DCT
2:25-cv-00461
Rokform LLC A Delaware Corp v. Annex Products Pty Ltd An Australian Co
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Rokform LLC (Delaware); Rokform IP LLC (California)
- Defendant: Annex Products Pty. Ltd. (Australia)
- Plaintiff’s Counsel: Friedland Cianfrani LLP; Wilson Robertson & Vandeventer, P.C.
- Case Identification: 2:25-cv-00461, E.D. Tex., 05/02/2025
- Venue Allegations: Venue is asserted on the basis that the defendant is a foreign company not resident in the United States, pursuant to 28 U.S.C. § 1391(c)(3).
- Core Dispute: Plaintiff alleges that Defendant’s Quad Lock phone cases and compatible mounting systems infringe seven U.S. patents related to mechanical and magnetic mounting systems for handheld electronic devices.
- Technical Context: The technology concerns protective cases and mounts designed to securely attach mobile devices like smartphones to vehicles (bicycles, motorcycles, cars) and other surfaces.
- Key Procedural History: The complaint alleges a history of pre-suit interaction, including cease-and-desist letters sent by Plaintiff to Defendant in April and October 2017 regarding several of the patents-in-suit. It also alleges that Defendant cited Plaintiff’s patents in Information Disclosure Statements during the prosecution of its own patents, which may be relevant to the allegations of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2012-01-12 | Priority Date for ’151, ’774, ’871, ’670, ’956, and ’019 Patents |
| 2014-04-29 | U.S. Patent No. 8,708,151 issues |
| 2016-07-05 | U.S. Patent No. 9,383,774 issues |
| 2017-03-14 | U.S. Patent No. 9,592,871 issues |
| 2017-04-19 | Plaintiff sends cease-and-desist letter to Defendant regarding the ’774 and ’871 Patents |
| 2017-10-04 | Plaintiff sends letter to Defendant regarding an application that would issue as the ’670 Patent |
| 2018-10-30 | U.S. Patent No. 10,112,670 issues |
| 2020-11-24 | Priority Date for ’333 Patent |
| 2020-12-15 | U.S. Patent No. 10,864,956 issues |
| 2023-10-03 | U.S. Patent No. 11,775,019 issues |
| 2025-03-11 | U.S. Patent No. 12,250,333 issues |
| 2025-05-02 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,708,151 - CASE AND MOUNT SYSTEM FOR HANDHELD ELECTRONIC DEVICE
The Invention Explained
- Problem Addressed: The patent addresses the problem of protecting handheld electronic devices from damage due to being dropped or falling from an unsecured position, which can cause permanent damage and data loss (’151 Patent, col. 1:36-42).
- The Patented Solution: The invention provides a protection system comprising a shell (case) and a mount that can be selectively coupled together (’151 Patent, col. 2:4-14). The shell has a rear wall with an opening that defines a "shell interlock surface," and the mount has a corresponding "mount interlock surface." A portion of the mount passes through the shell’s opening to engage these surfaces, creating a secure attachment (’151 Patent, col. 4:31-44). This structure is illustrated in the patent’s figures, such as the exploded view in Figure 1.
- Technical Importance: This approach provides a dedicated mechanical locking mechanism integrated directly into a protective case, enabling quick and secure attachment of a device to various surfaces or vehicles.
Key Claims at a Glance
- The complaint asserts at least independent claim 15 (Compl. ¶35).
- Essential elements of claim 15 include:
- A protection system for a handheld electronic device.
- A shell comprising a rear wall and a side wall, with the rear wall comprising an opening defining at least one shell interlock surface.
- A bike mount having at least one mount interlock surface, configured to be mounted to a bicycle.
- The bike mount comprises a cap portion secured to a steerer tube of the bicycle.
- The mount comprises an arm portion extending between the cap portion and the mount interlock surface.
- The arm portion is rotatably adjustable relative to the cap portion.
- In use, a portion of the mount passes through the shell opening to engage the interlock surfaces and couple the shell to the mount.
- The complaint does not explicitly reserve the right to assert dependent claims for this patent.
U.S. Patent No. 9,383,774 - CASE AND MOUNT SYSTEM FOR HANDHELD ELECTRONIC DEVICE
The Invention Explained
- Problem Addressed: The patent addresses the same general problem as the ’151 Patent: providing a system to protect and securely mount handheld electronic devices (’774 Patent, col. 1:21-30).
