Kraken Sports Inc v. Easydive Di Fabio Benvenuti

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Kraken Sports, Inc. (Canada)
  • Defendant: Easydive di [Fabio Benvenuti](https://ai-lab.exparte.com/party/fabio-benvenuti) (Italy) and Fabio Benvenuti (Italy)
  • Plaintiff’s Counsel: Levy & Grandinetti
• Case Identification: 1:19-cv-03233, D.D.C., 10/28/2019
• Venue Allegations: Plaintiff alleges venue is proper because it has made sales in the judicial district, and both parties, including the foreign national Defendants, are subject to personal jurisdiction within the district.
• Core Dispute: Plaintiff seeks a declaratory judgment that its "Kraken Smart Housing" product does not infringe U.S. Patent No. 10,261,395, and that the patent is invalid and unenforceable due to patent misuse and false marking by the Defendants.
• Technical Context: The technology concerns universal underwater housings that allow for wireless control of various imaging devices, including digital cameras and smartphones, for underwater photography.
• Key Procedural History: The action was precipitated by letters and communications from Defendants to Plaintiff and its customers, accusing the "Kraken Smart Housing" of infringement and threatening litigation. The complaint also alleges Defendants have engaged in false marking of their own products.

Case Timeline

Date	Event
2015-03-02	U.S. Patent No. 10,261,395 Priority Date
2019-04-16	U.S. Patent No. 10,261,395 Issues
2019-10-28	Complaint for Declaratory Judgment Filed

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

• Patent Identification: U.S. Patent No. 10,261,395 (“the ’395 Patent”), “Underwater Case for Digital Cameras and Video Cameras,” issued April 16, 2019. (Compl. ¶13).

• The Invention Explained:

  • Problem Addressed: The patent describes prior art underwater camera cases as often being limited to specific camera models due to mechanical controls. (’395 Patent, col. 1:18-23). It further notes that existing solutions with wireless remote controls may not function reliably at significant depths (e.g., beyond 50 meters), which is a "very limiting depth for an underwater diver." (’395 Patent, col. 1:36-43).
  • The Patented Solution: The invention is a "universal underwater case" designed to be compatible with a wide range of devices, including digital cameras, smartphones, and tablets. (’395 Patent, col. 1:44-50). It achieves this universality through an internal "adaptation base" comprising a first bracket with an integrated wireless connection module (e.g., Bluetooth, Wi-Fi) and a second, slidable bracket that acts as an "interface" to hold and position the specific device inside the housing. (’395 Patent, col. 4:20-41). Control is provided by external magnetic keys, and the device is viewable through a transparent hatch door. (’395 Patent, col. 2:50-67).
  • Technical Importance: The described solution aims to provide a single, durable housing that can adapt to various current and future electronic devices, moving beyond model-specific mechanical interfaces and the depth limitations of external wireless signals. (’395 Patent, col. 1:44-50).

• Key Claims at a Glance:

  • The complaint seeks a declaration of non-infringement of all claims of the ’395 Patent. (Compl. Prayer for Relief (a)). Independent claim 1 is representative of the apparatus claims.
  • Independent Claim 1 requires:
    • An underwater case for containing a device, where the device is one of a "camera, a tv camera, mobile telephones, smartphones, and tablets."
    • A controller on the case for activating the device.
    • An "integrated connection module in wireless mode" for activating the device.
    • An internal "adaptation base" comprising a first bracket and a "slidably coupled" second bracket.
    • The first bracket comprises the wireless connection module.
    • The second bracket comprises a "coupler for coupling with said device."
    • The controller includes a keypad with a "plurality of magnetic keys." (’395 Patent, col. 8:27-42).

III. The Accused Instrumentality

• Product Identification: The "Kraken Smart Housing." (Compl. ¶5).
• Functionality and Market Context: The complaint describes the Kraken Smart Housing as a case specifically designed to "enclose a smart phone so that it can be used to capture photographs and videos while diving." (Compl. ¶16). It is alleged that the housing "cannot accommodate a standard configuration digital camera." (Compl. ¶16). The product is positioned as a direct competitor to Defendants' "Leo3Smart" and "DiveShot" smartphone housings. (Compl. ¶16).

IV. Analysis of Infringement Allegations

The complaint, being a declaratory judgment action, does not contain a traditional infringement claim chart. Instead, it presents a narrative theory of non-infringement.

The central thesis for non-infringement is a definitional mismatch between the patent's scope and the accused product. The complaint alleges that the ’395 Patent is fundamentally directed to housings for "standard configuration digital cameras," which it characterizes as having features like a threaded tripod mount and an extending lens. (Compl. ¶13). Based on this interpretation, the complaint asserts that "several of the elements of the claims... which are directed to digital cameras and are wholly inapplicable to smartphones, are not found in the Kraken Smart Housing." (Compl. ¶18). The complaint does not, however, specify which claim elements it contends are absent from its product.

