DCT
2:18-cv-00238
Case Mate Inc v. Velvet Caviar Group Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Case-Mate, Inc. (Georgia)
- Defendant: Velvet Caviar Group, Inc. (New York)
- Plaintiff’s Counsel: Mueller Law Group
- Case Identification: 2:18-cv-00238, E.D.N.Y., 01/12/2018
- Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of New York because Defendant conducts substantial business in, sells products to, and targets consumers within the district.
- Core Dispute: Plaintiff alleges that Defendant’s smartphone cases infringe one utility patent and two design patents related to two-piece protective cases and specific ornamental designs for camera cut-outs.
- Technical Context: The lawsuit concerns the competitive market for smartphone accessories, where functional protection and aesthetic differentiation are key product attributes.
- Key Procedural History: The complaint alleges that Plaintiff has previously enforced the patents-in-suit against other parties, which may be raised to support allegations of Defendant's knowledge and willfulness.
Case Timeline
| Date | Event |
|---|---|
| 2011-11-30 | Earliest Priority Date ('547 and '550 Patents) |
| 2012-01-09 | Priority Date ('798 Patent) |
| 2014-04-14 | U.S. Patent 8,695,798 Issued |
| 2015-05-05 | U.S. Patent D728,547 Issued |
| 2015-05-05 | U.S. Patent D728,550 Issued |
| 2018-01-12 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,695,798 - "CASE FOR ELECTRONIC DEVICES," Issued April 14, 2014
The Invention Explained
- Problem Addressed: The patent addresses the need for protective and decorative cases for portable electronic devices like smartphones ('798 Patent, col. 1:13-24).
- The Patented Solution: The invention is a two-part case comprising a soft, flexible inner "bumper" that wraps around the device's perimeter and a rigid outer "shell" that covers the back. The two pieces are designed to mechanically interlock, with specific features like protrusions on the bumper fitting into corresponding cutouts on the shell, to form a secure, composite case ('798 Patent, Abstract; col. 6:46-56; Fig. 9). This allows the rigid outer shell to be interchangeable for customization without removing the protective inner bumper from the device ('798 Patent, col. 5:26-30).
- Technical Importance: The two-part construction provides both the shock-absorbing properties of a soft material and the structural rigidity and decorative potential of a hard outer shell, a common and commercially significant design paradigm in the protective case market ('798 Patent, col. 3:1-10).
Key Claims at a Glance
- The complaint asserts infringement of Independent Claim 1, and reserves the right to assert other claims (Compl. ¶71, ¶74).
- The essential elements of Independent Claim 1 include:
- A mobile device case with an inner layer and an outer layer.
- The inner layer is a "resilient rectangular-shaped flexible form-fit bumper" with four sides, an open center, a face surface, and a collar.
- The face surface has "one or more inwardly-directed lips" and "one or more outwardly-extending ledges."
- The bumper includes "one or more raised protrusions" that extend from the collar to the ledges.
- The outer layer is a "form-fit hard shell" that interfaces with the bumper, having a base and side walls.
- The shell's side walls have "one or more cutouts configured for receiving the one or more raised protrusions of the bumper."
U.S. Design Patent No. D728,547 - "Electronic Device Case with an Asymmetric Housing Cut-Out," Issued May 5, 2015
The Invention Explained
- Problem Addressed: Design patents protect the ornamental appearance of an article of manufacture, not its utility. The patent addresses the creation of a new, original, and non-obvious ornamental design for an electronic device case.
- The Patented Solution: The invention is the specific visual appearance of the electronic device case as depicted in the patent's figures ('547 Patent, Figs. 1-7). The title highlights a key feature: an "Asymmetric Housing Cut-Out," referring to the shape of the aperture for the device's camera ('547 Patent, Title). The claim covers only the elements shown in solid lines in the drawings ('547 Patent, Description).
- Technical Importance: In the crowded smartphone case market, a distinctive ornamental design can be a significant source of product differentiation and brand identity.
Key Claims at a Glance
- Design patents contain a single claim. The asserted claim is for "The ornamental design for an electronic device case with an asymmetric housing cut-out, substantially as shown and described" (Compl. ¶82; '547 Patent, Claim).
U.S. Design Patent No. D728,550 - "Electronic Device Case with Cut-Out Having Asymmetric Corners," Issued May 5, 2015
- Technology Synopsis: This design patent protects the ornamental appearance of an electronic device case. The claimed design is defined by the solid lines in the patent figures and, as suggested by the title, features a camera cut-out with corners of differing shapes or radii ('550 Patent, Title, Fig. 6).
- Asserted Claims: The single design claim is asserted (Compl. ¶82).
- Accused Features: The overall aesthetic of the "Accused Products – Group 2" is alleged to be confusingly similar to the patented design (Compl. ¶82).
III. The Accused Instrumentality
Product Identification
- The complaint identifies two groups of accused products:
- Group 1: "Glitter Dual Cases," "Dual Glitter Case," "Glitter Cases," "Wine Please Cases," "Holo Hearts Case," and "Glitter Waterfall Cases," which are accused of infringing the '798 Patent (Compl. ¶39).
- Group 2: "Flakes Dual Cases," which are accused of infringing the '798, '547, and '550 Patents (Compl. ¶44).
Functionality and Market Context
- The complaint alleges that the accused products feature a two-part design with an "interchangeable hard shell and a soft bumper" (Compl. ¶39, ¶44). The "Flakes Dual Cases" are additionally described as having an "asymmetrical opening on the back" (Compl. ¶44). Defendant allegedly sells these products directly through its website and through third-party retailers such as Urban Outfitters (Compl. ¶22, ¶24, ¶46).
