DCT

1:19-cv-06195

Otter Products LLC v. Fellowes Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:19-cv-06195, N.D. Ill., 07/17/2020
  • Venue Allegations: Plaintiffs allege venue is proper because Defendant is a resident of the district, maintains a regular and established place of business in the district, and committed the alleged tortious acts within the district.
  • Core Dispute: Plaintiffs allege that Defendant’s waterproof and rugged protective phone cases infringe eight patents related to protective enclosure technology and misappropriate the trade dress of Plaintiffs' "LifeProof" branded products.
  • Technical Context: The technology relates to protective housings for portable electronic devices, a significant market segment driven by the proliferation of fragile and expensive smartphones and tablets.
  • Key Procedural History: This filing is a Second Amended Complaint, indicating prior amendments in response to court orders or other procedural developments. The complaint also alleges multiple instances of pre-suit actual notice of the patents-in-suit, including a formal notice letter sent to Defendant’s General Counsel in October 2018.

Case Timeline

Date Event
2007-06-06 Priority Date for U.S. Patent No. 9,498,033
2010-10-12 Priority Date for U.S. Patent Nos. 8,342,325; 8,393,466; 8,526,180; 8,564,950; 9,549,598; 9,660,684
2011-05-27 Plaintiffs began using the LIFEPROOF mark
2011-06-13 Priority Date for U.S. Patent No. 8,531,834
2013-01-01 U.S. Patent No. 8,342,325 Issued
2013-03-12 U.S. Patent No. 8,393,466 Issued
2013-09-03 U.S. Patent No. 8,526,180 Issued
2013-09-10 U.S. Patent No. 8,531,834 Issued
2013-10-22 U.S. Patent No. 8,564,950 Issued
2016-11-22 U.S. Patent No. 9,498,033 Issued
2017-01-24 U.S. Patent No. 9,549,598 Issued
2017-05-23 U.S. Patent No. 9,660,684 Issued
2018-10-12 Plaintiffs’ counsel allegedly sent actual notice letter to Defendant
2020-07-17 Second Amended Complaint Filed

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

U.S. Patent No. 8,342,325 - "Housing for receiving and encasing an object," Issued January 1, 2013

The Invention Explained

  • Problem Addressed: The patent describes the need to protect portable electronic devices from damage due to environmental factors like water, dust, and mud, as well as from mishandling and dropping (U.S. Patent No. 8,342,325, col. 2:35-51).
  • The Patented Solution: The invention is a protective housing comprising a top member and a bottom member that are removably coupled together to encase the device. A key aspect is the use of a clasping mechanism along the perimeter of the members and a gasket, which interact to form a liquid-proof and/or shock-proof seal around the device when the housing is closed (’325 Patent, Abstract; col. 12:1-12). Figure 3C illustrates a cross-section of the clasping mechanism, showing a lip on the top member engaging a groove on the bottom member to compress a gasket and form the seal (’325 Patent, Fig. 3C).
  • Technical Importance: This design provided a method for creating a robust, reusable, and sealed enclosure for electronic devices without requiring permanent bonding or complex assembly, enabling strong protection while maintaining user accessibility (Compl. ¶16).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (Compl. ¶113).
  • Essential elements of claim 1 include:
    • An apparatus for an electronic device comprising a top member and a bottom member configured for being removably coupled.
    • The top member has a rigid frame defining a perimeter, a front and back surface, and a first clasping mechanism.
    • The bottom member has a top ridge defining a channel to receive a gasket, and a second clasping mechanism to interface with the first.
    • When coupled, the clasping mechanisms maintain the top and bottom members together, with the top member’s ridge seating in the bottom member’s channel to seal the housing.

U.S. Patent No. 8,393,466 - "Housing for encasing an object," Issued March 12, 2013

The Invention Explained

  • Problem Addressed: Similar to its parent, the ’325 Patent, this patent addresses the need to protect electronic devices from environmental hazards and physical damage (U.S. Patent No. 8,393,466, col. 2:39-55).
  • The Patented Solution: The invention is a protective housing with top and bottom members that couple together. The solution focuses on the sealing mechanism, which involves a channel in one member receiving a gasket and a corresponding ridge on the other member that presses into the gasket when the two members are clasped together, creating a liquid-proof seal (’466 Patent, Abstract). The detailed description and figures are substantially similar to those in the ’325 Patent, illustrating the two-part shell and clasping mechanism (’466 Patent, Fig. 1A).
  • Technical Importance: This technology provided a reliable mechanical sealing method for protective cases, which was critical for marketing them as "waterproof" for everyday consumer use, not just specialized industrial applications (Compl. ¶16, ¶21).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (Compl. ¶131).

  • Essential elements of claim 1 include:

    • A housing comprising a top member and a bottom member.
    • The top member has a rigid frame defining a perimeter and a first clasping mechanism.
    • The bottom member has a top ridge defining a channel and including a gasket, plus a second clasping mechanism.
    • The first clasping mechanism includes a lip extending from the top member's bottom ridge.
    • The lip engages the groove of the second clasping mechanism when the members are coupled.

