DCT
2:19-cv-00936
Handstands Promo v. Stanley Black & Decker
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Handstands Promo, LLC (Utah)
- Defendant: Stanley Black & Decker, Inc. (Connecticut)
- Plaintiff’s Counsel: Thorpe North & Western, LLP
- Case Identification: 2:19-cv-00936, D. Utah, 11/21/2019
- Venue Allegations: Venue is alleged to be 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 a substantial part of the infringing activity occurred in the district.
- Core Dispute: Plaintiff alleges that Defendant’s "Stanley Sticky Pad" products infringe two patents related to frictional, non-adhesive pads designed to hold personal items on vehicle dashboards.
- Technical Context: The technology addresses the need for a non-permanent, non-damaging method to secure small electronic devices and other items inside a moving vehicle, a common challenge in the automotive accessory market.
- Key Procedural History: The complaint alleges that Plaintiff provided constructive notice to the public of the patents-in-suit by marking its own commercial products in accordance with 35 U.S.C. § 287. The asserted patents are related, sharing a common priority claim to provisional applications filed in 2001.
Case Timeline
| Date | Event |
|---|---|
| 2001-07-31 | Earliest Priority Date for ’602 and ’867 Patents |
| 2001-12-01 | Alleged first use of Plaintiff's "Sticky Pad" product |
| 2006-10-24 | U.S. Patent No. 7,125,602 Issues |
| 2007-08-07 | U.S. Patent No. 7,252,867 Issues |
| 2019-11-21 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,125,602 - "Frictional Holding Pad" (Issued Oct. 24, 2006)
The Invention Explained
- Problem Addressed: The patent describes the problem of personal items, such as cell phones and sunglasses, sliding around on open surfaces inside a moving vehicle. Conventional solutions like glove compartments are inconvenient, while dedicated mounting devices are often item-specific, clutter the interior, and can permanently damage or devalue the vehicle. (’602 Patent, col. 1:11-2:11).
- The Patented Solution: The invention is a flexible, frictional pad that removably secures items without chemical adhesives. It features a "tacky" bottom surface that clings to a vehicle's dashboard and a "tacky" top surface that clings to an item. The key innovation is a design where the bottom surface has a greater ability to cling to the vehicle (e.g., by being smoother or having more contact area) than the top surface has to the item, ensuring the pad remains in place when the item is lifted off. (’602 Patent, Abstract; col. 2:28-39; col. 6:23-32).
- Technical Importance: This technology provided a universal, non-damaging, and reusable solution for securing a wide variety of personal electronic devices and other small objects within a vehicle. (’602 Patent, col. 2:20-27).
Key Claims at a Glance
- The complaint asserts infringement of at least independent Claim 1 (Compl. ¶26, ¶28).
- Independent Claim 1 recites a combination comprising:
- (a) a dashboard or console of a vehicle;
- (b) a pad with a top and a bottom, with the bottom disposed on the dashboard or console;
- (c) the top having a "contoured top surface" extending over a majority of the top;
- (d) the top surface including a "plurality of protrusions or indentations";
- (e) the bottom having a "bottom surface smoother than the top surface" and configured to "frictionally cling" to the vehicle surface; and
- (f) an item (e.g., a cell phone) removably disposed on the pad.
U.S. Patent No. 7,252,867 - "Frictional Holding Pad" (Issued Aug. 7, 2007)
The Invention Explained
- Problem Addressed: The patent addresses the same technical problem as the ’602 Patent: preventing items from sliding around inside a vehicle without using damaging or inconvenient mounting hardware. (’867 Patent, col. 1:20-2:11).
- The Patented Solution: This patent also describes a frictional holding pad but claims a different combination of features. The invention is a pad with "different top and bottom surfaces", where the bottom surface frictionally clings to a dashboard and "at least a substantial portion" of the top surface is contoured with protrusions or indentations to hold an item. This patent also explicitly introduces the concept of a contoured bottom surface to improve grip on the vehicle dashboard. (’867 Patent, Abstract; col. 2:31-48).
- Technical Importance: The invention refines the design of frictional holding pads by introducing variations, such as different top and bottom surface contours, that could enhance performance on diverse vehicle interior surfaces. (’867 Patent, col. 7:60-8:11).
