DCT
1:23-cv-12587
Mobile Pixels Inc v. Partnerships Unincorp Associations
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Mobile Pixels, Inc. (California corporation with a principal place of business in Massachusetts)
- Defendant: Shenzhen City Free Vast Science and Technology Co., Ltd, et al. (the "Counterclaim Plaintiffs," a group of unrelated companies)
- Plaintiff’s Counsel: Glacier Law LLP; Peckar & Abramson, P.C.
- Case Identification: 1:23-cv-12587, D. Mass., 10/30/2023
- Venue Allegations: The underlying action was filed in the District of Massachusetts, where Plaintiff Mobile Pixels maintains a principal place of business.
- Core Dispute: A group of defendant-manufacturers seeks a declaratory judgment that their laptop monitor extender products do not infringe Mobile Pixels' design patent and that the patent is invalid, while also alleging Mobile Pixels engaged in bad faith litigation to eliminate competition.
- Technical Context: The dispute centers on the ornamental design of portable, attachable monitors that extend a laptop's screen real estate, a product category with a competitive market on e-commerce platforms like Amazon.
- Key Procedural History: Mobile Pixels initiated the action on October 30, 2023, and obtained an ex parte Temporary Restraining Order (TRO) on November 21, 2023, which resulted in the Counterclaim Plaintiffs being delisted from Amazon. The TRO was dissolved by the court on December 8, 2023, and the Counterclaim Plaintiffs were reinstated on Amazon on December 15, 2023. The Counterclaim Plaintiffs allege the litigation is a "bad faith so-called Schedule A infringement claim" intended to stifle competition.
Case Timeline
| Date | Event |
|---|---|
| 2015-01-01 | "Slidenjoy" prior art design allegedly released (approximate date) |
| 2018-05-17 | ’975 Patent Priority Date |
| 2021-06-01 | ’975 Patent Issue Date |
| 2023-10-30 | Mobile Pixels files original patent infringement complaint |
| 2023-11-21 | Court issues Temporary Restraining Order (TRO) |
| 2023-11-27 | Counterclaim Plaintiffs receive notice of delisting from Amazon |
| 2023-12-08 | Court dissolves TRO |
| 2023-12-15 | Amazon reinstates Counterclaim Plaintiffs' accounts |
| 2024-08-18 | Defendants file Amended Counterclaim for Declaratory Judgment |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D920,975 - "Monitor"
The Invention Explained
- Problem Addressed: The patent document itself, being a design patent, does not articulate a specific technical problem. The claim protects only the ornamental appearance of the article shown in the drawings. (’975 Patent, col. 1:57-59).
- The Patented Solution: The patent claims the specific ornamental design for a monitor. Key visual features depicted in the patent's figures include a single auxiliary screen housed in a casing that appears to attach to the back of a laptop lid. (’975 Patent, Figs. 15, 18, 20). The design shows this single screen sliding out from its casing to one side of the laptop. (’975 Patent, Figs. 18, 20). The ornamental appearance is defined by the overall visual impression created by the combination of shapes and configurations shown in the patent's 31 figures. (’975 Patent, Description).
- Technical Importance: The counterclaim contextualizes this design within the market for "laptop monitor extenders," a product category that allows users to add one or more screens to a portable computer. (Compl. ¶¶ 2, 3).
Key Claims at a Glance
- As a design patent, the ’975 Patent has a single claim: "The ornamental design for a monitor, as shown and described." (’975 Patent, col. 1:57-59).
- The scope of this claim is determined by the overall visual appearance of the design depicted in the patent's figures, not by a list of elements.
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are various "laptop monitor extenders" sold by the 23 Counterclaim Plaintiffs, including those marketed under brands such as Maxfree, LAIBO US, KEFEYA, Kwumsy, and others. (Compl. ¶¶ 1, 36).
Functionality and Market Context
- The accused products are portable monitors designed to attach to a laptop to provide additional screen space. (Compl. ¶¶ 2, 5). The counterclaim provides numerous images of these products, many of which appear to be dual-screen extenders, providing new screens on both sides of the laptop. (Compl. ¶¶ 36, 38; Compl. p. 11-21).
- The counterclaim alleges that these products are sold on third-party marketplace sites like Amazon and are primary competitors to Mobile Pixels' products. (Compl. ¶¶ 2, 5). An image provided in the counterclaim shows a collage of various accused products, illustrating the diversity of designs at issue. (Compl. p. 5, Top Image).
IV. Analysis of Infringement Allegations
The counterclaim seeks a declaratory judgment of non-infringement. Its allegations focus on the visual differences between the patented design and the accused products. The infringement test for a design patent is whether an "ordinary observer," familiar with the prior art, would be deceived into purchasing the accused product believing it to be the patented design.
