DCT
1:17-cv-03653
PopSockets LLC v. Quest USA Corp
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: PopSockets LLC (Colorado)
- Defendant: Quest USA Corp. (New York), Quest Basics, LLC (New York), and Isaac Srour
- Plaintiff’s Counsel: Davis & Gilbert LLP; Marshall Gerstein & Borun LLP
- Case Identification: 1:17-cv-03653, E.D.N.Y., 06/16/2017
- Venue Allegations: Venue is alleged to be proper in the Eastern District of New York because the Defendants reside in the district, have a regular and established place of business there, and have allegedly committed acts of infringement within the district.
- Core Dispute: Plaintiff alleges that Defendants’ phone grip and stand products infringe a patent related to a collapsible, accordion-style socket for portable electronic devices.
- Technical Context: The technology concerns compact, multi-functional accessories for handheld electronic devices that provide users with an extendable grip, stand, and cord-management system.
- Key Procedural History: Subsequent to the filing of this complaint, the asserted patent, U.S. Patent No. 8,560,031, was the subject of an Inter Partes Review (IPR) proceeding (IPR2018-00497). The IPR resulted in a certificate, issued March 12, 2021, cancelling claims 9-11, 16, and 17. The complaint asserts infringement of claims 9 and 16, raising a significant question as to the viability of the patent infringement counts as originally pleaded. The complaint also alleges Defendants had knowledge of the patent prior to the lawsuit via PopSockets' patent markings.
Case Timeline
| Date | Event |
|---|---|
| 2011-03-16 | ’031 Patent Priority Date |
| 2012-01-01 | PopSockets alleges it began producing its collapsible socket product |
| 2013-01-01 | Defendant Quest USA Corp. was formed |
| 2013-10-15 | U.S. Patent No. 8,560,031 Issued |
| 2016-01-01 | Defendant Quest Basics, LLC was formed |
| 2017-06-16 | Complaint Filed |
| 2018-01-15 | IPR2018-00497 Filed against '031 Patent |
| 2021-03-12 | IPR Certificate Issued, cancelling asserted claims 9 and 16 of the '031 Patent |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,560,031 - "Extending Socket for Portable Media Player"
- Issued: October 15, 2013.
The Invention Explained
- Problem Addressed: The patent's background section notes that protective cases for portable media players like smartphones often increase the device's size while serving "no purpose beyond protection," and that existing multi-function cases fail to serve a wide range of functions without adding "significant effective size" to the player. (’031 Patent, col. 1:16-32).
- The Patented Solution: The invention is an "extending socket" that attaches to a media player or its case. The core of the socket is a collapsible "accordion" structure that can be extended to serve as a grip for one-handed use, a stand for viewing, or a spool for managing headphone cords, and can be retracted to be nearly flush with the device. (’031 Patent, Abstract; col. 2:33-54).
- Technical Importance: The invention offered a single, compact accessory that combined multiple functions—grip, stand, and cord management—addressing a need for enhanced utility in the rapidly expanding smartphone market. (’031 Patent, col. 2:33-41).
Key Claims at a Glance
- The complaint asserts independent claims 9 (apparatus) and 16 (method). (Compl. ¶22, ¶23).
- Independent Claim 9 requires:
- A securing element for attaching the socket to the back of a portable media player or case.
- An accordion forming a tapered shape, capable of extending and retracting.
- A foot disposed at the distal end of the accordion.
- Independent Claim 16 requires the method steps of:
- Attaching a socket with a tapered accordion to a portable media player.
- Selectively extending the socket by unfolding the accordion.
- Selectively retracting the socket by folding the accordion so its walls fold next to each other.
- The complaint asserts infringement of "at least" claims 9 and 16, which may suggest an intent to reserve the right to assert other claims. (Compl. ¶22).
III. The Accused Instrumentality
Product Identification
- The complaint identifies Defendants' "SpinPop, SpinClip, or a similar product" as the "Accused Product." (Compl. ¶20).
Functionality and Market Context
- The Accused Product is marketed as a "universal phone holder and phone hold and stand." (Compl. ¶20). The complaint alleges that the product features a securing element for attachment to a phone and a collapsible, accordion-style structure that can be extended and retracted by the user. (Compl. ¶22). Figure C in the complaint shows the accused product in a fully extended state, illustrating the accordion-like structure. (Compl. ¶22). The complaint alleges the Accused Product is sold at tradeshows and to nationwide retailers, including Target and Wal-Mart. (Compl. ¶26).
