Noble Security Inc v. ACCO Brands Corp

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Noble Security, Inc. (Texas) and Meir Avganim (Israel/New Jersey)
  • Defendant: ACCO Brands Corporation (Illinois)
  • Plaintiff’s Counsel: Ostrolenk Faber LLP
• Case Identification: 1:16-cv-09129, S.D.N.Y., 01/06/2017
• Venue Allegations: Plaintiff alleges venue is proper based on Defendant's residence status, transaction of business, and commission of tortious acts within the Southern District of New York.
• Core Dispute: Plaintiffs allege that Defendant’s computer security locks and components, sold under its Kensington brand, infringe patents related to a miniaturized, trapezoidal security slot and the corresponding locks designed for it.
• Technical Context: The lawsuit arises from a shift in computer hardware design toward thinner devices, which created a need for security slots smaller than the long-standing "Kensington Slot" standard.
• Key Procedural History: The complaint alleges that Plaintiff Avganim, the inventor, has granted a license to co-Plaintiff Noble Security to make and sell products covered by the patents-in-suit. It also alleges that several major OEMs, including Dell and HP, have adopted the patented "Noble Slot," creating a market that Defendant is now allegedly infringing upon.

Case Timeline

Date	Event
2012-01-12	’476 Patent Priority Date
2012-08-23	’911 Patent Priority Date
2015-09-15	’911 Patent Issue Date
2017-01-06	Complaint Filing Date
2017-01-17	’476 Patent Issue Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 9,137,911 - Computer Security Lock for Trapezoidal Security Slot (issued Sep. 15, 2015)

The Invention Explained

• Problem Addressed: The patent’s background section identifies drawbacks with prior art T-bar locking mechanisms used in standard rectangular security slots, noting that the need for the T-bar to rotate behind the device wall can cause interference with internal components, an increasing problem as electronic devices become thinner (Compl. ¶12-13; ’911 Patent, col. 1:49-53).
• The Patented Solution: The invention is a lock designed for a security slot that is trapezoidal in cross-section, meaning it is wider inside the device than at its opening. The lock features a primary locking element shaped to fit the opening, and a separate "slidable locking pin" that is subsequently moved into the cavity alongside the primary element. This pin fills the remaining space, and because the internal cavity is wider than the opening, the combined elements cannot be withdrawn, thus securing the lock without requiring a rotating part (’911 Patent, Abstract; col. 4:56-65).
• Technical Importance: This non-rotating locking mechanism enables the use of smaller, more robust security slots in extremely low-profile devices like modern laptops and tablets, where internal space is at a premium (Compl. ¶14, ¶16).

Key Claims at a Glance

• The complaint asserts infringement of "one or more" claims without specifying which ones (Compl. ¶37). Independent claim 1 is representative and includes the following essential elements:
  • A lock body.
  • A locking element protruding from the body, with a forward section wider than its rear section, that is insertable into a cavity with an interior that tapers to become larger than its opening.
  • A slidable locking pin configured to slide alongside the locking element to "substantially fill a space" inside the cavity.
  • A sliding mechanism to move the locking pin.
  • A locking mechanism to secure the pin and prevent withdrawal of the locking element.
• The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 9,549,476 - Computer Security Lock for Trapezoidal Security Slot (issued Jan. 17, 2017)

The Invention Explained

• Problem Addressed: As a continuation of the application leading to the ’911 Patent, this patent addresses the same technical problem: the inadequacy of prior art security slots for increasingly thin electronic devices (’476 Patent, col. 1:23-31; Compl. ¶12-13).
• The Patented Solution: While the ’911 Patent focuses on the lock itself, the ’476 Patent claims the other side of the interface: the portable electronic device featuring the specific security cavity. The invention is the device itself, characterized by a lock cavity having an opening and an interior defined by angled or flared walls, such that the cavity's internal dimensions are larger than the opening, creating a trapezoidal cross-section (’476 Patent, Abstract; col. 8:36-50).
• Technical Importance: This patent defines the physical specifications for the security slot, enabling device manufacturers (OEMs) to incorporate a standardized, miniaturized security feature compatible with the new lock design (Compl. ¶17).

