DCT
1:22-cv-05313
Think Products Inc v. Microsoft Corp
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Think Products, Inc. (New York)
- Defendant: Microsoft Corporation (Washington)
- Plaintiff’s Counsel: Edwin D. Schindler; John F. Vodopia, PC; Dolgin Law Group, LLC
- Case Identification: [Think Products, Inc.](https://ai-lab.exparte.com/party/think-products-inc) v. [Microsoft Corporation](https://ai-lab.exparte.com/party/microsoft-corp), 1:22-cv-05313, N.D. Ill., 09/28/2022
- Venue Allegations: Plaintiff alleges venue is proper because Microsoft has committed acts of patent infringement and maintains a regular and established place of business in the Northern District of Illinois.
- Core Dispute: Plaintiff alleges that Defendant’s docking stations and laptop risers, developed in collaboration with a third party, infringe two patents related to locking assemblies for securing electronic devices.
- Technical Context: The technology at issue concerns mechanical apparatuses designed to physically secure portable electronic devices, such as tablets and laptops, to prevent theft in public or shared spaces.
- Key Procedural History: U.S. Patent No. 10,704,299 B2, one of the two patents-in-suit, underwent ex parte reexamination, which resulted in the cancellation of several original claims and the amendment of others. The Reexamination Certificate issued on December 15, 2021. The complaint alleges that original Claim 7, which is asserted, is identical in scope to the amended and issued reexamined Claim 1.
Case Timeline
| Date | Event |
|---|---|
| 2004-11-10 | Earliest Priority Date for '299 and '155 Patents |
| 2015-05-01 | Microsoft and ACCO Brands enter joint development agreement |
| 2020-07-07 | U.S. Patent No. 10,704,299 B2 Issues |
| 2021-12-15 | Reexamination Certificate for '299 Patent Issues |
| 2022-04-26 | U.S. Patent No. 11,313,155 B2 Issues |
| 2022-09-28 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,704,299 B2 - "LOCKING ASSEMBLY FOR ELECTRONIC TABLET AND OTHER DEVICES"
The Invention Explained
- Problem Addressed: The patent addresses the vulnerability of portable electronic devices, such as tablet and notebook computers, to theft, particularly when left unattended at workstations (e.g., in libraries or offices). It notes that prior art security solutions relying on security slots in the device housing can be weak, as the housing material itself may be pliable or frangible ('299 Patent, col. 2:7-22).
- The Patented Solution: The invention provides a docking station or "locking base" that secures the electronic device without relying on a conventional security slot. It features a cradle with pockets or an arm with a movable element designed to engage the corners or edges of the device, using its own geometry to hold it in place ('299 Patent, Abstract; col. 3:35-51). This assembly is then secured, for example, to a desk, thereby locking the electronic device.
- Technical Importance: The technology provides a security method for the growing number of tablets and streamlined laptops that are manufactured without a built-in security slot, leveraging the device's external form factor as the anchor point ('299 Patent, col. 3:25-44).
Key Claims at a Glance
- The complaint asserts original Claims 5, 7, and 9-12 ('299 Patent, Compl. ¶23, 30). It specifically notes that original Claim 7 is "identical in scope to Claim 1, as issued in the Ex Parte Reexamination Certificate" ('299 Patent, Compl. ¶24, 51). Reexamined Claim 1 is the sole independent claim from which these asserted claims depend.
- The essential elements of reexamined Independent Claim 1 are:
- A dock for a portable electronic device having a first portion coupled to a second portion via a hinge;
- A base having a support platform configured to be positioned under the first portion of the portable electronic device;
- An arm supported by the base, including a movable element movably coupled to an end of the arm;
- The movable element is configured for engaging an edge of the portable electronic device adjacent the hinge;
- The movable element is movable between a first (secured) position and a second (removable) position; and
- The base has a channel and the arm is slidably received in a side of the channel.
- The complaint reserves the right to assert other claims of the patent.
U.S. Patent No. 11,313,155 B2 - "LOCKING ASSEMBLY FOR ELECTRONIC TABLET AND DEVICES"
The Invention Explained
- Problem Addressed: Like the '299 Patent, this patent addresses the need for a robust physical security system for portable electronic devices that may lack traditional security slots, rendering them vulnerable to theft ('155 Patent, col. 2:14-24).
