DCT

1:18-cv-08729

Dareltech LLC v. Xiaomi Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:18-cv-08729, S.D.N.Y., 01/18/2019
  • Venue Allegations: Venue is alleged based on Defendant operating a business in Manhattan, committing acts of infringement in the district through offers for sale on its U.S. website and at a New York promotional event, and certain defendants being foreign entities.
  • Core Dispute: Plaintiff alleges that Defendant’s "selfie stick" products infringe four patents related to handheld supports for mobile devices that enable remote camera operation.
  • Technical Context: The technology addresses accessories for mobile phones that improve the ergonomics and convenience of photography by providing a dedicated handle and remote shutter controls.
  • Key Procedural History: Plaintiff alleges it provided Defendant with notice of the patents-in-suit via a letter on August 27, 2018. Subsequent to the complaint's filing, an Inter Partes Review (IPR) proceeding (IPR2020-00483) resulted in the cancellation of the sole asserted claim of the '627 patent. Additionally, the owner of the '716 patent filed a terminal disclaimer for several claims not asserted in this litigation.

Case Timeline

Date Event
2012-11-28 Earliest Priority Date for all Patents-in-Suit
2015-05-19 U.S. Patent No. 9,037,128 Issued
2015-06-09 U.S. Patent No. 9,055,144 Issued
2016-11-22 U.S. Patent No. 9,503,627 Issued
2017-02-14 U.S. Patent No. 9,571,716 Issued
2018-08-27 Dareltech sends notice letter to Xiaomi
2018-09-12 Xiaomi acknowledges receipt of notice letter
2018-12-07 Accused product offers for sale at New York event
2019-01-18 Complaint Filed
2019-06-10 Disclaimer filed for unasserted claims of '716 Patent
2020-02-03 IPR petition filed against '627 Patent
2023-09-13 IPR Certificate issues, cancelling asserted claim of '627 Patent

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

U.S. Patent No. 9,037,128 - "Handle for Handheld Terminal", Issued May 19, 2015

The Invention Explained

  • Problem Addressed: The patent's background identifies that standard mobile phones are not optimized for photography, resulting in "inconvenient operation, such as poor gripping, and by poor shooting effects," which makes one-handed photography difficult ('128 Patent, col. 1:35-43).
  • The Patented Solution: The invention is a handle apparatus that physically secures a mobile phone and includes integrated electronic controls. The handle provides a dedicated grip and uses a wireless interface to send commands from its own buttons to the phone's camera, thereby mimicking the functionality and feel of a traditional camera ('128 Patent, Abstract; col. 2:30-35). This solution aims to transform the phone into a device that can be held and operated securely with one hand for photography ('128 Patent, col. 3:9-15).
  • Technical Importance: The invention addresses an ergonomic and operational deficiency in multi-purpose mobile devices by creating a dedicated accessory that improves stability and simplifies the act of taking a photo ('128 Patent, col. 1:38-43).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶28).
  • Essential elements of Claim 1 include:
    • A handle.
    • A "coupler" to "releasably affix" the handle to a mobile phone's housing.
    • A power supply module with batteries.
    • A "wireless interface module" for remote control of camera features.
    • A "user-operated command key" (e.g., camera, video, or zoom key).
    • A "key module" to send a command to the phone via the wireless interface, enabling the user to operate the key with the same hand that is holding the device.

U.S. Patent No. 9,055,144 - "Handle for Handheld Terminal", Issued June 9, 2015

The Invention Explained

  • Problem Addressed: Like its related patent, the '144 Patent addresses the challenge of taking stable photos or videos with one hand on a mobile phone due to "poor gripping" and "inconvenient operation" ('144 Patent, col. 1:25-30).
  • The Patented Solution: This invention specifies a particular mechanical means for gripping the phone: a "sliding mechanism" coupled with "one or more springs". When the mechanism is expanded to accept the phone, the springs apply force to hold the device securely in place, while a wireless interface allows for remote camera control from buttons on the handle ('144 Patent, col. 4:15-38, Claim 1).
  • Technical Importance: This patent focuses on a specific, adaptable mechanical solution—a spring-loaded clamp—for securely attaching the handle to handheld terminals of potentially varying sizes ('144 Patent, col. 4:18-25).