Key Claims at a Glance
- The complaint asserts infringement of at least independent Claim 1 (Compl. ¶40, ¶42).
- Independent Claim 1 recites a combination comprising:
- a) a dashboard or console of a vehicle;
- b) a pad with "different top and bottom surfaces", where the bottom surface frictionally clings to the dashboard;
- c) "at least a substantial portion of the top surface" being a "contoured top surface" with protrusions or indentations; and
- d) an item (e.g., a cell phone) removably disposed on the pad and frictionally clinging to it.
III. The Accused Instrumentality
Product Identification
The accused products are the "Stanley Sticky Pad (Small)" (S4005) and "Stanley Sticky Pad (XL)" (S4006) (Compl. ¶19).
Functionality and Market Context
The complaint identifies the Accused Products as "frictional pad products" intended for consumers (Compl. ¶19). Visual evidence provided in the complaint depicts a flexible, dark-colored pad with a textured, grid-like top surface, shown holding a pair of glasses and a smartphone. This image shows the "Stanley Sticky Pad (Small)" and "Stanley Sticky Pad (XL)" being used to hold items like glasses and a smartphone. (Compl. ¶19, p. 5). The complaint alleges these products are sold through Stanley's website and major online and brick-and-mortar retailers, including the same channels as Plaintiff's products, suggesting they are direct competitors (Compl. ¶20-21).
IV. Analysis of Infringement Allegations
’602 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| (a) a dashboard or console of a vehicle; | The complaint alleges the Accused Products are used by customers in combination with a vehicle dashboard. | ¶30, ¶31 | col. 7:33-36 |
| (b) a pad having a bottom disposed on the dashboard or console of the vehicle, and a top; | The Accused Product is a pad designed to be placed on a vehicle surface. | ¶19 | col. 7:37-39 |
| (c) the top having a contoured top surface extending over a majority of the top; | The image of the Accused Product shows a textured surface that extends over the entire top of the pad. | ¶19 | col. 7:40-42 |
| (d) the top surface including a plurality of protrusions or indentations; | The visual evidence depicts a grid-like texture on the Accused Product's top surface, which appears to be composed of protrusions and/or indentations. | ¶19 | col. 7:43-44 |
| (e) the bottom having a bottom surface smoother than the top surface and configured to contact and frictionally cling to the vehicle surface; | The complaint describes the Accused Product as a "frictional pad" and "Sticky Pad," which implies a bottom surface that clings to a vehicle. The relative smoothness compared to the top surface is not explicitly alleged. | ¶19 | col. 7:45-48 |
| (f) an item...removably disposed on the top surface of the pad...selected from the group consisting of: a cell phone...sunglasses, eye glasses... | The complaint's marketing image for the Accused Product shows it holding a smartphone and eyeglasses, both of which are items enumerated in the claim. | ¶19 | col. 7:49-54 |
- Identified Points of Contention:
- Technical Question: The complaint does not contain specific factual allegations or evidence that the bottom surface of the Accused Product is "smoother than the top surface" as required by Claim 1(e). This relative physical characteristic will likely be a key factual dispute requiring discovery and expert testimony.
- Legal Question: The claim is for a "combination" that includes a "dashboard." The complaint alleges Stanley's direct infringement by "making, using, selling, offering for sale, and/or importing" the pad itself (Compl. ¶27). A potential dispute may arise over whether selling the pad alone can constitute direct infringement of the full combination claim, or if liability must be established through indirect infringement theories, which are also pled.
’867 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a) a dashboard or console of a vehicle; | The complaint alleges the Accused Product is used by customers in combination with a vehicle dashboard. | ¶44, ¶45 | col. 9:8-10 |
| b) a pad having different top and bottom surfaces, the bottom surface is disposed on and frictionally clings to the dashboard or console of the vehicle; | The Accused Product is a "frictional pad" with a textured top (Compl. ¶19). For it to function as described, its bottom surface must be different to provide cling to a dashboard. | ¶19, ¶42 | col. 9:11-14 |
| c) at least a substantial portion of the top surface is a contoured top surface with a plurality of protrusions or indentations; | Visual evidence shows the Accused Product's entire top surface is textured, which would meet the "substantial portion" requirement. | ¶19 | col. 9:15-18 |
| d) an item...removably disposed on and frictionally clings to the top surface of the pad... | The image of the Accused Product shows it holding items such as a smartphone and eyeglasses. | ¶19 | col. 9:19-25 |
- Identified Points of Contention:
- Technical Question: What constitutes "different top and bottom surfaces"? The complaint provides no specific allegations about the nature of the Accused Product's bottom surface. The infringement analysis will depend on whether having a textured top and a (presumably) non-textured or differently textured bottom meets this limitation.
