Handstands Promo LLC v. Remington Industries Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Handstands Promo, LLC (Utah)
  • Defendant: Remington Industries, Inc. (Tennessee)
  • Plaintiff’s Counsel: Luedeka Neely Group, P.C.
• Case Identification: 1:20-cv-00086, E.D. Tenn., 04/03/2020
• Venue Allegations: Venue is alleged to be proper as Defendant has a regular and established place of business in the district, conducts business in the district, and has committed alleged acts of infringement there.
• Core Dispute: Plaintiff alleges that Defendant’s frictional holding pad products infringe two utility patents and one design patent related to devices for securing items on vehicle dashboards.
• Technical Context: The technology concerns flexible, non-adhesive pads that use friction and surface properties to removably secure objects like cell phones to automotive interiors.
• Key Procedural History: The complaint alleges that Plaintiff’s commercial products are marked with the patents-in-suit, suggesting a basis for Defendant’s alleged pre-suit knowledge of the patents.

Case Timeline

Date	Event
2001-07-31	Priority Date for ’602 Patent
2001-07-31	Priority Date for ’867 Patent
2001-12-01	Alleged first use of Plaintiff's 'Pad Product Configuration' trademark
2006-10-24	’602 Patent Issued
2007-08-07	’867 Patent Issued
2011-01-10	Priority Date for ’396 Patent
2015-09-22	’396 Patent Issued
2020-04-03	Complaint Filing Date

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

U.S. Patent No. 7,125,602 - Frictional Holding Pad (Issued Oct. 24, 2006)

The Invention Explained

• Problem Addressed: The patent identifies the problem of conveniently securing personal items like cell phones and sunglasses within a vehicle during operation. Placing items on open surfaces risks them sliding and becoming damaged, while using conventional mounting hardware can be item-specific, create clutter, and permanently alter or devalue the vehicle’s interior (’602 Patent, col. 1:31-50, 2:1-12).
• The Patented Solution: The invention is a flexible frictional holding pad designed to be placed on a surface like a dashboard. The pad has a tacky bottom surface that clings to the dashboard without adhesives and a tacky top surface that holds an item. The top surface is contoured with protrusions and indentations, which reduces the contact area, while the bottom surface is smoother to increase its cling to the vehicle. This differential tackiness is intended to allow an item to be removed from the pad without dislodging the pad from the dashboard (’602 Patent, Abstract; col. 2:45-55).
• Technical Importance: The technology offered a non-permanent, reusable, and versatile solution for securing a wide range of objects in a vehicle, addressing the limitations of both simple placement and fixed mounting devices (’602 Patent, col. 1:11-17).

Key Claims at a Glance

• The complaint asserts independent Claim 1 (Compl. ¶29).
• Essential elements of Claim 1:
  • A combination of a frictional holding device with a vehicle dashboard or console.
  • The device is a pad with a top and a bottom.
  • The top surface is contoured over a majority of its area and includes protrusions or indentations.
  • The bottom surface is "smoother than the top surface" and frictionally clings to the vehicle.
  • An item (e.g., cell phone, sunglasses) is removably disposed on the top surface.

U.S. Patent No. 7,252,867 - Frictional Holding Pad (Issued Aug. 7, 2007)

The Invention Explained

• Problem Addressed: The patent addresses the same technical problem as the ’602 Patent: the need for a non-damaging, convenient, and reliable way to secure personal items inside a moving vehicle (’867 Patent, col. 1:26-51).
• The Patented Solution: The invention is a frictional holding pad with different top and bottom surfaces. The bottom surface frictionally clings to a vehicle surface, while the top surface, which features a contoured design with protrusions or indentations over a "substantial portion" of its area, removably holds an item. Unlike the asserted claim of the ’602 Patent, this patent’s asserted claim does not require a "smoother" bottom surface relative to the top surface, focusing instead on the contoured nature of both surfaces (’867 Patent, Abstract; col. 4:18-27).
• Technical Importance: This technology provides an alternative construction for a frictional pad that achieves a similar functional outcome without being limited to a specific smoothness relationship between its surfaces (’867 Patent, col. 1:13-17).

