DCT
1:20-cv-02651
Tools Aviation LLC v. Digital Pavilion Electronics LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Tools Aviation, LLC (Illinois)
- Defendant: Digital Pavilion Electronics LLC, East Brooklyn Labs LLC, and Firemall LLC (New York)
- Plaintiff’s Counsel: Gabriel & Pelaez, PLLC
- Case Identification: 1:20-cv-02651, E.D.N.Y., 06/15/2020
- Venue Allegations: Venue is alleged to be proper as all defendants are New York companies that reside, maintain regular and established places of business, and have committed alleged acts of infringement within the Eastern District of New York.
- Core Dispute: Plaintiff alleges that Defendants’ battery caddy products infringe three U.S. patents related to battery holding and dispensing apparatuses.
- Technical Context: The technology concerns handheld devices for organizing, storing, and dispensing standard-sized batteries, designed for one-handed operation and tactile identification, particularly for professionals like pilots or photographers who require quick access in demanding environments.
- Key Procedural History: The complaint alleges that Defendants received notice of U.S. Patent Nos. 7,287,648 and 8,267,252 on or around October 17, 2019, and notice of U.S. Patent No. 9,022,218 on or around November 6, 2019. These pre-suit notice dates form the basis for the willfulness allegations.
Case Timeline
| Date | Event |
|---|---|
| 2005-09-02 | Earliest Priority Date for ’648, ’252, and ’218 Patents |
| 2007-10-30 | ’648 Patent Issued |
| 2012-09-18 | ’252 Patent Issued |
| 2015-05-05 | ’218 Patent Issued |
| Before 2019-10-16 | Accused "RadCad" Products Launched |
| 2019-10-17 | Defendants Allegedly on Notice of ’648 and ’252 Patents |
| 2019-11-06 | Defendants Allegedly on Notice of ’218 Patent |
| 2020-06-15 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,287,648 - “Battery Holder and Dispenser” (Issued Oct. 30, 2007)
The Invention Explained
- Problem Addressed: The patent identifies the need for professionals, particularly airplane pilots, to have quick and reliable access to a fresh supply of various batteries. The background notes that finding loose batteries in a flight bag, especially during an emergency or in a dark cabin, can be "troublesome and time-consuming" (’648 Patent, col. 1:29-32).
- The Patented Solution: The invention is a unitary, molded plastic frame with multiple compartments configured to hold different sizes of batteries. The design is characterized by an open structure, including an "open area" at the bottom of each compartment that allows a user to push a battery out with a thumb or finger, and side openings that allow a user to feel the size of the battery for tactile identification (’648 Patent, Abstract; col. 2:62-65).
- Technical Importance: The device provided an organized, one-handed dispensing solution that allowed users to identify and retrieve a specific battery by feel, a key advantage in low-light or high-stress situations (Compl. ¶22).
Key Claims at a Glance
- The complaint asserts independent claim 12 (Compl. ¶40).
- The essential elements of independent claim 12 include:
- A battery holding and dispensing apparatus comprising a first frame, sized and configured to be held in a user's hand.
- A plurality of compartments with sidewalls to hold batteries in an upright, side-by-side, parallel orientation.
- Each compartment comprising a bottom wall with an "open area" exposing a bottom portion of a battery, allowing a user to touch it.
- Each compartment having an "end opening" for removal of the battery.
- A user can at least partially remove a battery through the end opening by pushing the battery with a finger through the open area at the bottom.
- Plaintiff reserves the right to assert additional claims (Compl. ¶43).
U.S. Patent No. 8,267,252 - “Battery Holder and Dispensing Package” (Issued Sep. 18, 2012)
The Invention Explained
- Problem Addressed: The patent addresses the same problem as its parent '648 Patent: providing convenient and reliable access to stored batteries for professionals (’252 Patent, col. 1:12-32).
- The Patented Solution: This patent refines the design by explicitly claiming a "plurality of detents" that are "resiliently displaceable" to retain and then release a battery, with the detents being formed in a "unitary fashion with the first frame" (’252 Patent, col. 12:9-13). The claims are structured as a combination of the apparatus and the batteries it holds. The specification also describes embodiments where the frame is made of translucent plastic and can be illuminated by internal LEDs powered by one of the stored batteries (’252 Patent, col. 2:46-56).
- Technical Importance: This invention formalizes the retention mechanism as a "resiliently displaceable detent" and introduces the concept of an actively illuminated holder, increasing its utility in dark environments (’252 Patent, col. 2:46-49).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 24 (Compl. ¶47).
- The essential elements of independent claim 1 include:
- In combination, a battery holding apparatus and a plurality of batteries.
