1:23-cv-00437
ACCO Brands USA LLC v. Performance Designed Products LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: ACCO Brands USA LLC (Delaware)
- Defendant: Performance Designed Products LLC (California)
- Plaintiff’s Counsel: Barnes & Thornburg LLP
- Case Identification: 1:23-cv-00437, D. Del., 04/20/2023
- Venue Allegations: Plaintiff ACCO alleges venue is proper in Delaware because Defendant PDP sells products in the state, purposefully directed enforcement activities at ACCO (a Delaware company), and is a Delaware resident by virtue of its sole member being a Delaware corporation.
- Core Dispute: Plaintiff seeks a declaratory judgment that its FUSION Pro 2 game controller does not infringe four of Defendant's patents related to interchangeable components for game controllers, and that those patents are invalid.
- Technical Context: The technology involves customizable video game controllers that allow users to swap components, such as thumbsticks and faceplates, to alter performance and ergonomics, a key feature in the enthusiast and competitive gaming markets.
- Key Procedural History: The action follows pre-suit correspondence in which Defendant accused Plaintiff of infringement and threatened litigation. The complaint also notes a related California state court action filed by Defendant against Plaintiff and a third party for breach of a prior settlement agreement concerning patents from the same family as two of the patents-in-suit. Plaintiff asserts it raised invalidity arguments during pre-suit discussions, citing the Mad Catz MLG Pro gaming controller as prior art.
Case Timeline
| Date | Event |
|---|---|
| 2012-04-09 | Priority Date for '435 and '584 Patents |
| 2017-06-12 | Priority Date for '171 and '938 Patents |
| 2018-08-07 | '435 Patent Issued |
| 2020-08-11 | '171 Patent Issued |
| 2020-12-29 | '938 Patent Issued |
| 2021-03-09 | '584 Patent Issued |
| 2021-06-XX | PowerA FUSION Pro 2 Launched |
| 2022-08-01 | PDP sends notice letter to ACCO |
| 2023-04-20 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,042,435, "Interchangeable input mechanisms for control devices," issued August 7, 2018
The Invention Explained
- Problem Addressed: The patent notes the history of specially configured and customized input devices for various industries, including gaming, which are often tailored to an individual user's preferences or a specific application ('435 Patent, col. 1:21-34).
- The Patented Solution: The invention provides an input mechanism, such as a thumbstick, composed of a base component integrated into the controller and an interchangeable element that removably couples to the base. This design allows a user to easily detach and replace the element—for example, a thumbstick head—with another of a different size, shape, or material, without disassembling the entire controller ('435 Patent, Abstract; col. 2:16-32).
- Technical Importance: This technology allows for on-the-fly customization of a controller's physical interface, enabling gamers to adapt the device's feel and performance to their personal preferences or the demands of a specific game ('435 Patent, col. 5:61-64).
Key Claims at a Glance
- The complaint contests infringement of independent claims 1, 6, and 13 (Compl. ¶47).
- Independent claim 1 recites, in part:
- A handheld video game controller comprising a controller body and a pair of thumbsticks.
- At least one of the thumbsticks is interchangeable and comprises a head, a shaft, and a base component.
- The base component has a dome portion and a plug.
- "at least a portion of the thumbstick is replaceable" via an opening in the controller body to vary the shaft length.
- The complaint seeks a declaratory judgment of non-infringement and invalidity for all claims of the patent (Compl. ¶¶46, 53).
U.S. Patent No. 10,942,584, "Interchangeable input mechanisms for control devices," issued March 9, 2021
The Invention Explained
- Problem Addressed: Like its family member the '435 patent, the '584 patent addresses the need for customizable input devices that can be adapted to user preferences ('584 Patent, col. 1:21-34).
- The Patented Solution: The patent describes a thumbstick with a "monolithic shaft" and a base, where at least a portion of the thumbstick is replaceable. The specification details various coupling mechanisms, including friction-based systems with sockets and plugs, to allow for the removable attachment of interchangeable thumbstick elements to a base component within the controller ('584 Patent, Abstract; col. 8:25-41).
