DCT
1:20-cv-00047
Hangtime LLC v. Es Distribution LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Hangtime LLC (New Mexico)
- Defendants: ES Distribution, LLC (Delaware) and DACA Design LLC (New York)
- Plaintiff’s Counsel: Ortiz & Lopez, PLLC
- Case Identification: 1:20-cv-00047, D.N.M., 01/15/2020
- Venue Allegations: Plaintiff Hangtime, a New Mexico LLC, brings this declaratory judgment action in its home district. It asserts that any patent infringement suit by Defendants against Hangtime would properly lie in the District of New Mexico, and that Defendant ESD has sufficient contacts with the district through its own product sales.
- Core Dispute: Plaintiff seeks a declaratory judgment that its "Koala"-branded phone harnesses do not infringe Defendants' patent related to a securement apparatus for portable electronic devices.
- Technical Context: The technology concerns elastomeric harnesses designed to stretch over the corners of a smartphone or similar device to secure it with a tether, preventing drops or loss.
- Key Procedural History: The action was precipitated by cease and desist letters sent by Defendant ESD to Plaintiff Hangtime on November 12, 2019, and December 3, 2019, which alleged that Hangtime's products infringe at least claim 24 of the patent-in-suit. The complaint highlights the prosecution history of the asserted patent, noting that key claim terms were added to overcome rejections over prior art, a fact that may be central to arguments regarding claim scope and prosecution history estoppel.
Case Timeline
| Date | Event |
|---|---|
| 2013-03-15 | U.S. Patent No. 9,060,588 Priority Date |
| 2015-06-23 | U.S. Patent No. 9,060,588 Issue Date |
| Late 2019 | Plaintiff's "Koala"-branded phone harness launched |
| 2019-11-12 | First cease and desist letter sent to Plaintiff |
| 2019-12-03 | Second cease and desist letter sent to Plaintiff |
| 2020-01-15 | Complaint for Declaratory Judgment filed |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 9,060,588, "SECUREMENT APPARATUS FOR A PORTABLE ELECTRONIC DEVICE," issued June 23, 2015 (the "’588 Patent").
The Invention Explained
- Problem Addressed: The patent describes the problem of modern portable electronic devices, such as smartphones, being susceptible to being dropped or lost, particularly during physical activities. It notes that many such devices lack a dedicated opening to attach a conventional security strap ('588 Patent, col. 1:11-41).
- The Patented Solution: The invention is an elastomeric apparatus that secures a device by stretching over its corners. It comprises a central panel with multiple elastomeric retainers forming loops to grip the corners. A tether extends from the body of the apparatus to a strap, allowing it to be secured to a user or their clothing ('588 Patent, Abstract; col. 2:56-65). Figure 3 illustrates the apparatus (10) attached to a mobile device (11), with retainers (16) gripping the corners (90).
- Technical Importance: The design offers a universal method for securing portable electronics that do not have built-in attachment points, a common feature of modern smartphones ('588 Patent, col. 1:36-41).
Key Claims at a Glance
- The complaint primarily contests infringement of independent claims 1 and 24, with claim 24 having been specifically identified in a cease and desist letter (Compl. ¶5, ¶17).
- Independent Claim 1: The essential elements include:
- A body with a "solid, uninterrupted, elastomeric panel"
- A plurality of elastomeric retainers extending from the panel
- A "node" secured to and extending upwardly from the panel
- Two retainers extending from the "node downwardly to the panel"
- An elongate elastomeric tether extending upwardly from the node
- Independent Claim 24: Includes all elements of claim 1 and further requires that "the securement apparatus is formed of a single unitary piece of elastomeric material."
- The complaint seeks a declaration of non-infringement as to "any claim of the '588 patent" (Compl. Prayer for Relief ¶a).
III. The Accused Instrumentality
Product Identification
- The "Koala"-branded phone harness, also referred to as the "KOALA® Super-Grip Phone Harness" (Compl. ¶4, ¶8).
Functionality and Market Context
- The complaint alleges the accused product is a phone harness launched by Plaintiff Hangtime, a startup company, via a crowdfunding campaign in late 2019 (Compl. ¶4). While not providing a detailed technical description of the product's operation, the complaint asserts non-infringement by listing specific, claimed features that the Koala product allegedly lacks, such as a "solid, uninterrupted, elastomeric panel" and a specific "node" structure (Compl. ¶17).
