DCT
2:24-cv-04524
Speculative Product Design LLC v. Patel
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Speculative Product Design, LLC (California)
- Defendant: Rohan Vishnubhai Patel and Rvp1986 LLC (Pennsylvania)
- Plaintiff’s Counsel: Hill, Kertscher & Wharton, LLP
- Case Identification: 2:24-cv-04524, N.D. Ga., 10/16/2023
- Venue Allegations: Venue is asserted in the Northern District of Georgia because the defendants' counsel, a Georgia attorney, sent the infringement demand letter that gave rise to the dispute from a Georgia address.
- Core Dispute: Plaintiff seeks a declaratory judgment that its "Presidio2" line of protective cases does not infringe U.S. Patent No. 11,673,516, and that the patent is invalid.
- Technical Context: The technology concerns protective cases for electronic devices, like smartphones, that use slits in a rigid frame to provide flexibility for installation without sacrificing protective integrity.
- Key Procedural History: The action was filed in response to a September 27, 2023 demand letter from Defendants accusing Plaintiff's products of infringement. A central part of Plaintiff's case is an invalidity challenge based on an alleged improper claim to priority; Plaintiff argues the patent is not entitled to the filing date of its parent application, making Plaintiff's own products, launched before the patent's effective filing date, invalidating prior art.
Case Timeline
| Date | Event |
|---|---|
| 2019-06-06 | Earliest Priority Date ('970 Application filing) |
| 2019-11-15 | Provisional Application ('666) filing date |
| 2020-05-14 | Accused "Presidio2 PRO Case" first available on Amazon.com |
| 2020-06-24 | ’516 Patent Application filing date |
| 2023-06-13 | ’516 Patent issue date |
| 2023-09-27 | Defendants send infringement demand letter to Plaintiff |
| 2023-10-16 | Complaint for Declaratory Judgment filed |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 11,673,516, “Protective Frame,” issued June 13, 2023. (Compl. ¶3).
The Invention Explained
- Problem Addressed: The patent addresses the conflict between protective cases made of soft, flexible materials that are easy to install but offer poor protection, and cases made of hard, rigid materials that offer superior protection but are difficult to install a device into. (’516 Patent, col. 1:45-54). The specification identifies a "need of a protective case that allows ease of insertion of a device while providing high grade protection to the edges of the device." (’516 Patent, col. 1:59-62).
- The Patented Solution: The invention is a protective frame made from a rigid or semi-rigid material that incorporates at least one "slit" at or near a corner. (’516 Patent, col. 3:32-40). This slit provides localized flexibility, allowing the rigid "protruding lip" of the case to bend just enough for a device to be inserted, after which it returns to its rigid state to secure the device. (’516 Patent, Abstract; col. 8:39-43).
- Technical Importance: This approach seeks to provide the market with a "best of both worlds" solution, combining the robust protection of a hard-shell case with the user-friendly installation of a soft case. (’516 Patent, col. 1:45-62).
Key Claims at a Glance
- The demand letter received by Plaintiff asserted infringement of independent claims 1 and 9, and dependent claims 2 and 14. (Compl. ¶5).
- Independent Claim 1 recites a protective case comprising:
- a base surface, an edge surface, a protruding lip, and at least one slit
- the base, edge, and lip made of a "rigid material"
- the slit located near a corner and configured to "flex the at least one protruding lip enough to enable insertion of the electronic device"
- an "edge of the at least one protruding lip" having "at least two curvatures," where "at least one of the at least two curvatures secures each of at least two opposite corners" of the device
- Independent Claim 9 is similar to claim 1, also reciting a case with a base, edge, lip, and slit made of a "rigid material," and a lip with "at least two curvatures" that "secures each of at least two opposite corners." It adds a limitation where an edge of the lip "protrudes inward of an inner contacting surface attached to the at least one edge surface."
- The complaint seeks a declaratory judgment of non-infringement of all claims of the ’516 Patent. (Compl. ¶32.A).
III. The Accused Instrumentality
- Product Identification: The accused products are Plaintiff's "Presidio2 product" line of protective cases, with the "Presidio2 PRO Case" for iPhones being specifically identified. (Compl. ¶5, 19).
- Functionality and Market Context:
- The Presidio2 products are described as protective cases for cellular phones and tablets. (Compl. ¶2).
- Plaintiff alleges the Presidio2 line is its "flagship smartphone case product line." (Compl. ¶27).
- The complaint includes a visual from Defendants' demand letter showing a cross-section of a "Presidio2 Grip Case." (Compl. p. 4). This visual, supplied by Defendants, annotates a "protruding lip" and an "inner softer surface." (Compl. ¶6, p. 4). Plaintiff contends this evidence is insufficient and highlights features, like a "softer surface," not recited in the claims. (Compl. ¶7).
IV. Analysis of Infringement Allegations
As this is a complaint for declaratory judgment of non-infringement, the following summarizes Plaintiff's arguments against infringement based on the allegations in the complaint.
