DCT
3:21-cv-02719
O'Reilly WINSHIP LLC v. SnapRays LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: O’REILLY WINSHIP, LLC, dba OWL (Texas)
- Defendant: SNAPRAYS, LLC dba SNAPPOWER (Utah)
- Plaintiff’s Counsel: Carstens & Cahoon, LLP
- Case Identification: 3:21-cv-02719, N.D. Tex., 11/02/2021
- Venue Allegations: Venue is asserted based on the defendant, SnapRays, having sold products within the judicial district, which is also where a substantial part of the events giving rise to the claim allegedly occurred.
- Core Dispute: Plaintiff seeks a declaratory judgment that its electrical outlet cover products do not infringe Defendant's patents, and that those patents are invalid, following infringement accusations made by the Defendant.
- Technical Context: The technology involves "active" electrical outlet cover plates that integrate electronic components, such as lights, and draw power directly from the outlet's side-screw terminals without occupying a socket.
- Key Procedural History: The dispute arises from a series of demand letters sent by SnapRays to Owl beginning in November 2019, alleging infringement. This was preceded by an International Trade Commission (ITC) investigation initiated by SnapRays in June 2018 against other competitors involving at least one of the patents-in-suit. SnapRays subsequently filed complaints with Amazon, leading to the removal of Owl's products from the marketplace, which precipitated this declaratory judgment action.
Case Timeline
| Date | Event |
|---|---|
| 2011-08-01 | Priority Date for ’324 and ’180 Patents |
| 2015-05-19 | U.S. Patent No. 9,035,180 Issue Date |
| 2018-01-16 | U.S. Patent No. 9,871,324 Issue Date |
| 2018-06-20 | SnapRays files ITC complaint against other competitors |
| 2019-02-XX | SnapRays allegedly begins ordering and analyzing Owl products |
| 2019-02-21 | ITC issues Claim Construction order in separate litigation |
| 2019-07-31 | ITC issues Summary Determination in separate litigation |
| 2019-11-XX | SnapRays sends first demand letter to Owl |
| 2020-02-06 | SnapRays sends second demand letter to Owl |
| 2020-02-28 | Owl responds to second demand letter |
| 2020-Early | SnapRays files patent infringement complaint with Amazon |
| 2021-11-02 | Complaint for Declaratory Judgment filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,871,324 - "Active Cover Plates"
- Patent Identification: U.S. Patent No. 9,871,324, "Active Cover Plates", issued January 16, 2018.
The Invention Explained
- Problem Addressed: Standard electrical outlets are installed in wall boxes and covered by passive faceplates. Powering a device integrated into the cover plate itself (e.g., a nightlight) is challenging due to the wide variability in the physical dimensions and screw terminal locations of different outlet models, creating a risk of improper electrical contact or short-circuiting (’324 Patent, col. 4:42-50, incorporating by reference the background of the '180 patent).
- The Patented Solution: The invention is an active cover plate with rearward-extending clips designed to safely draw power by making physical contact with an outlet's side-screw terminals. The ’324 Patent's solution focuses on a specific clip structure that includes a conductive "resilient strip," a "contact" that passes through an aperture in the strip, and a "rear insulator" that covers the back of the contact to prevent it from touching the metal electrical box or other wires (’324 Patent, Abstract; Claim 1). This composite structure is designed to ensure a secure connection while providing insulation.
- Technical Importance: This approach allows for the addition of powered features to a standard outlet without requiring new wiring, occupying a plug socket, or being limited to a single specific outlet model.
Key Claims at a Glance
- The complaint seeks a declaratory judgment of non-infringement and invalidity as to the "asserted claims" without specifying them (Compl. ¶43). Independent claim 1 is representative.
- Independent Claim 1:
- An active cover plate comprising a face plate and an electrical load.
- At least one clip extending rearward from the faceplate.
- The clip comprises a contact, a resilient strip supporting a front side of the contact, wherein the contact is joined to the resilient strip and extends through an aperture in the resilient strip.
- The clip also comprises a rear insulator covering a rear side of the contact.
- An electrical connection between the clip and the electrical load.
U.S. Patent No. 9,035,180 - "Active Cover Plates"
- Patent Identification: U.S. Patent No. 9,035,180, "Active Cover Plates", issued May 19, 2015.
The Invention Explained
- Problem Addressed: Similar to the '324 patent, the invention addresses the difficulty of creating a "one-size-fits-all" powered cover plate that can reliably and safely connect to the variety of electrical receptacles found in buildings (’180 Patent, col. 3:36-42). The patent notes that screw terminals can be at different vertical heights and depths, complicating the design of a universal connector.
- The Patented Solution: The ’180 Patent discloses a spring clip for a cover plate that is composed of two distinct sections: a "flexible conductive portion" to make electrical contact, and a "non-conductive portion" connected to its end (’180 Patent, Abstract). This non-conductive portion, often shaped as a ramp or guide, is designed to direct the clip into the correct position over the outlet body and slide over obstacles, preventing the conductive part from snagging or shorting (’180 Patent, col. 6:31-36).
- Technical Importance: The use of a non-conductive guide on the power-extracting clip enhances the safety and installation reliability of the active cover plate across a wider range of outlet types.
Key Claims at a Glance
- The complaint seeks a declaratory judgment of non-infringement and invalidity as to the "asserted claims" without specifying them (Compl. ¶48). Independent claim 1 is representative.
- Independent Claim 1:
- An active cover plate comprising a faceplate and a load.
- A spring clip extending rearward from the faceplate to interface with a receptacle body.
- The spring clip comprises a flexible conductive portion connected to the faceplate by a first end.
- It also comprises a non-conductive portion connected to an opposite end of the flexible conductive portion.
