DCT

1:18-cv-05385

Sanho Corp v. Kaijet Technology Interna

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:18-cv-05385, N.D. Ga., 10/28/2020
  • Venue Allegations: Venue is alleged to be proper in the Northern District of Georgia because Defendant Kaijet maintains a corporate office in Kennesaw, Georgia, transacts business within the district, and allegedly committed acts of infringement in the district.
  • Core Dispute: Plaintiff alleges that Defendant’s “j5create” line of multi-port docking stations and connectors infringes one utility patent and two design patents directed to port extension technology and ornamental product designs.
  • Technical Context: The technology relates to computer peripheral hubs or docking stations that expand the limited number of connection ports available on modern electronic devices such as laptops and tablets.
  • Key Procedural History: A key post-filing event is an Inter Partes Review (IPR) proceeding (IPR2021-00886) filed against the asserted utility patent, U.S. Patent No. 10,572,429. The provided IPR certificate indicates a determination that all challenged claims, including the asserted Claim 1, are cancelled. The complaint also alleges that Defendant was on notice of the infringement and refused to cease and desist its activities.

Case Timeline

Date Event
2015-03-30 ’290 Patent Priority Date
2017-04-27 ’429 Patent Priority Date
2017-05-06 ’618 Patent Priority Date
2018-01-09 ’290 Patent Issue Date
2019-04-02 ’618 Patent Issue Date
2020-02-25 ’429 Patent Issue Date
2020-10-28 Complaint Filing Date
2021-04-30 IPR2021-00886 Filed against ’429 Patent

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

U.S. Patent No. 10,572,429 - "PORT EXTENSION APPARATUS", issued Feb. 25, 2020.

The Invention Explained

  • Problem Addressed: The patent’s background section identifies the problem of "low and/or inefficient port usage" on modern end-user devices like laptops, which have a limited number and tight spacing of built-in ports, making it difficult to connect multiple peripherals simultaneously (’429 Patent, col. 1:9-27).
  • The Patented Solution: The invention is a port extension apparatus featuring a dual-pathway architecture. It includes a "first data port module" that creates a direct "transmission path" to the host device for simple data transfer or charging, and a separate "data transmission control module" that actively manages communication for other ports, such as a "second data port module" and a "video port module" (’429 Patent, Abstract; col. 5:46-65; Fig. 1).
  • Technical Importance: This hybrid architecture purports to increase the utilization efficiency of a host device's ports by distinguishing between direct, high-speed passthrough connections and controller-managed connections for a variety of peripheral types (’429 Patent, col. 5:21-24).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶31).
  • The essential elements of Claim 1 include:
    • A "main port module" with "first and second port units" for connecting to an end-user device.
    • A "first data port module" connected to the "first port unit".
    • A "data transmission control module" connected to the "second port unit".
    • A "second data port module" and a "video port module" connected to the "data transmission control module".
    • A functional requirement that the "first data port module" forms a direct "transmission path" to the end-user device, while the "data transmission control module" controls data for the second data and video port modules.
  • The complaint reserves the right to assert other claims and alleges infringement under the doctrine of equivalents (Compl. ¶27).

U.S. Design Patent No. D844,618 - "MULTI-FUNCTION DOCKING STATION", issued Apr. 2, 2019.

The Invention Explained

  • Problem Addressed: As a design patent, the '618 Patent does not solve a technical problem but instead protects the unique, non-functional, ornamental appearance of a product.
  • The Patented Solution: The invention is the specific ornamental design for a "multi-function docking station" as depicted in the patent's figures (’618 Patent, "CLAIM," Figs. 1-8). The design features a slim, rectangular body with curved ends, a specific arrangement and style of ports on its side, and a connecting element protruding from the top.
  • Technical Importance: Not applicable for a design patent.

Key Claims at a Glance

  • The patent contains a single claim for "the ornamental design for a multi-function docking station, as shown and described" (’618 Patent, "CLAIM").

U.S. Design Patent No. D807,290 - "MULTI-FUNCTION CONNECTOR", issued Jan. 9, 2018.

  • Technology Synopsis: This design patent protects the ornamental, non-functional visual characteristics of a multi-function connector. The claimed design consists of a slender, rectangular housing with a specific layout of various ports on one of its long faces.
  • Asserted Claims: The single claim for the ornamental design as shown and described (’290 Patent, "CLAIM").
  • Accused Features: The complaint alleges that the overall ornamental appearance of the Defendant's JCD348, JCD386, and JCD388 products is "substantially the same" as the design claimed in the '290 Patent (Compl. ¶49).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are a range of j5create-branded multi-port docking stations and connectors, including models JDD320, JDD320B, JCD324, JCD348, JCD382, JCD386, JCD388, and JCD389 (Compl. ¶16).

Functionality and Market Context

These devices function as external hubs that plug into a host computer (such as a MacBook Pro or Surface Pro) to expand its connectivity options (Compl. ¶16). For example, the packaging for the JCD382 shows it provides ports for Thunderbolt 3, HDMI, and memory cards from a single USB-C connection (Compl. p. 19). The complaint alleges these products are sold through Defendant's website, at major retailers like Best Buy, and other distributors worldwide (Compl. ¶17).

