the products are "especially designed or adapted to operate in a manner that infringe[s]" the patent (Compl. ¶31).
• Willful Infringement: The complaint does not contain an allegation of willfulness by Otter. However, it preemptively documents the basis upon which Flygrip could later assert willfulness by citing a notice letter from Flygrip’s counsel dated October 12, 2021, which explicitly accused Otter's products of infringing the '024 patent (Compl. ¶13). This establishes a date of alleged pre-suit knowledge.

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

• A core issue will be one of claim construction: can the term "a telescoping structure with annular pieces that slide over one-another," which on its face suggests rigid sliding rings, be construed broadly enough to read on the flexible, single-piece, accordion-style bellows of the accused Otter+PopSockets products?
• A related evidentiary question will be one of technical operation: if the claim is construed broadly, does the accused product's folding mechanism function in a manner that is technically equivalent to the claimed structure, or does the difference between a flexible bellows and rigid sliding rings represent a fundamental, non-infringing difference in the way the devices work?
• A third key question will be the validity of the patent: Otter has challenged the '024 patent on grounds of anticipation and obviousness. The court will have to determine whether the combination of a base, a specifically defined telescoping extension, and a disc-shaped grip as claimed was truly novel and non-obvious over the prior art at the time of the invention.