DCT
0:15-cv-01883
Imation Corp v. Sanho Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Imation Corporation (Minnesota)
- Defendant: Sanho Corporation (Delaware)
- Plaintiff’s Counsel: Winthrop & Weinstine, PA.
- Case Identification: 0:15-cv-01883, D. Minn., 04/07/2015
- Venue Allegations: Venue is asserted based on Sanho conducting business in the District of Minnesota and the alleged acts of infringement occurring in the district.
- Core Dispute: Plaintiff alleges that Defendant’s Gmobi iStick, a multi-connector flash drive, infringes three patents related to the mechanical and electrical design of memory cards featuring multiple connectors.
- Technical Context: The technology addresses the market need for portable memory devices, like USB flash drives and SD cards, to connect to different types of hardware (e.g., cameras, computers) without requiring separate, cumbersome adapters.
- Key Procedural History: While not mentioned in the complaint, public records indicate that U.S. Patent No. 6,908,038 was the subject of an Inter Partes Review (IPR) proceeding (IPR2015-01556) filed after this lawsuit. The Patent Trial and Appeal Board ultimately cancelled claims 1, 3, and 8, but confirmed the patentability of asserted claim 11. The survival of the asserted claim through an IPR challenge may be presented by the plaintiff as evidence of the claim's strength and validity.
Case Timeline
| Date | Event |
|---|---|
| 2003-08-20 | ’038 Patent Priority Date |
| 2003-08-20 | ’718 Patent Priority Date |
| 2005-06-21 | '038 Patent Issue Date |
| 2007-01-05 | ’659 Patent Priority Date |
| 2009-01-27 | '659 Patent Issue Date |
| 2009-05-19 | '718 Patent Issue Date |
| 2015-04-07 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,908,038 - "Multi-Connector Memory Card with Retractable Sheath to Protect the Connectors," issued June 21, 2005.
The Invention Explained
- Problem Addressed: The patent’s background section notes that memory cards with multiple connectors, such as a device connector and a host (e.g., USB) connector, present a new problem: protecting the electrical contacts of the unused connector from damage, electrostatic discharge, and debris ('038 Patent, col. 2:19-30).
- The Patented Solution: The invention proposes a memory card with a sliding, protective sleeve or "sheath" that fits over the main body of the card. This sheath can be moved between two positions to selectively cover one connector while exposing the other for use, thereby providing a self-contained protective mechanism ('038 Patent, Abstract; col. 2:31-41; Fig. 3).
- Technical Importance: This design provides an integrated solution to protect the fragile, exposed contacts on dual-interface memory devices, enhancing durability and convenience by eliminating the need for separate, easily lost protective caps ('038 Patent, col. 3:25-33).
Key Claims at a Glance
- The complaint asserts independent claim 11 (Compl. ¶13).
- The essential elements of claim 11 are:
- A housing;
- A memory device in the housing;
- A device connector with electrical contacts on the housing;
- A host connector protruding from the housing; and
- A retractable sheath that can be moved into a first position to cover the host connector and expose the device connector, and a second position to cover the device connector and expose the host connector.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 7,481,659 - "Multiconnector Memory Card," issued January 27, 2009.
The Invention Explained
- Problem Addressed: The patent describes the inconvenience of requiring specialized adapters or readers to transfer data between memory cards and host computers ('659 Patent, col. 1:46-50).
- The Patented Solution: This invention discloses a different mechanical approach to a dual-connector device. The connectors are located on a single "movable member" that is mounted within an outer housing. A user can slide this internal member relative to the housing to extend one connector for use while the other remains retracted and protected inside the housing ('659 Patent, Abstract; col. 2:14-24).
- Technical Importance: This design offers an alternative mechanical implementation for a dual-interface memory card, providing a different method for protecting and selectively exposing one of two connectors on a single device ('659 Patent, col. 4:35-47).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶18).
- The essential elements of claim 1 are:
- A housing;
- A memory;
- A movable member movably mounted to the housing, which itself comprises a first connector and a second connector, both electrically coupled to the memory; and
- The movable member is movable between a first position and a second position to selectively expose the first or second connector.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 7,535,718 - "Memory Card Compatible with Multiple Connector Standards," issued May 19, 2009.
Technology Synopsis
This patent focuses on the internal electrical architecture for managing a memory card with multiple, different connector standards, such as a device-specific connector (DCC) and a host computer connector (HCC) like USB. The invention describes controller configurations, including an integrated controller for managing data flow between the memory and the two distinct physical interfaces, where one connector is retractable ('718 Patent, col. 2:22-28, col. 5:1-col. 6:3).
Asserted Claims
Independent claim 1 is asserted (Compl. ¶23).
Accused Features
The complaint alleges that the Gmobi iStick product infringes this patent (Compl. ¶23).
III. The Accused Instrumentality
- Product Identification: The complaint identifies the "Gmobi iStick" as the infringing product (Compl. ¶13).
- Functionality and Market Context: The complaint alleges the Gmobi iStick is a product that infringes the asserted claims but provides no specific details, diagrams, or descriptions of its technical operation or components (Compl. ¶¶13, 18, 23). The complaint does not provide sufficient detail for analysis of the product's functionality or market position beyond its general identification as a multi-connector memory device.
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint provides a conclusory allegation of infringement for each patent without a detailed infringement theory or claim chart. The following tables summarize the infringement case that the Plaintiff must prove.
