DCT

1:18-cv-05385

Sanho Corp v. Kaijet Technology Interna

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:18-cv-05385, N.D. Ga., 11/14/2019
  • Venue Allegations: Venue is based on Defendant Kaijet US having its headquarters and principal place of business in Kennesaw, Georgia, within the district, and on alleged acts of infringement occurring within the state.
  • Core Dispute: Plaintiff alleges that Defendant’s "ULTRADRIVE" multi-function docking station infringes two of Plaintiff's design patents that embody its "HYPERDRIVE" product.
  • Technical Context: The dispute concerns multi-function docking stations, a class of computer peripherals that expand the port and connectivity options for modern laptops and mobile devices.
  • Key Procedural History: This filing is a Third Amended Complaint. The complaint states that Plaintiff provided Defendant with a pre-suit cease and desist letter in November 2017, filed an original complaint in the Northern District of California in 2018, and sent an additional notice letter in November 2019. These events are cited to support allegations of willful infringement.

Case Timeline

Date Event
2016-11-24 U.S. Design Patent No. D855,616 Priority Date
2016-12-05 Plaintiff releases "HYPERDRIVE" product
2016-12-13 U.S. Design Patent No. D813,875 Priority Date
2017-01-XX Plaintiff begins shipping "HYPERDRIVE" product
2017-10-XX Alleged start of Defendant's infringing sales
2017-11-20 Plaintiff sends first cease and desist letter to Defendant
2018-03-27 U.S. Design Patent No. D813,875 issues
2018-XX-XX Plaintiff files original complaint in N.D. Cal.
2019-08-06 U.S. Design Patent No. D855,616 issues
2019-11-12 Plaintiff sends additional cease and desist letter
2019-11-14 Third Amended Complaint filed

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

U.S. Design Patent No. D813,875 - "Multi-function docking station"

  • Patent Identification: U.S. Design Patent No. D813,875, "Multi-function docking station," issued March 27, 2018.

The Invention Explained

  • Problem Addressed: The patent does not articulate a specific problem, as is typical for design patents. It provides a new, original, and ornamental design for a computer peripheral (D’875 Patent, Claim).
  • The Patented Solution: The patent claims the ornamental design of a multi-function docking station. The claimed design consists of an elongated, rectangular body with rounded ends, two male connectors protruding from one side, and a specific arrangement of various I/O ports along its longer sides (D’875 Patent, Figs. 1-8). The overall visual impression is one of a compact, integrated hub designed to attach directly to a host device.
  • Technical Importance: The design provides a distinct aesthetic for a multi-function hub, which the complaint alleges became associated with Plaintiff’s commercially successful HYPERDRIVE product (Compl. ¶¶31, 35).

Key Claims at a Glance

  • The patent asserts a single claim: “The ornamental design for a multi-function docking station, as shown and described” (D’875 Patent, Claim).
  • The scope of the claimed design is defined by the solid lines in Figures 1 through 8 of the patent.

U.S. Design Patent No. D855,616 - "Thunderbolt 3.0 USB-C connector"

  • Patent Identification: U.S. Design Patent No. D855,616, "Thunderbolt 3.0 USB-C connector," issued August 6, 2019.

The Invention Explained

  • Problem Addressed: The patent provides a new, original, and ornamental design for a data connector (D’616 Patent, Claim).
  • The Patented Solution: The patent claims the ornamental design for a connector device. Key features include the elongated rectangular body with rounded ends and two protruding male connectors, similar in form to the '875 Patent. A distinguishing feature of the claimed design is the cross-hatched shading across the main surfaces of the body, which indicates a specific surface texture or material appearance that contributes to the overall aesthetic (D’616 Patent, Figs. 1-2).
  • Technical Importance: This design creates a specific visual identity for a computer peripheral, which Plaintiff alleges Defendant copied (Compl. ¶59).

Key Claims at a Glance

  • The patent asserts a single claim: “The ornamental design for a thunderbolt 3.0 USB-C connector, as shown and described” (D’616 Patent, Claim).
  • The scope of the claimed design is defined by the solid lines in Figures 1 through 7 of the patent.

III. The Accused Instrumentality

Product Identification

  • Defendant’s "ULTRADRIVE" multi-function docking station (Compl. ¶37).