Key Claims at a Glance

• The complaint asserts independent Claim 1 (Compl. ¶43).
• Essential elements of Claim 1:
  • A combination of a frictional holding device with a vehicle dashboard or console.
  • The device is a pad with "different top and bottom surfaces."
  • The bottom surface frictionally clings to the vehicle.
  • "at least a substantial portion of the top surface is a contoured top surface" with protrusions or indentations.
  • An item is removably disposed on and frictionally clings to the top surface.

Multi-Patent Capsule: U.S. Patent No. D739,396 - Frictional Holding Pad with Inclined Grip (Issued Sep. 22, 2015)

Technology Synopsis

This design patent protects the ornamental appearance of a specific frictional holding pad design. The design consists of a generally rectangular pad with a textured, recessed central area for holding an item, surrounded by a raised peripheral border and two raised, angled grips or walls at the back intended to support an item in an upright position (’396 Patent, Fig. 1; Compl. ¶57).

Asserted Claims

The complaint asserts infringement of the patent’s single claim to the ornamental design shown in the drawings (Compl. ¶¶ 55, 58).

Accused Features

The complaint alleges that the overall ornamental design of the Defendant's "Smart Phone Dash Mount" product is substantially the same as the patented design (Compl. ¶¶ 21, 58).

III. The Accused Instrumentality

Product Identification

The complaint identifies two distinct accused instrumentalities:

1. The "Dash Pad," referred to as the "Accused Pad Product," is accused of infringing the ’602 and ’867 utility patents (Compl. ¶20).
2. The "Smart Phone Dash Mount," referred to as the "Accused Holder Product," is accused of infringing the ’396 design patent (Compl. ¶21).

Functionality and Market Context

• The Accused Pad Product is a flat, flexible pad with a textured top surface, marketed to be placed on a car dashboard to secure items like keys and phones without leaving residue (Compl. ¶20, and associated product image). The complaint includes a photograph showing the Accused Pad Product in its packaging, which describes it as a non-slip dash pad (Compl. p. 5).
• The Accused Holder Product is a pad with a textured surface and raised walls, marketed to secure a smart phone "flat or upright" (Compl. ¶21, and associated product image).
• The complaint alleges that Defendant’s products are sold through online retailers such as Amazon.com and in brick-and-mortar stores, and that Defendant had knowledge of Plaintiff’s patent-marked products due to their prominence on the shared Amazon.com sales channel (Compl. ¶¶ 19, 22).

IV. Analysis of Infringement Allegations

’602 Patent Infringement Allegations

The complaint alleges that the Accused Pad Product, when used by a consumer as intended on a vehicle dashboard, infringes at least Claim 1 of the ’602 Patent (Compl. ¶¶ 27-28). The infringement theory is based on the combination of the accused pad with a vehicle dashboard and an item, where the pad’s physical features—specifically its contoured top surface and its bottom surface that frictionally clings to the dash—are alleged to meet the claim limitations (Compl. ¶29). The complaint references an accompanying claim chart in "Exhibit 5," but this exhibit was not attached to the filed complaint (Compl. ¶30).

Identified Points of Contention

• Scope Questions: A central issue may be the construction of the term "smoother" in claim 1(e). The parties may dispute whether this is a visual characteristic, a tactile property, or a functional requirement tied to a specific coefficient of friction.
• Technical Questions: A key factual question for the court will be whether the bottom surface of the Accused Pad Product is demonstrably "smoother" than its textured top surface, as required by the claim. The complaint provides a clear image of the top surface but no evidence regarding the bottom surface's texture (Compl. p. 5).

’867 Patent Infringement Allegations

The complaint alleges that the Accused Pad Product also infringes at least Claim 1 of the ’867 Patent (Compl. ¶¶ 41-42). This infringement theory similarly relies on the product's intended use in a vehicle and its physical structure, focusing on its "different top and bottom surfaces" and its "contoured top surface" (Compl. ¶43). The complaint references an accompanying claim chart in "Exhibit 6," which was also not attached to the filed complaint (Compl. ¶44).