IV. Analysis of Infringement Allegations

The complaint references an infringement claim chart for the '429 Patent as "Exhibit D," but this exhibit was not included in the provided filing (Compl. ¶31). Therefore, the infringement allegations are summarized from the complaint's narrative.

’429 Patent Infringement Allegations

The complaint alleges that the accused devices, including the JCD382, infringe at least Claim 1 of the ’429 Patent (Compl. ¶31). The core of this allegation is that the accused products contain the claimed combination of modules, including a main port module, multiple data and video ports, and a data transmission control module that implements the dual-pathway architecture required by the claim (Compl. ¶31). The complaint also asserts infringement under the doctrine of equivalents (Compl. ¶27).

Identified Points of Contention (’429 Patent)

  • Technical Question: A central factual question is whether the accused products' internal circuitry mirrors the specific architecture of Claim 1. The claim requires a direct "transmission path" for the "first data port module" that is distinct from the path through the "data transmission control module" used by other ports. Evidence of the products' internal hardware layout and data routing will be necessary to determine if this specific dual-path system is present.
  • Scope Questions: The patent’s embodiment in Figure 2 depicts the "main port module" as having two distinct physical units ("11" and "12") connecting to the host device (’429 Patent, Fig. 2). This raises the question of whether the claim term "main port module having first and second port units" requires two separate physical plugs, or if it can be construed to read on a single, multi-channel connector (like USB-C) that is common on accused products designed for MacBooks.

’618 Patent Infringement Allegations

The complaint alleges that the designs of the accused JCD382 and JCD389 products are "substantially the same" as the design claimed in the ’618 Patent, such that they would deceive an ordinary observer (Compl. ¶40). To support this, the complaint provides a side-by-side image comparing a drawing from the patent with a photograph of the accused JCD382 product (Compl. p. 14).

Identified Points of Contention (’618 Patent)

  • Scope Questions: The infringement analysis will hinge on the "ordinary observer" test. The key question is whether an ordinary observer, giving the attention a purchaser usually gives, would find the overall visual appearance of the accused products to be substantially the same as the patented design. This will involve comparing the overall shape, proportions, and arrangement of ornamental features, while discounting purely functional aspects. The complaint also provides a comparison of the '290 patent and the accused JCD388 product (Compl. p. 17).

V. Key Claim Terms for Construction

"main port module having first and second port units" (from Claim 1 of the ’429 Patent)

Context and Importance

The construction of this term may be dispositive for literal infringement. Practitioners may focus on this term because its interpretation determines whether the patent covers devices with a single physical connector to the host computer or is limited to devices with two separate physical connectors.

Intrinsic Evidence for Interpretation

  • Evidence for a Broader Interpretation: A party might argue that "port units" can refer to logically separate data channels within a single physical connector (e.g., a USB-C or Thunderbolt 3 connector), not necessarily two distinct plugs. The claim language itself does not explicitly require physical separation.
  • Evidence for a Narrower Interpretation: A party would point to the patent’s only detailed embodiment, Figure 2, which clearly depicts a "1st Port Unit 11" and a "2nd Port Unit 12" as separate blocks connecting to two different ports ("1201", "1202") on the end-user device (’429 Patent, Fig. 2). This may support a construction limiting the claim to devices with two physical host connectors.

VI. Other Allegations

Indirect Infringement

The complaint alleges that Defendants are liable for indirect infringement (inducement and contributory infringement) but does not plead specific facts to support these theories, such as referencing user manuals or advertising that instructs users on an infringing use (Compl. ¶27, ¶30, ¶36, ¶45). The allegations are largely conclusory, stating Defendants "aid[ed] and abett[ed]" infringement (Compl. ¶30).

Willful Infringement

Willfulness is alleged for all asserted patents. The complaint bases this on claims of pre-suit knowledge, stating that Plaintiff provided "actual notice" and "repeated notices" of infringement to Kaijet, and that Kaijet continued its conduct and refused to "cease and desist" (Compl. ¶24, ¶28-29, ¶34, ¶38, ¶47).

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

  • A threshold issue is the viability of the utility patent claim: a provided IPR certificate indicates that Claim 1 of the '429 patent—the only utility claim asserted—has been determined to be cancelled post-filing. If this cancellation is finalized, Count I of the complaint may be rendered moot, focusing the entire dispute on the design patent allegations.
  • For the design patents, the case will turn on a question of visual identity: from the perspective of an ordinary observer, is the overall ornamental design of the accused j5create products "substantially the same" as the specific designs claimed in the '618 and '290 patents, or are the visual differences sufficient to distinguish them?
  • Should the '429 patent claim survive, a central issue will be one of architectural scope: does the claim term "main port module having first and second port units" require two separate physical connectors to a host device, as depicted in the patent’s primary embodiment, or can it be construed more broadly to cover devices that use a single, multi-channel physical connector?