DCT

1:21-cv-06757

Think Products Inc v. Microsoft Corp

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:21-cv-06757, N.D. Ill., 12/20/2021
  • Venue Allegations: Venue is asserted based on Defendant's alleged commission of infringing acts within the district and its maintenance of a regular and established place of business there.
  • Core Dispute: Plaintiff alleges that Defendant’s Surface Pro docking station and an associated lock module infringe a patent related to mechanical locking assemblies for securing portable electronic devices.
  • Technical Context: The technology pertains to physical security systems designed to prevent the theft of valuable electronic devices, such as tablets and laptops, from workstations or display areas.
  • Key Procedural History: The patent-in-suit was the subject of an ex parte reexamination, with a certificate issuing on December 15, 2021, just five days prior to the complaint's filing. The complaint acknowledges this reexamination but asserts claims that the reexamination certificate states were cancelled, raising a significant procedural question regarding the viability of those assertions.

Case Timeline

Date Event
2004-11-10 '299 Patent Earliest Priority Date
2020-07-07 '299 Patent Issue Date
2021-12-15 '299 Patent Ex Parte Reexamination Certificate Issued
2021-12-20 Complaint Filing Date

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

  • Patent Identification: U.S. Patent No. 10,704,299, “LOCKING ASSEMBLY FOR ELECTRONIC TABLET AND OTHER DEVICES,” issued July 7, 2020.

The Invention Explained

  • Problem Addressed: The patent describes the problem of portable electronic devices like tablet and notebook computers being vulnerable to theft when left unattended at workstations, libraries, or retail displays. It notes that prior art security solutions relying on built-in security slots are often only as strong as the device's frangible plastic housing. (U.S. Patent No. 10,704,299, col. 2:7-22, 51-58).
  • The Patented Solution: The invention proposes a more robust "dock" for securing a device. The dock generally comprises a base with a support platform and an arm that can be moved or adjusted to engage an edge of the electronic device. Once engaged, a lock mechanism secures the arm in place, thereby locking the device to the dock, which can itself be secured to an immovable object. (’299 Patent, col. 19:50-col. 20:20; Abstract).
  • Technical Importance: This approach seeks to provide a physical security framework that secures the entire device via its external corners or edges rather than relying on the structural integrity of a small, standardized security slot. (’299 Patent, col. 2:51-58).

Key Claims at a Glance

  • The complaint asserts original Claims 5, 7, and 9-12. (Compl. ¶9). However, an Ex Parte Reexamination Certificate issued prior to the filing of the complaint cancelled Claims 5 and 7 and confirmed Claims 9-11. (Compl. ¶¶9, 12; U.S. 10,704,299 C1, p. 2). The certificate also found Claims 1 and 8 patentable as amended. (U.S. 10,704,299 C1, p. 2).
  • The key asserted independent claim that was confirmed as patentable is Claim 9.
    • A dock for a portable electronic device, said dock comprising:
    • a base having a channel;
    • an arm slidably received in a side of said channel of said base, said arm including a movable element movably coupled to an end of said arm, said movable element being configured for engaging an edge of a portable electronic device; and,
    • a lock mechanism operable to selectively lock said movable element of said arm for securing the portable electronic device and to selectively unlock said movable element...
  • The complaint notes that reexamined Claim 7 is identical in scope to Claim 1 as issued in the reexamination certificate, suggesting an intent to rely on amended Claim 1. (Compl. ¶10).
    • A dock for a portable electronic device... comprising:
    • a base having a support platform...; and,
    • an arm supported by said base, said arm including a movable element movably coupled to an end of said arm, said movable element being configured for engaging an edge of the portable electronic device adjacent the hinge...
    • wherein said movable element is movable between a first position... and a second position...
    • and wherein said base has a channel and said arm is slidably received in a side of the channel.
  • The complaint reserves the right to assert other claims.

III. The Accused Instrumentality

Product Identification

  • The "Kensington SD7000 Dual 4K Surface Pro Docking Station" and the "Kensington Lock Module for the SD7000 Surface Pro Docking Station – Master Keyed." (Compl. ¶¶ 7, 8).

Functionality and Market Context

  • The complaint alleges that Microsoft sells and advertises the accused products for use together. The complaint includes a screenshot describing the SD7000 Docking Station as a "sleek, adjustable docking station" used to "seamlessly dock and charge your Surface Pro." (Compl. p. 2). Another screenshot describes the Lock Module as a "tough-as-nails security system" designed to "Protect both your Surface and docking station from potential theft." (Compl. p. 3). The infringement theory appears to be based on the combined functionality of the docking station and the separate lock module. (Compl. ¶9).
  • The complaint alleges that Microsoft manufactures, sells, and offers for sale these products within the Northern District of Illinois. (Compl. ¶7).

