DCT
1:24-cv-01119
SafeTray Products Ltd v. Otter Products LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: SafeTray Products Ltd (United Kingdom)
- Defendant: Otter Products, LLC (Colorado)
- Plaintiff’s Counsel: DNL Zito Castellano
- Case Identification: 1:24-cv-01119, D. Colo., 04/23/2024
- Venue Allegations: Plaintiff alleges venue is proper in the District of Colorado because Defendant is a Colorado corporation with its headquarters in the district, has facilities related to the accused products there, and has committed acts of infringement in the district.
- Core Dispute: Plaintiff alleges that Defendant’s OtterGrip line of smartphone cases infringes a patent related to a stabilizing device for portable computing devices.
- Technical Context: The technology concerns mechanical grips and supports integrated into or attached to portable electronic devices to improve one-handed stability and handling.
- Key Procedural History: The complaint alleges the inventor first filed a patent application for the invention in 2013, followed by a U.S. application in 2014. It also alleges that Defendant was made aware of the patent-in-suit prior to the lawsuit but continued its allegedly infringing activities.
Case Timeline
| Date | Event |
|---|---|
| 2013-04-26 | '691 Patent Priority Date |
| 2018-10-30 | '691 Patent Issue Date |
| 2020-01-01 | Alleged start of Willful Infringement (approximate) |
| 2024-04-23 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,113,691 - “Stabilising Device,” issued October 30, 2018
The Invention Explained
- Problem Addressed: The patent describes that as portable computing devices like tablets became popular, users found it "unwieldy to manipulate and rotate" them with one hand, creating a risk of fumbling and dropping the device ('691 Patent, col. 1:36-40). Existing handles or grips were often "bulky, and cumbersome" ('691 Patent, col. 1:45-46).
- The Patented Solution: The invention is a stabilizing device that attaches to the back of a portable device. It features a finger support member connected to a base plate by spacer elements. This mechanism is designed to be "moveable between a closed position in which the finger support member is substantially flush with the base plate and an open position" ('691 Patent, col. 1:62-65). In the open position, a user can slide their fingers between the support and the base, gaining a secure grip that allows them to "effectively and safely react against the rotational force exerted when the orientation of the portable computing device is switched" ('691 Patent, col. 2:2-6).
- Technical Importance: The described technology provides a low-profile, integrated solution for improving one-handed grip security on increasingly large and thin mobile devices.
Key Claims at a Glance
- The complaint asserts independent claims 1 and 20 (Compl. ¶¶ 21, 26).
- Independent Claim 1 requires:
- a base plate configured to be mounted on and rotatable relative to a portable computing device
- a unitary finger support member
- a first spacer element connected to the unitary finger support member and to the base plate
- a second spacer element connected to the unitary finger support member and to the base plate
- wherein the finger support member is moveable between a closed (substantially flush) position and an open position allowing a user to insert a finger.
- Independent Claim 20 requires:
- a base plate configured to be mounted on and rotatable relative to a portable computing device
- a finger support member having a first side and a second side
- a first spacer element connected to the first side of the finger support member and to the base plate
- a second spacer element connected to the second side of the finger support member and to the base plate
- wherein the finger support member moves between a closed (substantially flush) position and an open position
- wherein the base plate is rotatable when the finger support member is in the closed position.
- The complaint asserts dependent claims 3-8 and 12-16 (Compl. ¶¶ 21, 26).
III. The Accused Instrumentality
Product Identification
The "OtterGrip Symmetry Series" and "OtterGrip Symmetry Series for MagSafe" product lines, which are cases for various iPhone models (Compl. ¶9).
Functionality and Market Context
The accused products are protective smartphone cases that feature a built-in, retractable grip on the rear surface (Compl. p. 5-10). The complaint’s visuals show that this grip can lie flush with the case and be deployed to an "open position" to allow a user to insert their fingers for a more secure hold (Compl. p. 9). The grip assembly is also shown to be rotatable, with marketing materials highlighting the ability to "Spin & fidget the grip" (Compl. p. 10).
IV. Analysis of Infringement Allegations
The complaint provides a visual, element-by-element breakdown of its infringement theory for Claim 20. An image from the complaint shows the accused grip mechanism in a disassembled state, revealing its internal components (Compl. p. 7). Another image from the complaint's visual claim chart shows the product in its "Open Position" with a user's fingers inserted (Compl. p. 9).
