DCT
1:24-cv-00319
DACA Design LLC v. Hangtime LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: DACA Design LLC (New York)
- Defendant: Hangtime LLC (New Mexico) and Harbhajan S. Khalsa (New Mexico)
- Plaintiff’s Counsel: Butt Thornton & Baehr PC; Greenspoon Marder LLP
- Case Identification: 1:24-cv-00319, D.N.M., 04/02/2024
- Venue Allegations: Venue is alleged to be proper in the District of New Mexico because Defendants reside in the district, have committed acts of infringement there, and maintain a regular and established place of business within the district.
- Core Dispute: Plaintiff alleges that Defendant’s KOALA 2.0 Super-Grip Smartphone Harness infringes a patent related to a securement apparatus for portable electronic devices.
- Technical Context: The technology concerns flexible, universal harnesses designed to secure smartphones and similar devices to a user or their gear, preventing drops and loss during physical activities.
- Key Procedural History: The complaint alleges that Plaintiff's counsel sent a notice letter to Defendant's counsel concerning the patent's parent application more than a year before the patent issued. This alleged pre-suit notice may form the basis for the complaint's allegations of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2013-03-15 | ’666 Patent Earliest Priority Date |
| 2021-04-05 | ’666 Patent Application Filing Date |
| 2021-11-09 | Facebook post announcing upcoming launch of Accused Product |
| 2022-08-01 | Plaintiff's alleged notice letter to Defendant regarding parent application |
| 2022-12-13 | ’666 Patent Issue Date |
| 2024-04-02 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,523,666 - Securement Apparatus for a Portable Electronic Device
Issued December 13, 2022
The Invention Explained
- Problem Addressed: The patent’s background section describes the problem of portable electronic devices being susceptible to being dropped or lost, particularly during outdoor activities. It notes that many existing attachment solutions are inadequate because they require a dedicated opening in the device or its case, a feature many modern devices lack (’666 Patent, col. 1:25-50).
- The Patented Solution: The invention is an elastomeric apparatus that secures a portable device by stretching over its corners. As described in the specification and shown in Figure 1, the apparatus comprises a central panel with multiple elastomeric bands extending from it to form openings that grip the device's corners. A tether extends from the body and connects to a strap, allowing the entire apparatus to be secured to a user or their gear, thereby preventing loss or damage if the device is dropped (’666 Patent, Abstract; col. 3:4-9).
- Technical Importance: The described technology provides a universal method for securing a wide variety of portable electronic devices without relying on device-specific features like attachment loops or custom-fitted cases (’666 Patent, col. 1:45-50).
Key Claims at a Glance
- The complaint asserts independent claims 1, 9, and 15 (Compl. ¶19).
- Independent Claim 1, which the complaint details as an example, includes the following essential elements:
- A body having a perimeter defining therewithin an elastomeric panel;
- A plurality of elastomeric bands extending from the panel, defining at least three openings to receive a corner of the device;
- The body having a node secured to an upper portion of the panel, with at least two bands secured to the node and extending downwardly;
- An attachment element coupled to the node;
- A flexible strap extending from the attachment element with a distal end connected to an attachment device;
- Wherein two bands each have an end connected to a panel bottom portion, and the two bands together form a W-shaped element.
- The complaint does not explicitly reserve the right to assert dependent claims, but seeks relief for infringement of "one or more claims of the ’666 Patent" (Compl. p. 7, Prayer for Relief A).
III. The Accused Instrumentality
Product Identification
- The accused product is the “KOALA® 2.0 Super-Grip Smartphone Harness” (the “Accused Product”) (Compl. ¶17).
Functionality and Market Context
- The Accused Product is an elastomeric harness designed to stretch over the corners of a smartphone to secure it (Compl. Ex. 2, p. 29). A product image from Defendant's website shows the device on a phone, illustrating how the elastomeric bands stretch to grip the corners while leaving the screen and camera largely unobstructed (Compl. Ex. 2, p. 29). It includes an integrated tether that terminates in a clip, which can be used to attach the device to clothing or gear (Compl. Ex. 2, p. 27).
- The complaint alleges the Accused Product is sold through Defendant's website and Facebook page (Compl. ¶¶17-18). Marketing materials present the product as being "Phone Case Compatible," "Camera-friendly," and providing "peace of mind wherever your adventures take you" (Compl. Ex. 2, pp. 28-29).