- Technical Importance: This invention provides a means for users to quickly modify the physical characteristics of their game controllers, enhancing comfort, performance, and personalization ('584 Patent, col. 6:1-17).
Key Claims at a Glance
- The complaint contests infringement of independent claims 1, 8, and 15 (Compl. ¶63).
- Independent claim 1 recites, in part:
- A video game controller with a controller body and a pair of thumbsticks.
- At least one thumbstick is interchangeable and comprises a head, a monolithic shaft, and a base.
- "at least a portion of the thumbstick is replaceable" to vary the shaft length.
- The complaint seeks a declaratory judgment of non-infringement and invalidity for all claims of the patent (Compl. ¶¶62, 69).
U.S. Patent No. 10,737,171, "Video game controller," issued August 11, 2020
Technology Synopsis
This patent addresses the cost and difficulty of servicing or replacing worn or malfunctioning components in modern, complex video game controllers ('171 Patent, col. 1:36-46). The invention discloses a controller with a readily removable faceplate, which allows for tool-less access to and replacement of modular control inputs, such as thumbsticks and directional pads, without requiring disassembly of the main controller body ('171 Patent, Abstract; col. 2:19-24).
Asserted Claims
The complaint identifies independent claims 1 and 11 as being at issue (Compl. ¶79).
Accused Features
The non-infringement argument centers on the claim requirement that "a plurality of control inputs [be] removably mounted," where one of these removable inputs extends through a cross-shaped opening. The complaint alleges the accused controller's directional pad, which sits in the cross-shaped opening, is not removable and therefore does not meet this limitation (Compl. ¶¶79-80).
U.S. Patent No. 10,874,938, "Video game controller," issued December 29, 2020
Technology Synopsis
Belonging to the same family as the '171 patent, this invention also aims to improve the serviceability and customizability of game controllers by using removable components ('938 Patent, col. 1:15-20). In addition to a removable faceplate and control inputs, the claims of this patent specifically recite a "detachable paddle unit" that is removably coupled to the underside of the controller body ('938 Patent, claim 1).
Asserted Claims
The complaint identifies independent claims 1 and 11 as being at issue (Compl. ¶95).
Accused Features
The complaint argues that the accused controller does not have the claimed "detachable paddle unit." It contends the patent describes a simple, flexible input, whereas the accused product features a "module member that is a complex electromechanical assembly complete with multiple switches and electronics," creating a technical distinction from the claimed invention (Compl. ¶95).
III. The Accused Instrumentality
Product Identification
The accused product is the PowerA FUSION Pro 2 Wired Controller for the Xbox gaming platform (Compl. ¶20).
Functionality and Market Context
The FUSION Pro 2 is marketed as a high-performance, professional-level controller. Its relevant features include a "Mappable Pro Pack" with four customizable paddles, dual rumble motors, and magnetic impulse triggers (Compl. ¶20). The complaint includes a photograph of the controller, showing its layout of thumbsticks and buttons (Compl. p. 6). The core of the dispute relates to the controller's customizable nature, which Plaintiff ACCO contends is implemented in a way that does not infringe Defendant's patents.
IV. Analysis of Infringement Allegations
'435 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| at least a portion of the thumbstick is replaceable | Plaintiff ACCO contends that the accused controller's entire input mechanism is replaceable, rather than only a portion of the thumbstick assembly being replaceable as allegedly required by the claim. | ¶47 | col. 16:56-61 |
'584 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| at least a portion of the thumbstick is replaceable | Plaintiff ACCO makes the same argument as for the '435 Patent: the accused controller replaces the entire input mechanism, which it alleges does not meet the claim limitation of replacing only a portion. | ¶63 | col. 16:9-13 |
Identified Points of Contention
- Scope Questions: For the ’435 and ’584 patents, the dispute centers on the meaning of "at least a portion... is replaceable." The complaint raises the question of whether this language requires that less than the entire thumbstick mechanism be swappable, or if replacing the whole mechanism also satisfies the limitation. For the ’938 Patent, the complaint questions whether the term "detachable paddle unit," allegedly described in the patent as a simple component, can be interpreted to cover the accused product's self-contained, "complex electromechanical assembly" (Compl. ¶95).
