Flygrip Inc v. Five Below Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Flygrip, Inc. (New York)
  • Defendant: Five Below, Inc. (Pennsylvania)
  • Plaintiff’s Counsel: Sorey & Gilliland, LLP; Katz PLLC
• Case Identification: 6:21-cv-01080, W.D. Tex., 10/18/2021
• Venue Allegations: Plaintiff alleges venue is proper in the Western District of Texas because Defendant transacts business in the district, has committed alleged acts of infringement there, and maintains regular and established places of business, citing specific retail store locations within the district.
• Core Dispute: Plaintiff alleges that Defendant’s smartphone grip accessories infringe patents related to collapsible and compacting grips for handheld electronic devices.
• Technical Context: The technology addresses the ergonomics of securely holding large, touch-screen smartphones with one hand while allowing the thumb to operate the screen.
• Key Procedural History: The complaint alleges that Plaintiff sent letters to Defendant on October 14 and 15, 2021, providing notice of the asserted patents and the alleged infringement by specific products, immediately preceding the filing of this lawsuit. This notice is cited as a basis for willfulness.

Case Timeline

Date	Event
2010-08-19	Priority Date for ’098 and ’024 Patents
2014-09-30	U.S. Patent No. 8,844,098 Issued
2020-10-13	U.S. Patent No. 10,800,024 Issued
2021-10-14	Plaintiff allegedly sent first notice letter to Defendant
2021-10-15	Plaintiff allegedly sent second notice letter to Defendant
2021-10-18	Complaint Filed

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

U.S. Patent No. 10,800,024 - “Compacting Grip for Handheld Devices”, issued October 13, 2020 (’024 Patent)

The Invention Explained

• Problem Addressed: The patent addresses the difficulty users have in securely gripping large, bar-shaped handheld devices (like smartphones) with a single hand, which limits the thumb's range of motion across the front surface, such as a touchscreen ('024 Patent, col. 1:41-54).
• The Patented Solution: The invention is a "collapsing and expanding" grip apparatus that attaches to the back of a device ('024 Patent, col. 8:51-52). It consists of a base, an extendable telescoping structure, and a disc-shaped grip at the top ('024 Patent, col. 8:58-col. 9:1). This design creates a space for a user's fingers between the grip and the device, which secures the device to the hand and frees the thumb for one-handed operation ('024 Patent, col. 4:50-62). The apparatus is designed to collapse into a flat profile when not in use ('024 Patent, col. 9:4-5).
• Technical Importance: The design aimed to improve the one-handed usability and security of smartphones, an increasing ergonomic challenge as device screen sizes grew larger (Compl. ¶10).

Key Claims at a Glance

• The complaint asserts independent claim 1 and dependent claim 2 (Compl. ¶¶ 19, 20).
• Independent Claim 1, as corrected by a Certificate of Correction, consists essentially of:
  • A collapsing and expanding one-hand gripping apparatus fastened to or built into the back of a handheld device or its case.
  • A base fastened to the device.
  • An extension that extends perpendicular from the base, consisting essentially of a telescoping structure with annular pieces that slide over one another, movable between a collapsed and an extended position.
  • A disc-shaped grip mounted perpendicularly on the end of the extension.
  • The apparatus in the collapsed position lies flat to the handheld device.
• The complaint notes that its infringement allegations are illustrative and not limiting, reserving the right to assert other claims (Compl. p. 6, fn. 1).

U.S. Patent No. 8,844,098 - “Apparatus for Gripping Handheld Devices”, issued September 30, 2014 (’098 Patent)

The Invention Explained

• Problem Addressed: Like the ’024 Patent, this patent addresses the challenge of securely holding a bar-shaped handheld device with one hand while maintaining a full range of thumb motion over the device's front controls ('098 Patent, col. 1:35-48).
• The Patented Solution: This invention is a gripping apparatus featuring a base, an extension, and a grip, but it utilizes a rotational, hinged mechanism rather than a telescoping one ('098 Patent, col. 7:25-54). A "first hinged section" connects the extension to the base, and a "second hinged section" connects the grip to the extension ('098 Patent, col. 7:31-44). These hinges allow the apparatus to transform from a closed position, where all components are parallel to the device, to an open position, where the extension is perpendicular to the device, creating space for a user's fingers ('098 Patent, col. 7:45-54; Figs. 11-13).
• Technical Importance: This approach provided a mechanical alternative for a collapsible grip, focused on achieving a thin, foldable profile when not in use (Compl. ¶10).

Key Claims at a Glance

• The complaint asserts at least independent claim 1 (Compl. ¶¶ 27, 30).
• Independent Claim 1 includes the following essential elements:
  • An apparatus for gripping a handheld device comprising a base, an extension, and a substantially planar grip.
  • A "first hinged section" rotatably connecting the extension to the base.
  • A "second hinged section" rotatably connecting the grip to the extension.
  • The hinged sections enable rotation from a "closed position" (where base, extension, and grip are substantially parallel to the device) to an "open position" (where the extension is substantially perpendicular to the device).
  • The apparatus is structured to receive two fingers of a user's hand between the grip and the device.
• The complaint reserves the right to assert other claims (Compl. p. 6, fn. 1).

III. The Accused Instrumentality

Product Identification

The complaint identifies three product lines as "Exemplary Products": the Bytech NY, Inc. line of "Sidekick" products, the Quest USA Corp. line of "SpinPop" products, and the Merkury Innovations LLC line of "Grip'z" products (Compl. ¶14).