IV. Analysis of Infringement Allegations
The complaint’s infringement theory for the '798 Patent centers on the accused products having the specific two-part, interlocking structure recited in Claim 1. For the '547 and '550 Patents, the theory relies on the "ordinary observer" test, alleging that the accused products are so visually similar to the patented designs as to cause confusion (Compl. ¶54, ¶82).
The complaint provides a photograph from Exhibit H, page 2, showing the separate inner bumper and outer shell of an accused product (Compl. ¶74(a)).
'798 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an inner layer and an outer layer | The accused cases are comprised of an inner layer (soft bumper) and an outer layer (hard shell). | ¶74(b) | col. 3:1-4 |
| wherein the inner layer comprises a resilient rectangular-shaped flexible form-fit bumper comprising four sides and an open center... | The inner layer is alleged to be a resilient, rectangular, flexible bumper with four sides and an open center. | ¶74(c) | col. 3:10-17 |
| wherein the face surface comprises one or more inwardly-directed lips and one or more outwardly-extending ledges | The bumper's face surface is alleged to include these lip and ledge features. | ¶74(d) | col. 3:30-48 |
| the bumper further comprising one or more raised protrusions extending from the collar to the one or more ledges | The complaint alleges the bumper includes raised protrusions extending from its collar to the ledges. A photograph from Exhibit J, page 8, depicts the protrusions on the bumper of an accused product (Compl. ¶74(d)). | ¶74(d) | col. 6:49-51 |
| wherein the outer layer comprises a form-fit hard shell that interfaces and conforms with the inner layer bumper | The outer layer is alleged to be a hard shell that conforms to the inner bumper. | ¶74(e) | col. 4:5-12 |
| and wherein the side walls comprise one or more cutouts configured for receiving the one or more raised protrusions of the bumper | The hard shell's side walls allegedly have cutouts designed to receive the bumper's protrusions, an interaction shown in a photograph from Exhibit J, page 8 (Compl. ¶74(e)). | ¶74(e) | col. 6:51-56 |
Identified Points of Contention
- Structural Questions ('798 Patent): The infringement analysis may turn on whether the accused products meet the specific structural limitations of Claim 1. Key questions could include:
- Do the accused bumpers have both "inwardly-directed lips" and "outwardly-extending ledges," as opposed to a different configuration for securing the device and interfacing with the shell?
- Do the accused products feature "raised protrusions" that extend "from the collar to the one or more ledges" in the specific arrangement claimed, or is there a structural or functional difference?
- Visual Similarity ('547 & '550 Patents): For the design patents, the dispute is whether an ordinary observer, familiar with the prior art, would find the overall ornamental appearance of the accused "Flakes Dual Cases" to be substantially the same as the patented designs. The analysis will focus on the visual impression created by the claimed features, such as the asymmetrical camera cut-out. The complaint points to screenshots, like those in Exhibit I, to support this comparison (Compl. ¶44).
V. Key Claim Terms for Construction
For the '798 Patent, the construction of several structural terms in Claim 1 may be central to the dispute.
The Term: "raised protrusions"
Context and Importance: This term defines a key element of the interlocking mechanism between the bumper and shell. The existence, location, and character of these features will be critical to infringement. Practitioners may focus on this term because Defendant could argue that its products use a different mechanism (e.g., a friction fit or different interlocking elements) that does not meet this limitation.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the function as aligning with cutouts to secure the two parts, without strictly limiting the shape, suggesting any raised feature serving this purpose could qualify ('798 Patent, col. 4:21-24).
- Evidence for a Narrower Interpretation: The specification states that the protrusions are positioned on the collar and "abut[] the ledge" ('798 Patent, col. 6:20-21). The drawings show a specific shape and placement (e.g., Fig. 15A, element 53), which could be used to argue for a more limited definition.
The Term: "outwardly-extending ledges"
Context and Importance: This feature is part of the claimed "undercut geometry" of the bumper that interfaces with the outer shell. Its precise definition is necessary to determine the scope of the claim.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term is described as part of the face surface, forming a "continuous ledge" ('798 Patent, col. 3:45-50), which could be read broadly to cover various ridge-like structures.
- Evidence for a Narrower Interpretation: The specification describes a specific functional relationship where the ledges "align over the distal end of the one or more side walls" of the outer shell ('798 Patent, col. 3:52-54). This functional interaction could be argued to narrow the term to only those ledges that perform this specific seating function.
VI. Other Allegations
- Indirect Infringement: The complaint makes conclusory allegations of indirect infringement for all three patents but does not plead specific facts to support the knowledge and intent elements required for induced infringement, nor does it identify a non-staple component for contributory infringement (Compl. ¶38, ¶41, ¶43).
- Willful Infringement: The complaint alleges willful infringement for all patents based on both constructive and actual knowledge. It alleges constructive notice from the patents' issue dates and claims Defendant had actual knowledge (Compl. ¶55, ¶60, ¶65, ¶76, ¶86). The willfulness claim is further supported by allegations that Defendant engaged in "slavish copying" and was likely aware of Plaintiff's "prior enforcement efforts" against other parties (Compl. ¶36, ¶57, ¶62).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this case may depend on the court's findings on the following key questions:
Structural Correspondence: For the '798 utility patent, a central issue will be whether the accused products embody the precise, multi-element structural configuration required by Claim 1, including the specific relationship between the "raised protrusions", the "collar", and the "outwardly-extending ledges".
Visual Identity: For the '547 and '550 design patents, the case will turn on the "ordinary observer" test. Is the overall ornamental design of the accused cases, particularly the camera aperture, substantially the same as the patented designs, or are the differences sufficient to avoid confusion?
Willfulness and Knowledge: A key evidentiary question will be whether Plaintiff can substantiate its claim that Defendant had pre-suit knowledge of the patents, either directly or by inference from Plaintiff’s alleged history of enforcement, which would be critical to the claim for enhanced damages.