DCT
1:23-cv-14922
Shenzhen Donghongze Trading Co Ltd v. Xebec Inc
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiffs: SHENZHEN DONGHONGZE TRADING CO., LTD., et al. (People's Republic of China, California)
- Defendant: Xebec, Inc (Texas)
- Plaintiffs’ Counsel: Glacier Law LLP
- Case Identification: 1:23-cv-14922, N.D. Ill., 08/20/2024
- Venue Allegations: Plaintiffs allege that venue is proper because Defendant Xebec has obtained rights in a U.S. patent, and enforcement of those patent rights has affected or will affect Plaintiffs' business in Illinois.
- Core Dispute: A coalition of e-commerce retailers seeks a declaratory judgment that they do not infringe Defendant’s patents related to auxiliary computer screen mounting systems, and that those patents are invalid and unenforceable.
- Technical Context: The technology at issue involves mechanical systems for attaching one or more auxiliary display screens to the primary screen of a portable computer, such as a laptop.
- Key Procedural History: The complaint states that Defendant Xebec initiated an Amazon Patent Evaluation Express (APEX) proceeding against Plaintiffs on September 25, 2023, asserting U.S. Patent No. 9,395,757. Plaintiffs also allege that U.S. Patent No. 10,809,762 is unenforceable due to inequitable conduct during its prosecution, specifically for failing to correctly disclose the '757 Patent as material prior art to the USPTO.
Case Timeline
| Date | Event |
|---|---|
| 2013-11-18 | '757 Patent Priority Date |
| 2016-07-19 | '757 Patent Issue Date |
| 2019-11-04 | '762 Patent Priority Date (Filing Date) |
| 2020-04-30 | '762 Patent prosecution IDS submission |
| 2020-05-01 | '762 Patent prosecution Office Action issued |
| 2020-10-20 | '762 Patent Issue Date |
| 2022-01-07 | '757 Patent assigned to Xebec |
| 2023-09-25 | Xebec initiated APEX process against Plaintiffs |
| 2024-08-20 | Amended Complaint for Declaratory Judgment filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,395,757, "Auxiliary Screen Mounting System," issued July 19, 2016
The Invention Explained
- Problem Addressed: The patent describes a need for a simple, robust, and portable way to attach auxiliary screens to laptops, noting that existing solutions are either too bulky for portable use or rely on complex and failure-prone clamping mechanisms (ʼ971 Patent, col. 1:26-44).
- The Patented Solution: The invention proposes a support system comprising two mounting members (brackets) placed on opposite sides of a primary computer screen, connected by an adjustable retaining member (strap). The brackets are shaped to hang over the corners of the primary screen, and at least one bracket is designed to hold an auxiliary screen, using tension and gravity for support rather than a complex clamp (ʼ971 Patent, Abstract; col. 9:3-9).
- Technical Importance: The design aims to provide a lightweight, mechanically simple, and less expensive alternative to existing systems for expanding the display area of portable computers (ʼ971 Patent, col. 1:45-51).
Key Claims at a Glance
- The complaint challenges all claims of the patent, with a particular focus on independent claim 1, which was asserted in the prior APEX proceeding (Compl. ¶28, ¶61).
- Independent Claim 1 requires:
- A plurality of mounting members for opposing lateral sides of a computing device.
- A retaining member extending between the mounting members.
- The retaining member is configured to hold the mounting members relative to the opposing sides.
- At least one mounting member is configured to bear an auxiliary screen such that it is "hung relative to the computing device."
- The retaining member is "length adjustable" to hold the mounting members by "resisting separation thereof."
U.S. Patent No. 10,809,762, "Accessory Display Device," issued October 20, 2020
The Invention Explained
- Problem Addressed: The patent identifies the trade-off between the portability of laptops and the limited size of their screens, noting a need for an expandable display device that is easy to attach, compact, and portable (ʼ762 Patent, col. 1:8-17).
- The Patented Solution: The invention is a self-contained accessory that includes a "housing" with two sides that can move relative to one another, guided by rails. A tensioning member (e.g., an elastic band) pulls the two sides together, creating a clamping force. Engagement portions on each side grip the edges of a computer's display. The device itself contains one or more auxiliary displays that slide out from the housing for use (ʼ762 Patent, Abstract; col. 2:20-34).
- Technical Importance: This design integrates the clamping mechanism and the auxiliary screens into a single, universal unit that uses tension for attachment, intended to fit a wide variety of laptop sizes without complex adjustments (ʼ762 Patent, col. 2:49-51).
Key Claims at a Glance
- The complaint seeks a declaration of non-infringement and invalidity of all claims, highlighting limitations from independent claim 1 (Compl. ¶63, ¶66).
- Independent Claim 1 requires:
- A "housing" with a first and second side movable relative to one another.
- A first and second pair of rails, coupled to the respective sides, that are slidably engaged.
- A "tensioning member" coupled between the sides.
- First and second "engagement portions" configured to engage the side of a display device under force from the tensioning member.
- A first display that is "slidable within the housing."