- The apparatus comprises a molded plastic frame with compartments, where the sidewall length is equal to or greater than the battery length.
- A plurality of "detents" protrude into the open end of each compartment to retain a battery.
- Each detent is "resiliently displaceable" to allow battery removal and is formed in a "unitary fashion" with the frame.
- The essential elements of independent claim 24 include:
- In combination, a battery holding apparatus and a plurality of batteries.
- The apparatus comprises a unitary injection molded plastic frame with compartments.
- Each sidewall has an opening for a user to touch the battery to "ascertain a battery size."
- The frame has a "protrusion" into each compartment to retain a battery.
- Plaintiff reserves the right to assert additional claims (Compl. ¶43).
U.S. Patent No. 9,022,218 - “Battery Holder and Dispensing Package” (Issued May 5, 2015)
- Technology Synopsis: This patent continues to refine the battery holder technology, with claims focusing on a frame with compartments that "closely conform to the shape and size of the outside perimeter of a standard battery" to hold it "snugly." The claims detail the interplay between a "retaining element" (e.g., a detent) at an open dispensing end and a "bottom wall" with an adjacent "open area" that allows a user's finger to push the battery out past the retaining element (’218 Patent, Abstract; col. 13:1-14:24).
- Asserted Claims: Independent claims 1 and 13 (Compl. ¶69).
- Accused Features: The complaint alleges the "RadCad" caddy infringes by embodying a frame with snugly-fitting compartments, a bottom opening for finger access, and a retaining element at the dispensing end that allows for push-through removal of batteries (Compl. ¶71, ¶74).
III. The Accused Instrumentality
Product Identification
- The accused products are the "RadCad Battery Charger and Caddy for AA Rechargeable Batteries" (referred to as the "RadCad") and the "East Brooklyn Labs Durable AA Battery Storage" (referred to as the "RadCad caddy") (Compl. ¶25).
Functionality and Market Context
- The accused products are plastic battery caddies designed to hold and dispense standard-sized batteries, particularly AA batteries (Compl. ¶4, ¶22). They are sold online via Amazon and other websites, both as a standalone caddy and as a component included with a battery charger (Compl. ¶25). Visual evidence in the complaint shows the product offered for sale both with a charger and separately. For example, Exhibit 4 shows the accused product sold with a battery charger, while Exhibit 5 shows it sold separately (Compl. ¶26, ¶27).
IV. Analysis of Infringement Allegations
’648 Patent Infringement Allegations
The complaint alleges that the "RadCad caddy" includes every element of claim 12 (Compl. ¶41). Exhibit 16 is cited to provide annotated photographs of the "RadCad caddy," purporting to map specific product features to the elements of the asserted claims (Compl. ¶42).
| Claim Element (from Independent Claim 12) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a first frame, said first frame, sized and configured to be held and supported in a user's hand | The accused caddy is a frame that is sized to be held in a user's hand. | ¶41-42 | col. 2:45-48 |
| and including a plurality of compartments, each compartment having sidewalls to hold the batteries with longitudinal axes of the batteries in an upright orientation... wherein said compartments are arranged to hold said batteries oriented side-by-side in parallel | The accused caddy has multiple compartments with sidewalls that hold batteries upright and parallel to one another. | ¶41-42 | col. 4:26-34 |
| wherein said compartments each comprise a bottom wall having an open area exposing a bottom portion of a battery... wherein a user can touch with a finger a bottom edge of the battery... through the open area | The accused caddy's compartments have a bottom opening that exposes the end of a stored battery, allowing a user to touch it. | ¶41-42 | col. 2:1-6 |
| each sidewall defining an end opening sized to allow removal of a battery from within said compartment | The accused caddy's compartments have a top opening through which a battery can be removed. | ¶41-42 | col. 2:6-7 |
| and wherein a user can at least partially remove a battery through said end opening by pushing the battery with the finger moved through the open area | The accused caddy is designed so a user can push a battery out of the top opening by applying force with a finger through the bottom opening. | ¶41-42 | col. 5:30-34 |
’252 Patent Infringement Allegations
The complaint alleges that the "RadCad caddy," when combined with batteries, includes every element of claims 1 and 24 (Compl. ¶57, ¶60). Exhibit 16 is again cited as providing annotated photographs corresponding to the claim elements (Compl. ¶58, ¶61).
