DCT
2:18-cv-00267
Handstands Promo v. Advance Auto Parts
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Handstands Promo, LLC (Utah)
- Defendant: Advance Auto Parts, Inc. d/b/a Autocraft (Delaware)
- Plaintiff’s Counsel: Thorpe North & Western LLP
- Case Identification: 2:18-cv-00267, D. Utah, 03/28/2018
- Venue Allegations: Plaintiff alleges venue is proper in the District of Utah because Defendant has committed acts of infringement in the district, maintains a regular and established place of business there, and conducts business in the district related to the patents-in-suit.
- Core Dispute: Plaintiff alleges that Defendant’s "Dash Cling" automotive accessory infringes two utility patents and one design patent related to frictional holding pads for electronic devices.
- Technical Context: The technology concerns non-adhesive, frictional pads used to secure mobile devices, such as cell phones and GPS units, on a vehicle's dashboard.
- Key Procedural History: The complaint alleges that Plaintiff has provided constructive notice to the public of the patents-in-suit by marking its own commercial products, which may serve as a basis for its willfulness allegations.
Case Timeline
| Date | Event |
|---|---|
| 2001-07-31 | Priority Date (’846, ’349, ’396 Patents) |
| 2013-07-23 | Issue Date (U.S. Patent No. 8,490,846) |
| 2014-10-07 | Issue Date (U.S. Patent No. 8,851,349) |
| 2015-09-22 | Issue Date (U.S. Patent No. D739,396) |
| 2018-03-28 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,490,846, “Frictional Holding Pad with Inclined Grip,” issued July 23, 2013
The Invention Explained
- Problem Addressed: The patent's background describes the shortcomings of prior art methods for mounting electronic devices in vehicles, noting that suction cups may not adhere to contoured dashboards and can illegally obstruct a driver's view, while adhesives can damage surfaces or leave residue ('846 Patent, col. 2:1-14).
- The Patented Solution: The invention is a flexible, "tacky" frictional pad that clings to a dashboard without chemical adhesives. It features a pair of opposing sidewalls, each containing an inclined slot, which allows a handheld electronic device to be held securely at an angle for improved viewing ('846 Patent, Abstract; Fig. 11). The flexibility of the pad allows it to conform to curved surfaces and helps the slots grip the device ('846 Patent, col. 8:16-23).
- Technical Importance: The technology provides a non-permanent method for securely mounting a portable electronic device on a vehicle dashboard at an incline for better visibility, addressing limitations of prior mounting systems ('846 Patent, col. 2:32-39).
Key Claims at a Glance
- The complaint asserts independent claim 1 ('Compl. ¶¶22, 24).
- Essential elements of Claim 1 include:
- A frictional pad for holding an electronic device in a "non-adhesive, non-slip, tacky fashion" on a vehicle dashboard or console.
- A pair of opposite sidewalls extending upward from the pad.
- A pair of "inclined slots," one in each sidewall, oriented at a non-perpendicular angle to the pad.
- The electronic device is removably disposable both on the pad's top surface and within the pair of inclined slots.
- The pad is "flexible and bending at the pair of slots" to increase or decrease the width of the slots to "grip" the device.
- The complaint alleges infringement of "the claims" of the patent, which may include dependent claims not explicitly listed (Compl. ¶23).
U.S. Patent No. 8,851,349, “Frictional Holding Pad with Inclined Grip,” issued October 7, 2014
The Invention Explained
- Problem Addressed: The '349 Patent addresses the same technical problem as the '846 Patent: providing a stable, non-damaging way to mount electronic devices in a vehicle for easy viewing ('349 Patent, col. 2:1-11).
- The Patented Solution: The solution is a frictional holding pad with inclined slots, similar to that described in the '846 Patent. However, the claims of the '349 Patent add specific structural limitations, requiring the sidewalls to be part of a larger "perimeter wall" that surrounds a majority of the pad and includes a front wall that is lower in height than the sidewalls ('349 Patent, col. 10:9-17). This structure creates a defined pocket for the device.
- Technical Importance: This patent refines the holding pad concept by claiming a specific structural arrangement with a perimeter wall, intended to provide enhanced containment and stability for the held device ('349 Patent, col. 7:1-8).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶38).
- Essential elements of Claim 1 include:
- A frictional pad with top/bottom surfaces, opposite sidewalls, and inclined slots, similar to the '846 Patent.
- The pair of opposite sidewalls "form a portion of a perimeter wall surrounding a majority of the pad."