- The Patented Solution: This invention refines the interlocking mechanism by defining a specific geometry of interacting tabs (’774 Patent, col. 2:48-67). The case has an attachment region with a periphery defining multiple "case tabs" separated by "access spaces." The mount has corresponding "mount tabs" that are passed through the access spaces and then rotated, causing the mount tabs to engage the case tabs and lock the system together (’774 Patent, col. 4:2-10). The interaction is depicted in figures such as Figure 2, which shows the case's attachment region.
- Technical Importance: This tab-based "twist-and-lock" design specifies a particular mechanical interface intended to provide a robust and reliable connection between the case and mount.
Key Claims at a Glance
- The complaint asserts at least independent claim 8 (Compl. ¶36).
- Essential elements of claim 8 include:
- A mountable case system for a handheld electronic device.
- A case with a rear portion comprising an attachment region, which defines an opening with a periphery.
- The periphery defines at least a first, second, third, and fourth case tab, separated by access spaces.
- A bike mount comprising an interlocking member, a cap portion, and an arm portion.
- The interlocking member comprises a first, second, third, and fourth mount tab.
- The cap portion is secured to a steerer tube of a bicycle.
- The arm portion extends between the cap portion and the mount interlock surface and is rotatably adjustable relative to the cap portion.
- In use, the mount tabs pass through the access spaces and, upon relative rotation, engage the case tabs to interlock the case with the mount.
- The complaint does not explicitly reserve the right to assert dependent claims for this patent.
U.S. Patent No. 9,592,871 - CASE AND MOUNT SYSTEM FOR HANDHELD ELECTRONIC DEVICE
Technology Synopsis
This patent discloses a mountable case system with a multi-tab interlocking mechanism similar to the ’774 Patent. A key feature is the addition of projections on the mount that are circumferentially offset from the mount tabs and align with the access spaces in the locked position, potentially to provide additional stability or tactile feedback (’871 Patent, col. 2:54-67).
Asserted Claims
At least independent claim 6 is asserted (Compl. ¶37).
Accused Features
The Quad Lock Case Product Line and mounts with a mounting base and interlocking member, such as the handlebar mount, are accused of infringement (Compl. ¶37).
U.S. Patent No. 10,112,670 - CASE AND MOUNT SYSTEM FOR HANDHELD ELECTRONIC DEVICE
Technology Synopsis
This patent describes a mountable case system focusing on the interaction between projections on the mount and the case tabs. The projections define a "stop surface" configured to contact the case tabs when the case is moved toward a removal direction, providing resistance against unintentional unlocking (’670 Patent, col. 13:17-24).
Asserted Claims
At least independent claim 1 is asserted (Compl. ¶38).
Accused Features
The Quad Lock Case Product Line and mounts with a mounting base and interlocking member, such as the handlebar mount, are accused of infringement (Compl. ¶38).
U.S. Patent No. 10,864,956 - CASE AND MOUNT SYSTEM FOR HANDHELD ELECTRONIC DEVICE
Technology Synopsis
This patent claims a mountable case system for a mobile phone where the mount is composed of a "mount piece" and a "mount attachment piece." The system includes a simplified two-tab interlocking mechanism and a rotatably coupled arm portion that extends between the two pieces of the mount (’956 Patent, col. 13:12-25).
Asserted Claims
At least independent claim 6 is asserted (Compl. ¶39).
Accused Features
The Quad Lock Case Product Line and mounts with a mount piece and mount attachment piece, such as the stem cap mount adjustable, are accused of infringement (Compl. ¶39).
U.S. Patent No. 11,775,019 - CASE AND MOUNT SYSTEM FOR HANDHELD ELECTRONIC DEVICE
Technology Synopsis
This patent discloses a mountable case with a focus on magnetic features. The invention includes a case with a unitary rear wall and sidewall structure, and an "exterior-facing member" that is removably received in the rear wall. This member has an indentation containing at least one magnet, which is fully enclosed by the member and the case wall (’019 Patent, col. 14:1-9).
Asserted Claims
At least independent claim 9 is asserted (Compl. ¶40).
Accused Features
The Quad Lock MAG Case Product Line is accused of infringement (Compl. ¶40).
U.S. Patent No. 12,250,333 - ELECTRONIC DEVICE MOUNT
Technology Synopsis
This patent claims a case for a handheld electronic device that includes a shell with an "annular ring magnet" embedded within its rear exterior wall. A key limitation is that the annular ring magnet has a thickness that is less than or equal to about 5.0mm (’333 Patent, col. 14:7-14).
Asserted Claims
At least independent claim 1 is asserted (Compl. ¶41).