  • Multi-Patent Capsule: U.S. Patent No. 8,526,180

    • Patent Identification: U.S. Patent No. 8,526,180, "Housing for encasing an object having an electrical connection," issued September 3, 2013.
    • Technology Synopsis: This patent discloses a protective housing for an electronic device that includes a door for accessing an electrical connection. The door is designed with a gasket to create a liquid-proof seal when closed, allowing the device to be charged or connected to other devices without removing it from its protective case.
    • Asserted Claims: At least independent claim 1 is asserted (Compl. ¶149).
    • Accused Features: The complaint accuses the Blackweb Waterproof Phone Case's mechanism for covering and sealing the charging port (Compl. ¶149, Ex. C2).

  • Multi-Patent Capsule: U.S. Patent No. 8,531,834

    • Patent Identification: U.S. Patent No. 8,531,834, "Housing for encasing a tablet computer," issued September 10, 2013.
    • Technology Synopsis: This patent describes a protective housing specifically for a tablet computer. It includes top and bottom members that are coupled by latching mechanisms around the perimeter, compressing a seal to make the housing waterproof and shockproof.
    • Asserted Claims: At least independent claim 28 is asserted (Compl. ¶166).
    • Accused Features: The overall two-part, sealed construction of the Blackweb Waterproof Phone Case products is accused of infringement (Compl. ¶166, Ex. D2).

  • Multi-Patent Capsule: U.S. Patent No. 8,564,950

    • Patent Identification: U.S. Patent No. 8,564,950, "Housing encasing a device having a switch," issued October 22, 2013.
    • Technology Synopsis: This patent relates to a protective housing that includes a switch mechanism. The mechanism allows a user to actuate a switch on the encased electronic device from the exterior of the housing, typically via a flexible seal and an actuator that transfers motion from an external button to the device's internal switch.
    • Asserted Claims: At least independent claim 17 is asserted (Compl. ¶184).
    • Accused Features: The external buttons on the Blackweb Waterproof Phone Case for Apple iPhone products, which allow operation of the phone's volume and power switches, are accused of infringement (Compl. ¶184, Ex. E2).

  • Multi-Patent Capsule: U.S. Patent No. 9,549,598

    • Patent Identification: U.S. Patent No. 9,549,598, "Housing for encasing an electronic device," issued January 24, 2017.
    • Technology Synopsis: This patent discloses a protective housing composed of a top and bottom member that are coupled together. It details the interaction of clasping mechanisms, such as a lip and groove, that engage to form a liquid-proof and/or shock-proof seal.
    • Asserted Claims: At least independent claim 17 is asserted (Compl. ¶201).
    • Accused Features: The overall two-part, sealed construction of the Blackweb Waterproof Phone Case products is accused of infringement (Compl. ¶201, Ex. F2).

  • Multi-Patent Capsule: U.S. Patent No. 9,660,684

    • Patent Identification: U.S. Patent No. 9,660,684, "Housing for encasing a mobile computing device," issued May 23, 2017.
    • Technology Synopsis: This patent describes a protective housing for a mobile computing device with a top and bottom member. It focuses on the clasping mechanisms, including wedge features, that secure the two members together to form a liquid-proof and/or shock-proof seal.
    • Asserted Claims: At least independent claim 8 is asserted (Compl. ¶216).
    • Accused Features: The clasping and sealing structures of the Blackweb Waterproof Phone Case for Apple iPhone products are accused of infringement (Compl. ¶216, Ex. G2).

  • Multi-Patent Capsule: U.S. Patent No. 9,498,033

    • Patent Identification: U.S. Patent No. 9,498,033, "Protective enclosure for an electronic device," issued November 22, 2016.
    • Technology Synopsis: This patent discloses a protective enclosure that combines a rigid hard shell with a separate, stretchable outer cushion layer. The cushion layer is shaped to conform to the outer surface of the hard shell and provides shock absorption, while the hard shell provides rigidity.
    • Asserted Claims: At least independent claim 1 is asserted (Compl. ¶234).
    • Accused Features: The complaint accuses the "Blackweb Rugged Phone Case products," a distinct product line, of infringing this patent through their alleged use of a hard shell and stretchable cushion layer construction (Compl. ¶231, ¶234, Ex. H2).

III. The Accused Instrumentality

  • Product Identification: The complaint accuses two product lines: (1) Defendant's "Blackweb Waterproof Phone Case" products, and (2) Defendant's "Blackweb Rugged Phone Case" products (Compl. ¶7).
  • Functionality and Market Context: The accused "Blackweb Waterproof Phone Case" products are described as protective cases for various models of the Apple iPhone (Compl. ¶55). The "Blackweb Rugged Phone Case" products are described as protective cases for various Apple iPhone and Samsung Galaxy models (Compl. ¶231). The complaint alleges that Defendant designs and manufactures these products for nationwide distribution and sale through Walmart's physical and online stores (Compl. ¶54, ¶232). A photograph in the complaint shows the accused Blackweb product merchandised on a store shelf directly next to Plaintiffs' LifeProof and OtterBox branded products, suggesting direct competition in the same retail channels (Compl. p. 19). Additional visual evidence compares the design elements of the accused Blackweb cases to Plaintiffs' LifeProof cases, highlighting similarities in features like "Curved Side Bumpers" and a "Color Pop Band" (Compl. p. 10).

