DCT
6:23-cv-00196
Swissdigital USA Co Ltd v. Samsonite Intl SA
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Swissdigital USA Co., Ltd. (Delaware)
- Defendant: Samsonite International S.A. (Luxembourg)
- Plaintiff’s Counsel: Keyhani LLC
- Case Identification: 6:23-cv-00196, W.D. Tex., 03/30/2023
- Venue Allegations: Venue is alleged to be proper on the basis that Defendant is a foreign entity not resident in any U.S. judicial district.
- Core Dispute: Plaintiff alleges that Defendant’s Quadrion line of backpacks and bags, which feature integrated USB charging ports, infringes four patents related to systems for convenient charging in luggage and other wearables.
- Technical Context: The technology concerns the integration of external USB charging ports into consumer bags and apparel, allowing users to charge electronic devices from an internal power bank without opening the bag.
- Key Procedural History: The complaint notes that two of the patents-in-suit (the '071 and '138 patents) have been involved in prior litigation against direct competitors of the Defendant. The complaint also states that the court in one of those prior cases, Swissdigital v. Wenger S.A., conducted a claim construction hearing and issued an opinion, which may influence how key terms are interpreted in this case.
Case Timeline
| Date | Event |
|---|---|
| 2014-11-18 | Earliest Priority Date for all Patents-in-Suit |
| 2020-02-25 | U.S. Patent No. 10,574,071 ('071 Patent) Issued |
| 2021-02-23 | U.S. Patent No. 10,931,137 ('137 Patent) Issued |
| 2021-02-23 | U.S. Patent No. 10,931,138 ('138 Patent) Issued |
| 2023-03-07 | U.S. Patent No. 11,601,009 ('009 Patent) Issued |
| 2023-03-30 | Plaintiff files Amended Complaint against Defendant |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,574,071 - "Bag or Luggage with USB Charging Connector" (Issued Feb. 25, 2020)
The Invention Explained
- Problem Addressed: The patent identifies the inconvenience of charging portable electronic devices while traveling, which typically requires a user to open their bag to access a portable power source (e.g., a power bank) ('071 Patent, col. 1:12-32).
- The Patented Solution: The invention is a bag or piece of luggage with an integrated charging system. It includes an internal pocket for a power bank, a USB extension cable running through the bag's body, and an externally accessible female USB connector. This allows a user to charge a device simply by plugging it into the outside of the bag, without needing to open it ('071 Patent, Abstract; col. 1:40-54). The external female connector is housed in a waterproof "sheath" for protection ('071 Patent, col. 2:50-54).
- Technical Importance: This approach provided a streamlined solution for on-the-go charging by integrating the necessary hardware directly into the structure of the bag itself, enhancing convenience and protecting the components.
Key Claims at a Glance
- The complaint asserts independent claim 1 and reserves the right to assert other claims (Compl. ¶30-31).
- Essential elements of independent claim 1 include:
- A bag or luggage body with an internal space for a power storage device and an external power cable outlet.
- A USB extension cable with a male connector (for the internal power device) and a female connector (for the external port).
- The female connector is retained outside the bag, adjacent to the outlet.
- A "water proof sheath" covers three sides of the female connector, provides it in a "flat position," and is positioned above and covers the power cable outlet.
- The sheath does not cover the "operative end" of the female connector, which remains exposed and fixedly attached.
U.S. Patent No. 10,931,137 - "Sheath for USB Charger" (Issued Feb. 23, 2021)
The Invention Explained
- Problem Addressed: This patent addresses the same general problem of convenient charging but focuses on the specific component that enables it. It describes a "sheath" that can be incorporated into not just bags but a wide array of items including clothing, activewear, and other wearables ('137 Patent, col. 1:11-28, col. 1:30-41).
- The Patented Solution: The invention is a sheath apparatus designed to receive and hold the female end of a USB cable. The sheath has a specific structure, including a "first tapered closed end" and a "second open end," which retains the cable and positions the female connector in a flat, uncovered orientation above the outer surface of a host "body" (e.g., a backpack) ('137 Patent, Abstract). This configuration is intended to provide a stable, easily accessible charging port ('137 Patent, col. 2:25-31).
- Technical Importance: By patenting the sheath as a distinct component, the invention provides a modular solution for integrating charging capabilities into a broad range of consumer products beyond traditional luggage.
Key Claims at a Glance
- The complaint asserts independent claim 1 and reserves the right to assert other claims (Compl. ¶48-49).
- Essential elements of independent claim 1 include:
- A sheath with a left, top, and right side, a "first tapered closed end," a "second open end," and a "surrounding bottom portion."
- The sheath extends above the outer surface of a "body" (e.g., a bag) that has an inner and outer surface and a power cable outlet.
- The sheath is located at the power cable outlet and receives the female end of a USB cable.
- The operative end of the female cable is removably retained in the sheath's open end, while the cord end is retained in the tapered closed end, positioning the connector flat and uncovered.
- The "surrounding bottom portion" of the sheath is attached to the "inner surface of the body."