No probative visual evidence provided in complaint.

• Identified Points of Contention:
  • Scope Questions: The core dispute raises the question of whether the scope of the term "device" can be limited by the patent's title and its described embodiment, despite the explicit inclusion of "smartphones" and "tablets" in the language of claim 1. (’395 Patent, col. 8:28-29; Compl. ¶13).
  • Technical Questions: A key factual question, for which the complaint provides no detail, is what specific structural elements of the claims are allegedly "wholly inapplicable to smartphones." (Compl. ¶18). For example, a court may need to determine whether the mechanism that holds a phone in the Kraken Smart Housing constitutes the claimed "adaptation base" with its slidably coupled first and second brackets. (’395 Patent, col. 8:35-40).

V. Key Claim Terms for Construction

• The Term: "device"

  • Context and Importance: Plaintiff's non-infringement theory appears to depend on narrowing the definition of "device" to effectively exclude smartphones, which are the only products the accused "Kraken Smart Housing" is designed to hold. (Compl. ¶¶16, 18).
  • Intrinsic Evidence for a Broader Interpretation: Claim 1 explicitly recites that the "device" comprises "at least one of, a camera, a tv camera, mobile telephones, smartphones, and tablets." (’395 Patent, col. 8:28-29). The abstract and specification make similar inclusive statements. (’395 Patent, Abstract; col. 1:46-48).
  • Intrinsic Evidence for a Narrower Interpretation: The complaint argues that the patent's title, “Underwater Case for Digital Cameras and Video Cameras,” and the "single embodiment disclosed," which allegedly includes a "typical tripod head plate and screw," suggest a focus on traditional cameras. (Compl. ¶13). Practitioners may focus on this as a potential argument that the specification disavows the broader scope explicitly recited in the claim.

• The Term: "a second bracket ... comprising a coupler for coupling with said device"

  • Context and Importance: A finding of non-infringement could turn on whether the mechanism securing a smartphone within the accused housing meets this structural limitation. The complaint's assertion that claim elements are "inapplicable to smartphones" may be directed at this feature. (Compl. ¶18).
  • Intrinsic Evidence for a Broader Interpretation: The term "coupler" is not specially defined and could be given its plain meaning, potentially encompassing a wide range of fastening or holding structures. The specification describes the second bracket generally as "the interface between the digital camera and tv camera to be inserted in said case C and said case C itself." (’395 Patent, col. 4:29-32).
  • Intrinsic Evidence for a Narrower Interpretation: The complaint’s focus on the tripod mount in the patent’s embodiment could be used to argue that the "coupler" is limited to such a mechanism. (Compl. ¶13). The specification also states the "second bracket 72 varies in relation to the specific camera or tv camera to be inserted," which could support an argument that different device types require structurally distinct couplers not all covered by the claim. (’395 Patent, col. 4:42-44).

VI. Other Allegations

• Invalidity: The complaint alleges the ’395 Patent is invalid under 35 U.S.C. §§ 101, 102, and 103, asserting that it merely combines well-known prior art elements such as wireless communication with a camera in a waterproof case, two-part mounting brackets, and O-ring seals. (Compl. ¶¶19-21, 28). It also alleges invalidity under § 112 for failing to disclose sufficient information for one to practice the invention. (Compl. ¶22).
• Unenforceability and Patent Misuse: Plaintiff alleges that Defendants have engaged in patent misuse by marking their own non-covered products and "intentionally threatening competitors," thereby rendering the ’395 Patent unenforceable. (Compl. ¶31).
• False Marking: Plaintiff brings a count for false marking under 35 U.S.C. § 292, alleging that Defendants marked their "Leo3Smart" and "DiveShot" smartphone cases as "patented" with the intent to deceive the public, given that these products are allegedly not covered by the claims of the ’395 Patent. (Compl. ¶¶17, 23, 34).

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

• A core issue will be one of claim construction: can the scope of the term "device" be judicially limited to "standard digital cameras," as Plaintiff argues, when the plain language of the asserted claim explicitly includes "smartphones"? The outcome will test the high bar required for the specification to disavow or redefine clear claim language.
• A key evidentiary question will be one of structural infringement: assuming the claims are construed to cover smartphone housings, does the Kraken Smart Housing contain the specific "adaptation base" with a "slidably coupled" first and second bracket as recited in claim 1, or can Plaintiff demonstrate a material structural difference?
• A central question for the unenforceability and false marking claims will be one of deceptive intent: can Plaintiff prove that when Defendants marked their own smartphone housings and accused Plaintiff's competing product, they did so with the knowledge that the ’395 Patent did not cover such devices and with a specific purpose to deceive the public or competitors?