Key Claims at a Glance

  • The complaint asserts independent claims 1 and 14 (Compl. ¶36).
  • Essential elements of Claim 1 include:
    • A first interface module, key module, and power supply module.
    • A "base handle module" comprising a handle, a "sliding mechanism", and "one or more springs" coupled to the sliding mechanism.
    • The handle couples to the terminal via the sliding mechanism, and the springs apply a force to hold the terminal in place.
    • The base handle connects wirelessly to the terminal and can be held and operated with one hand.

U.S. Patent No. 9,503,627 - "Handle for Handheld Terminal", Issued November 22, 2016

Technology Synopsis

This patent describes a handheld device for operating a mobile phone camera, comprising a "spring-loaded holder" and a handle apparatus. The claims focus on the combination of a physical button on the handle, a wireless interface module to transmit commands, and a "moveable end" on the holder that uses springs to secure the mobile phone, enabling stable, one-handed remote operation ('627 Patent, Abstract; col. 4:26-52).

Asserted Claims

Claim 29 (Compl. ¶44). This claim was cancelled in IPR proceeding IPR2020-00483, as reflected in the patent's IPR certificate issued September 13, 2023 ('627 Patent, IPR Certificate p. 2).

Accused Features

The complaint alleges that the general structure of the "Xiaomi Selfie Stick" products, including their phone holder and wireless remote functionality, infringes this patent (Compl. ¶44-45).

U.S. Patent No. 9,571,716 - "Handle for Handheld Terminal", Issued February 14, 2017

Technology Synopsis

This patent claims a device for holding a mobile phone that includes a "telescoping segment" allowing the handle's length to be extended. The invention combines this extendable physical structure with a Bluetooth interface, command keys on the handle for one-handed operation, and an anti-slip grip ('716 Patent, Abstract; col. 7:25-47, Claim 1).

Asserted Claims

Claims 1 and 11 (Compl. ¶52).

Accused Features

The "Xiaomi Selfie Stick" products are alleged to infringe by embodying a telescoping handle with remote Bluetooth camera control capabilities (Compl. ¶52-53).

III. The Accused Instrumentality

Product Identification

The accused products include the "Xiaomi Selfie Stick Tripod," also marketed as the "Xiaomi Selfie Stick" and "Xiaomi Selfie Stick Self-Portrait Monopod Extendable Stick" (Compl. ¶20).

Functionality and Market Context

The accused products are described as "extendable sticks that grip a smartphone" and use Bluetooth to connect to the phone (Compl. ¶20). The complaint alleges the products include a "coupler" to hold the phone, as depicted in a product image showing a clamp mechanism (Compl. p. 8, Figure 2). A key alleged feature is a "removable Bluetooth remote control" with a command key, which can be detached from the handle or operated while docked on the handle (Compl. p. 8-9). An image in the complaint shows this detachable remote (Compl. p. 9, Figure 3). The complaint alleges these products are offered for sale on Xiaomi's U.S. website and other online retailers (Compl. ¶10).

IV. Analysis of Infringement Allegations

'128 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a coupler that couples the handle of the handheld device to a housing of the mobile phone wherein the coupler is configured to releasably affix the handheld device to the housing of the mobile phone The accused product has a clamp-style coupler that holds a mobile phone, as shown in a product image provided in the complaint (p. 8, Figure 2). ¶28 col. 4:26-32
a wireless interface module configured to provide the wireless connection to the mobile phone...configured to provide remote control of camera features... The product includes a "removable Bluetooth remote control" with a wireless interface module for connecting to the phone to control its camera. ¶28 col. 4:36-41
a user-operated command key comprising at least one selected from a camera key, video key, or zoom key... The remote control includes a "user-operated command key" alleged to function as a camera, video, or zoom key. ¶28 col. 4:42-46
a key module configured to...send an indication of the selection to the mobile phone...such that the mobile phone can be held via the handheld device with one hand and such that the one hand can operate [the] command key while the one hand is also holding the handheld device The product's key module in the remote control sends a signal to the phone, and the complaint includes a photograph illustrating that a user can hold the stick and operate the docked remote with one hand (p. 10, Figure 4). ¶28 col. 4:47-59

Identified Points of Contention ('128 Patent)

  • Scope Questions: A question for the court may be whether the accused product's "removable" remote control satisfies the claim limitation requiring that the user "operate [the] command key while the one hand is also holding the handheld device." The defense may argue this language implies a permanently integrated key, whereas the Plaintiff may point to complaint Figure 4, which depicts the remote docked on the handle during one-handed use.
  • Technical Questions: Does the single button on the accused product's remote perform the function of a "camera key, video key, or zoom key" as required? The complaint alleges this functionality but does not provide technical documentation or other evidence to show that the single button can be configured to perform these distinct operations.