- The sheath has at least one "ventilation opening on the top side."
U.S. Patent No. 10,931,138 - "Sheath for USB Charger" (Issued Feb. 23, 2021)
- Patent Identification: U.S. Patent No. 10,931,138, "Sheath for USB Charger," issued Feb. 23, 2021 (Compl. ¶7).
- Technology Synopsis: This patent claims a sheath for convenient charging, focusing on a structure with a "raised portion" that extends above the outer surface of a body. This raised portion contains a USB opening and is surrounded by a bottom portion that facilitates attachment to the body, securing a female USB connector in an accessible position ('138 Patent, Abstract; Compl. ¶79).
- Asserted Claims: The complaint asserts independent claim 23 (Compl. ¶67).
- Accused Features: The "raised integrated USB socket" on the accused Quadrion Bags is alleged to infringe this patent (Compl. ¶79).
U.S. Patent No. 11,601,009 - "Sheath for Convenient Charging" (Issued Mar. 7, 2023)
- Patent Identification: U.S. Patent No. 11,601,009, "Sheath for Convenient Charging," issued Mar. 7, 2023 (Compl. ¶8).
- Technology Synopsis: This patent claims a sheath for charging where the sheath is a "separate piece" that attaches to a body. When attached, its "raised portion" extends above the body's outer surface to hold a female cable connector in an accessible, flat position ('009 Patent, Abstract; Compl. ¶97).
- Asserted Claims: The complaint asserts independent claim 29 (Compl. ¶84).
- Accused Features: The integrated USB socket on the Quadrion Bags is alleged to be a "separate piece that attaches to the body" by being sewn into the fabric, thereby infringing this patent (Compl. ¶97).
III. The Accused Instrumentality
- Product Identification: The Quadrion Slim Backpack, the Quadrion Standard Backpack, and the Quadrion Messenger Bag, collectively referred to as the "Quadrion Bags" (Compl. ¶14, ¶18).
- Functionality and Market Context:
- The Quadrion Bags are marketed and sold by Samsonite, which the complaint identifies as the "world's largest travel luggage company" (Compl. ¶9). The key accused feature is an "integrated USB socket" that provides "USB power connectivity" (Compl. ¶41; p. 8). A product specifications table included in the complaint describes this feature as a "USB Port" that "lets you power devices on the go" (Compl. p. 8). The complaint includes a screenshot from Defendant's website showing the Quadrion Slim Backpack, which displays the external port (Compl. p. 5). This port allows users to connect a charging cable externally to a power bank stored inside the bag (Compl. ¶23).
- The products are sold through Samsonite's e-commerce website, company-operated retail stores, and other wholesale distribution channels (Compl. ¶14).
IV. Analysis of Infringement Allegations
'071 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a bag or luggage body having a placing space for placing a power storage device inside the bag or luggage body and a power cable outlet on the outer surface of the bag or luggage body | The Quadrion Bags have an internal space for a power storage device and an external power cable outlet. | ¶42 | col. 5:50-54 |
| a USB extension cable having a male connector and a female connector having four sides and an operative end | The Quadrion Bags incorporate a USB extension cable with both male and female connectors. | ¶43 | col. 5:54-57 |
| wherein the male connector of the USB extension cable is inside the bag or luggage body and is used to connect to the power storage device in the placing space | The male connector of the cable is located inside the bag and is used for connection to a power storage device. | ¶44 | col. 5:58-61 |
| wherein the female connector is retained outside and adjacent to the power cable outlet with one side of the four sides...in communication with the bag or luggage body, and the other three sides...are covered by a water proof sheath...and wherein the sheath is above and covers the power cable outlet | The female connector is held outside the bag, with three of its sides covered by a waterproof sheath that positions it flat and covers the outlet. | ¶45 | col. 5:62-65 |
| wherein the sheath does not cover the operative end of the female connector which is exposed and fixedly attached above the exterior of the bag such that the operative end of the female connector does not need to be moved and the bag or luggage body does not need to be opened... | The operative end of the Quadrion Bags' female connector is exposed, uncovered by the sheath, and fixedly attached to the exterior, allowing charging without opening the bag. | ¶46 | col. 6:3-9 |
'137 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a sheath having a left side, top side and right side, a first tapered closed end, a second open end and a surrounding bottom portion... | The Quadrion Bags include a sheath with these specified sides and ends, with the open end allowing for insertion of a USB cord. | ¶60 | col. 6:51-54 |
| wherein at least a portion of the sheath extends above an outer surface of a body, wherein the body has an inner surface, an outer surface and a power cable outlet between the inner surface and the outer surface | A portion of the sheath on the Quadrion Bags extends above the bag's outer surface, and the bag has inner and outer surfaces with a power cable outlet between them. | ¶61 | col. 6:55-59 |
| wherein the sheath is at the power cable outlet and the sheath receives a female end of a USB cable... | The sheath is located at the power cable outlet and receives a female USB cable end. | ¶62 | col. 6:59-62 |
| wherein the operative end of the female end of the USB cable is removably retained in the second open end of the sheath and the cord end...is retained in the first tapered closed end...to provide the female end...in a flat position with the operative end of the female connector being uncovered and above the outer surface... | The operative end of the USB cable is retained in the sheath's second opening and the cord is retained in the first tapered end, positioning the connector flat and uncovered. | ¶63 | col. 6:63-col. 7:2 |
| wherein the surrounding bottom portion is attached to the inner surface of the body | The surrounding bottom portion of the sheath is "sewn in between the fabric of both the inner and outer surface of the body." | ¶64 | col. 7:3-4 |
| wherein the sheath has at least one ventilation opening on the top side | The top side of the sheath of the Quadrion Bags is alleged to have "several ventilation openings." | ¶65 | col. 7:5-6 |
- Identified Points of Contention:
- Scope Questions: A central question for the '071 patent will be whether the integrated plastic housing for the USB port on the Quadrion Bags constitutes a "water proof sheath" as claimed. The complaint makes a conclusory allegation, but the actual material properties and construction will be subject to discovery and potential dispute (Compl. ¶45).