Key Claims at a Glance

• The complaint asserts infringement of "one or more" claims (Compl. ¶37). Independent claim 1 is representative and claims a portable electronic device comprising:
  • A device body with at least one exterior wall.
  • A lock cavity accessible from the exterior wall, defined by an upper edge, lower edge, and side edges.
  • The cavity is further defined by internal walls, including side walls that are "angled relative to each other with a separation distance between them gradually increasing in a direction into said lock cavity," making the interior larger than the opening.
• The complaint does not explicitly reserve the right to assert dependent claims.

III. The Accused Instrumentality

• Product Identification: The accused instrumentalities are "lock and lock components" and "devices and systems being marketed and sold by Kensington" (Compl. ¶29).
• Functionality and Market Context: The complaint alleges that Defendant’s Kensington division, a long-standing leader in the computer lock market for the traditional "Kensington Slot," is now marketing locks designed for use with the patented "Noble Slot" (Compl. ¶25, ¶30). The complaint includes a description of photographic evidence in "Exhibits E and F," which purportedly show the accused Kensington products (Compl. ¶29). For example, the complaint's reference to Exhibit F describes a photograph showing a device marketed by Kensington that allegedly infringes the patents-in-suit (Compl. ¶29). Plaintiffs allege that Defendant’s marketing materials direct users to assemble these components in a way that infringes the asserted patents (Compl. ¶30).

IV. Analysis of Infringement Allegations

’911 Patent Infringement Allegations

The complaint does not contain a formal claim chart. The following table synthesizes the allegations against the elements of independent claim 1 of the ’911 Patent.

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
a lock body;	The assembled Kensington device, as depicted in photographs referenced as Exhibits E and F, allegedly constitutes a lock body.	¶29	col. 2:5-7
a locking element protruding from the lock body and having a forward distal section that is comparatively wider in cross-sectional size compared to a rear section thereof...	The lock components sold by Kensington are alleged to include a protruding element designed to be inserted into the Noble Slot.	¶29	col. 4:26-30
a slidable locking pin configured to slide alongside the locking element and into said cavity... to substantially fill a space of said cavity left unoccupied...	The component systems sold by Kensington are alleged to include a separate pin, which marketing materials allegedly direct users to assemble and slide into the Noble Slot alongside the locking element.	¶29, ¶30	col. 4:15-18
a sliding mechanism coupled to said locking pin...; and a locking mechanism to lock said locking pin within said lock body...	The assembled Kensington product allegedly contains mechanisms to slide and lock the pin, thereby securing the device.	¶29	col. 2:19-23

• Identified Points of Contention:
  • Scope Questions: The infringement theory appears to depend on the assembly of multiple "lock components" sold by Kensington (Compl. ¶29). A question for the court may be whether the combination of these separate components, as sold, meets the "lock body" and integrated "locking element" limitations of the claim.
  • Technical Questions: The complaint relies on photographs (Exhibits E and F) to show infringement but provides limited technical detail on how the accused lock operates. A central evidentiary question will be whether the accused Kensington device functions with a "slidable locking pin" that "substantially fill[s] a space" in the manner required by the claim, or if it operates via a different technical principle.

’476 Patent Infringement Allegations

The complaint alleges that "Kensington acts" infringe the ’476 Patent, which claims a "portable electronic device" containing a specific type of security slot (Compl. ¶37). The accused products, however, are identified as "lock and lock components" (Compl. ¶29). A lock cannot directly infringe a claim to a portable electronic device.