’691 Patent Infringement Allegations
| Claim Element (from Independent Claim 20) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a base plate configured to be mounted on the portable computing device and rotatable relative to the portable computing device | The OtterGrip includes a circular "Base Plate" that is part of the phone case and is rotatable. | ¶18, p. 6 | col. 1:55-58 |
| a finger support member having a first side and a second side | The accused product has a component identified as the "Finger Support Member" that a user's fingers press against when the grip is open. | ¶18, p. 7 | col. 4:5-7 |
| a first spacer element connected to the first side of the finger support member and to the base plate | An internal component, labeled "First Spacer Element" in a disassembled view, is alleged to connect the finger support to the base plate. | ¶18, p. 7 | col. 11:49-54 |
| a second spacer element connected to the second side of the finger support member and to the base plate | A second internal component, labeled "Second Spacer Element," is alleged to connect the other side of the finger support to the base plate. | ¶18, p. 8 | col. 11:49-54 |
| wherein, the finger support member is moveable between a closed position in which the finger support member is substantially flush with the base plate and an open position in which the finger support member is spaced from the base plate such that a user can insert at least one finger between the base plate and the finger support member | The complaint provides photographs showing the grip mechanism in both a "Closed Position," flush with the case, and an "Open Position," extended to allow for finger insertion. | ¶18, p. 9 | col. 1:62-68 |
| and wherein the base plate is rotatable when the finger support member is in the closed position | The complaint includes a marketing image with the text "Spin & fidget the grip" showing a user rotating the grip while it is in the closed position. | ¶18, p. 10 | col. 12:49-68 |
Identified Points of Contention
- Scope Questions: The complaint’s visual breakdown of the accused product shows a multi-part, complex mechanism (Compl. p. 7-8). A central question will be whether the components labeled "First Spacer Element" and "Second Spacer Element" are "connected to the... base plate" in the manner required by the claims. The analysis may turn on whether the claims require a direct connection or permit the type of indirect, multi-component linkage seemingly present in the accused device.
- Technical Questions: The patent describes spacer elements connecting to the base plate via pivots, folds, or a "slidable element" ('691 Patent, col. 9:17-24). A key evidentiary question will be whether the specific mechanical operation of the OtterGrip's internal components functions in the same way as the claimed invention, particularly regarding how the spacer elements are connected and how they facilitate movement between the open and closed positions.
V. Key Claim Terms for Construction
Term for Construction: "connected to... the base plate" (Claims 1 and 20)
- Context and Importance: This term is critical because the infringement reading depends on mapping specific internal components of the OtterGrip to the claimed "spacer elements" and establishing their connection to the base plate. The dispute will likely focus on whether the indirect linkage shown in the complaint's visuals (Compl. p. 7-8) satisfies this limitation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent specification contemplates indirect connections. For example, it describes an embodiment where a spacer element "is indirectly connected to the base plate" by first being "connected to a connecting plate in communication with the base plate" ('691 Patent, col. 4:22-25). It also describes connections to a "slidable element in communication with the base plate" ('691 Patent, col. 2:29-32). This language may support a construction that does not require direct physical attachment.
- Evidence for a Narrower Interpretation: Claim 1 recites spacer elements "connected to the unitary finger support member and to the base plate," which could be argued to imply a more direct relationship. The drawings often depict elements that appear to be directly pivoted or folded relative to each other (e.g., ’691 Patent, Fig. 1). A defendant may argue that the complex, multi-part linkage in its device is distinct from the more direct connections described in certain embodiments.
Term for Construction: "unitary finger support member" (Claim 1)
- Context and Importance: Practitioners may focus on this term because Claim 20, which is the subject of the complaint's detailed visual chart, omits the "unitary" limitation. This suggests a potential distinction between the claims that could be exploited. The construction of "unitary" will determine whether the finger support in the accused product, which appears to be a single piece but part of a larger assembly, meets this limitation of Claim 1.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: "Unitary" could be interpreted functionally, meaning the member acts as a single, cohesive unit, even if assembled from multiple sub-parts.
- Evidence for a Narrower Interpretation: The patent discusses how the "spacer element and finger support member are integrally formed from the same material," which could support an argument that "unitary" means formed as a single, monolithic piece ('691 Patent, col. 4:51-53). However, the specification immediately follows this by noting the parts "may be separately formed," creating ambiguity ('691 Patent, col. 4:57-59).
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendant induces infringement by providing "instructions for operation" that lead customers to use the products in an infringing manner (Compl. ¶16). It also alleges contributory infringement by "selling components of the patented systems" (Compl. ¶20).
- Willful Infringement: The complaint alleges willfulness based on Defendant having been "made aware of the patent-in-suit but has continued to infringe" (Compl. ¶1) since at least January 2020 (Compl. ¶23).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of structural and definitional scope: Can the claim term "connected to... the base plate" be construed to cover the indirect, multi-part mechanical linkage that appears to exist between the grip and the case in the accused OtterGrip product, or do the claims require a more direct form of attachment?
- A key evidentiary question will be one of operational correspondence: Does the specific mechanism of the OtterGrip, particularly the components identified as "spacer elements," function in a manner that is structurally and functionally equivalent to the invention described and claimed in the '691 patent, especially concerning the pivotal and sliding movements that enable the transition from a flush, closed position to a stable, open position?