Accused Features
The Quad Lock MAG Case Product Line is accused of infringement (Compl. ¶41).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are the "Quad Lock Case Product Line," the "Quad Lock MAG Case Product Line," and various compatible "Quad Lock mounts" (Compl. ¶6). Specific examples cited include iPhone MAG cases, the stem cap mount adjustable, and the handlebar mount (Compl. ¶35-38).
Functionality and Market Context
- The complaint alleges that Defendant sells cases and mounts both individually and in kits (Compl. ¶22). The accused system functions by mechanically securing a phone case to a mount via a twist-lock mechanism (Compl. ¶32, Ex. I). An instructional diagram shows a user positioning a case over a mount at a 45° angle and twisting it to lock (Compl. p. 10). The MAG cases are alleged to additionally include magnetic features (Compl. ¶40). Plaintiff identifies Defendant as one of its "closest competitors" in the market for handheld electronic device accessories for vehicles and recreational settings (Compl. ¶21).
IV. Analysis of Infringement Allegations
’151 Patent Infringement Allegations
| Claim Element (from Independent Claim 15) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a shell comprising a rear wall and a side wall...the rear wall comprising an opening extending through the second surface, the opening defining at least one shell interlock surface | The Quad Lock iPhone MAG case includes a shell with a rear wall and side wall, and an opening in the rear wall that defines a shell interlock surface. | ¶44 | col. 4:31-38 |
| a bike mount that, in use, is mounted to a component of a bicycle | The Quad Lock stem cap mount adjustable is a bike mount used on bicycles. | ¶44 | col. 4:45-47 |
| wherein the bike mount comprises a cap portion that, in use, is secured to a steerer tube of the bicycle | The stem cap mount includes a cap portion that is secured to a bicycle's steerer tube. | ¶44 | col. 4:51-53 |
| wherein the mount comprises an arm portion that extends between the cap portion and the at least one mount interlock surface | The stem cap mount has an arm portion extending between its cap and interlock surface. | ¶44 | col. 4:54-56 |
| wherein the arm portion is rotatably adjustable relative to the cap portion | The arm portion of the stem cap mount is rotatably adjustable relative to its cap portion. | ¶44 | col. 4:57-58 |
| wherein, in use, a portion of the mount is passed through the opening of the shell and the at least one shell interlock surface is engaged with the at least one mount interlock surface to selectively couple the shell to the mount | A portion of the Quad Lock mount passes through the case's opening to engage the interlock surfaces and couple the two parts. This is depicted in a screenshot showing the case being attached to a bike mount (Compl. p. 13). | ¶44 | col. 4:39-44 |
- Identified Points of Contention:
- Scope Questions: The analysis may focus on whether the specific structure of the accused "stem cap mount adjustable" meets the detailed limitations of a "bike mount" as claimed, including the "cap portion," "steerer tube" connection, and the "rotatably adjustable" arm. The Defendant may argue that its product, while functionally similar, is structurally distinct from the specific embodiment claimed.
- Technical Questions: A key question will be the precise nature of the "rotatable adjustability" of the accused mount's arm. The parties may dispute whether the type and degree of rotation offered by the accused product is the same as that required by the claim when read in light of the patent's specification.
’774 Patent Infringement Allegations
| Claim Element (from Independent Claim 8) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a case...comprising a rear portion that is positioned along a rear surface of the electronic device and a side portion extending from the rear portion | The Quad Lock iPhone MAG case has a rear portion and a side portion configured to hold an electronic device. | ¶60 | col. 2:51-56 |
| wherein the rear portion of the case comprises an attachment region defining an opening having a periphery, wherein the periphery of the opening defines at least a first case tab, a second case tab, a third case tab and a fourth case tab | The rear of the accused case has an attachment region with an opening whose periphery defines four distinct case tabs. A product photo shows this opening (Compl. p. 17). | ¶60 | col. 4:3-6 |
| a bike mount comprising (1) an interlocking member comprising a first mount tab, a second mount tab, a third mount tab and a fourth mount tab | The accused stem cap mount adjustable is a bike mount with an interlocking member that comprises four corresponding mount tabs. | ¶60 | col. 4:11-14 |
| (2) a cap portion that, in use, is secured to a steerer tube of the bicycle | The stem cap mount includes a cap portion secured to a bicycle's steerer tube. | ¶60 | col. 4:48-50 |
| (3) an arm portion that extends between the cap portion and the at least one mount interlock surface, wherein the arm portion is rotatably adjustable relative to the cap portion | The stem cap mount has a rotatably adjustable arm portion extending between the cap and the interlock surface. | ¶60 | col. 4:51-54 |
| wherein, in use, the mount tabs are passed through a respective one of the access spaces and wherein, upon relative rotation...the mount tabs engage the case tabs to removably interlock the case with the mount | The mount tabs of the accused product pass through spaces in the case opening and engage the case tabs upon rotation to create a lock. Screenshots from a video depict this interlocking action (Compl. p. 18). | ¶60 | col. 4:30-36 |
- Identified Points of Contention:
- Scope Questions: A central dispute may be whether the indentations and protrusions on the accused Quad Lock case's locking interface constitute four distinct "case tabs" as that term is used in the patent. The definition of "tab" and its application to the accused product's geometry will be critical.