Functionality and Market Context

  • The complaint alleges the ULTRADRIVE is a “counterfeit version” of Plaintiff's HYPERDRIVE product (Compl. ¶37). It is a multi-function docking station sold through retail outlets, including Best Buy stores (Compl. ¶22). The complaint alleges that the accused product misappropriates the "overall design, including the 2 USB-C input connectors and shape" of Plaintiff's product (Compl. ¶38). The complaint includes a photograph of the accused ULTRADRIVE product, which shows an elongated hub with dual connectors and the "j5create" brand name printed on its surface (Compl. p. 19, FIG. 4).

IV. Analysis of Infringement Allegations

The complaint does not contain a formal claim chart. Instead, it advances a narrative infringement theory based on the "ordinary observer" test for design patent infringement, which it quotes directly (Compl. ¶59). The core allegation is that the design of the accused ULTRADRIVE product is “substantially the same” as the ornamental designs claimed in the ’875 and ’616 patents, such that an ordinary observer would be confused (Compl. ¶59).

To support this allegation, the complaint provides a key visual aid: a side-by-side comparison image showing a figure from the '875 Patent, a figure from the '616 Patent, and a photograph of the accused ULTRADRIVE product (Compl. p. 19, FIG. 4). The complaint alleges that the accused product misappropriates the overall design, highlighting the shape and the dual USB-C input connectors as specific points of similarity (Compl. ¶38). The visual comparison in the complaint invites the viewer to note the close resemblance in the overall form factor—an elongated rectangular body with rounded ends—and the distinctive dual-connector configuration designed for direct attachment to a laptop (Compl. p. 19, FIG. 4).

  • Identified Points of Contention:
    • Scope Questions: The infringement analysis will likely turn on how an ordinary observer perceives the designs as a whole. A question for the court is whether the similarities in the general shape and connector configuration are sufficient to establish infringement, or if differences, such as the specific layout of ports, surface finish, and the prominent "j5create" logo on the accused product, are enough to distinguish the designs in the mind of a consumer (Compl. p. 19, FIG. 4).
    • Technical Questions: A key aesthetic question regarding the ’616 Patent is the weight given to the cross-hatching shown in its figures. The court may need to consider whether the flat, matte surface of the accused product as depicted in the complaint's photograph creates the same visual impression as the textured surface suggested by the patent's drawings (Compl. p. 19, FIG. 4).

V. Other Allegations

  • Indirect Infringement: The complaint alleges that Defendant induced infringement of the patents-in-suit (Compl. ¶58). The prayer for relief also seeks a declaration of induced and contributory infringement (Prayer for Relief, ¶2). The factual basis for this claim appears to be the allegation that Defendant's acts of "making, using, offering for sale and sale" of the ULTRADRIVE products induce infringement by others, such as retailers and end-users (Compl. ¶58).
  • Willful Infringement: The complaint alleges willful and deliberate infringement (Compl. ¶63). This allegation is supported by claims of intentional copying of a "counterfeit" product (Compl. ¶37) and continued infringement despite receiving multiple notices. The complaint specifically cites a pre-suit cease and desist letter from November 2017, the filing of the original complaint in 2018, and a subsequent notice letter in November 2019 as events that provided Defendant with actual knowledge of its alleged infringement (Compl. ¶¶50, 56, 57).

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

  1. A core issue will be one of holistic visual comparison: would an ordinary observer, giving the matter the attention of a typical purchaser, be deceived into believing the accused ULTRADRIVE product is the same as the designs claimed in the '875 and '616 patents, especially when considering the potential differentiating effect of the prominent "j5create" branding on the accused product?

  2. A second key question will involve distinguishing ornament from function: the court may need to determine whether the perceived similarity between the products stems from the claimed overall ornamental appearance, or from unprotectable functional elements, such as the necessity of using a rectangular housing and dual USB-C connectors to achieve the product's purpose.

  3. Finally, an evidentiary question will center on willfulness: assuming infringement is found, the court will evaluate whether the evidence of alleged intentional copying and continued sales after multiple notices from Plaintiff rises to the level of "egregious" conduct required to support a finding of willful infringement and potential enhanced damages.