DCT
1:20-cv-00870
Swissdigital USA Co Ltd v. Avon Lifes
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Swissdigital USA Co., Ltd. (Delaware)
- Defendant: Avon Lifestyle Pvt. Ltd. (India) and Naina Parekh (India)
- Plaintiff’s Counsel: Keyhani LLC
- Case Identification: 1:20-cv-00870, W.D.N.Y., 07/10/2020
- Venue Allegations: Plaintiff alleges venue is proper based on Defendant Avon’s sales and offers for sale of the accused products within the United States, including within the Western District of New York.
- Core Dispute: Plaintiff, an exclusive licensee, alleges that Defendant’s backpacks with integrated USB charging functionality infringe its patent, while also seeking a declaratory judgment that its own massage-enabled backpacks do not infringe a separate patent owned by Defendant.
- Technical Context: The technology concerns the integration of external USB charging ports into bags and luggage, allowing users to charge electronic devices from an internal power bank without opening the bag.
- Key Procedural History: The complaint details pre-suit interactions where Defendant accused Plaintiff of infringing U.S. Patent No. 10,561,225 (’225 Patent) and threatened to contact Plaintiff's distributors. These interactions, which began with failed distribution partnership discussions in 2018, form the basis for Plaintiff's request for a declaratory judgment of non-infringement and invalidity of the '225 Patent. The complaint asserts Plaintiff is the exclusive licensee of the patent-in-suit with the right to sue for past damages.
Case Timeline
| Date | Event |
|---|---|
| 2014-11-18 | U.S. Patent No. 10,574,071 Priority Date |
| 2018-06-05 | U.S. Patent No. 10,561,225 Priority Date |
| 2018-11-01 | Pre-suit distribution discussions between parties (approximate date) |
| 2020-02-18 | U.S. Patent No. 10,561,225 Issue Date |
| 2020-02-25 | U.S. Patent No. 10,574,071 Issue Date |
| 2020-06-23 | Defendant allegedly accuses Plaintiff of infringing '225 Patent |
| 2020-07-09 | Defendant allegedly threatens to contact Plaintiff's distributors |
| 2020-07-10 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,574,071 - Bag or luggage with USB charging connector
- Patent Identification: U.S. Patent No. 10,574,071, Bag or luggage with USB charging connector, issued February 25, 2020.
The Invention Explained
- Problem Addressed: The patent addresses the inconvenience for travelers who must open their bag or luggage and remove a portable power source to charge their electronic devices (’071 Patent, col. 1:20-30).
- The Patented Solution: The invention is a bag or piece of luggage that integrates a USB extension cable into its body. A male connector on the inside connects to a power storage device, while a female connector is fixed at a "power cable outlet" on the bag's exterior, allowing a user to plug in and charge a device without opening the bag ('071 Patent, Abstract; col. 1:40-54). The external female connector is protected by a waterproof "sheath" ('071 Patent, col. 4:5-6).
- Technical Importance: This design provides a more convenient and reliable charging solution for users on the move by embedding the charging interface directly into the luggage's structure ('071 Patent, col. 2:26-33).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶28).
- Essential elements of Independent Claim 1 include:
- A bag or luggage body with an internal space for a power device and an external power cable outlet.
- A USB extension cable with a male connector (for inside the bag) and a female connector (for outside the bag) that has "four sides and an operative end."
- The female connector is "retained outside and adjacent to the power cable outlet" with one of its four sides in communication with the bag body.
- The "other three sides" of the female connector are covered by a "water proof sheath" that holds it in a "flat position" and is "above and covers the power cable outlet."
- The sheath "does not cover the operative end of the female connector," which is "exposed and fixedly attached" to the bag's exterior.
III. The Accused Instrumentality
Product Identification
- The complaint identifies the "EUME Barret Laptop Bag" and the "EUME Genx Massager Bag" as the "Accused Bags" (Compl. ¶25).