- ’038 Patent Infringement Allegations
| Claim Element (from Independent Claim 11) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a housing; | The complaint alleges the Gmobi iStick includes a body that functions as a housing. | ¶13 | col. 13:26 |
| a memory device in the housing; | The complaint alleges the Gmobi iStick contains an internal memory device. | ¶13 | col. 13:27 |
| a device connector including one or more electrical contacts on the housing... | The complaint alleges the Gmobi iStick has a first connector, such as an Apple Lightning connector, that functions as a device connector. | ¶13 | col. 13:28-33 |
| a host connector protruding from the housing... | The complaint alleges the Gmobi iStick has a second connector, such as a USB connector, that functions as a host connector. | ¶13 | col. 13:34-39 |
| a retractable sheath that can be positioned in a first position to cover the host connector and expose the device connector, and a second position to cover the device connector and expose the host connector. | The complaint alleges the Gmobi iStick has a sliding protective cover that functions as a retractable sheath to selectively expose one connector while covering the other. | ¶13 | col. 13:40-44 |
- ’659 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a housing; | The complaint alleges the Gmobi iStick has an outer body that functions as a housing. | ¶18 | col. 15:52 |
| a memory; and | The complaint alleges the Gmobi iStick contains internal memory. | ¶18 | col. 15:53 |
| a movable member movably mounted to the housing, the movable member comprising: a first connector... and a second connector... | The complaint alleges the Gmobi iStick contains an internal sliding component, which holds both connectors and is mounted within the housing. | ¶18 | col. 15:58-65 |
| the movable member being movable between a first position and a second position... | The complaint alleges the internal component can be moved to selectively expose one of the two connectors from the housing. | ¶18 | col. 16:1-11 |
- Identified Points of Contention:
- Technical Questions: The primary dispute will likely be factual and technical: Does the accused Gmobi iStick’s mechanism for protecting and exposing its connectors operate via a "retractable sheath" sliding over a main housing (as claimed in the '038 patent), or via a "movable member" carrying the connectors and sliding within a housing (as claimed in the '659 patent)? The patents appear to claim mutually exclusive mechanical designs.
- Scope Questions: The case raises the question of whether the accused product's physical structure meets the specific definitions of the components claimed in each patent. For instance, what constitutes the "housing" versus the "sheath" in the '038 patent, and how does that differ from the "housing" versus the "movable member" in the '659 patent, when applied to the same accused device?
V. Key Claim Terms for Construction
The Term: "retractable sheath" ('038 Patent, Claim 11)
Context and Importance: This term is the central inventive concept of the '038 patent. Its definition will be critical to distinguishing the patent's scope from the '659 patent's "movable member" and determining if the accused product's sliding cover infringes. Practitioners may focus on this term to argue whether the accused product's cover is a sleeve that slides over a core housing.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the invention as a "retractable sheath that fits over a housing... to protect electrical contacts" ('038 Patent, Abstract), which could support a construction covering any form of sliding protective cover.
- Evidence for a Narrower Interpretation: The embodiments depicted in Figures 3 and 4A show a distinct, separate sleeve-like component (29, 39) that slides over and encompasses a main inner body (21, 31). A defendant may argue this limits the term to a structure with a separate, enveloping sleeve ('038 Patent, col. 7:1-8).
The Term: "movable member" ('659 Patent, Claim 1)
Context and Importance: This term defines the core of the '659 patent’s mechanical solution. The infringement analysis will depend on whether the sliding part of the accused device is a "member" that itself carries the connectors and is mounted inside the housing, as opposed to a sheath sliding over the housing.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim requires only that the member be "movably mounted to the housing" ('659 Patent, col. 15:59), which a plaintiff could argue applies to any component that slides relative to the main body.
- Evidence for a Narrower Interpretation: The abstract describes the connectors as being on a movable member "disposed within a housing" ('659 Patent, Abstract). The detailed embodiments, such as in Figure 8A, show an internal member (54) carrying the connectors, which slides inside an outer housing shell (52A, 52B). This may support a narrower construction requiring an internal sliding carrier ('659 Patent, col. 11:1-4).
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement. The inducement claims are based on allegations that Sanho actively encouraged infringement and "knew or should have known" its actions would cause infringement by end-users (Compl. ¶¶14, 19, 24). The contributory infringement claims allege that the Gmobi iStick is not a staple article of commerce suitable for substantial non-infringing uses (Compl. ¶¶15, 20, 25). The complaint does not plead specific facts, such as references to user manuals or advertising, to support these allegations.
- Willful Infringement: The complaint does not contain an explicit allegation of willful infringement. However, the pleading that Sanho "knew or should have known" its conduct would induce infringement alleges a level of knowledge that could be used to support a later claim for willfulness, particularly for any infringement occurring after the filing of the complaint (Compl. ¶¶14, 19, 24).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of competing technical infringement theories: Given that the '038 and '659 patents claim different and potentially mutually exclusive mechanical structures (an external sliding sheath vs. an internal sliding connector carrier), a central question will be which, if either, of these claimed structures accurately describes the physical operation of the accused Gmobi iStick.
- A dispositive issue will be one of claim construction: The outcome of the case will likely turn on the court's interpretation of the key phrases "retractable sheath" from the '038 patent and "movable member" from the '659 patent. The subtle distinctions between these terms will define the boundaries of each patent's scope and determine whether the accused product falls within them.
- A key evidentiary question will concern intent for indirect infringement: To succeed on its inducement claim, Imation will need to produce specific evidence establishing that Sanho not only knew of the patents but also acted with the specific intent to encourage its customers to perform the infringing acts.