- Technical Questions: Evidence will be needed to establish that the accused mount's interlocking member contains four discrete structures that function as the claimed "mount tabs." The analysis will question whether the accused product achieves its lock through a continuous surface or through the interaction of distinct, enumerated tabs as required by the claim.
V. Key Claim Terms for Construction
The Term: "rotatably adjustable" (’151 Patent, Claim 15; ’774 Patent, Claim 8)
Context and Importance: This term defines a key functional capability of the claimed bike mount's arm portion. Its construction will determine whether the specific type of adjustability in the accused Quad Lock mounts (e.g., a pivot or swivel) falls within the scope of the claims. Practitioners may focus on this term because adjustability is a primary feature for positioning a device for a user on a bicycle.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself does not specify an axis or type of rotation, which may suggest that any form of rotational adjustment is covered.
- Evidence for a Narrower Interpretation: The specification describes the arm portion as being "rotatably coupled to the mount piece...by a pivot assembly" (’774 Patent, col. 12:7-9). Figure 11 of the patents shows a single-axis pivot. This could support an interpretation that limits "rotatably adjustable" to the specific pivoting mechanism disclosed in the embodiments.
The Term: "case tab" (’774 Patent, Claim 8)
Context and Importance: The claim explicitly requires four "case tabs." The infringement allegation hinges on whether the geometry of the accused Quad Lock case's receiving interface can be characterized as having four distinct tabs. If "tab" is construed narrowly, it may not read on the accused product's structure.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the tabs as "equally spaced radial lobes or tabs" (’774 Patent, col. 7:23-24), which could be argued to cover any series of protruding lobes that perform the interlocking function.
- Evidence for a Narrower Interpretation: Figure 2 of the patent depicts four clearly delineated, separate protruding structures (labeled 162) around the opening. This could support a narrower construction requiring four structurally distinct and separate protrusions, rather than a continuous, undulating surface that could be conceptually divided into four regions.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement under 35 U.S.C. § 271(b), stating Defendant provides instruction manuals, videos, and marketing materials that direct and encourage customers to assemble and use the accused cases and mounts together in an infringing manner (Compl. ¶26, ¶31-32, ¶51, ¶67). The complaint also alleges contributory infringement under § 271(c), asserting that the accused cases and mounts are especially made for use together and are not suitable for substantial non-infringing use (Compl. ¶52, ¶68).
- Willful Infringement: Willfulness is alleged based on Defendant’s purported pre-suit knowledge of the patents. The complaint cites cease-and-desist letters sent in April 2017 and October 2017 that allegedly notified Defendant of its infringement of the ’774, ’871, and the application leading to the ’670 Patent (Compl. ¶23, ¶63, ¶79). The complaint further alleges that Defendant cited the ’151 Patent and other Rokform patents in Information Disclosure Statements during its own patent prosecution, suggesting knowledge of Plaintiff's portfolio (Compl. ¶24).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of structural correspondence: does the geometry of the accused Quad Lock interlock mechanism map onto the specific "four tab" structure required by several asserted claims, or is there a fundamental structural difference that places the accused products outside the literal scope of those claims?
- A second central question will be one of intent and knowledge: given the alleged pre-suit notice dating back to 2017 and Defendant's alleged citation of Plaintiff's patents during its own patent prosecution, what evidence will support or rebut the claim that any infringement was willful and deliberate?
- A key technical question will be one of dimensional and material limitations: for the newest patents in the suit, can Plaintiff prove that the accused MAG cases include an "annular ring magnet" with a thickness of "less than or equal to about 5.0mm" (’333 Patent) and a "removably received" exterior member that "fully encloses" the magnet (’019 Patent)?