Functionality and Market Context

• The ’024 Patent is asserted against the "Bytech Products" and "Quest Products" (Compl. ¶20).
• The ’098 Patent is asserted against the "Merkury Products" (Compl. ¶27).
• The complaint does not provide technical descriptions or visual depictions of the accused products' operation. It alleges that these products are handheld device grips that are sold by Defendant and function in a manner that infringes the asserted patents (Compl. ¶¶ 20-22, 27-28). The complaint alleges infringement through making, using, selling, and importing these products (Compl. ¶¶ 6, 27).

IV. Analysis of Infringement Allegations

The complaint references claim chart exhibits (Exhibits 3, 4, and 5) that were not provided with the publicly filed complaint. The following analysis is based on the narrative allegations in the complaint body.

’024 Patent Infringement Allegations (Bytech and Quest Products)

The complaint alleges that Defendant has indirectly infringed, and continues to indirectly infringe, claims 1 and 2 of the ’024 Patent (Compl. ¶20). The theory of induced infringement is based on allegations that Defendant advertises and promotes the products and provides instructions (via websites, packaging, and product descriptions) that knowingly and intentionally encourage customers to use the products in an infringing manner (Compl. ¶20). The theory of contributory infringement is based on allegations that the products are "especially designed or adapted to operate in a manner that infringes" and are not staple articles of commerce with substantial non-infringing uses (Compl. ¶21).

’098 Patent Infringement Allegations (Merkury Products)

The complaint alleges that Defendant has directly infringed, and continues to directly infringe, at least claim 1 of the ’098 Patent (Compl. ¶27). The allegations state that Defendant "makes, uses, offers for sale, sells, and/or imports" the Merkury Products, and that these products "satisfy all claim limitations of one or more of the claims of the '098 Patent, including at least claim 1" (Compl. ¶27).

Identified Points of Contention

• Scope Questions: For the ’024 Patent, a key issue may be the claim's use of the transitional phrase "consisting essentially of" ('024 Patent, col. 8:52). This raises the question of whether the accused products contain unrecited features that "materially affect the basic and novel characteristics" of the invention, potentially placing them outside the scope of the claim.
• Technical Questions: For the ’098 Patent, a primary dispute may concern the mechanical operation of the accused "Grip'z" product. The analysis will question whether its collapsing mechanism meets the specific limitations of a "first hinged section" and a "second hinged section" that enable rotation about distinct axes as required by Claim 1.
• Evidentiary Questions: For the indirect infringement claims against the Bytech and Quest products, the court will need to evaluate what evidence Plaintiff provides to establish Defendant's specific intent to induce infringement and to demonstrate that the products lack substantial non-infringing uses.

No probative visual evidence provided in complaint.

V. Key Claim Terms for Construction

Term from ’024 Patent: "consisting essentially of"

• Context and Importance: This transitional phrase appears in the preamble of Claim 1 ('024 Patent, col. 8:52) and is more restrictive than the common term "comprising." Its construction is critical because it limits the claim to the listed elements and any others that do not materially affect the invention's "basic and novel characteristics." Practitioners may focus on this term to dispute whether features of the accused products, if not explicitly recited in the claim, are material additions that avoid infringement.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party could argue the "basic and novel" characteristic is simply a telescoping grip for one-handed use, allowing for other non-material components. The patent's summary describes the invention broadly as a "finger grip apparatus" ('024 Patent, col. 2:13-15).
  • Evidence for a Narrower Interpretation: A party could argue the characteristics are a specific combination of a telescoping mechanism with a disc-shaped grip that collapses flat. The abstract and specific embodiments (e.g., Figs. 18-20) detailing this specific structure could be used to argue that any additional mechanical component materially alters this combination ('024 Patent, Abstract; col. 6:3-29).

Term from ’098 Patent: "first hinged section" / "second hinged section"

• Context and Importance: These terms in Claim 1 define the specific rotational mechanism of the invention ('098 Patent, col. 7:31, 37). The infringement determination will depend on whether the accused product's folding mechanism can be characterized as having two distinct, rotatable hinged sections as claimed.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claims do not define the specific structure of a "hinged section," potentially allowing the term to cover a variety of pivoting or flexible joints that permit rotation.
  • Evidence for a Narrower Interpretation: The specification explicitly identifies these elements in the drawings as "first hinged section 115" and "second hinge section 125," showing them as distinct components enabling rotation between the base, extension, and grip ('098 Patent, col. 5:9-13; Figs. 11-13). A party could argue these embodiments limit the term to a similar two-part, multi-axis folding mechanism.

VI. Other Allegations

Indirect Infringement

The complaint alleges both induced and contributory infringement for the ’024 Patent. It claims inducement is supported by Defendant’s advertising, product packaging, and instructions, which allegedly encourage infringing use (Compl. ¶20). It claims contributory infringement is supported by allegations that the products are especially designed to infringe and lack substantial non-infringing uses (Compl. ¶21).

Willful Infringement

The complaint alleges willful infringement of both asserted patents. The basis for willfulness is that Defendant allegedly acted recklessly and in disregard of an objectively high risk of infringement, particularly after receiving notice letters on October 14 and 15, 2021 that identified the patents and the accused products (Compl. ¶¶ 19, 30, 35).

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

• A core issue will be one of claim scope: can the restrictive "consisting essentially of" language in Claim 1 of the ’024 Patent be interpreted to read on the accused Bytech and Quest products, or do those products include additional features that materially alter the invention's characteristics and thereby fall outside the claim's scope?
• A key evidentiary question will be one of structural correspondence: does the accused "Grip'z" product utilize the specific two-part, dual-axis rotational mechanism defined by the "first hinged section" and "second hinged section" of Claim 1 of the ’098 Patent, or is there a fundamental mismatch in its mechanical operation?
• A central question of liability will be whether the facts pleaded are sufficient to support the claims for indirect infringement of the ’024 Patent, particularly regarding the elements of specific intent for inducement and the lack of substantial non-infringing uses for contributory infringement.