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| In combination, a battery holding and dispensing apparatus... and a plurality of batteries | The accused caddy is combined with batteries by the end-user, creating the infringing combination. | ¶57 | col. 11:50-51 |
| a first frame composed of molded plastic... including a plurality of compartments | The accused caddy is a molded plastic frame with multiple compartments. | ¶57-58 | col. 5:15-16 |
| each said surrounding sidewall sized to have a length along said respective compartment centerline that is equal to or greater than a length of a corresponding battery | The compartments of the accused caddy are allegedly long enough to fully contain the batteries. | ¶57-58 | col. 12:4-8 |
| a plurality of detents, one detent protruding into a respective open end of each said compartment in order to retain a battery | The accused caddy allegedly has detents at the opening of its compartments to hold batteries in place. | ¶57-58 | col. 7:4-10 |
| each detent resiliently displaceable from the respective open end to allow removal of the battery... each detent being... formed in unitary fashion with the first frame | The detents on the accused caddy are allegedly flexible, allowing a battery to be pushed past them, and are molded as one piece with the frame. | ¶57-58 | col. 7:15-19 |
- Identified Points of Contention:
- Scope Questions: The asserted claims of the ’252 patent are combination claims requiring both the caddy and the batteries. The complaint alleges indirect infringement. This raises the question of whether selling the caddy with instructions for use constitutes inducement or contributory infringement, as the complete combination is only formed by the end-user.
- Technical Questions: The infringement analysis will depend on whether the accused product's retention mechanism meets the specific functional and structural requirements of the claimed "detent" ('252 Patent) or the "open area" allowing a push-through action ('648 Patent). A key factual question is whether the accused product's retention tabs operate as the "resiliently displaceable" detents claimed, or if there is a material difference in their mechanical function.
V. Key Claim Terms for Construction
Term: "detent" (’252 Patent, Claim 1)
- Context and Importance: This term is the central retaining feature in the '252 Patent. Its construction is critical because it will define the scope of structures that can meet this limitation, directly impacting the infringement analysis. Practitioners may focus on this term because the accused product's specific retaining tab structure will be compared against the scope of this word.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification suggests alternatives, stating that "bumps extending into the compartment... or resilient compartment walls, can be used to releasably retain a battery" (’252 Patent, col. 2:19-24). This language may support a construction that is not limited to a specific shape but covers any resilient feature that performs the retaining function.
- Evidence for a Narrower Interpretation: The preferred embodiments depict specific structures, such as a cantilevered hook formed within a slot opening (Fig. 4) or a closed opening (Fig. 6) (’252 Patent, col. 7:4-15). This could support a narrower construction limited to these more complex, hook-like structures rather than a simple protrusion.
Term: "open area exposing a bottom portion of a battery" (’648 Patent, Claim 12)
- Context and Importance: This limitation defines the core push-through dispensing mechanism. The size, shape, and accessibility of this "open area" will be a focal point of the infringement analysis.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The summary of the invention describes the feature broadly, stating the compartment is open at least through "an edge portion of a bottom thereof, to permit contact of a user's thumb or finger" (’648 Patent, col. 2:64-65). This may support construing the term to cover any opening at the bottom sufficient for a finger to push the battery.
- Evidence for a Narrower Interpretation: The detailed description and figures show a specific design, describing an "irregular longitudinal edge 126" and openings like "44a" that are contiguous with the bottom (’648 Patent, col. 5:26-32; Fig. 3). This may support a narrower view tied to the specific cut-out shapes and recessed edge shown in the patent's drawings.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced and contributory infringement of the ’252 Patent. The inducement theory is based on Defendants allegedly providing "visual instructions" on combining the caddy with batteries, such as on product webpages, knowing this would cause infringement (Compl. ¶48). The contributory infringement theory alleges the RadCad caddy is a material part of the claimed invention, is not a staple article of commerce, and is known by Defendants to be especially made for an infringing use (Compl. ¶49).
- Willful Infringement: Willfulness is alleged for all three patents. The allegations are based on Defendants having pre-suit knowledge of the patents via notice letters dated October 16, 2019 ('648 and '252 patents) and November 6, 2019 ('218 patent) and their subsequent and continued sale of the accused products (Compl. ¶46, ¶68, ¶77, ¶84, ¶93, ¶99).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of indirect infringement liability: as the ’252 Patent claims a combination of the caddy and batteries, a key question for the court will be whether the plaintiff can prove that the defendants, by selling the caddy component with instructions and marketing materials, actively induced end-users to form the complete infringing combination, thereby satisfying the requirements of 35 U.S.C. § 271(b).
- The case will also likely turn on a question of claim scope and technical operation: will the term "detent" in the ’252 Patent be construed broadly to encompass any resilient tab that retains a battery, as suggested by alternative embodiments in the specification, or will it be limited to the specific cantilevered hook structures detailed in the patent’s figures? The answer will determine whether the accused product's retaining mechanism literally infringes or if the dispute shifts to the doctrine of equivalents.