Innovative Products Inc v. Pro Gard Products LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Innovative Products, Inc. (Tennessee)
  • Defendant: Pro-gard, LLC (Delaware)
  • Plaintiff’s Counsel: Ashby & Geddes
• Case Identification: 1:19-cv-02089, D. Del., 11/04/2019
• Venue Allegations: Venue is alleged to be proper in the District of Delaware on the basis that Defendant is a Delaware Limited Liability Company and therefore resides in the judicial district.
• Core Dispute: Plaintiff alleges that Defendant’s "Easy-Mic" product, a microphone mounting system, infringes two patents related to magnetic adapters for radio microphones.
• Technical Context: The technology concerns after-market conversion kits that replace traditional, mechanical "hang-up clips" for vehicle-mounted radio microphones with a magnetic mounting system for easier and safer use.
• Key Procedural History: Both patents-in-suit are subject to a terminal disclaimer. The ’322 patent is a continuation of the application that led to the ’667 patent. The complaint states that Plaintiff's "Magnetic Mic" product is a commercial embodiment of the patents and that Plaintiff provided Defendant with pre-suit written notice of the alleged infringement.

Case Timeline

Date	Event
2008-08-15	Priority Date for ’667 and ’322 Patents
2017-10-17	U.S. Patent No. 9,794,667 Issued
2018-05-29	U.S. Patent No. 9,986,322 Issued
2019-11-04	Complaint Filed

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

U.S. Patent No. 9,794,667, "Hang Up Magnet for Radio Microphone" (Issued Oct. 17, 2017)

The Invention Explained

• Problem Addressed: The patent’s background section describes the difficulty and potential danger of using traditional "tongue-and-groove" clip assemblies for mounting radio microphones in vehicles, as it requires drivers to divert their attention from the road to precisely align the microphone with its holder (’667 Patent, col. 1:12-24).
• The Patented Solution: The invention is a "conversion kit" designed to retrofit an existing radio microphone with a magnetic mount (’667 Patent, col. 3:21-24). The core component is a "magnetic handset adapter" that attaches directly to the microphone's pre-existing mechanical hang-up clip without requiring any disassembly of the microphone itself. This adapter, containing a magnet, then allows the microphone to be easily attached to a corresponding magnetic or metallic surface in the vehicle, replacing the need for precise mechanical alignment with a simple magnetic attraction (’667 Patent, col. 5:45-54; cl. 1).
• Technical Importance: The invention provided a universal, after-market solution that could convert a wide range of existing radio systems to a magnetic mounting method, intended to enhance safety and convenience without requiring the purchase of a new microphone system (’667 Patent, col. 2:38-42).

Key Claims at a Glance

• The complaint asserts independent claim 1 and dependent claims 2-3, 8, and 11 (Compl. ¶13).
• Independent Claim 1 requires:
  • A conversion kit for a radio handset microphone with a pre-existing mechanical mounting system.
  • A "magnetic handset adapter" that attaches directly to the microphone's pre-existing external mechanical hang-up clip.
  • The adapter has a "slot and a groove" configured to receive the "tongue" and "post" of the clip "without any disassembly of the handset microphone."
  • The adapter includes a magnet and functions as an extension of the original clip.
  • The adapter is configured to remain attached to the clip when the microphone is mounted to and removed from a surface.

U.S. Patent No. 9,986,322, "Hang Up Magnet for Radio Microphone" (Issued May 29, 2018)

The Invention Explained

• Problem Addressed: The patent addresses the same problem as the ’667 Patent: the inefficiency and distraction caused by conventional mechanical microphone clips in vehicles (’322 Patent, col. 1:12-24).
• The Patented Solution: Like the ’667 Patent, the ’322 Patent discloses a conversion kit to retrofit a magnetic mount onto a microphone's existing hang-up clip (’322 Patent, col. 3:21-24). The claims of the ’322 Patent are structured similarly but provide slightly different scope. For example, the asserted independent claim requires the adapter to include "at least one of a magnet and a magnetically attractable material," whereas the corresponding claim in the ’667 Patent requires a "magnet" specifically (’322 Patent, cl. 1).
• Technical Importance: The technology serves the same purpose as that described in the ’667 Patent, offering an after-market conversion to a magnetic mounting system for existing radio equipment (’322 Patent, col. 2:38-42).

Key Claims at a Glance

• The complaint asserts independent claim 1 and dependent claims 2-3, 8, and 13-14 (Compl. ¶13).
• Independent Claim 1 requires:
  • A conversion kit for a radio handset microphone with a pre-existing mechanical mounting system.
  • A "magnetic handset adapter" that attaches directly to the microphone's pre-existing external mechanical hang-up clip.
  • The adapter is configured to mount to the "tongue" of the clip "without any disassembly of the handset microphone."
  • The adapter includes "at least one of a magnet and a magnetically attractable material" and functions as an extension of the original clip.
  • The adapter is configured to remain attached to the clip when the microphone is mounted to and removed from a surface.