- Technical Questions: For the ’171 Patent, the complaint presents a direct factual dispute: is the directional pad on the FUSION Pro 2 "removably mounted" as required by the claim? ACCO asserts it is not (Compl. ¶79). The resolution of this issue will likely depend on expert analysis of the accused product's construction.
V. Key Claim Terms for Construction
The Term: "at least a portion of the thumbstick is replaceable" ('435 Patent, claim 1; '584 Patent, claim 1)
Context and Importance
This term is central to the non-infringement defense for two of the four patents. ACCO's argument that its product replaces the entire mechanism, not just a portion, hinges on a narrow construction of this phrase. Practitioners may focus on this term because its interpretation—whether "portion" means "less than the whole"—could be dispositive of infringement for a significant part of the case.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: A party could argue that the plain meaning of "at least a portion" includes the whole, and that the patent's overall goal is to enable customization, which is achieved by replacing the entire module ('435 Patent, col. 2:16-24). The specification's use of broadening phrases like "without limitation" may support an interpretation that is not unduly restrictive ('435 Patent, col. 13:65-66).
- Evidence for a Narrower Interpretation: The patents consistently illustrate and describe an "interchangeable element" (e.g., 202) that decouples from a "base component" (e.g., 204), suggesting the invention contemplates swapping a sub-part while the base remains ('435 Patent, Fig. 2; col. 2:42-47). This distinction between the swappable element and the fixed base may support a construction where only a part, not the whole, of the mechanism is replaced.
The Term: "detachable paddle unit" ('938 Patent, claim 1)
Context and Importance
ACCO's non-infringement argument for the '938 patent relies on distinguishing its allegedly complex rear module from the claimed "detachable paddle unit." The construction of this term will determine if the technological differences asserted by ACCO are legally significant.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The claim language itself does not specify the internal complexity of the "paddle unit," requiring only that it be detachable and coupled to the controller's underside ('938 Patent, col. 13:54-57). A party could argue any component meeting this structural and functional description infringes, regardless of its internal electronics.
- Evidence for a Narrower Interpretation: ACCO argues the patent specification implies a simpler mechanism, where the paddle acts as a lever to actuate switches located within the main controller body (Compl. ¶95). The patent's figures, such as Figure 8 showing paddle unit 140 engaging levers 115a/115b inside the controller, could support an interpretation that the "paddle unit" is primarily a mechanical actuator, distinct from a self-contained electronic module ('938 Patent, Fig. 8; col. 7:10-24).
VI. Other Allegations
Indirect Infringement
The complaint seeks a declaratory judgment of non-infringement as to all forms of infringement, including inducement and contributory infringement (Compl. ¶¶ 46, 62, 78, 94). The complaint does not detail specific allegations from Defendant regarding indirect infringement.
Willful Infringement
While this is a declaratory judgment action filed by the accused infringer, the complaint establishes a basis for a potential willfulness claim by Defendant. The complaint confirms that Defendant provided Plaintiff with notice of the asserted patents and its infringement allegations in correspondence dated August 1, 2022, well before the suit was filed (Compl. ¶22).
VII. Analyst’s Conclusion: Key Questions for the Case
This declaratory judgment action appears poised to turn on several key questions of claim scope and technical comparison. The resolution of these issues will likely determine the outcome of the non-infringement and invalidity claims.
- A core issue will be one of definitional scope: For the '435 and '584 patents, can the claim language "at least a portion of the thumbstick is replaceable" be construed to mean that only a sub-component (less than the whole) can be swapped? Or does it also cover the replacement of the entire thumbstick assembly, as the accused product allegedly does?
- A second central issue is one of technical and factual mismatch: For the '171 patent, is the directional pad of the accused controller "removably mounted" in a manner consistent with the claims? For the '938 patent, does the term "detachable paddle unit," as defined by the patent, read on the accused product's allegedly more complex, self-contained electronic module, or is there a fundamental difference in architecture and operation?
- Finally, an underlying question will be the validity of the asserted claims in light of the prior art identified by ACCO, such as the "Mad Catz MLG Pro gaming controller," which may have disclosed similar concepts of controller modularity and customization before the patents' priority dates.