DCT

1:24-cv-11636

Swissdigital USA Co Ltd v. Samsonite Group SA

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:24-cv-11636, D. Mass., 06/25/2024
  • Venue Allegations: Venue is alleged to be proper as Defendants maintain their principal places of business within the District of Massachusetts, have a regular and established place of business there, and have committed the alleged acts of infringement in the district.
  • Core Dispute: Plaintiff alleges that Defendant’s backpacks, luggage, and other bags featuring integrated USB charging ports infringe four patents related to the structure and implementation of such charging systems.
  • Technical Context: The technology at issue involves embedding a USB port and associated cabling into soft goods like backpacks, allowing users to connect an internal power bank to charge external devices without opening the bag.
  • Key Procedural History: Plaintiff previously filed a lawsuit against Defendant Samsonite International S.A. on March 14, 2023, in the Western District of Texas, asserting the same patents against the same products. That case was dismissed for lack of personal jurisdiction on June 24, 2024, one day before the current complaint was filed. The complaint also notes prior litigation by the Plaintiff against competitors involving some of the same patents.

Case Timeline

Date Event
2014-11-18 Earliest Priority Date for '071, '137, '138, and '009 Patents
2020-02-25 U.S. Patent No. 10,574,071 Issued
2021-02-23 U.S. Patent No. 10,931,137 Issued
2021-02-23 U.S. Patent No. 10,931,138 Issued
2023-03-07 U.S. Patent No. 11,601,009 Issued
2023-03-14 Plaintiff files prior complaint against Samsonite Int'l in W.D. Tex.
2024-06-24 Prior W.D. Tex. case dismissed for lack of personal jurisdiction
2024-06-25 Complaint Filed in D. Mass.

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

U.S. Patent No. 10,574,071 - "Bag or Luggage with USB Charging Connector," Issued Feb. 25, 2020

The Invention Explained

  • Problem Addressed: The patent identifies the inconvenience for travelers and others who need to charge portable electronic devices, as it typically requires opening a bag to access a portable power source. (’071 Patent, col. 1:12-31).
  • The Patented Solution: The invention is a bag or piece of luggage that integrates a complete charging system. It provides an internal pocket or "placing space" for a power storage device, an internal USB extension cable, and a "power cable outlet" on the exterior of the bag where a female USB connector is presented for easy access. (’071 Patent, col. 2:32-54; Abstract). This arrangement allows a user to charge a device without opening the bag or removing the power source.
  • Technical Importance: The invention provides a self-contained and convenient charging solution integrated directly into a common travel accessory, streamlining on-the-go power access for consumers. (’071 Patent, col. 2:25-31).

Key Claims at a Glance

  • The complaint asserts independent claims 1 and 9. (Compl. ¶29).
  • Essential elements of independent claim 1 include:
    • A bag or luggage body with a placing space for a power storage device and a power cable outlet on its outer surface.
    • A USB extension cable with a male connector and a female connector having four sides and an operative end.
    • The male connector is inside the bag for connection to the power storage device.
    • The female connector is retained outside and adjacent to the power cable outlet, with one side in communication with the bag body.
    • The other three sides of the female connector are covered by a "water proof sheath."
    • The sheath does not cover the operative end of the female connector, which is "exposed and fixedly attached" above the bag's exterior.

U.S. Patent No. 10,931,137 - "Sheath for USB Charger," Issued Feb. 23, 2021

The Invention Explained

  • Problem Addressed: The patent addresses the same general problem of providing convenient charging for portable devices from a power source stored within an article like a bag or clothing. (’137 Patent, col. 1:11-25).
  • The Patented Solution: Rather than claiming the entire bag, this patent focuses on the "sheath" component itself, which is designed to be incorporated into a "body" (e.g., a bag, jacket, or belt). The sheath is described as having a specific geometry, including a "first tapered closed end" and a "second open end," which securely holds the cord and operative end of a female USB connector, respectively, keeping it in a stable, flat, and uncovered position above the body's outer surface. (’137 Patent, col. 1:41-59, Abstract). Figure 12 illustrates the sheath (1200) and its placement relative to an opening (1302) in a body (1300). (’137 Patent, Figs. 12-13).
  • Technical Importance: The invention provides a modular, purpose-built component for integrating a stable and accessible charging port into a wide variety of soft goods and wearables. (’137 Patent, col. 1:30-40).

Key Claims at a Glance

  • The complaint asserts independent claim 1 and dependent claims 3-4, 6-7, and 18-21. (Compl. ¶29).
  • Essential elements of independent claim 1 include:
    • A sheath with a left, top, and right side, a "first tapered closed end," a "second open end," and a surrounding bottom portion.
    • The sheath extends above the outer surface of a "body" which has a power cable outlet.
    • The sheath is located at the power cable outlet and receives a female end of a USB cable.
    • The operative end of the USB cable is "removably retained" in the sheath's second open end, while the cord end is retained in the first tapered closed end.
    • This configuration presents the female connector in a "flat position," "uncovered and above the outer surface of the body."