IV. Analysis of Infringement Allegations

The complaint does not provide a claim chart or detailed element-by-element breakdown of its infringement theory. Therefore, a claim chart summary cannot be constructed from the provided document. The infringement theory, as inferred from the complaint's general allegations, is that the Kensington SD7000 Docking Station, when used with the Kensington Lock Module, meets the limitations of the asserted claims. The adjustable frame of the docking station is alleged to function as the claimed "dock" with its "base" and "arm," while the Lock Module provides the "lock mechanism."

Identified Points of Contention

  • Procedural Question: A threshold issue is the complaint's assertion of Claims 5 and 7. The complaint acknowledges the issuance of a reexamination certificate that cancelled these claims, raising the question of whether this part of the pleading is viable and subject to an early dispositive motion. (Compl. ¶9; U.S. 10,704,299 C1, p. 2).
  • Scope Questions: The central infringement dispute may turn on whether the structure of the accused docking station falls within the scope of the claim terms. A key question is whether the integrated, articulating frame of the SD7000 Docking Station constitutes an "arm slidably received in a side of the channel" of a "base," as required by both Claim 1 and Claim 9.
  • Technical Questions: The complaint does not specify which component of the accused products corresponds to the "movable element... configured for engaging an edge of the portable electronic device" as claimed. A technical question will be what evidence exists that any part of the accused dock performs this specific engagement function.

V. Key Claim Terms for Construction

"arm slidably received in a side of a channel"

  • Context and Importance: This limitation appears in both independent Claim 1 (as amended) and Claim 9 and defines the core mechanical structure of the patented dock. The infringement analysis will depend heavily on whether the accused product's adjustable architecture, which appears to be an articulating frame rather than separate sliding components, can be characterized by this language.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent discloses numerous embodiments of locking assemblies, which a plaintiff might argue supports a broad interpretation that covers any structure where one component is guided by or moves along another. (’299 Patent, col. 9:56 - col. 10:22).
    • Evidence for a Narrower Interpretation: Figures in the patent, such as Figure 13, depict a distinct "base" (81) with "brackets" (82) that form a channel to receive a separate "lock" (80) component, which could be argued to be the "arm." A defendant may argue this disclosure limits the claim scope to structures with such distinct, telescoping or sliding components. (’299 Patent, FIG. 13).

"movable element"

  • Context and Importance: This is the component of the claimed "arm" that directly engages the electronic device to secure it. Identifying a corresponding structure in the accused product and determining if it is "movably coupled to an end of said arm" will be critical for the infringement analysis.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The term itself is general, and a plaintiff could argue it covers any portion of the arm that moves into an engagement position.
    • Evidence for a Narrower Interpretation: The specification illustrates the "movable element" as a distinct, hinged "proximal lockable corner pocket" (608) that pivots relative to the main chassis bar. A defendant might argue that the term requires a separately articulating component, not merely a section of an integrated frame. (’299 Patent, col. 18:50 - col. 19:5).

VI. Other Allegations

  • Indirect Infringement: The complaint alleges only direct infringement pursuant to 35 U.S.C. §271(a) and does not contain counts for induced or contributory infringement. (Compl. ¶4).
  • Willful Infringement: The complaint does not contain an explicit allegation of willful infringement. However, it requests an award of attorneys' fees pursuant to 35 U.S.C. §285 on the basis that the case is "exceptional," but it does not plead specific facts to support a finding of willfulness or other egregious conduct. (Compl. p. 5, ¶ II).

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

  • A primary issue for the court will be one of procedural viability: can Plaintiff maintain its assertion of claims that were cancelled by an ex parte reexamination certificate that issued five days before the complaint was filed and was referenced within the complaint itself?
  • A central substantive question will be one of structural correspondence: does the integrated, articulating frame of the accused Kensington docking station meet the specific claim limitations of a "base" with a "channel" and a separate "arm slidably received" within it, or is there a fundamental mismatch between the claimed structure and the accused product's design?
  • Finally, a key question at the pleading stage may be one of legal sufficiency: do the complaint's generalized allegations, which lack an element-by-element infringement analysis, state a claim for patent infringement that is "plausible on its face" under prevailing federal pleading standards?