Identified Points of Contention

• Scope Questions: The construction of the term "at least a substantial portion" in claim 1(c) will likely be a point of dispute. The court will need to determine the threshold for how much of the top surface must be contoured to meet this limitation.
• Technical Questions: While the textured top surface is visible in the complaint's visual evidence, the allegation that the top and bottom surfaces are "different" raises a factual question that may require evidence beyond the provided images.

’396 Patent Infringement Allegations

For the design patent, the complaint provides a side-by-side visual comparison of Figure 1 of the ’396 Patent and a photograph of the Accused Holder Product (Compl. p. 14, ¶57). This image presents a direct comparison of the patented ornamental design and the accused product's appearance. The infringement allegation is based on the "ordinary observer" test, asserting that the resemblance between the two designs is so close as to deceive a potential purchaser (Compl. ¶58).

V. Key Claim Terms for Construction

Term: "smoother" (from ’602 Patent, Claim 1)

Context and Importance

This term is a critical limitation distinguishing the asserted claim of the ’602 Patent from that of the ’867 Patent. The infringement determination for claim 1(e) will hinge on the construction of this comparative term and the evidence presented to show the accused product meets it.

Intrinsic Evidence for Interpretation

• Evidence for a Broader Interpretation: The specification suggests the term could relate to appearance, stating the lower surface "can be smoother than the upper surface, or have a more shiny appearance" (’602 Patent, col. 4:17-19). This could support a construction based on visual or general tactile qualities.
• Evidence for a Narrower Interpretation: The specification also links this feature to function, stating a smoother bottom surface serves "to improve the tackiness or cling of the bottom surface" (’602 Patent, col. 2:52-55). This could support a narrower, functional construction tied to a measurable frictional property.

Term: "at least a substantial portion" (from ’867 Patent, Claim 1)

Context and Importance

Practitioners may focus on this term because it is a term of degree that lacks a precise numerical definition, making its construction critical to determining the scope of claim 1(c). Infringement depends on whether the area of the contoured surface on the accused product meets this ambiguous threshold.

Intrinsic Evidence for Interpretation

• Evidence for a Broader Interpretation: The term itself does not require a majority. A plaintiff might argue it means any amount that is not trivial and contributes meaningfully to the function of holding an item.
• Evidence for a Narrower Interpretation: The patent figures, such as Figure 1 and Figure 6, depict embodiments where the contoured, textured area covers nearly the entire usable surface of the pad (’867 Patent, Figs. 1, 6). A defendant may argue these embodiments limit "substantial portion" to mean a large majority of the top surface.

VI. Other Allegations

Indirect Infringement

The complaint alleges that Defendant induces infringement by providing packaging and/or manuals that instruct customers on how to use the accused products in an infringing manner (Compl. ¶¶ 34, 48). It also alleges contributory infringement, asserting that the products have features material to practicing the patents and lack substantial non-infringing uses (Compl. ¶¶ 36, 50).

Willful Infringement

The complaint alleges willful infringement based on Defendant's alleged pre-suit knowledge of the patents-in-suit. This knowledge is purportedly based on Plaintiff’s patent marking on its commercial products and the prominence of those products on shared e-commerce platforms like Amazon.com (Compl. ¶¶ 22, 33, 47). The complaint alleges that Defendant acted with objective recklessness despite knowing it was "highly likely" its actions constituted infringement (Compl. ¶¶ 39, 53, 60).

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

• A central issue for the utility patents will be one of claim construction and proof: can the term "smoother" in the ’602 Patent be defined and proven with respect to the accused product, and will the term "substantial portion" in the ’867 Patent be construed broadly enough to read on the accused device?
• For the design patent, the case will turn on a question of visual comparison: would an ordinary observer, applying the attention of a typical purchaser, find the ornamental design of the accused "Smart Phone Dash Mount" to be substantially the same as the design claimed in the ’396 Patent?
• A key evidentiary question for willfulness will be one of pre-suit knowledge: can Plaintiff establish that Defendant’s sale of similar products on the same online marketplace, combined with Plaintiff’s patent marking practices, is sufficient to prove that Defendant knew of the specific patents-in-suit and the high likelihood of infringement prior to the lawsuit?