Multi-Patent Capsule: U.S. Patent No. 10,931,138

  • Patent Identification: U.S. Patent No. 10,931,138, "Sheath for USB Charger," Issued Feb. 23, 2021. (Compl. ¶13).
  • Technology Synopsis: Similar to the ’137 patent, this patent claims a sheath for integrating a USB charging port into a "body" like a bag or clothing. It describes a structure with specific side and end portions that holds a female USB connector at an opening in the body, ensuring the connector is stable, accessible, and positioned flat above the outer surface, with the cord passing through the opening. (Compl. ¶13; ’138 Patent, Abstract).
  • Asserted Claims: Independent claims 1 and 23 are asserted. (Compl. ¶29).
  • Accused Features: The integrated USB charging port assembly in the Accused Quadrion Bags and other listed Samsonite products. (Compl. ¶¶78, 90-94).

Multi-Patent Capsule: U.S. Patent No. 11,601,009

  • Patent Identification: U.S. Patent No. 11,601,009, "Sheath for Convenient Charging," Issued March 7, 2023. (Compl. ¶14).
  • Technology Synopsis: This patent also describes a sheath for integrating a USB port into a body. It focuses on a sheath as a separate piece with a "raised portion" that attaches to a body and extends above its outer surface to hold a female USB connector, allowing for convenient charging without opening the item. (Compl. ¶14; ’009 Patent, Abstract).
  • Asserted Claims: Independent claims 1 and 29 are asserted. (Compl. ¶29).
  • Accused Features: The "raised integrated USB socket" in the Accused Quadrion Bags and other listed Samsonite products. (Compl. ¶¶96, 108-114).

III. The Accused Instrumentality

Product Identification

  • The complaint primarily identifies the "Accused Quadrion Bags," which include the Quadrion Slim Backpack, Quadrion Standard Backpack, and Quadrion Messenger Bag. (Compl. ¶25). It also provides an extensive list of "Defendants' Other Infringing Products" spanning the Samsonite, ebags, American Tourister, High Sierra, and Hartmann brands. (Compl. ¶28).

Functionality and Market Context

  • The accused products are alleged to feature an "integrated USB socket" or "USB power connectivity" port on their exterior. (Compl. ¶¶33, 51). This feature allows a user to place a portable power bank inside the bag and connect it to an internal cable, which terminates at the external USB port. (Compl. ¶33). A product page screenshot for the Quadrion Slim Backpack shows an internal cable and a pocket for a power bank. (Compl. p. 8, ¶25). This enables users to charge their devices "on the go" by plugging directly into the bag. (Compl. ¶33). The complaint asserts that Samsonite is the "world's largest travel luggage company" and markets these products as having "premium-quality" and the "latest design technology." (Compl. ¶¶15, 32). The product specifications for the Quadrion Slim Backpack explicitly list a "USB Port: USB power connectivity (integrated USB socket) to keep you charged and stress-free." (Compl. p. 11).

IV. Analysis of Infringement Allegations

'071 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a bag or luggage body having a placing space for placing a power storage device inside the bag or luggage body and a power cable outlet on the outer surface of the bag or luggage body The Accused Quadrion Bags have an internal space for a power storage device and a power cable outlet on the bag's outer surface. A product screenshot shows this internal pocket and cable. ¶52; p. 8 col. 2:40-45
a USB extension cable having a male connector and a female connector having four sides and an operative end The Accused Quadrion Bags are alleged to include a USB extension cable with both a male and female connector with the specified features. ¶53 col. 2:45-47
wherein the male connector of the USB extension cable is inside the bag or luggage body and is used to connect to the power storage device in the placing space The male connector of the USB cable is located inside the bag and is used to connect to a power storage device. ¶54 col. 2:47-50
wherein the female connector is retained outside and adjacent to the power cable outlet with one side of the four sides of the female connector in communication with the bag or luggage body, and the other three sides...are covered by a water proof sheath that protects the female connector and provides it in a flat position... The complaint alleges the female connector is retained outside the bag, with three sides covered by a waterproof sheath that positions it flat, and the remaining side is in communication with the bag body. ¶55 col. 6:58-65
wherein the sheath does not cover the operative end of the female connector which is exposed and fixedly attached above the exterior of the bag such that the operative end...does not need to be moved and the bag...does not need to be opened to accept a charging interface... The operative end of the female connector is alleged to be exposed, uncovered by the sheath, and fixedly attached to the bag's exterior, allowing a user to charge a device without opening the bag. ¶56 col. 6:1-8
  • Identified Points of Contention: A central question will be whether the accused products' integrated USB port assembly meets the specific claim requirement of a "water proof sheath" that covers "three sides" of the female connector while leaving one side in "communication with the bag or luggage body." The complaint's allegations on this structural detail are conclusory (Compl. ¶55), and this point will likely require factual discovery and expert testimony to resolve.