- Technical Questions: For the '137 patent, the allegation that the sheath has "at least one ventilation opening" raises a significant factual question (Compl. ¶65). It is unclear whether the accused product has specific design features for ventilation or if the Plaintiff is interpreting the properties of a standard material (e.g., woven fabric) as meeting this limitation. Similarly, the allegation that the sheath's bottom portion is "attached to the inner surface of the body" by being "sewn in between the fabric of both the inner and outer surface" presents a potential mismatch between the accused structure and the claim language that may be a focus of claim construction and non-infringement arguments (Compl. ¶64).
V. Key Claim Terms for Construction
The Term: "sheath" (appears in the asserted claims of the '071, '137, '138, and '009 patents)
- Context and Importance: The definition of "sheath" is fundamental to the infringement case for all asserted patents. Practitioners may focus on this term because its construction will determine whether the housing surrounding the accused USB port falls within the scope of the claims. The dispute may center on whether "sheath" implies a specific structure beyond a simple bezel or port housing.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification of the '071 patent describes the sheath as being for "water proofing" (col. 2:51-52), which could support an argument that any protective housing performing this function qualifies as a sheath.
- Evidence for a Narrower Interpretation: Figures in the patents depict the sheath as a distinct, often elongated component made of a "woven material" ('137 Patent, Fig. 1-2; col. 3:39-41). This could support a narrower construction requiring a structure with these specific characteristics, rather than any generic plastic housing.
The Term: "attached to the inner surface of the body" ('137 Patent, Claim 1)
- Context and Importance: This term is critical for determining infringement of the '137 patent because it dictates how the claimed sheath must be integrated into the bag. The complaint alleges this element is met because the accused sheath is "sewn in between the fabric of both the inner and outer surface" (Compl. ¶64). The court will have to decide if this configuration satisfies the claim language.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A plaintiff may argue that being "sewn in between" layers necessarily involves an attachment that includes the inner surface, thus meeting the limitation.
- Evidence for a Narrower Interpretation: A defendant may argue that the claim requires a direct connection primarily or exclusively to the inner surface layer, not a configuration where the component is sandwiched between both the inner and outer surfaces. The specification does not appear to provide an explicit definition, making this a likely point of contention.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement. Inducement is predicated on Defendant's marketing materials and instructions, such as website language that encourages customers to use the built-in USB port to "power devices on the go" and "keep you charged and stress-free" (Compl. ¶23, ¶32). Contributory infringement is alleged on the basis that the Quadrion Bags are a staple article whose USB charging feature is infringing and not suitable for substantial non-infringing use (Compl. ¶34-35).
- Willful Infringement: Willfulness is alleged based on both pre-suit and post-suit knowledge. The complaint asserts Defendant knew or should have known of the patents due to its own market research, the public nature of prior patent litigation against competitors (Targus and Wenger) on the same family of patents, and Plaintiff's own products being marked with the patent numbers (Compl. ¶24, ¶33). Post-suit willfulness is alleged based on Defendant's receipt of the original complaint in March 2023 (Compl. ¶36).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "sheath," which the patents depict as a specific, often woven component, be construed broadly enough to read on the integrated plastic USB port housing of the accused Samsonite bags? The outcome of this claim construction will likely determine infringement across all four asserted patents.
- A key evidentiary question will be one of factual correspondence: can Plaintiff provide sufficient evidence to demonstrate that the accused products meet highly specific claim limitations, such as the presence of "ventilation opening[s]" and a method of attachment that satisfies the "attached to the inner surface" requirement of the '137 patent?
- A third central question will concern willfulness and knowledge: will Plaintiff succeed in proving that Defendant had pre-suit knowledge of the patents-in-suit based on circumstantial evidence like prior litigation against its competitors, or will knowledge be tied only to the date of service of the complaint? This will be critical for the claim of willful infringement and any potential for enhanced damages.