- The Patented Solution: The invention describes a dock comprising a base with a channel and a movable element that is "operatively inseparably connected" to one of the channel's side walls. This movable element engages the electronic device, securing it within the channel via horizontal movement, and is locked in place by a lock mechanism ('155 Patent, Abstract; col. 20:1-12).
- Technical Importance: This patent appears to claim a more specific mechanical arrangement for a device dock, focusing on the nature of the connection and movement of the locking element relative to the base structure ('155 Patent, col. 4:1-12).
Key Claims at a Glance
- The complaint asserts "at least one claim" of the '155 Patent but does not specify which claims are infringed (Compl. ¶38). Independent Claim 1 is representative of the invention's core features.
- The essential elements of Independent Claim 1 are:
- A dock for a portable electronic device;
- A base connected to a channel having two side walls;
- A movable element operatively inseparably connected to only one side wall of the channel;
- The movable element is configured for engaging a portable electronic device via movement in a horizontal plane; and
- A lock mechanism operable to selectively lock the movable element.
- The complaint reserves the right to assert other claims of the patent.
III. The Accused Instrumentality
Product Identification
The complaint names two accused instrumentalities: the "SD7000 Surface Pro Docking Station" and the "SmartView Organizing Laptop Riser" (Compl. ¶¶ 9, 11).
Functionality and Market Context
- The SD7000 Surface Pro Docking Station is described as a docking station that provides a "full desktop experience with Surface Pro" by holding the device and providing connectivity ports (Compl. ¶15). The complaint includes a product image showing a Microsoft Surface tablet seated in the dock (Compl. ¶22).
- The SmartView Organizing Laptop Riser is identified as a product that elevates a laptop (Compl. ¶11). The complaint includes a product image showing the riser, which has an adjustable stand (Compl. ¶49).
- The complaint places significant emphasis on the allegation that both products were created through a "joint development" agreement between Microsoft and ACCO Brands, and are marketed under the "Designed for Microsoft Surface" program (Compl. ¶¶ 3, 10, 13). It alleges that this collaboration involves Microsoft's right of approval, quality control standards, and the payment of royalties from ACCO Brands to Microsoft (Compl. ¶¶ 4-8).
IV. Analysis of Infringement Allegations
The complaint does not contain a claim chart or provide a detailed, element-by-element analysis of infringement. The infringement theory must be inferred from the general allegations and the product images provided.
'299 Patent Infringement Allegations (against both Accused Products)
| Claim Element (from Reexamined Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A dock for a portable electronic device... | The overall structure of the SD7000 Docking Station and SmartView Laptop Riser, which are designed to hold portable electronic devices. | ¶22, ¶49 | col. 19:46-52 |
| a base having a support platform configured to be positioned under... the portable electronic device | The lower portion of the accused products that rests on a surface and supports the weight of the electronic device, as depicted in the complaint's figures. | ¶22, ¶49 | col. 19:54-58 |
| an arm supported by said base, said arm including a movable element... | The upright structure of the accused products that extends from the base and incorporates the mechanism that holds the electronic device. | ¶22, ¶49 | col. 19:59-63 |
| wherein said base has a channel and said arm is slidably received in a side of the channel | The complaint does not specifically identify a sliding mechanism, alleging generally that the products' structures infringe the claim as a whole. | ¶23, ¶50 | col. 20:7-9 |
'155 Patent Infringement Allegations (against SD7000 Docking Station)
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A dock for a portable electronic device | The overall structure of the SD7000 Docking Station, designed to hold a Microsoft Surface device. The complaint provides a product image. | ¶37 | col. 20:13-14 |
| a base connected to a channel having two side walls | The lower portion of the SD7000 dock that forms a channel or cradle in which the base of the Surface tablet rests. | ¶37 | col. 20:15-16 |
| a movable element operatively inseparably connected to only one side wall... | The complaint does not provide sufficient detail for analysis of this element, but it may be referring to the arms or clips that secure the tablet in the dock. | ¶38 | col. 20:17-23 |
| a lock mechanism operable to selectively lock said movable element | The complaint does not identify a specific lock mechanism on the accused product. | ¶38 | col. 20:24-27 |
Identified Points of Contention
- Scope Questions: A central dispute for the '299 Patent will likely be whether the accused products meet the limitation "said arm is slidably received in a side of the channel." The visual evidence in the complaint shows integrated stands, and it is unclear if any component performs the specific "sliding" function required by the reexamined claim. For the '155 Patent, a key question is whether the product has a "movable element" that is "inseparably connected to only one side wall," as the claim requires a very specific mechanical configuration.
