DCT

1:25-cv-00796

Shenzhen Donghongze Trading Co Ltd v. Xebec Inc

Log In
Key Events
Amended Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:23-cv-14922, N.D. Ill., 08/20/2024
  • Venue Allegations: Plaintiffs allege venue is proper because Defendant Xebec has obtained rights in U.S. patents, and the enforcement of those rights affects Plaintiffs' business in Illinois.
  • Core Dispute: A group of e-commerce companies seeks a declaratory judgment that their products do not infringe two of Xebec's patents, that the patents are invalid in light of prior art, and that one of the patents is unenforceable due to alleged inequitable conduct during prosecution.
  • Technical Context: The technology relates to mounting systems and accessory devices used to attach one or more auxiliary display screens to a primary computer display, such as that of a laptop.
  • Key Procedural History: The complaint alleges this action was prompted by Xebec initiating an Amazon Patent Evaluation Express (APEX) process against Plaintiffs on September 25, 2023, asserting U.S. Patent No. 9,395,757. The complaint also contains detailed allegations that U.S. Patent No. 10,809,762 is unenforceable due to the applicant's alleged failure to disclose material prior art to the USPTO during prosecution.

Case Timeline

Date Event
2013-11-18 Earliest Priority Date for ’757 and ’762 Patents (as alleged in complaint)
2016-07-19 U.S. Patent No. 9,395,757 Issues
2019-11-04 Application for U.S. Patent No. 10,809,762 Filed
2020-10-20 U.S. Patent No. 10,809,762 Issues
2022-01-07 ’757 Patent Assigned to Defendant Xebec
2023-09-25 Xebec Initiates Amazon APEX Process Asserting the ’757 Patent
2024-08-20 Plaintiffs' Amended Complaint for Declaratory Judgment Filed

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

U.S. Patent No. 9,395,757 - "Auxiliary Screen Mounting System"

The Invention Explained

  • Problem Addressed: The patent addresses the difficulty of using secondary monitors with portable computers, noting that conventional secondary monitors are unwieldy and existing mounting systems can be complex, expensive, and prone to failure with repeated use (’757 Patent, col. 1:18-44).
  • The Patented Solution: The invention is a support system comprising two separate mounting members (brackets) that are placed on the opposing sides of a primary computer screen. A "retaining member," such as an elastic strap, extends between the two brackets to hold them in place against the screen. At least one of the brackets is configured to bear an auxiliary screen, allowing it to be "hung" next to the primary display (’757 Patent, Abstract; col. 2:1-11).
  • Technical Importance: This approach provides a mechanically simple and lightweight method for adding auxiliary screens to a laptop, enhancing mobile productivity without requiring complex, integrated clamping mechanisms (’757 Patent, col. 1:45-51).

Key Claims at a Glance

  • The complaint focuses its invalidity and non-infringement arguments on independent claim 1 (Compl. ¶¶ 32, 57).
  • Claim 1 Essential Elements:
    • A plurality of mounting members arranged to be disposed on opposing lateral sides of the computing device.
    • A retaining member that extends between the mounting members.
    • The retaining member is configured to hold the mounting members relative to the opposing lateral sides of the device.
    • At least one mounting member is configured to bear an auxiliary screen such that the screen is hung relative to the computing device.
    • The retaining member is length adjustable to hold the mounting members by resisting separation.

U.S. Patent No. 10,809,762 - "Accessory Display Device"

The Invention Explained

  • Problem Addressed: The patent identifies the inherent trade-off in laptop computers between portability and screen size, noting a need for a device that can expand a laptop's display while being easy to attach, compact, and portable (’762 Patent, col. 1:5-17).
  • The Patented Solution: The invention is a self-contained accessory device featuring a "housing" with two sides that slide relative to one another via engaging rails. A "tensioning member" (e.g., an elastic band) is coupled to both sides, creating an inward force. This force allows "engagement portions" on the housing to clamp onto the sides of a computer display. An auxiliary display is integrated into the device and is slidable within the housing from a stowed to a use position (’762 Patent, Abstract; col. 2:20-35).
  • Technical Importance: This design integrates the auxiliary screen and a tension-based clamping mechanism into a single unit, offering a universal fit for various display sizes without complex adjustments (’762 Patent, col. 2:49-51).

Key Claims at a Glance

  • The complaint focuses its invalidity and non-infringement arguments on independent claim 1 (Compl. ¶¶ 43, 63).
  • Claim 1 Essential Elements:
    • A housing with a first side and a second side movable relative to one another.
    • A first pair of rails on the first side and a second pair of rails on the second side, with the pairs being slidably engaged.
    • A tensioning member coupled between the first and second sides.
    • First and second engagement portions configured to engage the side of a display device under force from the tensioning member.
    • A first display that is slidable within the housing.

III. The Accused Instrumentality

The complaint does not provide sufficient detail for analysis of the accused products. It refers generally to "Plaintiffs' products" and "three product types" but does not include any names, model numbers, descriptions of functionality, or visual representations (Compl. ¶¶ 21, 58, 64).