The plaintiff's theory appears to be one of indirect infringement, as referenced in the complaint's request for relief from acts of inducement and contributory infringement (Compl. ¶38). The allegation that Kensington's marketing materials "specifically refer to the Noble Slot" may be intended to establish that Kensington sells its locks with the specific intent that customers use them with devices (e.g., from Dell or HP) that contain the patented cavity, thereby inducing infringement of the ’476 Patent (Compl. ¶17, ¶30).

V. Key Claim Terms for Construction

• The Term: "substantially fill a space" (’911 Patent, Claim 1)

• Context and Importance: This term is critical because the degree to which the accused "slidable locking pin" fills the cavity will determine infringement. The defendant may argue its product leaves a significant gap and thus does not "substantially fill" the space, while the plaintiff will likely argue the term only requires filling enough space to achieve the locking function.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification describes the functional outcome of this action as allowing the pin to "engage the side wall 54 of the cavity 52," which may not require a complete or near-complete fill, but only sufficient contact to prevent withdrawal (’911 Patent, col. 4:62-64).
  • Evidence for a Narrower Interpretation: The patent states that the "tighter the grasp of the locking mechanism" is, the more force is exerted on the pin, suggesting a snug fit is intended (’911 Patent, col. 4:65). The abstract also uses the phrase "substantially fill a space," which could imply that a significant portion of the unoccupied volume is filled.

• The Term: "locking element" (’911 Patent, Claim 1)

• Context and Importance: The claim recites a single "locking element" and a "slidable locking pin." If Kensington's product is a kit of parts, the defense may argue its components do not correspond to the claimed integrated structure. Practitioners may focus on whether the term "locking element" can read on one part of a multi-part assembly sold for user assembly.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The patent’s focus is on the final, assembled state and function. A court could find that a kit of parts intended to be assembled into the claimed configuration meets the limitation.
  • Evidence for a Narrower Interpretation: The figures, such as Figure 7, depict the locking element (60) and the lock body (72) as a pre-assembled unit into which the pin (70) slides. This could support an interpretation that requires the "locking element" to be integrated with the "lock body" prior to the final locking step.

VI. Other Allegations

• Indirect Infringement: The complaint alleges inducement and contributory infringement, stating that Defendant's marketing materials "specifically refer to the Noble Slot, and direct users to assemble devices that infringe upon the Avganim IP Rights" (Compl. ¶30, ¶38). This allegation is central to the infringement claim against the ’476 patent.
• Willful Infringement: The prayer for relief requests enhanced damages for willfulness (Compl., p. 11, ¶B). The factual basis alleged includes Kensington’s concern over its "long-standing dominant position" being threatened by the Noble Slot and its alleged attempts to obtain confidential information from Plaintiffs' partners, which may suggest knowledge of the competing technology and a motive to copy or design around it (Compl. ¶25, ¶32). The complaint does not, however, allege specific pre-suit knowledge of the patents themselves.

VII. Analyst’s Conclusion: Key Questions for the Case

1. Infringement Theory and Evidence: A primary issue is the mismatch between what is claimed and what is accused. For the ’911 patent, can Plaintiffs prove that Kensington's product, allegedly sold as components, is structurally and functionally equivalent to the integrated "lock" claimed? For the ’476 patent, the case will depend on whether Plaintiffs can prove the elements of indirect infringement—specifically, that Kensington marketed its locks with the specific intent to encourage infringement by owners of devices with the patented "Noble Slot."

2. Claim Construction: The dispute may hinge on the definition of key terms. A central question for the court will be one of definitional scope: does the phrase "substantially fill a space" require a near-perfect fit, or does it merely require filling enough volume to functionally secure the lock? The answer will likely determine whether the accused lock's mechanism falls within the scope of the claims.

3. Competition and Intent: The complaint frames the dispute in the context of a market shift, where Defendant's established standard is being challenged by Plaintiffs' new technology adopted by major OEMs. This narrative will likely be central to the willfulness allegations, raising the question of whether Defendant's actions constitute objective recklessness in the face of a known competitive patent risk or simply aggressive but legitimate competition in a changing market.