IV. Analysis of Infringement Allegations
’031 Patent Infringement Allegations (Claim 9 - Apparatus)
| Claim Element (from Independent Claim 9) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a securing element for attaching the socket to the back of the portable media player or portable media player case | The Accused Product includes an element for attaching the socket to a device, as illustrated by the collapsed product shown ready for attachment. Figure D in the complaint depicts this feature. | ¶22.a | col. 2:20-23 |
| an accordion forming a tapered shape connected to the securing element, the accordion capable of extending outward generally along its axis from the portable media player and retracting back toward the portable media player by collapsing generally along its axis | The Accused Product has a collapsible and extendable accordion with a tapered shape. Figures A, B, and C in the complaint depict this structure in its retracted, partially extended, and fully extended states. | ¶22.a, ¶22.b | col. 2:7-18 |
| a foot disposed at the distal end of the accordion | The complaint's visual evidence shows a button-like cap at the distal, user-facing end of the accordion structure. | ¶22 | col. 8:8-9 |
’031 Patent Infringement Allegations (Claim 16 - Method)
| Claim Element (from Independent Claim 16) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| attaching a socket including an accordion forming a tapered shape and having walls interspaced with flexural hinges to a portable media player | The method of use includes attaching the Accused Product to a media player, as shown in promotional materials and in the complaint's depiction of the product's adhesive base. | ¶23.a | col. 8:26-30 |
| selectively extending the socket by unfolding the accordion generally along its axis | The user unfolds the accordion to extend the socket. Figure C in the complaint illustrates the product in this extended state. | ¶23.b | col. 8:31-33 |
| selectively retracting the socket by folding the accordion generally along its axis such that the walls fold next to each other | The user folds the accordion to collapse the socket. Figure A in the complaint shows the product fully retracted. | ¶23.c | col. 8:34-37 |
- Identified Points of Contention:
- Scope Questions: A central issue would concern the proper construction of key terms. For example, a dispute may arise over whether the defendant's collapsible mechanism constitutes an "accordion" as that term is used in the patent, which describes a specific structure of "flipper walls" and "flexural hinges." (’031 Patent, col. 2:7-18).
- Technical Questions: The complaint alleges the accused product performs the claimed method steps, but it provides limited detail on the specific internal mechanics of the accused product's collapsing action. A key question would be whether the walls of the accused product "fold next to each other" as required by claim 16, or if they collapse in a different manner, such as by stacking.
V. Key Claim Terms for Construction
The Term: "accordion"
- Context and Importance: This term defines the central component of the invention. The scope of "accordion" will likely determine whether the accused product's collapsible mechanism falls within the claims. Practitioners may focus on this term because the patent discloses a specific folding geometry that may be used to argue for a narrow construction.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent summary describes the component generally as "extending elements, called 'accordions,' comprising cylindrical or conical membranes." (’031 Patent, col. 2:44-46). This language could support a construction covering a range of extendable, membrane-like structures.
- Evidence for a Narrower Interpretation: The patent also describes a specific embodiment where the accordions "form cones having rotating 'flipper' walls as well as fixed walls that jointly result in the walls folding down next to one another ... rather than stacking on top of one another." (’031 Patent, col. 2:13-18). This could support a narrower construction limited to structures that fold in this specific, non-stacking manner.
The Term: "foot"
- Context and Importance: This is a required element of independent apparatus claim 9. How this term is defined is critical to the infringement analysis for that claim.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Claim 9 itself only requires "a foot disposed at the distal end of the accordion." (’031 Patent, col. 8:8-9). This phrasing could be argued to encompass any structure, regardless of its shape or material, located at the end of the accordion.
- Evidence for a Narrower Interpretation: The specification describes an embodiment where "Buttons may attach at the distal ends of the socket" and are "rigid," and "extend radially past the distal end of the sockets to secure cords." (’031 Patent, col. 2:55-58). This language may be used to argue that the claimed "foot" must be a rigid, button-like structure that extends radially to perform a function like cord retention.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement, stating that Defendants instruct and encourage customers to use the Accused Product in an infringing manner "by means of promotional and instructional guides, and/or physical demonstration." (Compl. ¶39, ¶46).
- Willful Infringement: Willfulness is alleged based on Defendants' purported knowledge of the ’031 patent. The complaint alleges this knowledge arises "at least as of the date of the filing of this Complaint, and likely before through PopSockets' patent markings." (Compl. ¶37, ¶44). The complaint further claims that Defendants' "copying and use of photographs from PopSockets' website" is evidence of their knowledge of the patented invention. (Compl. ¶37).
VII. Analyst’s Conclusion: Key Questions for the Case
This analysis is based on the complaint as filed on June 16, 2017. The primary issues raised by the pleadings, in light of subsequent events, are:
A dispositive procedural question of viability: Given the post-filing IPR certificate cancelling the only two patent claims asserted in the complaint (claims 9 and 16), the central question is whether any basis for the patent infringement counts remains. Without amendment to assert other, surviving claims, the patent portion of the action may not be able to proceed.
A core issue of definitional scope: Should the patent claims proceed, the case would likely turn on claim construction. A key question for the court will be whether the term "accordion" is limited to the patent’s specific non-stacking, "flipper wall" embodiment or if it can be construed more broadly to cover any generally tapered, collapsible structure.
An evidentiary question of knowledge and intent: For the willfulness and inducement allegations to succeed, a key question will be what evidence demonstrates Defendants' pre-suit knowledge of the ’031 patent and intent to cause infringement. The court would have to evaluate the factual support for the claims of notice via "patent markings" and inferences of copying from promotional photographs.