'144 Patent Infringement Allegations

The complaint does not provide sufficient detail for a comparative analysis of the specific mechanical elements of asserted claims 1 and 14 of the '144 patent. The infringement count is general and does not map the accused product's features to the claimed "sliding mechanism" or "springs" (Compl. ¶36).

Identified Points of Contention ('144 Patent)

  • Technical Questions: A primary question will be evidentiary: does the accused product's gripping mechanism (referred to as a "coupler" in the complaint) meet the specific claim limitations of a "sliding mechanism" and "one or more springs" that apply force? The complaint's allegations lack the specificity to resolve this, suggesting it will be a point of dispute requiring expert testimony and product teardowns.

V. Key Claim Terms for Construction

The Term: "coupler" ('128 Patent, Claim 1)

  • Context and Importance: This term's construction is critical because it defines the scope of the gripping mechanism. Its interpretation relative to the more specific "sliding mechanism" in the '144 patent will be a key point of differentiation. Practitioners may focus on this term to determine if the accused product's clamp falls within the scope of the broader '128 patent claims.
  • Intrinsic Evidence for a Broader Interpretation: The specification states that "a handle for a handheld terminal includes a...base handle module. The handle couples with the handheld terminal" ('128 Patent, col. 1:47-51). This general use of "couples" could support an interpretation covering any means of joining the handle to the phone.
  • Intrinsic Evidence for a Narrower Interpretation: The specification also describes a specific embodiment as a "transformable chuck" with a "slot sliding plate, buttons, magnets and springs" ('128 Patent, col. 2:47-50). A party could argue that the term "coupler" should be understood in light of this more complex disclosed embodiment.

The Term: "such that the one hand can operate [the] user-operated command key while the one hand is also holding the handheld device" ('128 Patent, Claim 1)

  • Context and Importance: The construction of this functional language is central to the infringement analysis of the accused product's removable remote. The dispute will concern whether a detachable component, even when docked, can satisfy this limitation.
  • Intrinsic Evidence for a Broader Interpretation: An argument for a broad interpretation would focus on capability—if the product is configured such that one-handed operation is possible, as depicted in the complaint's own visuals (Compl. p. 10, Figure 4), the limitation is met, irrespective of the remote's detachability.
  • Intrinsic Evidence for a Narrower Interpretation: The patent's figures exclusively depict handles with integrated buttons (e.g., '128 Patent, Fig. 2). This could support an argument that the claim requires the command key to be a non-removable, permanent part of the handle being held.

VI. Other Allegations

Indirect Infringement

The complaint alleges inducement of infringement for all asserted patents. The factual basis for this allegation is that Xiaomi provides "instructions, manuals, and technical assistance" that allegedly direct and encourage end-users to operate the accused products in a manner that infringes the patents' claims (Compl. ¶29, ¶37, ¶45, ¶53).

Willful Infringement

Willfulness is alleged based on pre-suit knowledge. The complaint asserts that Dareltech sent a letter to Xiaomi on August 27, 2018, identifying the patents and the alleged infringement, and that Xiaomi continued its infringing activities after receiving this notice (Compl. ¶24, ¶31).

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

  • A core issue will be one of claim scope versus product design: can the claim language of the '128 patent, which appears to contemplate an integrated device, be construed to read on an accused product that features a functionally critical removable remote control? The interpretation of the "one hand" operational language will be central to this dispute.
  • A second key question will be evidentiary sufficiency: for patents like the '144 patent that recite specific mechanical elements such as a "sliding mechanism" and "springs," can the Plaintiff produce sufficient evidence to prove the accused product's clamp mechanism meets these detailed limitations, especially given the lack of specific allegations on this point in the complaint?
  • Finally, a dispositive legal question will be the impact of the IPR proceeding: given that the sole asserted claim of the '627 patent was cancelled post-filing, the court will have to address whether the count for infringement of that patent is now moot, potentially narrowing the scope of the case.