DCT
1:23-cv-02267
Quest USA Corp v. Flygrip Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Quest USA Corp. (New York)
- Defendant: Flygrip Inc. (Texas) and Michael Karmatz (New York)
- Plaintiff’s Counsel: Squire Patton Boggs (US) LLP
- Case Identification: 1:23-cv-02267, E.D.N.Y., 03/23/2023
- Venue Allegations: Venue is alleged to be proper as Defendant Flygrip has a regular and established place of business in the district and Defendant Michael Karmatz is a resident of the district.
- Core Dispute: Plaintiff seeks a declaratory judgment that its SPINPOP and 4TERRA products do not infringe Defendants' patent related to collapsible grips for handheld electronic devices.
- Technical Context: The technology concerns adhesive-mounted, collapsible grips for smartphones and other portable devices, designed to improve one-handed use and stability.
- Key Procedural History: This declaratory judgment action follows prior infringement lawsuits filed by Defendant Flygrip against Plaintiff's customers, Five Below, Inc. and Walmart Inc., in the Western District of Texas. In those cases, Flygrip accused the same Quest products (SPINPOP and 4TERRA) of infringing the patent-in-suit. Quest USA, the manufacturer, was not named as a party in the Texas actions but now seeks to resolve the infringement dispute directly.
Case Timeline
| Date | Event |
|---|---|
| 2010-08-19 | '024 Patent Priority Date |
| 2020-10-13 | '024 Patent Issue Date |
| 2021-10-18 | Flygrip files suit against Five Below, Inc. in W.D. Tex. |
| 2021-10-18 | Flygrip files suit against Walmart Inc. in W.D. Tex. |
| 2023-01-23 | Flygrip files motion to include 4TERRA product in prior litigation |
| 2023-03-23 | Quest USA files current Declaratory Judgment Complaint |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,800,024 - “Compacting Grip for Handheld Devices”
The Invention Explained
- Problem Addressed: The patent describes the difficulty of securely gripping modern, large, bar-shaped handheld devices like smartphones with one hand. Conventional gripping methods limit the user's thumb range of motion, making it hard to access the entire touchscreen or physical buttons without compromising grip security, which can lead to dropping the device ('024 Patent, col. 1:40-67).
- The Patented Solution: The invention is an apparatus, such as a collapsible grip, that attaches to the back of a handheld device. It provides a space for a user's fingers to slide between the grip and the device, allowing for a secure hold that frees the thumb for a greater range of motion across the device's screen ('024 Patent, col. 2:13-20; Fig. 4). The grip can be moved between a collapsed, low-profile position and an extended, open position for use ('024 Patent, col. 5:11-13, col. 6:7-12).
- Technical Importance: This approach allows users to securely operate increasingly large touchscreen devices with a single hand, a significant usability challenge as device sizes grew.
Key Claims at a Glance
- The complaint specifically references limitations from independent claim 2 in its non-infringement contentions (Compl. ¶30).
- Independent Claim 2 (as corrected) elements:
- A collapsing and expanding one hand gripping apparatus fastened to or built into the back of a handheld device or its case.
- A base fastened to or built into the back of the handheld device or its case.
- An extension that extends perpendicularly from the base, consisting essentially of a "single piece conical telescoping flexible tubular structure" with graduated sections that "flex and/or fold over and into one-another."
- The extension is movable between a collapsed and an extended position.
- A disc-shaped grip mounted on the end of the extension.
- In the collapsed position, the apparatus lies flat to the handheld device.
- The complaint seeks a declaration of non-infringement as to any claim of the '024 Patent (Compl. ¶28).
III. The Accused Instrumentality
Product Identification
- The SPINPOP and 4TERRA products (Compl. ¶13).
Functionality and Market Context
- The complaint describes these products as "collapsible and expandable devices designed to be mounted on mobile phones or similar products" (Compl. ¶13).
- Quest USA markets and sells these products through its own website and through major retailers like Five Below, Inc. and Walmart Inc., establishing their commercial presence (Compl. ¶13). The complaint does not contain technical descriptions or exhibits detailing the products' specific construction or operation.
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint seeks a declaratory judgment of non-infringement. The following table summarizes the infringement theory that Plaintiff Quest USA is countering, based on Flygrip's allegations in prior litigation as described in the complaint.