’516 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality (per Plaintiff) | Complaint Citation | Patent Citation |
|---|---|---|---|
| wherein an edge of the at least one protruding lip ... features at least two curvatures, wherein at least one of the at least two curvatures secures each of at least two opposite corners ... respectively | Plaintiff argues this limitation is not met because the curvatures on the accused Presidio2 products "do not each secure two separate corners—let alone opposite corners—of the case." | ¶14 | col. 8:46-52 |
| wherein the base surface, the at least one edge surface, and the at least one protruding lip are made of a rigid material | Plaintiff argues that Defendants' own evidence from the demand letter, which highlights a "softer surface," fails to address this limitation and suggests a potential mismatch with the "rigid material" requirement of the claim. | ¶6, 7 | col. 8:36-38 |
Identified Points of Contention
- Scope Questions: The complaint's primary non-infringement argument raises the question of whether the phrase "secures each of at least two opposite corners" requires a single, continuous curvature to physically engage and secure two opposite corners of a device simultaneously. (Compl. ¶14).
- Technical Questions: What evidence exists to show that the accused Presidio2 cases are made of a "rigid material" as required by the claims? The complaint points to Defendants' own evidence identifying a "softer surface" to suggest a fundamental mismatch in material properties between the claims and the accused products. (Compl. ¶6-7, p. 4).
V. Key Claim Terms for Construction
The Term: "secures each of at least two opposite corners"
- Context and Importance: Plaintiff's entire non-infringement argument in Count I is based on the assertion that its products do not meet this limitation. (Compl. ¶14). Its construction is therefore central to the infringement analysis. Practitioners may focus on this term because its grammatical structure could be interpreted in multiple ways.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A patentee might argue that the phrase does not require a single curvature to secure two corners at once, but rather that the "edge of the...lip" as a whole contains multiple curvatures, and the set of those curvatures collectively secures the opposite corners of the device. The specification's general statement that "The lip 125 secures a device to the protective frame 100" could support this functional, less structurally-constrained reading. (’516 Patent, col. 3:61-62).
- Evidence for a Narrower Interpretation: Plaintiff's argument implies a reading where "at least one of the...curvatures" is the subject that must perform the action ("secures") on the object ("each of at least two opposite corners"). This interpretation, focusing on a single feature acting on multiple, opposite points, forms the basis of the argument in the complaint. (Compl. ¶14).
The Term: "rigid material"
- Context and Importance: This term is critical because Plaintiff uses Defendants' own demand letter evidence, which points to a "softer surface" in the accused product, to suggest non-infringement. (Compl. ¶6-7, p. 4). The case may turn on whether the material of the Presidio2 case qualifies as "rigid."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states the material can be "semi-rigid" and provides a list of "non-stretchable" materials. (’516 Patent, col. 1:42, col. 3:24-25). A defendant could argue that a composite product containing softer elements can still be functionally "rigid" overall.
- Evidence for a Narrower Interpretation: The patent explicitly contrasts its invention with "soft protective cases" that offer "low grade protection." (’516 Patent, col. 1:47-49). This language may support construing "rigid material" to exclude materials with the characteristics of a "softer surface" as identified in the visual evidence from the demand letter. (Compl. p. 4).
VI. Other Allegations
- Invalidity: Plaintiff asserts a declaratory judgment claim that the ’516 Patent is invalid under 35 U.S.C. §§ 101, 102, 103, and/or 112. (Compl. ¶16). The primary theory is anticipation under § 102. Plaintiff alleges that the patent is a continuation-in-part that added new matter not present in its parent application and is therefore not entitled to the parent's 2019 priority date. (Compl. ¶17-18). Plaintiff argues the patent's effective filing date is its own filing date of June 24, 2020. (Compl. ¶18). Because Plaintiff's accused Presidio2 products were allegedly on the market as of May 14, 2020, Plaintiff contends that its own products constitute invalidating prior art that anticipates the patent's claims. (Compl. ¶19, 21).
- Violation of Georgia's Fair Business Practices Act: Plaintiff brings a state law claim alleging that Defendants' demand letter was sent in bad faith because it lacked detailed factual support, accused a product that is prior art to the patent, and made unreasonable demands. (Compl. ¶23, 25, 27).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central threshold question will be one of priority date entitlement: Is the ’516 Patent entitled to its parent application's 2019 priority date, or did the addition of new matter, as Plaintiff alleges, reset its effective filing date to June 2020, potentially rendering it invalid in view of Plaintiff's own prior product sales?
- Should the case proceed to infringement, a core issue will be one of definitional scope: Can the claim phrase "secures each of at least two opposite corners" be construed to require a single curvature to simultaneously secure two opposing corners, a high bar for infringement, or does it carry a broader functional meaning?
- Finally, a key evidentiary question will be one of material composition: Does the accused Presidio2 product, which Defendants' own evidence allegedly identifies as having a "softer surface," meet the "rigid material" limitation required by the asserted claims, or is there a fundamental factual mismatch?