DCT
1:18-cv-05546
PopSockets LLC v. Quest USA Corp
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: PopSockets LLC (Colorado)
- Defendant: Quest USA Corp. and Isaac Srour (New York)
- Plaintiff’s Counsel: Davis & Gilbert LLP; Marshall, Gerstein & Borun LLP
- Case Identification: 1:18-cv-05546, E.D.N.Y., 03/28/2019
- Venue Allegations: Venue is alleged to be proper in the Eastern District of New York because Defendants reside in the district, have committed alleged acts of infringement there, and maintain a regular and established place of business in the district.
- Core Dispute: Plaintiff alleges that Defendant’s "SpinPop" product line infringes a patent related to an expandable socket accessory for mobile electronic devices, and further alleges false marking.
- Technical Context: The technology concerns collapsible grips and stands that can be attached to the back of mobile devices to improve handling and provide a viewing stand.
- Key Procedural History: The complaint notes prior litigation between the parties (Case No. 1:17-cv-03653) involving a different PopSockets patent. The complaint also contains extensive allegations regarding the prosecution history of two of Defendant's own patents (U.S. Patent Nos. 9,787,348 and D794,607), which form the basis of a separate count for false marking.
Case Timeline
| Date | Event |
|---|---|
| 2016-08-17 | ’259 Patent Priority Date |
| 2017-03-21 | Defendant Quest files applications for its '348 utility and '607 design patents |
| 2017-05-01 | (Approx.) Defendant Quest allegedly begins importing/selling its accused SpinPop product |
| 2017-06-17 | Plaintiff PopSockets sues Defendant Quest in a prior case (1:17-cv-03653) |
| 2018-08-21 | ’259 Patent Issue Date |
| 2019-03-28 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,054,259 - "Expanding Socket Accessory for Mobile Electronic Device," issued August 21, 2018
The Invention Explained
- Problem Addressed: The patent does not explicitly state a problem in a background section, but the field of the invention relates to "collapsible grips and stands for mobile electronic devices," which addresses the need for enhanced grip and viewing options for devices like smartphones ('259 Patent, col. 5:11-13).
- The Patented Solution: The invention is a collapsible accessory that attaches to a mobile device ('259 Patent, col. 5:39-44). It consists of a base platform, a top button, and a deformable "skin" connecting them. A biasing element, such as a coil spring, is housed within the skin and pushes the button away from the platform into an expanded, usable state ('259 Patent, Abstract; col. 6:15-28). The device also includes a lock mechanism that can secure the button and platform together in a collapsed configuration for portability ('259 Patent, col. 6:18-22; Fig. 2).
- Technical Importance: The invention provides a bistable (expanded or collapsed) accessory that offers both ergonomic (grip) and functional (stand) benefits for the growing market of large-screen mobile devices.
Key Claims at a Glance
- The complaint asserts independent claims 1, 12, 20, and 28 ('259 Patent, col. 7:40-8:30; Compl. ¶18).
- Independent Claim 1:
- An expandable socket comprising:
- a platform adapted to engage a portable media player;
- a skin coupled to the platform, deformable between a collapsed and expanded configuration;
- a lock with a locking protrusion securable within a resilient locking projection on the platform;
- a button coupled to the skin opposite the platform; and
- a biasing element within the skin to bias it into the expanded configuration.
- Independent Claim 12:
- An expandable socket comprising:
- a platform adapted to engage a portable media player;
- a button spaced from and movable relative to the platform;
- a biasing element between the platform and button to bias the button away;
- a skin surrounding the biasing element; and
- a lock to releasably secure the button to the platform in a collapsed configuration.
- Independent Claim 20:
- An expandable socket comprising:
- a platform adapted to engage a portable media player;
- a button spaced from and movable relative to the platform;
- a biasing element between the platform and button to bias the button away; and
- a skin arranged between the platform and button, where the button has a protrusion releasably engagable to a locking projection on the platform.
- Independent Claim 28:
- An expandable socket comprising:
- a platform adapted to engage a portable media player;
- an elastomeric, hollow, deformable skin with at least one folded section;
- a button coupled to the skin, with different distances from the platform in collapsed vs. expanded states;
- a spring within the skin to urge it into the expanded configuration; and
- a lock for selectively coupling the button to the platform.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- The accused product is identified as the "SpinPop or a similar product" (Compl. ¶16).