'024 Patent Infringement Allegations
| Claim Element (from Independent Claim 2) | Alleged Infringing Functionality (as countered by Quest) | Complaint Citation | Patent Citation |
|---|---|---|---|
| an extension extends perpendicular from the base consisting essentially of a single piece conical telescoping flexible tubular structure, consisting essentially of a plurality of graduated sections... | The complaint indicates Defendants allege the accordion-like, expandable body of the SPINPOP and 4TERRA products meets this limitation. | ¶13, ¶27 | col. 9:12-16 |
| that flex and/or fold over and into one-another... | Quest explicitly denies that its products include a structure with this functionality, forming a central basis for its non-infringement claim. | ¶30 | col. 9:17-18 |
| the extension movable between a collapsed, closed position and an extended, open position... | The accused products are described as "collapsible and expandable," suggesting they operate between at least two such positions. | ¶13 | col. 9:19-20 |
| the apparatus in the collapsed position lies flat to the handheld device. | The accused products are understood to collapse to a low-profile state against the back of a phone. | ¶13 | col. 9:27-28 |
- Identified Points of Contention:
- Scope Questions: A central dispute will be the interpretation of the phrase "flex and/or fold over and into one-another." Does this require a distinct bending or folding motion separate from the primary telescoping or collapsing action? The complaint suggests Quest will argue its products only telescope or collapse axially without any separate "flexing" or "folding over" motion (Compl. ¶30).
- Technical Questions: What is the precise mechanical action of the SPINPOP and 4TERRA products when they collapse? The court will require evidence on whether their structure, often an elastomeric accordion-style bellows, performs an action that can be characterized as "flexing and/or folding over" in addition to collapsing.
V. Key Claim Terms for Construction
- The Term: "a single piece conical telescoping flexible tubular structure ... that flex and/or fold over and into one-another"
- Context and Importance: This term is the lynchpin of the non-infringement argument presented in the complaint (Compl. ¶30). The definition of this structural and functional limitation will likely determine the outcome of the infringement analysis, as Quest's primary defense is that its products lack a component with these specific characteristics.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party arguing for a broader scope may point to the specification's description of various movable structures, including a simple "spring 123" ('024 Patent, col. 6:12) or "a series of telescopic pieces 124 that expand/collapse together" ('024 Patent, col. 6:37-39). They might argue that "flex and/or fold" should not be read narrowly to require a distinct hinge-like motion but can describe the general deformation of a flexible material as it collapses.
- Evidence for a Narrower Interpretation: A party arguing for a narrower scope will likely emphasize the plain meaning of "flex and/or fold over," suggesting it requires a specific, non-axial motion distinct from simple telescoping or compression. Quest's pleading explicitly singles out this language, suggesting it views the action of its products as different from what is claimed (Compl. ¶30). The patent does not appear to contain figures explicitly showing a structure that both telescopes and "folds over," which may support an argument that the terms describe separate or more complex actions not present in the accused products.
VI. Other Allegations
- Indirect Infringement: The complaint seeks a declaration that Quest has not induced or contributorily infringed the '024 Patent (Compl., Prayer for Relief ¶a). However, the factual allegations in the body of the complaint focus on arguments for non-infringement based on product structure, rather than on addressing elements of knowledge or intent related to indirect infringement (Compl. ¶¶28-30).
- Willful Infringement: Willful infringement is not alleged against Quest in this complaint. Instead, Quest asks the court for a declaration that this case is "exceptional" under 35 U.S.C. § 285 and seeks an award of attorney fees, suggesting Quest may argue that Defendants' pursuit of infringement claims is baseless or otherwise constitutes litigation misconduct (Compl., Prayer for Relief ¶d, ¶e).
VII. Analyst’s Conclusion: Key Questions for the Case
This declaratory judgment action appears poised to center on the following core questions for the court:
- A core issue will be one of claim construction: How should the court define the limitation "a single piece conical telescoping flexible tubular structure... that flex and/or fold over and into one-another"? Specifically, does the phrase "flex and/or fold over" require a distinct motion beyond the axial compression and expansion inherent in a telescoping or accordion-like structure?
- A key evidentiary question will be one of technical operation: Assuming a construction is reached, does the evidence show that the accused SPINPOP and 4TERRA products, in fact, operate in a way that meets the "flex and/or fold over" limitation? The case will likely depend on expert testimony and technical evidence comparing the precise mechanics of the accused products to the language of the claim.