III. The Accused Instrumentality

• Product Identification: The accused product is named "Easy-Mic" (Compl. ¶11).
• Functionality and Market Context: The complaint provides minimal technical detail about the "Easy-Mic" product's construction or operation. It alleges the product is a "microphone adaptor and base" that allows a microphone to be "effectively and safely picked up and returned to a holder inside a vehicle" (Compl. ¶6, describing Plaintiff's own product). The complaint incorporates by reference "Documentation published by Pro-gard describing the Easy-Mic product" as Exhibit C, but this document is not provided with the complaint (Compl. ¶12). The infringement allegations imply that the "Easy-Mic" functions as a conversion kit that magnetically adapts a conventional microphone for mounting (Compl. ¶13). The complaint alleges that Defendant Pro-gard is a "direct competitor of Innovative" (Compl. ¶9).

IV. Analysis of Infringement Allegations

The complaint alleges direct infringement of both the ’667 and ’322 patents by Defendant's "Easy-Mic" product (Compl. ¶¶10, 13). It states that an attached claim chart, Exhibit D, "demonstrates how those claims read on the Easy-Mic product" (Compl. ¶13). However, this exhibit was not included with the filed complaint document.

The narrative infringement theory, inferred from the asserted claims, is that the "Easy-Mic" is a conversion kit that includes a handset adapter. This adapter is allegedly designed to attach directly to the pre-existing mechanical hang-up clip found on a standard radio microphone, without requiring any disassembly of the microphone itself (’667 Patent, cl. 1; ’322 Patent, cl. 1). The allegations suggest the adapter contains a magnetic or magnetically-attractable element, allowing the microphone to be mounted via magnetic force, and that this adapter remains on the microphone's clip when it is moved to and from its mounting location (Compl. ¶13). Without the claim chart (Exhibit D) or product documentation (Exhibit C), further analysis of the specific mapping of claim elements to accused features is not possible.

No probative visual evidence provided in complaint.

• Identified Points of Contention:
  • Structural Questions: Does the accused "Easy-Mic" adapter possess the specific physical structures recited in the claims, such as the "slot and a groove" configured to receive the "post and a tongue" of a standard hang-up clip (’667 Patent, cl. 1)? The case may hinge on the degree of structural identity between the accused product and the claimed adapter.
  • Functional Questions: What evidence does the complaint provide that the "Easy-Mic" adapter is "configured to remain attached to the mechanical hang-up clip" as the microphone is used (’667 Patent, cl. 1)? This functional limitation is a key part of the claimed invention.
  • Material Questions: A potential point of dispute may arise from the differing material requirements of the asserted patents. The ’667 Patent's claim 1 requires a "magnet," while the ’322 Patent's claim 1 requires "at least one of a magnet and a magnetically attractable material." The specific material composition of the accused adapter will determine whether it can infringe one or both patents on this element.

V. Key Claim Terms for Construction

• The Term: "magnetic handset adapter configured to attach directly to a pre-existing mechanical hang-up clip"

• Context and Importance: This term defines the central component of the claimed invention. The outcome of the case will depend heavily on whether the accused "Easy-Mic" product is construed as being such an adapter. Practitioners may focus on this term because it delineates the invention from both the prior art (the microphone clip itself) and from systems that require replacing the entire microphone.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification suggests the adapter is intended to be universal, stating that its features "may be selected to accommodate hang-up clips of various sizes and shapes" (’667 Patent, col. 2:38-41). This could support a construction that is not limited to one specific type of pre-existing clip.
  • Evidence for a Narrower Interpretation: Claim 1 of the ’667 Patent recites that the adapter includes "a slot configured to slide onto the tongue of the mechanical hang-up clip and the groove configured to receive the post." A defendant may argue this language limits the scope of the "adapter" to a device with this specific two-part interface, as opposed to any generic method of attachment.

• The Term: "without any disassembly of the handset microphone"

• Context and Importance: This negative limitation is critical for distinguishing the claimed "conversion kit" from more invasive modifications. The infringement analysis will require a factual determination of what actions are needed to install the accused "Easy-Mic."

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: A party could argue this means only that the main housing and internal electronic components of the microphone must remain intact, allowing for the removal of minor, non-essential external parts.
  • Evidence for a Narrower Interpretation: The specification emphasizes the ease of installation, describing how the adapter is "easily fitted to a hang-up clip on the radio handset with a simple sliding action" (’667 Patent, col. 3:29-31). This may support a narrow construction where "disassembly" means the removal of any part from the microphone, even an external screw or button.

VI. Other Allegations

• Willful Infringement: The complaint alleges that "Innovative has given Pro-gard written notice of Pro-gard's infringement, but Pro-gard has refused to cease its infringing activities" (Compl. ¶14). The prayer for relief seeks a determination that infringement was willful, suggesting the claim is based on alleged post-suit or post-notice knowledge of the patents (Compl. p. 3(c)).

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

• A core issue will be one of structural correspondence: does the accused "Easy-Mic" product, which is not described in detail in the complaint, actually embody the specific "slot and groove" adapter structure for attaching to a pre-existing microphone clip as recited in the asserted claims, or does it utilize a different attachment mechanism that may fall outside the claim scope?
• A key evidentiary question will be one of infringement proof: given the complaint’s reliance on unprovided exhibits (the product documentation and a claim chart), the case will depend on the evidence Plaintiff can introduce to prove, on an element-by-element basis, that the "Easy-Mic" functions as the claimed "conversion kit" that remains attached to the microphone's original clip during use.