Functionality and Market Context
- The complaint alleges the SpinPop is a "universal phone holder and stand" that attaches to a mobile device (Compl. ¶16). The complaint's photographic evidence depicts a device with a base that adheres to a phone, a decorative top button, and a collapsible, accordion-style body that can be in a "Compact mode" or a "Pop-up mode" (Compl. ¶19c, p. 5). A photograph showing the disassembled product reveals an internal metal spring, which corresponds to the "biasing element" (Compl. ¶19e, p. 6). The complaint alleges the product is sold in major retail stores and online (Compl. ¶14, 94).
IV. Analysis of Infringement Allegations
’259 Patent Infringement Allegations (Claim 1)
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a platform adapted to engage a portion of the portable media player or the portable media player case; | The SpinPop product includes a base platform that attaches to a phone or phone case. A provided photograph shows the product packaging which labels it a "Universal Phone Holder." | ¶19b | col. 6:58-61 |
| a skin coupled to the platform, wherein the skin is deformable between a collapsed configuration and an expanded configuration... | The SpinPop product has a deformable, accordion-like body that moves between a "Compact mode" and a "Pop-up mode." | ¶19c | col. 6:1-3 |
| ...such that when in the collapsed configuration a lock having a locking protrusion is securable within a resilient locking projection on the platform; | The complaint provides photographs of the disassembled product, identifying parts that allegedly form the locking mechanism to hold the device in its collapsed state. | ¶19c | col. 6:18-22 |
| a button coupled to the skin opposite the platform; and | The SpinPop product has a top button, which users handle, coupled to the deformable body opposite the platform. | ¶19d | col. 6:15-16 |
| a biasing element arranged within the skin between the platform and the button, the biasing element configured to bias the skin into the expanded configuration. | A photograph shows a coil spring located inside the deformable body of the SpinPop product. | ¶19e | col. 6:15-18 |
’259 Patent Infringement Allegations (Claim 12)
| Claim Element (from Independent Claim 12) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a button that is spaced from and movable relative to the platform; | The SpinPop's top button is shown to move relative to its base platform between collapsed and expanded modes. | ¶20c | col. 7:22-24 |
| a biasing element disposed between the platform and the button, the biasing element arranged to bias the button away from the platform; | The SpinPop product contains an internal spring positioned between its base and top button. | ¶20d | col. 7:25-27 |
| a skin surrounds the biasing element; and | The flexible, accordion-like body of the SpinPop encloses the internal spring. | ¶20e | col. 7:28 |
| a lock configured to releasably secure the button to the platform, wherein the lock comprises a locking projection and a protrusion... | Photographs of the SpinPop's components are provided to show parts that allegedly constitute a lock with a projection and protrusion for securing the device. | ¶20f | col. 7:29-33 |
’259 Patent Infringement Allegations (Claim 20)
| Claim Element (from Independent Claim 20) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a biasing element disposed between the platform and the button... and a skin arranged between the platform and the button... | The SpinPop has an internal spring and a deformable body located between its base platform and top button. | ¶21d | col. 7:60-63 |
| ...wherein the button includes a protrusion releasably engagable to a locking projection defined by the platform. | The complaint presents a photograph of the disassembled product's components, which allegedly include a button with a protrusion and a platform with a locking projection. | ¶21d | col. 7:63-65 |
’259 Patent Infringement Allegations (Claim 28)
| Claim Element (from Independent Claim 28) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an elastomeric skin coupled to the platform and having a hollow shape, the skin including at least one folded section and being deformable... | The SpinPop's body is depicted as hollow, with accordion-style folds, and is shown to be deformable between two states. | ¶22c | col. 8:22-26 |
| a button coupled to the skin opposite the platform, the button being disposed a first distance from the platform when the skin occupies the collapsed configuration and a second distance greater... | The SpinPop's button is shown in photographs to be closer to the base in its "Compact mode" and farther away in its "Pop-up mode." | ¶22d | col. 8:2-6 |
| a spring arranged within the skin between the platform and the button, the spring biasing the button away from the platform to urge the skin into the expanded configuration; and | An internal spring is shown within the SpinPop's deformable body. | ¶22e | col. 8:7-10 |
| a lock for selectively coupling the button to the platform... such that the button includes a protrusion securable to a locking projection fixed to the platform. | The complaint uses photographs to allege the SpinPop contains a lock mechanism with a protrusion on the button that engages a projection on the platform. | ¶22f | col. 8:11-16 |
- Identified Points of Contention:
- Technical Questions: While the complaint provides photographs, a key question for the court will be whether the specific structures of the accused SpinPop product perform the functions recited in the claims in the same way as described in the '259 Patent. For example, does the alleged "lock" in the SpinPop operate by securing a "locking protrusion... within a resilient locking projection on the platform" (Claim 1) or is there a material difference in its mechanical operation?