- An electrical contact on the spring clip contacts a side screw terminal on the receptacle body to extract electrical power.
III. The Accused Instrumentality
Product Identification
- The "briteOWL" product line (Compl. ¶6, ¶24).
Functionality and Market Context
- The briteOWL is an electrical outlet cover that incorporates "backup lighting in the event of a power failure" (Compl. ¶6). This implies it contains an electrical load (the lights), an energy storage device (a battery), and circuitry to draw power from the household electrical system to charge the battery. The complaint alleges that SnapRays’ infringement claims, made directly to Amazon, caused the briteOWL to be removed from Amazon's marketplace, resulting in "lost considerable sales" (Compl. ¶23, ¶26). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint does not contain a claim chart or detailed infringement theory from the patent holder. It states that Owl's position is that "there are claim elements missing from the accused product" (Compl. ¶19). The following charts are based on the likely infringement theory, constructed from the patent claims and the general description of the accused product.
’324 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a face plate; a load | The briteOWL is an outlet cover plate that contains backup lighting. | ¶6 | col. 21:25-26 |
| at least one clip extending rearward from the faceplate | The briteOWL product necessarily includes rearward-extending prongs or clips to draw power from the outlet's side terminals. | ¶6, ¶17 | col. 21:27-28 |
| a contact; a resilient strip supporting a front side of the contact, wherein the contact is joined to the resilient strip and extends through an aperture in the resilient strip | The briteOWL's clips likely consist of a resilient metal strip with a distinct contact point (e.g., a rivet) that passes through the strip to make electrical contact. | ¶17, ¶19 | col. 29:26-30 |
| a rear insulator covering a rear side of the contact | The briteOWL clips are alleged to have an insulating structure that covers the back of the clip to prevent shorting against a metal electrical box. | ¶17, ¶19 | col. 29:30-32 |
’180 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a faceplate; a load | The briteOWL is an outlet cover plate that contains backup lighting. | ¶6 | col. 15:11-12 |
| a spring clip extending rearward from the faceplate to interface with a receptacle body | The briteOWL product necessarily includes rearward-extending prongs or clips to draw power from the outlet's side terminals. | ¶6, ¶17 | col. 15:13-15 |
| a flexible conductive portion connected to the face plate | The briteOWL's clips are made of a flexible, conductive material (e.g., spring steel) allowing them to bend and maintain contact pressure. | ¶17, ¶19 | col. 15:17-18 |
| a non-conductive portion connected to an opposite end of the flexible conductive portion | The briteOWL's clips are alleged to incorporate a non-conductive element (e.g., a molded plastic tip) that acts as a guide during installation. | ¶17, ¶19 | col. 15:19-21 |
- Identified Points of Contention:
- Scope Questions: A central dispute will be the interpretation of the structural elements of the clips. The complaint alleges that Owl's view is that "claim terms at issue were taken out of context in light of the specification" (Compl. ¶18). This suggests the core conflict is over claim construction.
- Technical Questions: The primary factual question, stemming from the claim construction, is whether the briteOWL product actually contains the specific structures required by the claims. The complaint's assertion that "claim elements [are] missing from the accused product" (Compl. ¶19) directly frames this as a literal infringement dispute. For example, does the briteOWL's clip have a distinct "rear insulator" as required by the ’324 Patent, or is its insulation method structurally different? Likewise, does it have a "non-conductive portion" that functions as a guide as taught by the ’180 Patent, or simply a fully insulated prong?
V. Key Claim Terms for Construction
Term from '324 Patent: "a rear insulator covering a rear side of the contact"
- Context and Importance: Practitioners may focus on this term because the specific configuration of the insulator is a key feature distinguishing the invention. Owl's non-infringement position likely depends on arguing that its product's insulation mechanism does not meet this structural limitation (Compl. ¶19).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself is general, potentially encompassing any insulating material (e.g., a coating, a sleeve) located behind the contact point.
- Evidence for a Narrower Interpretation: The specification repeatedly shows the insulator as a distinct, molded plastic component that is assembled with the conductor (e.g., ’324 Patent, Fig. 15, insulator 1500 and conductor 1600). This may support an argument that the term requires a separate structural element, not merely an insulating coating.
Term from '180 Patent: "a non-conductive portion"
- Context and Importance: This term is critical because it describes not just insulation, but a functional guide. The specification describes this "portion" as having a "main ramp" to guide the cover plate over the receptacle body (’180 Patent, col. 6:29-36). Owl's non-infringement argument may be that its product lacks a distinct "portion" with this specific guiding function.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim term itself does not specify a shape or function, and could be read on any non-conductive part of the clip.
- Evidence for a Narrower Interpretation: The abstract and detailed description frame this element as a functional guide. The specification explains the "main ramp portion is to guide the active cover plate over the receptacle body" (’180 Patent, col. 15:27-30). This suggests the term requires more than simple insulation; it implies a specific guiding structure.
VI. Other Allegations
The complaint does not provide sufficient detail for analysis of indirect or willful infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: How will the court construe the structural requirements of the patented clips? Specifically, can the term "rear insulator covering a rear side of the contact" (’324 Patent) read on any form of insulation, or does it require a distinct component as depicted in the specification? Similarly, does the term "non-conductive portion" (’180 Patent) require a specific guiding structure, or does it cover any non-conductive part of a clip?
- A key evidentiary question will be one of structural and functional mismatch: Assuming the court adopts a narrower construction of the key terms, does the accused briteOWL product actually embody those specific structures? The case will likely depend on a factual comparison between the specific design of the briteOWL's power-extracting clips and the elements required by the claims, a point of dispute explicitly raised by the declaratory judgment plaintiff (Compl. ¶19).