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint seeks a declaratory judgment of non-infringement. The table below summarizes Hangtime's central arguments for why its product does not meet the limitations of claim 24, which was identified in the cease and desist letter.
’588 Patent Infringement Allegations
| Claim Element (from Independent Claim 24) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a body having perimeter defining there within a solid, uninterrupted, elastomeric panel... | The accused Koala product allegedly "does not include a body having perimeter defining there within a solid, uninterrupted, elastomeric panel." | ¶17 | col. 8:4-7 |
| a node secured to and extending upwardly from the panel, and two of the plurality of retainers extending from the node downwardly to the panel; | The accused Koala product allegedly "does not include... a node secured to and extending upwardly from a panel with two of the plurality of retainers extending from the node downwardly to the panel." | ¶17 | col. 8:15-19 |
| and wherein the securement apparatus is formed of a single unitary piece of elastomeric material. | The complaint does not provide sufficient detail for analysis of this element. | N/A | col. 8:20-23 |
- Identified Points of Contention:
- Scope Questions: The dispute appears to center on the meaning of claim terms added during prosecution. A central question is whether the accused product's panel falls within the scope of a "solid, uninterrupted, elastomeric panel." The complaint alleges that this language was added to overcome prior art, suggesting an argument that the term should be narrowly construed (Compl. ¶12, ¶14).
- Technical Questions: A key factual question is whether the accused Koala harness has the specific physical structure of "a node" with two retainers extending "downwardly to the panel." The complaint makes a direct assertion that its product lacks this precise structural arrangement (Compl. ¶17). The case may turn on a structural comparison between the accused product and the claim language, as distinguished from prior art during prosecution.
V. Key Claim Terms for Construction
The Term: "solid, uninterrupted, elastomeric panel"
- Context and Importance: This term appears in both independent claims 1 and 24 and was, according to the complaint, added during prosecution to distinguish the invention from the Baker and Condiff prior art references, which allegedly did not disclose such a panel (Compl. ¶14). The interpretation of "solid" and "uninterrupted" will be critical to determining literal infringement.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue the term simply means the panel itself is not hollow and lacks perforations, without dictating the panel's overall shape or size relative to the device.
- Evidence for a Narrower Interpretation: The complaint highlights the applicant's arguments during prosecution that the prior art failed to disclose this element (Compl. ¶14, ¶18). This creates a basis for prosecution history estoppel, potentially limiting the term's scope to a structure materially different from what was shown in Baker or Condiff. The specification describes the panel as "centrically located" and shows it in figures as a distinct, diamond-shaped element (14) ('588 Patent, col. 3:1-3; Fig. 4).
The Term: "a node secured to... the panel, and two of the plurality of retainers extending from the node downwardly to the panel"
- Context and Importance: This structural limitation describes the junction of the tether and two of the corner retainers. The complaint explicitly alleges the accused product lacks this configuration (Compl. ¶17). The complaint also states this language was added to distinguish the Case reference (Compl. ¶12).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A patentee might argue "node" refers to any junction point where the tether and retainers meet, regardless of its specific reinforcement or the precise angles of the retainers.
- Evidence for a Narrower Interpretation: The specification describes the node (30) as a "reinforced portion of the body" where the tether and specific bands connect ('588 Patent, col. 3:21-25). The applicant's express argument to the USPTO that the Case reference "fails to disclose" this exact structure provides strong evidence for a narrow interpretation limited to the specific geometry described and claimed (Compl. ¶12).
VI. Other Allegations
- Indirect Infringement: The complaint states that no claim of the '588 Patent is infringed "either directly or indirectly" (Compl. ¶16). The pleading does not present specific facts to rebut a hypothetical indirect infringement claim beyond asserting the absence of direct infringement by any party, which is a legal prerequisite for any finding of indirect infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be the impact of prosecution history: To what extent do the amendments and arguments made to overcome the Case, Baker, and Condiff prior art references limit the scope of the claim terms "solid, uninterrupted, elastomeric panel" and the specific "node" structure? This raises the question of whether prosecution history estoppel will bar the patentee from asserting a scope for these terms, either literally or under the doctrine of equivalents, that reads on the accused Koala harness.
- The case will also depend on a question of structural infringement: Assuming a narrow claim construction based on the prosecution history, does the accused Koala harness, as a matter of fact, embody the specific, multi-part "node" structure and the "solid, uninterrupted" panel as claimed in the '588 patent? The resolution will likely require a direct comparison of the physical accused product to claim limitations that were drafted to be deliberately narrow.