- Scope Question: The term "substantial portion" in Claim 1(c) may be a point of construction. While the accused product appears fully contoured, the scope of this term could become relevant for other potential designs.
V. Key Claim Terms for Construction
The Term: "frictionally cling"
Context and Importance: This term defines the core functional mechanism of the invention and distinguishes it from prior art using chemical adhesives. The construction of this term will be critical to determining whether the accused "Sticky Pad" performs the claimed function in the same way. Practitioners may focus on this term because its definition—whether it requires a specific "tacky" quality or merely a high coefficient of friction—will dictate the scope of infringement.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states the pad "tends to cling to the surface...in a mechanical fashion, as opposed to a chemical or adhesive manner," suggesting the key distinction is the absence of a chemical bond (’602 Patent, col. 6:16-18).
- Evidence for a Narrower Interpretation: The specification repeatedly describes the surfaces as "tacky" and links this property to specific materials like "expanded vinyl" or "molded polyurethane" (’602 Patent, col. 6:15; col. 5:17-21). A defendant may argue that "frictionally cling" is not just any high-friction interaction but is limited to the specific "tacky" property provided by the disclosed embodiments.
The Term: "contoured top surface"
Context and Importance: This structural limitation is present in the asserted claims of both patents. The definition will determine what kind of surface textures fall within the claims' scope.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the contour as potentially including "protrusions and/or indentations" that can be "rounded or curvilinear to form a more gradual transition" and create a "wavy or...leather-like texture" (’602 Patent, col. 6:60-67). This language suggests a wide variety of non-flat surfaces could qualify.
- Evidence for a Narrower Interpretation: The figures primarily depict ordered arrays of discrete protrusions or indentations (e.g., ’602 Patent, Fig. 5). A party could argue the term should be construed more narrowly to require such structured, repeating patterns, rather than any irregular or randomly textured surface.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement based on Stanley's "packaging, marketing material, advertisements and/or manuals" that allegedly instruct customers on how to use the Accused Products in an infringing manner (i.e., placing them on a dashboard to hold an item) (Compl. ¶33, ¶47). Contributory infringement is alleged on the basis that the Accused Products' features are material to practicing the invention and lack substantial non-infringing uses (Compl. ¶35, ¶49).
- Willful Infringement: Willfulness is alleged based on pre-suit knowledge. The complaint asserts that Stanley had knowledge of the patents-in-suit because Plaintiff's "Sticky Pad®" products are "prominent" and patent-marked in the same commercial channels (e.g., Amazon.com) where Stanley sells its competing products (Compl. ¶21, ¶32, ¶46). This alleged knowledge, combined with continued sales, is asserted to be objectively reckless (Compl. ¶24, ¶52).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central evidentiary issue will be one of physical characterization: does the accused "Stanley Sticky Pad" possess the specific physical structures required by the claims, such as a bottom surface that is "smoother than the top surface" (’602 Patent) or "different" top and bottom surfaces (’867 Patent)? The complaint's lack of explicit factual allegations on these points makes them primary targets for discovery.
- The case may turn on a question of claim construction: how broadly will the court define "frictionally cling"? The outcome will depend on whether the term is construed to mean any non-adhesive, high-friction surface, or if it is limited to the specific "tacky" quality described in connection with the patent's preferred embodiments, which could significantly impact the infringement analysis.
- A key factual question for the willfulness claim will be proof of knowledge: can Plaintiff establish that Stanley had actual, pre-suit knowledge of the patents-in-suit? The theory of constructive knowledge via patent marking on products in a shared marketplace will likely be heavily contested, requiring a fact-intensive inquiry into what Stanley knew and when.