Counterclaimants' Non-Infringement Allegations
| Key Ornamental Feature of Patented Design (’975 Patent) | Counterclaimants' Alleged Distinguishing Features of Accused Products | Complaint Citation | Patent Citation |
|---|---|---|---|
| A single auxiliary monitor screen that extends from a casing. | "The majority of the accused products are actually dual screen products," featuring two screens that extend from a central frame. | ¶38 | Figs. 18, 20, 22 |
| A design where the monitor screen slides out from the main structure. | Many accused products feature screens that "are folded and placed within the main structure" and must be "rotate-opened." | ¶40 | Figs. 15, 18 |
| The specific surface textures and bezel widths shown in the figures. | The accused products are alleged to have "noticeably different" designs, including "different bezel widths and different surface textures." | ¶40 | Figs. 9, 22 |
| The overall visual impression of the monitor as a whole. | The counterclaim provides a side-by-side comparison of patent figures and an accused product to argue they are "noticeably different." (Compl. p. 22). | ¶39 | Figs. 9, 15, 22 |
Invalidity Allegations
The counterclaim also seeks a declaratory judgment that the ’975 Patent is invalid under 35 U.S.C. §§ 102 and 103.
- Anticipation (§ 102): The counterclaim alleges the ’975 patent is anticipated by a prior art design called "Slidenjoy," which was allegedly "designed and released in 2015." (Compl. ¶47). It is argued that the Slidenjoy design is "the same or substantially the same" as the patented design. (Compl. ¶49). The counterclaim presents a visual comparison, juxtaposing figures from the ’975 patent with images of the Slidenjoy product to support this allegation. (Compl. p. 25, Table).
- Obviousness (§ 103): The counterclaim further alleges that the patented design would have been obvious to a person of ordinary skill in the art. (Compl. ¶¶ 50, 51). It identifies six U.S. patents and published applications as prior art references that could be combined to render the ’975 patent's design obvious. (Compl. ¶52).
V. Key Claim Terms for Construction
In design patent cases, the court does not typically construe claim terms verbally. Instead, the focus is on the overall visual impression of the claimed design as shown in the patent figures. The dispute will likely center on comparing this overall impression with that of the accused products and the prior art. Practitioners may focus on the following key design features for comparison:
- The Term: "Single-Screen Sliding Configuration"
- Context and Importance: The ’975 patent consistently depicts a single monitor sliding out from a housing. (e.g., ’975 Patent, Fig. 18). The counterclaimants argue that many of their products are "dual screen" and "rotate-opened," not sliding. (Compl. ¶¶ 38, 40). The comparison between a single, sliding screen and a dual, rotating/folding screen configuration will be a central point of the non-infringement analysis.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent holder might argue that the core ornamental concept is an attachable side-monitor, and the number of screens or the specific opening mechanism are minor variations that do not change the overall visual impression to an ordinary observer.
- Evidence for a Narrower Interpretation: The counterclaimants will argue the design is strictly limited to what is shown: a single screen with a specific sliding mechanism. All figures, whether open, closed, or pivoted, depict a single auxiliary monitor. (’975 Patent, Figs. 1-31).
VI. Other Allegations
- Allegations of Bad Faith Litigation: The counterclaimants allege that Mobile Pixels' lawsuit is an "objectively meritless sham lawsuit" and part of a "bad faith" scheme to eliminate competitors from the Amazon marketplace. (Compl. ¶¶ 1, 12).
- Exceptional Case: Based on these allegations, the counterclaimants seek a declaration that the case is "exceptional" under 35 U.S.C. § 285, which would entitle them to an award of attorneys' fees. (Compl. ¶¶ 42, 55; Prayer for Relief ¶ E). The basis includes allegations that Mobile Pixels knew its patent was invalid or not infringed and filed the suit for improper purposes, such as leveraging a TRO to gain a competitive advantage. (Compl. ¶¶ 15, 16).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual comparison for infringement: Applying the "ordinary observer" test, are the accused products, many of which feature dual screens and folding mechanisms, "substantially the same" as the single, sliding-screen design claimed in the ’975 patent, or are the visual differences significant enough to avoid infringement?
- A second central issue will be validity in view of the prior art: Does the "Slidenjoy" product, allegedly released in 2015, disclose a design so similar to the ’975 patent that it anticipates the claim? The outcome may depend on the evidence establishing the public availability and specific appearance of the Slidenjoy design before the patent's 2018 priority date.
- Finally, a key procedural and factual question will be one of litigation conduct: Did the patent holder, Mobile Pixels, file this lawsuit and seek a TRO in bad faith, as alleged, potentially rendering the case "exceptional" under 35 U.S.C. § 285? This will turn on evidence regarding Mobile Pixels' pre-suit investigation and intent.