DCT
1:24-cv-01326
Yondr Inc v. Be Smarter LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Yondr, Inc. (Delaware)
- Defendant: Be Smarter, LLC (Texas); James Guerra (Texas)
- Plaintiff’s Counsel: Greenberg Traurig, LLP
- Case Identification: 1:24-cv-01326, W.D. Tex., 10/31/2024
- Venue Allegations: Venue is alleged to be proper based on Defendant Be Smarter having a regular and established place of business in the district and committing acts of infringement there, and Defendant Guerra residing in the district and committing acts of infringement there.
- Core Dispute: Plaintiff alleges that Defendant’s CellockED product, a lockable mobile phone pouch, infringes two patents related to systems for selectively restricting access to electronic devices.
- Technical Context: The technology addresses the market for creating "phone-free" spaces in venues such as schools, concerts, and courthouses by providing users with a lockable case for their mobile devices.
- Key Procedural History: The complaint alleges that Plaintiff's website provides constructive notice of the asserted patents. It further alleges that Defendants received a direct notice letter on September 30, 2024, approximately one month before the complaint was filed. The '078' Patent issued on October 29, 2024, just two days prior to the suit's filing.
Case Timeline
| Date | Event |
|---|---|
| 2014-04-22 | Earliest Priority Date for '788' and '078 Patents |
| 2017-11-14 | '788 Patent Issued |
| 2024-06-01 | Defendant Guerra announces launch of CellockED venture |
| 2024-09-30 | Plaintiff sends notice letter to Defendants |
| 2024-10-29 | '078 Patent Issued |
| 2024-10-31 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,819,788 - "System and Apparatus for Selectively Limiting User Control of an Electronic Device," Issued November 14, 2017
The Invention Explained
- Problem Addressed: The patent identifies the widespread distraction caused by mobile devices in communal settings like concerts and schools. It notes that prior solutions, such as asking users to turn off their phones or collecting them, are often met with resistance due to fears of theft, loss of connectivity, or missing important notifications (’971 Patent, col. 2:12-24).
- The Patented Solution: The invention is a lockable case that allows a user to retain physical possession of their device but renders it inaccessible. The case is designed to lock and unlock based on "predetermined conditions," such as the passage of time or, as illustrated in Figure 7, entering or exiting a defined geographical area (’971 Patent, col. 3:1-13, Abstract). This approach aims to create a phone-free environment without forcing users to be separated from their property.
- Technical Importance: The technology provided a physical-world solution to the social problem of device distraction, creating a new method for venues to manage phone use that was more palatable to users than surrendering their devices.
Key Claims at a Glance
- The complaint asserts independent claim 3.
- Essential elements of claim 3 include:
- A system for selectively limiting a user's control of an electronic device.
- A case with front and rear panels and secured edges that define an opening for a mobile device.
- The case is operative to be locked, preventing user access until a predetermined condition is met.
- A "locking means" for securing the opening.
- A "means for unlocking the case."
- The complaint notes that dependent claims 7, 8, and 9 are also exemplary of the infringed technology (Compl. ¶85).
U.S. Patent No. 12,133,078 - "System and Apparatus for Selectively Limiting User Control of an Electronic Device," Issued October 29, 2024
The Invention Explained
- Problem Addressed: As a continuation of the family leading to the ’788 Patent, the ’078 Patent addresses the same problem of mobile device distraction in public or private venues and the shortcomings of prior solutions (’078 Patent, col. 2:9-24).
- The Patented Solution: The invention is a case with a lock that is specifically configured to unlock based on a "predetermined condition associated with a geographic region" (’078 Patent, Abstract). The specification describes this functionality being implemented through technologies like RFID, proximity transmitters, or GPS-based geofencing, where the case automatically locks or unlocks when it crosses a defined boundary (’078 Patent, col. 7:6-34).
- Technical Importance: This patent focuses on an automated, location-based control mechanism, which offers a more seamless user experience than manual unlocking procedures.
Key Claims at a Glance
- The complaint asserts independent claim 1.
- Essential elements of claim 1 include:
- A case comprising a shell with a cavity and an opening for a mobile device.
- A lock positioned proximate to the opening.
- The lock is configured to render the device at least partially inaccessible when locked.
- The lock is further configured to unlock to enable access based on a "predetermined condition associated with a geographic region."
- The complaint does not explicitly reserve the right to assert dependent claims for this patent, but such a right is implied by the general infringement allegations.
III. The Accused Instrumentality
Product Identification
- The accused product is the "CellockED" phone pouch and associated locking/unlocking system (Compl. ¶6, ¶42).
Functionality and Market Context
- The CellockED product is described as a "cell phone pouch with a magnetic locking system" that includes a "retractable locking pin that unlocks only with a specialized magnetic detacher" (Compl. ¶38, ¶88). It is marketed to schools as a solution for "managing student cell phone usage during school hours" (Compl. ¶37). The complaint includes a promotional image from a LinkedIn post announcing the CellockED venture, which highlights its "retractable locking pin" and RFI/EMI blocking capability (Compl. ¶35, p. 12). The product is sold through the
cellockED.netwebsite and is alleged to be in use at several public school districts (Compl. ¶38, ¶45).