- Scope Questions: The claims use terms like "skin," "lock," "protrusion," and "projection." The infringement analysis will turn on whether the accused product's components fall within the proper construction of these terms as defined by the patent's specification and prosecution history.
V. Key Claim Terms for Construction
The Term: "lock" (and its components: "locking protrusion", "locking projection")
Context and Importance: This term appears in all four asserted independent claims and is central to the mechanism for holding the device in its collapsed state. The specific interaction between the "protrusion" and "projection" will be a focal point. Practitioners may focus on this term because the functionality of the accused product's retention mechanism must match the specific locking structure claimed, not just achieve a similar result.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims themselves describe the lock in functional terms, e.g., "a lock configured to releasably secure the button to the platform" (Claim 12), which could suggest any mechanism that performs this function is covered.
- Evidence for a Narrower Interpretation: The specification provides a specific example: "Locking protrusion 210 on button 204 interfaces with corresponding locking feature or projection 208 on platform 206, keeping socket accessory 200 collapsed" ('259 Patent, col. 6:18-22; Fig. 2). Parties may argue that the claims should be limited to this specific structural arrangement where a part on the button (protrusion) engages a part on the platform (projection).
The Term: "skin"
Context and Importance: This term defines the main collapsible body of the device. Its properties—"deformable" (Claim 1), "elastomeric" (Claim 28), surrounding the "biasing element" (Claim 12)—are critical limitations. The dispute may center on whether the accused product's accordion-like structure meets the definition of "skin" as contemplated by the patent.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification suggests multiple possibilities, stating it can be referred to as "an accordion, a skin, an expanding and contracting cover, or a cover" ('259 Patent, col. 6:1-3), implying the term is not limited to a single material or form.
- Evidence for a Narrower Interpretation: Claim 28 specifically requires an "elastomeric skin," which could be used to argue that non-elastomeric materials are excluded, at least from the scope of that claim. The figures consistently show a flexible, continuous member, which might be used to argue against constructions that are not unitary or continuous.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Isaac Srour, as President and owner of Quest USA, is liable for inducing infringement. It alleges he is "directly responsible for the day-to-day operations" and, with knowledge of PopSockets' patents, "intentionally directed Quest USA to perform the actions giving rise to... infringement" (Compl. ¶31-32).
- Willful Infringement: Willfulness is alleged against Quest USA based on alleged knowledge of the '259 patent "at least as of the date of this Complaint" (Compl. ¶27). The complaint also references prior litigation between the parties as potential evidence of knowledge of PopSockets' patent portfolio generally (Compl. ¶47).
- False Marking: The complaint includes a separate count for false marking under 35 U.S.C. § 292 (Compl. ¶33-95). It alleges that Defendants mark their tapered "SpinPop" product with their own patent numbers ('348 and '607) which, according to arguments Defendants allegedly made to the PTO, do not cover tapered products (Compl. ¶48, 68). The complaint uses a photograph of the accused product annotated with red lines to illustrate its tapered shape (Compl. ¶46). Plaintiff alleges this was done with intent to deceive the public and has caused competitive harm, providing screenshots of social media and retail websites showing alleged consumer confusion (Compl. ¶49, 93-94).
VII. Analyst’s Conclusion: Key Questions for the Case
A central issue will be one of claim construction: How will the court define the components of the "lock" mechanism? The case may turn on whether the specific structures in the accused SpinPop product, as depicted in the complaint’s photographic evidence, meet the claim requirements of a "protrusion" engaging a "projection" in the manner described and claimed in the '259 Patent.
A second key question will be one of factual proof related to false marking: Beyond the patent infringement claims, the case presents a detailed false marking allegation. A critical question for the court will be whether PopSockets can prove that Quest's marking of its tapered products with its allegedly non-tapered patents was done with an "intent to deceive the public," a high evidentiary bar.
A final evidentiary question will be one of functional correspondence: Does the accused SpinPop's internal spring function as the claimed "biasing element" to "urge the skin into the expanded configuration" (Claim 28), or could Defendants argue it serves a different primary purpose? While the visual evidence appears strong, the precise interaction and biasing force of the components will likely be subject to expert testimony.