III. The Accused Instrumentality
Product Identification
- The complaint does not identify the Plaintiffs' products by name or model number, referring to them generally as "Plaintiffs' products" and noting that Xebec had previously asserted infringement against "three product types" sold by the Plaintiffs (Compl. ¶1, ¶21).
Functionality and Market Context
- The Plaintiffs are described as e-commerce companies that sell products, including portable computer screens, primarily through the Amazon Marketplace (Compl. ¶21-23). The complaint alleges that the non-infringement theory for the ʼ762 Patent is that Plaintiffs' products "do not have any housing" (Compl. ¶64). For the ʼ757 Patent, the non-infringement allegation is more general, stating that at least one required limitation is not included in the products (Compl. ¶58).
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint’s non-infringement count for the ’757 Patent is conclusory, stating only that "At least one of the required multiple limitations is not included in Plaintiffs' accused products" without identifying the specific limitation(s) or the feature(s) of the products that fail to meet them (Compl. ¶58). The complaint does not provide sufficient detail for a claim-chart analysis of the '757 Patent.
’762 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a housing having a first side and a second side movable relative to one another | Plaintiffs' products are alleged to not include any housing. | ¶64 | col. 5:18-20 |
- Identified Points of Contention:
- Scope Questions: The non-infringement dispute for the ’762 Patent appears to turn on a question of claim scope: does the structure of the Plaintiffs' products fall within the legal definition of the term "housing" as used in the patent?
- Technical Questions: For the ’757 Patent, the dispute will likely be a factual comparison of the Plaintiffs' products against the claim elements. A key question will be whether the products have a "plurality of mounting members" and a "length adjustable" retaining member that functions as claimed. The complaint's lack of specificity suggests that discovery will be needed to clarify the technical basis for the non-infringement claim.
V. Key Claim Terms for Construction
’757 Patent: "hung relative to the computing device"
- Context and Importance: This term is central to the patent's purported distinction from prior art "clamping mechanisms." Whether Plaintiffs' products "hang" or attach in a different manner may be a key point of contention.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification suggests the system is held in place by a combination of forces, including "abutment between the upper wall (17) of mounting members (12) with the upper edge of primary screen (62)" (’971 Patent, col. 9:6-9). This could support a broader reading that covers various forms of top-edge support.
- Evidence for a Narrower Interpretation: The abstract explicitly uses the word "hung." The summary also states the system may be "shaped to hang on a primary screen of a portable computing device, e.g. at its vertices," suggesting a specific, gravity-assisted method of attachment (’971 Patent, col. 4:3-4).
’762 Patent: "housing"
- Context and Importance: Plaintiffs’ non-infringement case, as pled, rests entirely on the assertion that their products lack a "housing" (Compl. ¶64). The construction of this single term may therefore be dispositive for infringement of the ʼ762 Patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not provide a special definition for "housing." Its plain and ordinary meaning could be construed broadly to cover any frame, casing, or structure that contains and organizes the other claimed components, such as the rails and slidable display. The specification describes the housing as having two primary portions that slide relative to one another, focusing on its function rather than a specific form (ʼ762 Patent, col. 3:18-20).
- Evidence for a Narrower Interpretation: The patent figures depict the housing (130) as a specific, substantially enclosing structure from which the screens emerge (ʼ762 Patent, FIG. 2, FIG. 3). A party could argue that the term "housing" should be limited to such an enclosure, and that a more open-frame design would not meet this limitation.
VI. Other Allegations
Inequitable Conduct (’762 Patent)
- The complaint alleges that the ʼ762 Patent is unenforceable due to inequitable conduct committed during its prosecution (Compl. ¶¶ 49-53).
- The core allegation is that the applicant and his attorney submitted an Information Disclosure Statement (IDS) that cited the wrong patent number for a material prior art reference—listing U.S. Patent No. 9,393,757 instead of the correct and relevant U.S. Patent No. 9,395,757 (the other patent-in-suit) (Compl. ¶51).
- The complaint states the USPTO Examiner noted the error and deemed the cited art "non-analogist," and that the applicant, despite knowing the '757 Patent was material, never corrected the error in subsequent communications with the USPTO (Compl. ¶¶ 52-53). This alleged failure to disclose a known, material reference is the basis for the unenforceability claim.
VII. Analyst’s Conclusion: Key Questions for the Case
Claim Construction & Infringement: A central issue will be one of definitional scope, particularly for the '762 Patent: can the term "housing" be construed to read on the structure of the Plaintiffs' products, which they allege lack such a feature? For the '757 Patent, the primary question appears to be one of factual application: do the Plaintiffs' products embody each element of the asserted claims, including the "mounting members" and "length adjustable" retaining member?
Validity Challenges: The complaint presents numerous prior art references allegedly invalidating both patents. A key evidentiary question will be whether the cited art, such as the Sawyer patent against the '757 Patent and the Bryant patent against the '762 Patent, truly discloses every limitation of the asserted claims, as required for a finding of anticipation.
Unenforceability Defense: The allegation of inequitable conduct against the '762 Patent will present a critical question of intent and materiality. The court will have to determine whether the applicant's failure to provide the correct patent number for the '757 Patent was a material omission and, if so, whether it was done with the specific intent to deceive the USPTO.