- The perimeter wall "includes a front wall with an elevational height less than an elevational height of the pair of sidewalls."
- The complaint alleges infringement of "the claims" of the patent (Compl. ¶37, which contains a typographical error referencing the '846 patent but appears under the '349 patent cause of action).
Multi-Patent Capsule: U.S. Patent No. D739,396
- Patent Identification: D739,396, "Frictional Holding Pad with Inclined Grip," issued September 22, 2015.
- Technology Synopsis: This is a design patent that claims the unique ornamental appearance of a frictional holding pad. The claimed design shows a tray-like body with a textured bottom surface, a raised perimeter wall, and opposing sidewalls featuring inclined slots (D'396 Patent, Fig. 1).
- Asserted Claims: The patent contains a single claim for "The ornamental design for the frictional holding pad with inclined grip, as shown and described" (Compl. ¶¶50-51).
- Accused Features: The complaint alleges that the overall visual appearance of the Defendant's "Dash Cling" product is substantially the same as the patented design, which would confuse an ordinary observer (Compl. ¶18). A side-by-side photograph comparing the accused product to a figure from the '396 Patent is provided to illustrate the alleged similarity (Compl. ¶17).
III. The Accused Instrumentality
- Product Identification: The accused product is a frictional pad marketed as the "Dash Cling," part number AC2055, and sold under the Defendant's "Autocraft" brand (Compl. ¶15).
- Functionality and Market Context:
- The complaint describes the Dash Cling as a "frictional pad product" intended for use in vehicles (Compl. ¶15). Visual evidence provided in the complaint shows a black, tray-shaped object with a textured surface, raised sidewalls containing slots, and a lower front wall. This image shows the Dash Cling product removed from its packaging (Compl. ¶15).
- The product is allegedly sold nationwide through "brick and mortar and online retailers" (Compl. ¶14). The complaint does not provide further details on its market position or commercial success.
IV. Analysis of Infringement Allegations
The complaint references, but does not include, claim chart exhibits detailing its infringement theories (Compl. ¶¶25, 39). The analysis below is based on the complaint's narrative allegations, claim language, and visual evidence.
'846 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A frictional pad...upon which a cell phone, GPS or digital music player is selectively disposed and held in a non-adhesive, non-slip, tacky fashion... | The Accused Product is a "Dash Cling" frictional pad sold as an automotive accessory for holding items on a dashboard. | ¶¶15, 23 | col. 2:39-46 |
| a) top and bottom surfaces, the bottom surface having a lowermost contact surface that is disposed on the upward facing support surface of the dashboard... | The Dash Cling product is a physical pad with top and bottom surfaces, intended for placement on a vehicle dashboard. | ¶¶15, 24 | col. 5:21-29 |
| b) a pair of opposite sidewalls extending upward on opposite sides of the pad; | The visual evidence shows the Dash Cling has two opposing, raised sidewalls. | ¶¶15, 24 | col. 7:14-16 |
| c) a pair of inclined slots each formed in a different one of the pair of sidewalls oriented at a non-perpendicular angle with respect to the pad... | The visual evidence shows slots within the sidewalls of the Dash Cling that appear to be inclined relative to the base of the pad. | ¶¶15, 24 | col. 7:31-41 |
| e) the cell phone, GPS or digital music player removably disposable in the pair of slots and held inclined... | The slots in the Dash Cling are configured to receive and hold an electronic device at an incline. | ¶¶15, 24 | col. 8:61-64 |
| f) the pad being flexible and bending at the pair of slots to increase a width of each of the pair of slots to receive the...player therein, and to decrease the width...to grip the...player therein. | The complaint alleges infringement of the entire claim, which requires this functional gripping behavior. | ¶¶22, 24 | col. 8:16-23 |
- Identified Points of Contention:
- Functional Question: The complaint does not provide specific factual evidence demonstrating that the accused Dash Cling performs the function recited in claim 1(f), namely that it "bend[s] at the pair of slots" to actively "grip" a device. The infringement analysis will depend on whether the product's material properties and design achieve this specific dynamic gripping action, or if it merely holds a device passively.
- Scope Question: The meaning of "tacky" may be disputed. The patent specification links this term to a specific polyurethane material, which could support a narrow interpretation ('846 Patent, col. 8:42-54). Plaintiff may argue for a broader, functional definition covering any material that provides sufficient non-slip grip without chemical adhesive.