- Technical Questions: The complaint lacks any technical description of how the accused products' locking features operate. A primary point of contention will be factual: what evidence can Plaintiff produce to demonstrate that the accused products actually contain structures that perform the functions recited in the specific claim limitations?
V. Key Claim Terms for Construction
"arm is slidably received in a side of the channel" (’299 Patent, reexamined Claim 1)
Context and Importance: This limitation was added during reexamination and is central to the scope of the asserted independent claim of the '299 Patent. The infringement analysis for both accused products will depend heavily on whether their structures can be fairly characterized as having an "arm" that "slidably" engages a "channel." Practitioners may focus on this term because its construction could be dispositive of infringement.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes multiple embodiments, and a party might argue that "slidably received" should not be limited to a single configuration but should encompass any structure that allows the arm to move relative to the base in a way that is functionally equivalent to sliding, such as the telescoping rod in FIG. 10 ('299 Patent, col. 11:1-11).
- Evidence for a Narrower Interpretation: A party could argue the term requires a distinct sliding motion, as opposed to pivoting or other movements. The patent describes a specific embodiment where a computer lock "slides" into a base with brackets ('299 Patent, col. 12:1-8, FIG. 13). The addition of this term during reexamination suggests it was added to overcome prior art and should be given a specific, limiting meaning.
"movable element operatively inseparably connected to only one side wall" (’155 Patent, Claim 1)
Context and Importance: This term defines the specific mechanical arrangement of the locking feature in the '155 Patent. Infringement will turn on the precise nature of this connection. Practitioners may focus on this term because the physical construction of the accused product's locking arms will be compared directly against this restrictive language.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification does not appear to explicitly define "inseparably connected." A party might argue it simply means the element is not intended to be detached during normal operation, allowing for various types of permanent or semi-permanent connections (e.g., pivots, hinges).
- Evidence for a Narrower Interpretation: The figures, such as the depiction of the pocket assembly in FIG. 62-63, show a specific hinged connection to a base structure ('155 Patent, FIG. 62-63). A party could argue that "connected to only one side wall" must be strictly interpreted to exclude any designs where the movable element is also supported by or connected to the base or the other side wall of the channel.
VI. Other Allegations
Indirect Infringement
The complaint does not plead indirect infringement under 35 U.S.C. § 271(b) or (c). Instead, it advances a theory of "joint development," alleging that Microsoft is directly liable as a joint infringer with ACCO Brands due to its participation, approval rights, and quality control over the development of the accused products (Compl. ¶¶ 28, 40, 53).
Willful Infringement
The complaint alleges that Microsoft's infringement is "in willful disregard of the rights of Think Products" (Compl. ¶¶ 23, 38, 50). It does not, however, plead any specific facts demonstrating that Microsoft had pre-suit knowledge of the patents-in-suit, such as receipt of a notice letter. The allegation appears to be based on continued infringement after the filing of the complaint.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction and scope: Can the phrase "arm is slidably received in a side of the channel," added to the '299 Patent during reexamination, be construed to read on the integrated stand mechanisms of the accused products? Similarly, does the accused dock meet the '155 Patent's specific requirement of a movable element "inseparably connected to only one side wall"?
- A central legal question will be the viability of the joint infringement theory: Can the plaintiff prove that Microsoft's alleged "joint development," collaboration, and quality control activities with ACCO Brands are sufficient to hold Microsoft liable as a direct infringer for making, using, or selling the accused products under 35 U.S.C. § 271(a)?
- A key challenge for the plaintiff will be evidentiary: As the complaint lacks detailed technical allegations, the case will turn on whether discovery yields evidence demonstrating that the actual mechanical operation of the accused products maps onto the specific, and arguably narrow, limitations of the asserted claims.