'137 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a sheath having a left side, top side and right side, a first tapered closed end, a second open end and a surrounding bottom portion... The complaint alleges the accused bags include a sheath with the claimed geometry: left, top, and right sides, a tapered closed end, an open end for inserting a USB cord, and a surrounding bottom portion forming the base. ¶71 col. 1:43-48
wherein at least a portion of the sheath extends above an outer surface of a body, wherein the body has an inner surface, an outer surface and a power cable outlet between the inner surface and the outer surface A portion of the accused sheath is alleged to extend above the outer surface of the bag, which has inner and outer surfaces and a power cable outlet between them. ¶72 col. 1:45-49
wherein the sheath is at the power cable outlet and the sheath receives a female end of a USB cable having four sides, an operative end and a cord end The accused sheath is alleged to be located at the power cable outlet and to receive a female USB cable end with the specified features. ¶73 col. 1:49-52
wherein the operative end of the female end of the USB cable is removably retained in the second open end of the sheath and the cord end of the female end...is retained in the first tapered closed end...to provide the female end...in a flat position...uncovered and above the outer surface... The operative end of the USB cable is alleged to be uncovered and held in a flat position above the bag's surface, being removably retained in the sheath's open end, with the cord end retained in the tapered closed end. ¶74 col. 1:52-59
wherein the surrounding bottom portion is attached to the inner surface of the body. The complaint alleges the sheath's surrounding bottom portion is attached to the bag's inner surface, being "sewn in between the fabric of both the inner and outer surface of the body." ¶75 col. 5:37-44
wherein the sheath has at least one ventilation opening on the top side. The complaint alleges that the top side of the sheath in the accused bags has "several ventilation openings." ¶76 col. 3:40-44
  • Identified Points of Contention: The infringement analysis for this patent may turn on the specific geometry of the accused port. A key technical question is whether the defendant's integrated port assembly possesses a "first tapered closed end" that "retained" the cord end of the cable, as required by the claim. The definition of "tapered" and the mechanism of retention will be critical. Furthermore, the allegation of "ventilation openings" (Compl. ¶76) presents a specific factual question for discovery.

V. Key Claim Terms for Construction

  • The Term: "water proof sheath" (from ’071 Patent, Claim 1)

  • Context and Importance: This term is central to the structure of the invention in the ’071 Patent. The infringement analysis depends on whether the housing of the accused USB port qualifies as a "water proof sheath" that covers "three sides" of the female connector. Practitioners may focus on this term because defendants commonly challenge such functional-sounding terms as indefinite or argue their product's components do not meet the definition.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification describes the sheath's function as providing "water proofing wrapped on the outer surface of the female connector" and mentions "waterproof and dust-proof functions, resulting in reliable performance." (’071 Patent, col. 2:51-52, col. 2:30-31). Plaintiff may argue this supports a functional definition covering any housing that provides water resistance.
    • Evidence for a Narrower Interpretation: Figure 2 of the patent depicts the sheath (3) as a woven, fabric-like material. (’071 Patent, Fig. 2). A defendant could argue that the term should be limited to such flexible, wrapped embodiments and does not read on a hard, molded plastic port assembly.

  • The Term: "a first tapered closed end" (from ’137 Patent, Claim 1)

  • Context and Importance: This term defines the specific geometry of the part of the sheath that retains the USB cable's cord. Whether the accused device infringes the ’137 Patent may depend heavily on if its internal structure contains a component that meets this definition.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The patent does not provide an explicit definition of "tapered." Plaintiff could argue the term should be given its plain and ordinary meaning, covering any structure that narrows to grip or secure the cord end of the cable.
    • Evidence for a Narrower Interpretation: The patent figures, such as Figure 12, illustrate a distinct funnel-like shape for the "first tapered closed end" (1208). (’137 Patent, Fig. 12). A defendant may argue that the claim requires this specific geometry and is not met by a simple pass-through or a housing that does not actively taper to a closed end around the cord.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement by citing Defendant’s marketing materials and website instructions, which allegedly encourage infringing use by promoting the "built in USB port" for powering "devices on the go." (Compl. ¶33, 41). Contributory infringement is alleged on the basis that the accused bags are staple articles whose specific charging-port-enabled configuration is not suitable for substantial non-infringing use. (Compl. ¶45-46).
  • Willful Infringement: The complaint alleges that Defendant’s infringement has been willful, basing this claim on Defendant’s alleged knowledge of the patents. This knowledge is specifically tied to the filing of a prior lawsuit in Texas on March 14, 2023, which identified the same patents and accused products. The complaint alleges that Defendant's continued infringement after this date was deliberate. (Compl. ¶¶35, 36, 49).

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

  • A core issue will be one of claim scope and construction: Can the structural limitations of a "sheath" as described in the patents—particularly the ’071 Patent's "water proof sheath" covering "three sides" and the ’137 Patent's "first tapered closed end"—be construed to read on the potentially different geometry and material of the molded port assemblies used in Samsonite's mass-market products?
  • A key evidentiary question will be one of factual correspondence: Beyond the marketing materials, what will discovery reveal about the actual physical construction of the accused bags? The case will turn on a side-by-side technical comparison of the accused port structure against the specific elements recited in the claims, such as the method of attachment to the bag and the presence of any "ventilation openings."
  • A third central question will concern willfulness and damages: Given the concrete notice of infringement alleged via the prior Texas litigation filed in March 2023, the court will likely need to determine whether Samsonite's sales activity after that date constitutes willful infringement, which could expose the defendant to the risk of enhanced damages.