IV. Analysis of Infringement Allegations
'9788 Patent Infringement Allegations
| Claim Element (from Independent Claim 3) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a case sized to receive the user's mobile electronic device having a front and a rear panel each having first and second longitudinally opposed side edges and laterally opposed lower edges, | The CellockED product is a case for an electronic device that includes a rear panel and opposed side and lower edges (Compl. ¶43). | ¶43 | col. 5:62-65 |
| the first, second, and lower edges being secured together to define an opening for receiving a mobile electronic device, the case operative to become locked so that the user is unable to access his own mobile electronic device... | The edges of the CellockED case are secured to define an opening, and the case locks so that the user cannot access the device until a predetermined condition is met. | ¶43 | col. 6:1-5 |
| a locking means for at least partially securing the opening; | The CellockED product includes a "magnetic locking system" and a "locking means" that secures the opening of the case (Compl. ¶43, ¶44). | ¶43, ¶44 | col. 6:21-23 |
| and means for unlocking the case. | The CellockED system includes an "unlocking means," described as a "specialized magnetic detacher" (Compl. ¶44, ¶88). | ¶44, ¶88 | col. 6:50-54 |
- Identified Points of Contention:
- Scope Questions: Claim 3 uses means-plus-function language ("locking means," "means for unlocking"). A primary dispute will be identifying the corresponding structures disclosed in the '9788 Patent specification (e.g., an EAS detacher with strong magnets) and determining whether the accused product's "specialized magnetic detacher" is structurally equivalent.
'078 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a shell defining a cavity sized to accommodate a mobile device, the shell having an opening to receive the mobile device; | The CellockED product is a case with a shell defining a cavity sized for a mobile device and has an opening to receive it (Compl. ¶46). | ¶46 | col. 5:58-61 |
| and a lock positioned proximate to the opening of the shell, the lock configured to render the mobile device at least partially inaccessible upon the lock being locked with the mobile device within the cavity of the shell, | The CellockED product includes a lock near the opening that renders the mobile device at least partially inaccessible when locked inside the shell (Compl. ¶46). | ¶46 | col. 6:15-20 |
| the lock further configured to unlock to enable access to the mobile device based on a predetermined condition associated with a geographic region. | The complaint alleges the CellockED lock is "configured to unlock to enable access to the mobile device based on a predetermined condition associated with a geographic region" (Compl. ¶46). | ¶46 | col. 7:6-24 |
- Identified Points of Contention:
- Technical Questions: A screenshot from a promotional video depicts the CellockED pouch being unlocked by placing it on a stationary base (Compl. ¶41, p. 14). The central question for claim 1 of the '078 Patent is whether this manual action at a fixed station meets the claim limitation of unlocking based on a "condition associated with a geographic region." The complaint does not allege that the CellockED system uses the GPS or proximity-based transmitter technologies described in the patent to automate this function.
V. Key Claim Terms for Construction
The Term:
"means for unlocking the case"('788 Patent, Claim 3)- Context and Importance: This is a means-plus-function term governed by 35 U.S.C. § 112(f). Its scope is not its literal meaning but is limited to the specific structures disclosed in the specification for performing the function of unlocking, and their equivalents. Practitioners may focus on this term because the infringement analysis will hinge on whether the accused "specialized magnetic detacher" is structurally equivalent to the unlocking mechanisms described in the patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification discloses multiple embodiments for unlocking, including a "manual, key-operated latch" and an "electronic article surveillance (EAS) detacher" (’788 Patent, col. 6:42-54), which may suggest the patentee did not intend to limit the invention to a single type of mechanism.
- Evidence for a Narrower Interpretation: The description of the EAS detacher specifies that it contains "strong magnets that interrupt electromagnetic fields" (’788 Patent, col. 6:55-58). A party may argue that this limits the scope to detachers that operate on this specific electromagnetic principle, not just any magnetic unlocking device.
The Term:
"predetermined condition associated with a geographic region"('078 Patent, Claim 1)- Context and Importance: This term is the central novelty of the asserted '078 claim. The entire infringement case for this patent will likely depend on its construction and whether the accused product's functionality falls within that construction. The complaint's factual allegations on this point appear to be a simple recitation of the claim language (Compl. ¶46).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that the physical placement of unlocking stations exclusively outside of a defined area (e.g., outside a school building) creates a "condition associated with a geographic region," even without active electronic tracking.
- Evidence for a Narrower Interpretation: The specification provides specific examples of how this function is achieved, such as through a "proximity transmitter," a "geofence" created with "Global Position Systems (GPS)," or Bluetooth beacons (’078 Patent, col. 7:6-24; col. 8:7-16). This may support a narrower construction requiring an active, automated, signal-based system to determine location.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendants induce infringement of both patents by "actively and knowingly inducing others to make, use, sell, offer for sale, or import CellockED" (Compl. ¶91, ¶109). The factual support for inducement may rely on user manuals or instructions provided to schools and students, which allegedly direct them to use the product in an infringing manner.
- Willful Infringement: Willfulness is alleged for both patents (Compl. ¶94, ¶112). The complaint alleges knowledge based on the patent notice on Yondr's website, which Defendants allegedly visited, and a direct notice letter sent to Defendant Guerra on September 30, 2024, to which Defendants allegedly responded (Compl. ¶39, ¶40). This provides a basis for alleging both pre- and post-suit willful infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of means-plus-function construction: For the '788 Patent, the dispute will center on whether the accused product's magnetic unlocking mechanism is structurally equivalent to the specific EAS detacher and other unlocking means disclosed in the patent specification.
- A key evidentiary question will be one of technical capability: For the '078 Patent, can the plaintiff prove that the CellockED product, which appears to unlock via manual placement on a stationary base, meets the "geographic region" limitation? The case may turn on whether this claim term requires the active, signal-based geofencing technology detailed in the patent or can be read more broadly to cover the passive placement of unlocking stations.
- A third question will be one of factual support: The complaint makes conclusory allegations of infringement, particularly for the '078 Patent's "geographic region" element. A significant early-stage question will be whether these allegations meet the plausibility standard required to survive a motion to dismiss, or if they will be found to be an insufficient recitation of the claim elements.