IV. Analysis of Infringement Allegations
'666 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a body having a perimeter defining therewithin an elastomeric panel | The Accused Product is constructed with a central elastomeric body from which corner-gripping bands extend. A product image shows this central structure (Compl. Ex. 2, p. 25). | ¶21-22 | col. 3:4-6 |
| a plurality of elastomeric bands extending from the panel, the plurality of bands defining at least three openings adapted to receive a corner of the portable electronic device | The Accused Product features four elastomeric loops extending from the central body, each designed to stretch over a corner of a smartphone. | ¶21-22 | col. 3:48-54 |
| the body having a node being secured to an upper portion of the panel, at least two of the plurality of bands being secured to the node and extending downwardly and connecting to the panel | The upper portion of the Accused Product’s body features a junction where the two upper bands and the tether meet. | ¶21-22 | col. 3:36-40 |
| an attachment element coupled to the node | The Accused Product has a tether that extends from the upper junction point of the body. | ¶21-22 | col. 3:8-9 |
| a flexible strap extending from the attachment element having a distal end connected to an attachment device adapted to be secured to a user | The tether of the Accused Product is flexible and connects to a clip at its distal end, which allows it to be secured to a user's clothing or gear (Compl. Ex. 2, p. 27). | ¶21-22 | col. 4:16-24 |
| and wherein two bands of the plurality of bands each have an end connected to a panel bottom portion, and the two bands together form a W-shaped element. | The bottom of the Accused Product is formed by two bands that meet and connect to the lower part of the central panel, creating a shape that Plaintiff alleges is a "W-shaped element." | ¶21-22 | col. 4:6-9 |
- Identified Points of Contention:
- Scope Questions: Claim 1 recites an "attachment element coupled to the node" and a "flexible strap extending from the attachment element." This language may suggest two distinct components. A question for the court will be whether the Accused Product’s single, integrated tether can be found to satisfy both of these limitations.
- Technical Questions: A primary question will be whether the geometry of the Accused Product's lower bands constitutes the "W-shaped element" required by the claim. The patent provides a specific description of this structure (’666 Patent, col. 4:6-9), and infringement will depend on a factual comparison between that description and the Accused Product's physical form.
V. Key Claim Terms for Construction
The Term: "W-shaped element"
Context and Importance: This term appears in independent claims 1 and 15 and defines a specific geometric configuration at the bottom of the apparatus. Its construction will be critical to the infringement analysis, as the shape of the Accused Product's lower portion is a key structural feature that will be compared against this limitation.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party arguing for infringement may contend that the term should be interpreted functionally to cover any structure where two lower bands join and curve back toward the panel, regardless of the precise angles, as long as it achieves the overall claimed structure.
- Evidence for a Narrower Interpretation: The patent provides a specific structural definition, stating the "band bottom ends... have a portion that extends beyond the bottom corner... and curve upwardly to join therewith, creating a W-shaped structure" (’666 Patent, col. 4:6-9). A party may argue this language, along with the depiction in Figure 4, requires a specific, pronounced curvature that may not be present in the accused design.
The Term: "attachment element"
Context and Importance: Practitioners may focus on this term because Claim 1 recites it as a distinct component from which the "flexible strap" extends. The Accused Product appears to have a single integrated tether. The determination of whether the "attachment element" is a distinct required structure or can be a portion of the integrated tether will be central to infringement.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that the "attachment element" is simply the part of the apparatus that connects the strap to the node, and that it can be integrally formed with the strap itself. The patent describes a "tether 15" as extending from the body, which could be construed as the claimed element ('666 Patent, col. 3:7-9).
- Evidence for a Narrower Interpretation: A party could point to the specification’s separate descriptions of a "tether 15" and a "strap 60" (’666 Patent, col. 4:16-17), along with Figure 9 showing the strap as a separate component, to argue that the "attachment element" and "flexible strap" must be separate, non-unitary components.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendants induced infringement by their customers (Compl. ¶35). The basis for this allegation is not detailed with reference to specific instructions or manuals, but inducement may be inferred from the act of selling a product whose only intended use is to be attached to a phone in the allegedly infringing manner.
- Willful Infringement: The complaint alleges willful infringement based on pre-suit knowledge of Plaintiff's patent rights. This allegation is supported by the claim that Plaintiff’s counsel sent a letter to Defendant’s counsel on August 1, 2022, providing notice of the pending application that would become the ’666 Patent (Compl. ¶¶24, 32).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of structural and definitional scope: can the specific geometry of the Accused Product’s lower bands be construed to meet the "W-shaped element" limitation as defined and depicted in the ’666 Patent?
- A key question of claim construction and mapping will be whether the Accused Product's single integrated tether assembly can satisfy the sequence of limitations requiring a "node", an "attachment element" coupled to it, and a "flexible strap" extending from that element, or if the claim language necessitates structurally separate components.