Functionality and Market Context
- The complaint alleges the Accused Bags "incorporate an integrated USB socket" (Compl. ¶28, ¶30). This feature includes an internal space for a power storage device, an external power outlet, and a USB extension cable that allows users to charge devices without opening the bag (Compl. ¶28-29). Defendant Avon allegedly sells these products in the U.S. through an Amazon Store and advertises them via U.S. media outlets (Compl. ¶24-25).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
U.S. Patent No. 10,574,071 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a bag or luggage body having a placing space for placing a power storage device inside the bag or luggage body and a power cable outlet on the outer surface of the bag or luggage body | The Accused Bags include a space for a power storage device inside and a power cable outlet on the outer surface. | ¶31 | col. 5:1-3 |
| a USB extension cable having a male connector and a female connector having four sides and an operative end | The Accused Bags include a USB extension cable with a male connector, and a female connector with four sides and an operative end. | ¶32 | col. 5:4-5 |
| wherein the male connector of the USB extension cable is inside the bag or luggage body and is used to connect to the power storage device in the placing space | The male connector of the USB extension cable is inside the Accused Bags and connects to the power storage device. | ¶33 | col. 5:5-7 |
| wherein the female connector is retained outside and adjacent to the power cable outlet with one side of the four sides of the female connector in communication with the bag or luggage body, and the other three sides of the female connector are covered by a water proof sheath that protects the female connector and provides it in a flat position and wherein the sheath is above and covers the power cable outlet | The female connector is retained outside, with three sides covered by a waterproof sheath that provides it in a flat position and covers the power cable outlet; the remaining side is in communication with the bag body. | ¶34 | col. 5:62-65; col. 6:1-3 |
| wherein the sheath does not cover the operative end of the female connector which is exposed and fixedly attached above the exterior of the bag such that the operative end of the female connector does not need to be moved and the bag or luggage body does not need to be opened to accept a charging interface of a product to be charged | The operative end of the female connector is exposed, not covered by the sheath, and is fixedly attached to the bag's exterior, allowing charging without opening the bag. | ¶35 | col. 6:4-9 |
- Identified Points of Contention:
- Structural Questions: A central dispute may arise over the very specific structural limitations related to the "sheath." The complaint alleges the Accused Bags meet these limitations, but provides no visual or documentary evidence. The key factual questions will be whether the accused products actually have a "sheath" that (1) covers exactly "three sides" of the female connector, (2) leaves the fourth side "in communication with the bag," (3) provides the connector in a "flat position," and (4) is "above and covers the power cable outlet."
- Scope Questions: The interpretation of "sheath" will be critical. The question is whether any integrated port housing can be considered a "sheath" or if the patent requires a distinct component as arguably depicted in its figures.
V. Key Claim Terms for Construction
The Term: "sheath"
Context and Importance: This term appears in multiple limitations of the asserted independent claim and recites a highly specific geometric and functional arrangement for the external female connector. The infringement analysis will likely turn on whether the accused product's USB port housing can be characterized as the claimed "sheath."
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the sheath's purpose as "water proofing" ('071 Patent, col. 4:5-6), which may support an argument that any structure providing this function, regardless of its specific form, could be considered a "sheath."
- Evidence for a Narrower Interpretation: The patent figures depict the "sheath (3)" as a distinct element wrapped around the "female connector (2-2)" ('071 Patent, Fig. 2; col. 3:3). This depiction may support an argument that the term requires a separate component and does not read on a unibody or integrated port housing.
The Term: "operative end"
Context and Importance: The claim requires that the sheath "does not cover the operative end." Defining the boundaries of the "operative end" is necessary to determine if the accused device's structure meets this negative limitation. Practitioners may focus on this term because its scope dictates what part of the external connector must remain exposed.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue the term has its plain and ordinary meaning, referring simply to the functional opening of the USB port where a connection is made.
- Evidence for a Narrower Interpretation: The detailed description explicitly refers to the "operative end (16)" as "the end of the female connector that receives the male connector" ('071 Patent, col. 4:44-46). The use of a specific reference number, even if not used in the claim itself, suggests the patentee may have intended a precise definition that could be limited to the structure shown in the patent's figures.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement, stating that Defendant encourages infringement by selling the Accused Bags and providing instructions and marketing materials on their use (Compl. ¶36-37). It also pleads contributory infringement, alleging the Accused Bags are not suitable for substantial non-infringing use (Compl. ¶42).
- Willful Infringement: Willfulness is alleged based on Defendant having "full knowledge, or willful blindness to knowledge, of the ‘071 Patent" (Compl. ¶44). The complaint alleges Defendant had "actual notice of infringement prior to the filing of this action" and knowledge of the patent since its issue date of February 25, 2020 (Compl. ¶39). However, the complaint does not specify the basis for this alleged "actual notice" regarding the '071 patent.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of structural correspondence: Does the physical construction of the accused bags' "integrated USB socket" meet the highly detailed and specific claim limitations of a "sheath" covering exactly "three sides" of a female connector, or is there a fundamental mismatch between the patent's narrow claims and the accused product's design? The absence of visual evidence in the complaint makes this the central open question.
- A key evidentiary question will concern willfulness: The complaint alleges pre-suit knowledge and "actual notice" of the '071 patent, but the factual narrative only describes communications related to the Defendants' own '225 patent. The case will therefore question what evidence supports the claim that Defendant was aware of the specific patent-in-suit and its alleged infringement prior to the lawsuit, a necessary predicate for establishing willful infringement.