Universal Transdata LLC v. Staples Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:

  • Plaintiff: Universal Transdata, LLC (Georgia)
  • Defendant: Staples, Inc. (Delaware)
  • Plaintiff’s Counsel: Kent & Risley LLC

• Case Identification: 1:17-cv-03285, N.D. Ga., 08/30/2017

• Venue Allegations: Plaintiff alleges venue is proper because Defendant has committed acts of infringement and maintains a regular and established place of business in the district, including at least ten retail stores.

• Core Dispute: Plaintiff alleges that Defendant’s "Relay" brand of USB flash drives infringes a patent related to the mechanical design of retractable USB connectors.

• Technical Context: The case concerns the mechanical construction of portable data storage devices, specifically the mechanism used to protect a USB connector without requiring a separate, losable cap.

• Key Procedural History: The complaint alleges that Plaintiff provided Defendant with pre-suit notice of the patent and its alleged infringement. This notice serves as the basis for the willfulness allegation.

Case Timeline

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

U.S. Patent No. 6,743,030, Portable Storage Device with Universal Serial Bus, Issued June 1, 2004

The Invention Explained

• Problem Addressed: Conventional portable storage devices at the time used a separate cap to protect the USB connector. This cap was "completely separated from the case" when removed, making it easy for a user to lose, leaving the connector "no longer suitably protected" from damage. (’030 Patent, col. 1:33-38).

• The Patented Solution: The invention is a portable storage device with an integrated, retractable USB connector. It features a main body (containing the circuit board and connector) that slides within a hollow case. A user operates an external "push member" that is connected to the internal main body, allowing the user to slide the connector out for use and retract it back into the case for protection. (’030 Patent, Abstract; col. 2:44-67). This design eliminates the need for a separate cap. (’030 Patent, col. 3:25-27).

• Technical Importance: The invention offered a more convenient and durable design for portable USB storage by integrating the protective mechanism into the device's body, thus preventing the loss of a separate protective cap. (’030 Patent, col. 1:44-51).

Key Claims at a Glance

• The complaint asserts independent claim 1 and dependent claim 7. (Compl. ¶18).

• The essential elements of independent claim 1 include:

  • a case having a longitudinal length and a front opening;
  • a main body comprising a circuit board and a connector located in front of said circuit board;
  • said main body being positioned in said case with said connector being movable out of or retractable into said front opening of said case;
  • a push member being connected to said main body in the manner of interference fit and exposed from said case; and
  • whereby by pushing said push member forward or rearward, said connector of said main body is brought to project from or retract into said case, and said push member does not extend substantially beyond the longitudinal length of said case.

• The complaint does not explicitly reserve the right to assert additional claims.

III. The Accused Instrumentality

Product Identification

• The complaint identifies the "Staples 'Relay' USB Flash Drive products" and "other as-yet-unknown products that similarly satisfy each element of each asserted claim" as the Accused Products. (Compl. ¶19).

Functionality and Market Context

• The complaint does not provide specific details about the technical operation or internal mechanics of the Accused Products. It alleges generally that they are USB flash drives sold by Defendant and that they "embody the patented invention." (Compl. ¶18-19). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint alleges that the Accused Products "satisfy each and every element of each asserted claim," and incorporates by reference a "preliminary claim chart attached hereto as Exhibit B." (Compl. ¶20). As Exhibit B was not filed with the complaint, a detailed element-by-element analysis based on Plaintiff's specific theories is not possible. The narrative theory is a conclusory assertion of infringement of claims 1 and 7. (Compl. ¶18, ¶20).

Identified Points of Contention

• Technical Question: The central factual question will be whether the internal mechanism of the Staples "Relay" drive connects its external slider ("push member") to its internal circuit board assembly ("main body") using a structure that meets the claim limitation of an "interference fit." The complaint provides no evidence on this point.

• Scope Question: A potential dispute may arise over the proper construction of "interference fit." The question for the court would be whether this term requires a specific press-fit or friction-based connection as described in the patent's embodiment, or if it can be construed more broadly to cover other forms of mechanical connection.

V. Key Claim Terms for Construction

• The Term: "interference fit"

• Context and Importance: This term appears in claim 1 and is central to how the external push member connects to the internal main body. Its construction will be critical to determining infringement, as different retractable USB drives may use different mechanical linkages (e.g., snaps, latches, screws) that may or may not fall within the scope of this term.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Narrower Interpretation: The specification describes a specific embodiment where an "interference fit" is formed by a "hole 311" on the push member engaging with a "raised electronic element 221" on the circuit board. (’030 Patent, col. 3:8-10). This may support an argument that "interference fit" is limited to this type of direct, friction-based engagement between two components.
  • Evidence for a Broader Interpretation: The term is not explicitly defined in the patent. A party could argue that in the context of the claims and specification, it should be given its plain and ordinary meaning to one of skilled in the art of mechanical design, which might encompass a range of connections that rely on friction or compression between parts to hold them together, not just the specific "hole and raised element" embodiment.

VI. Other Allegations

• Indirect Infringement: The complaint includes a count for induced infringement, alleging Defendant acted "actively and intentionally, with prior knowledge of the '030 Patent," to induce infringement by others. (Compl. ¶28). The complaint does not plead specific facts explaining how Defendant induced infringement (e.g., via user manuals or advertising).

• Willful Infringement: The complaint alleges that Defendant’s infringement is willful and deliberate. (Compl. ¶23). This allegation is based on the assertion that Defendant had "actual knowledge of the '030 Patent and Plaintiff's claims of infringement prior to the filing of this action, at least since receiving pre-suit notice." (Compl. ¶22).

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

1. A central issue will be one of claim construction: how will the court define the term "interference fit"? The outcome will depend on whether the court limits the term to the specific structure disclosed in the patent's embodiment or adopts a broader, ordinary meaning from the field of mechanical engineering.
2. A key evidentiary question will be one of factual proof: assuming a construction for "interference fit," what is the actual internal mechanism of the accused Staples "Relay" USB drive? The case will likely turn on a technical comparison of that product's design to the specific limitations of the asserted claims.
3. A third question relates to willfulness: did the alleged pre-suit notice provide sufficient detail and knowledge to Defendant such that any continued infringement could be considered willful, potentially exposing Defendant to enhanced damages?