No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint does not contain traditional infringement allegations but instead asserts theories of non-infringement.

  • ’757 Patent Non-Infringement Allegations: The complaint asserts that Plaintiffs' products do not infringe because "[a]t least one of the required multiple limitations is not included in Plaintiffs' accused products" (Compl. ¶58). It specifically calls out the claim 1 limitation requiring "a plurality of mounting members arranged to be disposed on opposing lateral sides of the computing device in use," but offers no explanation of how the accused products differ from this element (Compl. ¶57).
  • ’762 Patent Non-Infringement Allegations: The complaint’s theory of non-infringement for the ’762 Patent is based on a single element. It alleges that the products do not meet the limitation of claim 1 requiring "a housing having a first side and a second side movable relative to one another," stating concisely that "Plaintiffs' products do not have any housing" (Compl. ¶¶ 63-64).
  • Identified Points of Contention:
    • Factual Questions: Given the lack of detail about the accused products, the primary point of contention will be factual: what is the actual design and mechanism of Plaintiffs' products? Without this information, it is not possible to assess the claims of non-infringement.
    • Scope Questions: For the ’762 Patent, the dispute raises the question of how broadly the term "housing" should be construed. Does the structure of Plaintiffs' products fall outside any reasonable definition of "housing" as used in the patent?

V. Key Claim Terms for Construction

  • The Term: "housing" (from ’762 Patent, claim 1)
  • Context and Importance: Plaintiffs' entire non-infringement argument for the ’762 Patent hinges on the assertion that their products lack a "housing" (Compl. ¶64). The construction of this term is therefore central to the dispute.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claims describe the housing functionally as having a "first side and a second side movable relative to one another" and containing slidable rails and a display (’762 Patent, col. 5:17-34). This functional language may support an interpretation where any frame or structure performing these roles constitutes a "housing," even if it is not fully enclosed.
    • Evidence for a Narrower Interpretation: The specification's detailed description and figures consistently depict the housing (130) as a structure that substantially encases the slidable screens and the mounting mechanism (’762 Patent, Fig. 2; col. 2:52-55). This may support a narrower construction requiring a more complete enclosure, which Plaintiffs' products might lack.
  • The Term: "retaining member is length adjustable" (from ’757 Patent, claim 1)
  • Context and Importance: The mechanism for holding the mounting members on the screen is a core aspect of the ’757 invention. Practitioners may focus on this term because Plaintiffs' invalidity arguments cite prior art that achieves a similar function using inherent tension rather than an explicit adjustment mechanism (Compl. ¶¶ 37-38). Whether inherent elasticity satisfies the "length adjustable" requirement will be a key issue.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification discloses that the retaining member may comprise "a resilient material," "an elastic material," or a "tensioning mechanism" (’757 Patent, col. 3:43-46). This language could support a construction where the inherent stretch of an elastic band is considered "length adjustable."
    • Evidence for a Narrower Interpretation: The specification also explicitly mentions an "adjustment mechanism, e.g. a length adjustment mechanism, such as a ratchet" (’757 Patent, col. 3:50-51). Further, the independent claim requires the member be adjustable "to hold" the mounting members "by resisting separation." This phrasing may suggest that a mechanism allowing for a change in the member's resting length is required, beyond mere elasticity.

VI. Other Allegations

  • Invalidity: Plaintiffs allege that both the ’757 and ’762 patents are invalid as anticipated under 35 U.S.C. § 102 and obvious under § 103 in light of numerous prior art references, which are cited and attached as exhibits to the complaint (Compl. ¶¶ 31-38, 42-48).
  • Unenforceability due to Inequitable Conduct: Plaintiffs allege that the ’762 Patent is unenforceable due to inequitable conduct before the USPTO (Compl. ¶¶ 49-53). The complaint specifically alleges that during prosecution of the application leading to the ’762 Patent, the applicant submitted an Information Disclosure Statement that cited the highly material ’757 Patent but used an incorrect patent number (Compl. ¶51). It further alleges that after the Examiner noted the error in an Office Action, the applicant and its attorney "never correct[ed] the mistake," which Plaintiffs contend was a deliberate act to prevent the Examiner from considering the most relevant prior art (Compl. ¶¶ 52-53).

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

  • A central evidentiary question will be one of product identification: The complaint makes conclusory allegations of non-infringement without providing any technical details of the accused products. The case cannot meaningfully proceed until the structure and functionality of Plaintiffs' devices are established through discovery.
  • A core issue for the ’762 Patent will be one of definitional scope: Can the term "housing," which is depicted in the patent as a substantial enclosure, be construed to cover the potentially more minimalist frame or structure of the Plaintiffs' products? The outcome of this claim construction dispute may be dispositive for the non-infringement claim.
  • A key question will be one of prosecutorial conduct: Do the facts surrounding the submission of an incorrect patent number for a key prior art reference during prosecution of the ’762 Patent, and the subsequent failure to correct it, constitute clear and convincing evidence of an intent to deceive the USPTO, rendering the patent unenforceable?