IV. Analysis of Infringement Allegations

The complaint references claim chart exhibits (e.g., Ex. A2, B2) that are not provided; therefore, the narrative infringement theory is summarized below in prose.

For both the ’325 and ’466 Patents, the complaint alleges that the Blackweb Waterproof Phone Case products meet each and every limitation of at least claim 1, constituting literal infringement and/or infringement under the doctrine of equivalents (Compl. ¶112-113, ¶130-131). The core of the infringement allegation is that the Defendant engaged in "wholesale mimicry" of Plaintiffs' patented LifeProof products (Compl. ¶107, ¶125). The complaint asserts that Defendant deliberately and willfully copied the patented designs, which achieve a waterproof and shockproof seal through the coupling of two housing members with specific clasping and sealing structures, as claimed in the patents (Compl. ¶109, ¶127).

  • Identified Points of Contention:
    • Scope Questions: A central issue may be the scope of the term "clasping mechanism" as recited in the claims. The court may need to determine if this term is limited to the specific hook-and-groove embodiments shown in the patent figures or if it can be construed more broadly to cover other mechanical means of securing the two case halves together.
    • Technical Questions: An evidentiary question will be whether the accused Blackweb cases achieve their waterproof seal using a "lip extending from the bottom ridge of the top member" that seats within a "groove" on the bottom member to compress a "gasket," as specifically required by claim 1 of the ’325 Patent. The analysis will likely focus on a detailed comparison of the cross-sectional geometry and mechanical operation of the sealing interfaces in both the patented invention and the accused products.

V. Key Claim Terms for Construction

  • The Term: "clasping mechanism" (from Claim 1 of the ’325 and ’466 Patents)

  • Context and Importance: The definition of this term is fundamental to the infringement analysis. How the two halves of the housing are "coupled together to seal the housing" is the core of the invention. Practitioners may focus on this term because its scope will determine whether the specific latching features on the accused Blackweb cases fall within the claims.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The claim language itself describes the mechanism functionally as being for "maintaining the top member and the bottom member coupled together." This functional language may support a construction that is not limited to a single specific structure.
    • Evidence for a Narrower Interpretation: The detailed description and figures repeatedly show specific embodiments of the "clasping mechanism," such as the interlocking lip (29) and groove (39) structures illustrated in Figure 3C (’325 Patent, Fig. 3C; col. 21:23-40). Language describing these specific structures as the invention could support a narrower construction limited to such configurations.

  • The Term: "a channel in a top surface of the bottom member to receive the bottom ridge of the top member" (from Claim 1 of the ’325 Patent)

  • Context and Importance: This phrase defines the specific geometric and functional relationship required to create the claimed seal. The infringement case hinges on whether the accused product utilizes this particular channel-and-ridge interface to compress the gasket.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification describes the overall purpose as creating a "liquid-proof seal" (’325 Patent, col. 16:1-18), which may suggest that any structure achieving this result via a similar interface could be covered.
    • Evidence for a Narrower Interpretation: Figure 3C provides a highly detailed cross-section of the claimed interface, showing a specific O-ring gasket (15) within a channel (10) being compressed by a specific ridge structure (27, 37) (’325 Patent, Fig. 3C). This detailed embodiment may be used to argue for a narrower construction that requires this precise arrangement.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges both contributory and induced infringement for all asserted patents. The factual basis is that Defendant offers to sell and sells the accused products to Walmart, which in turn sells them to end-user customers who directly infringe by using the products as intended (Compl. ¶114, ¶132). It is alleged that the products are not staple articles of commerce and are especially made for use in an infringing manner (Compl. ¶115, ¶133).
  • Willful Infringement: Willfulness is alleged for all asserted patents. The complaint bases this on claims of both pre- and post-suit knowledge, citing: (1) constructive notice from Plaintiffs' marking of their commercial products (Compl. ¶104-105); (2) Defendant’s alleged physical possession and examination of these marked products (Compl. ¶107); (3) a pre-suit actual notice letter sent by Plaintiffs’ counsel to Defendant’s General Counsel on October 12, 2018 (Compl. ¶108); and (4) actual notice from the filing of the original complaint in the action (Compl. ¶106).

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

  • A core issue will be one of structural infringement: do the accused Blackweb cases, particularly their sealing and latching features, contain the specific structures recited in the independent claims, such as the interacting "lip" and "groove" of the "clasping mechanism," or will Plaintiffs need to rely on the doctrine of equivalents?
  • A second key question will be one of intent and damages: given the extensive allegations of pre-suit notice and visual evidence of "wholesale mimicry," the court will likely focus on whether Defendant's conduct was willful, which could lead to a finding of an exceptional case and the potential for enhanced damages.
  • A final question relates to the scope of the asserted intellectual property: the case combines claims for infringement of multiple utility patents with claims for trade dress infringement, raising the question of where the line is drawn between functional, patent-protected features and non-functional, trade-dress-protected aesthetic designs.