'349 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| [Elements a-e are substantially similar to the '846 Patent analysis above] | [The Dash Cling product is alleged to have the corresponding features, as shown in the visual evidence] | ¶¶15, 38 | col. 10:1-8 |
| f) the pair of opposite sidewalls form a portion of a perimeter wall surrounding a majority of the pad; and | The visual evidence of the Dash Cling shows the two raised sidewalls are connected by front and rear walls, forming a continuous perimeter structure. | ¶¶15, 38 | col. 7:1-5 |
| g) the perimeter wall includes a front wall with an elevational height less than an elevational height of the pair of sidewalls. | The visual evidence shows the Dash Cling has a low front wall and comparatively taller sidewalls. | ¶¶15, 38 | col. 7:17-21 |
- Identified Points of Contention:
- Structural Question: Unlike the '846 patent, the key distinguishing limitations in the asserted '349 patent claim are purely structural (a "perimeter wall" with a "front wall" of lesser height). The infringement analysis for these elements may be more straightforward and reliant on a direct physical comparison of the accused product to the claim language, as suggested by the visual evidence at paragraph 17 comparing the product to a patent figure.
V. Key Claim Terms for Construction
- The Term: "the pad being flexible and bending at the pair of slots to...grip the...player" ('846 Patent, claim 1(f))
- Context and Importance: This functional language is a key limitation of the asserted claim of the '846 Patent. The outcome of the infringement analysis for this patent may depend on whether the accused product is found to perform this specific action, rather than just being made of a flexible material.
- Intrinsic Evidence for a Broader Interpretation: A party could argue the term is met so long as the inherent flexibility of the pad material causes some deformation around the slots when a device is inserted, thereby helping to hold it. The specification describes the pad generally as "flexible and capable of bending" ('846 Patent, col. 8:16-17).
- Intrinsic Evidence for a Narrower Interpretation: A party could argue this requires a specific, active gripping mechanism. The specification includes figures showing the pad actively bending at the slots to "increase a width" and "decrease the width" to grip a device, suggesting more than incidental flexing ('846 Patent, Fig. 15; col. 8:16-23).
- The Term: "perimeter wall" ('349 Patent, claim 1(f)-(g))
- Context and Importance: This structural term is central to the asserted claim of the '349 Patent. Its construction will determine if the accused product's raised edges meet the claimed configuration. Practitioners may focus on this term because its interpretation dictates the required relationship between the front, back, and side walls.
- Intrinsic Evidence for a Broader Interpretation: The specification describes the wall as extending "upwardly from a perimeter of the pad, or near a perimeter of the pad" and that it "can surround a majority of the pad," which could be read to cover various configurations of raised edges ('349 Patent, col. 7:1-5).
- Intrinsic Evidence for a Narrower Interpretation: The figures show a continuous, unbroken wall structure where the sidewalls, front wall, and rear wall are integrally formed ('349 Patent, Figs. 1, 4). A party could argue that "perimeter wall" requires this specific integral and continuous structure, not just a collection of separate raised edges.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement. The inducement allegation is based on Defendant's "packaging and/or manuals" that allegedly instruct customers on how to use the accused product in an infringing manner (Compl. ¶¶29, 43). The contributory infringement allegation is based on the assertion that the accused product's features are material to practicing the patents and have no substantial non-infringing use (Compl. ¶¶31, 45).
- Willful Infringement: The complaint alleges willful infringement, asserting that Defendant knew of the patents-in-suit at least through the constructive notice provided by Plaintiff's patent marking on its own products (Compl. ¶¶28, 42). It further alleges that Defendant acted in an "objectively reckless manner" by selling the accused product despite a high likelihood of infringement (Compl. ¶¶34, 48).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of function versus form: Does the accused product's infringement of the '846 patent depend on proving the specific function of "bending...to grip," a dynamic action not easily proven from a static product? In contrast, does the '349 patent's focus on physical form—the "perimeter wall" structure—present a more direct, structural infringement theory that is easier to evidence?
- A second key question will be one of definitional scope: How will the court construe the material property "tacky"? Will it be defined by a functional outcome (i.e., provides non-slip grip), or will it be tied to the specific polyurethane composition and hardness values detailed in the patent specifications, potentially narrowing the scope of the claims?
- For the design patent, the central question for the court will be the "ordinary observer" test: Is the ornamental design of the accused "Dash Cling" substantially the same as the design claimed in the '396 patent, such that an ordinary observer would be deceived into purchasing the accused product believing it to be the patented one?