DCT
2:17-cv-00760
National Products Inc v. Does 1 5
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: National Products, Inc. (Washington)
- Defendant: JOHN DOES 1-5, one doing business as ToGames, one using tradename Cimiva (Jurisdiction unknown)
- Plaintiff’s Counsel: Stokes Lawrence, P.S.
- Case Identification: 2:17-cv-00760, W.D. Wash., 05/17/2017
- Venue Allegations: Venue is asserted based on Defendants' business activities purposefully directed at the judicial district, including the sale of accused products through online retailers, and because the Plaintiff resides and the alleged injuries occurred within the district.
- Core Dispute: Plaintiff alleges that Defendant’s "X-Grip" style mounting systems for electronic devices willfully infringe two of its utility patents and two of its design patents related to device mounting technology.
- Technical Context: The technology concerns spring-actuated, multi-armed clamping systems designed to securely hold portable electronic devices, such as mobile phones and GPS units, in various settings like vehicles.
- Key Procedural History: The complaint notes that Plaintiff's related "Hourglass Shape" trade dress, also asserted in this suit, is associated with a previously issued but now expired patent. No prior litigation, licensing history, or post-grant proceedings are mentioned for the patents-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 1992-01-01 | Plaintiff's RAM (Round-A-Mount) product line introduced |
| 2004-06-07 | Priority Date for U.S. Patent No. D571,278 |
| 2008-06-17 | U.S. Patent No. D571,278 S1 Issued |
| 2011-06-15 | Priority Date for U.S. Patent Nos. 8,544,161; 8,622,359; D703,657 S |
| 2013-10-01 | U.S. Patent No. 8,544,161 Issued |
| 2014-01-07 | U.S. Patent No. 8,622,359 Issued |
| 2014-04-29 | U.S. Design Patent No. D703,657 S Issued |
| 2017-05-17 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,544,161 - "Method for Mounting a Portable Device" (Issued Oct. 1, 2013)
The Invention Explained
- Problem Addressed: The patent's background describes prior art spring-driven clamps as having limited utility because they require a narrow, rigid external surface (like a computer monitor bezel) to mount upon, and their connection mechanism was typically a standard camera thread, restricting the types of devices they could hold (ʼ161 Patent, col. 1:12-27).
- The Patented Solution: The invention is a method for using a clamping device to grip a portable electronic device itself, rather than attaching the device to a separate holder. The method involves mounting a holder, rotating its opposing, spring-loaded arms apart to open the grip, inserting the electronic device between the arms' "fingers," and then allowing a biasing element to resiliently pull the arms together, securing the device in a compressive grip (ʼ161 Patent, col. 1:38-46; col. 2:1-5).
- Technical Importance: This method provided a universal solution for quickly securing various sizes of hand-held electronics without requiring device-specific cradles or holders (ʼ161 Patent, col. 1:53-57).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶52).
- Essential elements of Claim 1 (a method claim) include:
- Mounting a portable device holder that has an interface surface and a pair of rigid arms rotatable on a common pivot.
- Spreading the arms apart by rotation, which resiliently compresses a biasing member.
- Inserting a portable device between upright opposing clamping fingers on the arms.
- Biasing the fingers into a compressive clamping relationship with the device.
- The complaint does not explicitly reserve the right to assert other claims of the '161 Patent.
U.S. Patent No. 8,622,359 - "Mounting for a Portable Device" (Issued Jan. 7, 2014)
The Invention Explained
- Problem Addressed: The patent addresses the same limitations of prior art clamps as its parent, the '161 Patent: a dependency on specific external mounting surfaces and non-versatile connection types (ʼ359 Patent, col. 1:12-28).
- The Patented Solution: This patent claims the physical apparatus used to perform the method of the '161 Patent. The invention is a mounting device with a body containing two pivots, upon which a pair of rigid arms are mounted to cross in a "substantially X-shaped pattern." These arms extend through slots in the body and are pulled together by a resilient biasing member, allowing them to clamp onto a portable device ('359 Patent, Abstract; col. 1:47-63). The use of two distinct pivots is a feature of the described embodiments ('359 Patent, Fig. 12).
- Technical Importance: The claimed apparatus provides a robust and adaptable physical structure for securely gripping a wide range of electronic devices of varying dimensions (ʼ359 Patent, col. 1:38-40).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 8, and dependent claims thereto (Compl. ¶53).
- Essential elements of Claim 1 (an apparatus claim) include:
- A body with a base, a cover, peripheral slots, and two pivots.
- Two rigid, crossed arms pivotably mounted on different pivots and extending through the slots.
- A clamping finger on the ends of the arms.
- A handle for rotating at least one arm.
- A biasing member to pull the fingers together.
- Essential elements of Claim 8 (an apparatus claim) include:
- A body with a base, a cover, an interior space, and two pivots.
- A pair of rigid arms mounted on the two pivots in an "X-shaped pattern."
- Each arm has a rotation portion coupled to a pivot, a pair of clamping fingers, and a handle.
- A biasing member coupled between attachment points on the arms.
U.S. Design Patent No. D703,657 S - "Quick Mounting Device"
- Patent Identification: D703,657 S, "Quick Mounting Device," Issued Apr. 29, 2014.
- Technology Synopsis: The patent claims the ornamental design for a device holder characterized by a central circular body from which four arms extend in an "X" configuration. The claimed design is for the visual appearance of the holder itself, as depicted in the patent figures.
- Asserted Claims: The single claim for the ornamental design as shown and described.
- Accused Features: The complaint alleges that the overall visual appearance of the "Infringing Cellphone Holder" infringes the patented design (Compl. ¶54). The visual evidence in the complaint shows the accused product has a similar four-armed, "X" style appearance (Compl. ¶49).
U.S. Design Patent No. D571,278 S1 - "Configurable Mounting Bracket"
- Patent Identification: D571,278 S1, "Configurable Mounting Bracket," Issued Jun. 17, 2008.
- Technology Synopsis: The patent claims the ornamental design for a mounting bracket base. The design consists of a diamond-shaped plate with rounded ends and a ball joint extending from its center, a common component in modular mounting systems.
- Asserted Claims: The single claim for the ornamental design as shown and described.
- Accused Features: The complaint alleges that the "Infringing Cellphone Holder" infringes this design patent (Compl. ¶55). The image of the accused product includes a mounting base component (Compl. ¶49).
III. The Accused Instrumentality
Product Identification
The accused product is identified as the "X-Grip RAM Motorcycle Bike Car Mount Cellphone Holder USB Charger for Phone BS," also referred to as the "Infringing Cellphone Holder" (Compl. ¶50, ¶67).
Functionality and Market Context
The complaint includes a photograph of the accused product, which depicts a spring-loaded, four-armed clamping device designed to hold a cellphone (Compl. ¶49). This image shows the "Defendant's Product" mounted on what appears to be a handlebar clamp (Compl. ¶49). Plaintiff alleges this product bears designs and features that copy NPI's patented "X-Grip" and other designs (Compl. ¶¶49-51). The complaint further alleges that Defendants sell these products through online retailers like Amazon, that they directly compete with NPI's own products, and that they are of "inferior quality" (Compl. ¶16, ¶59, ¶69).
IV. Analysis of Infringement Allegations
The complaint alleges infringement in a conclusory manner without providing a detailed element-by-element analysis. The following charts are based on the complaint's allegations and visual evidence provided.
’161 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| on an external mounting surface, mounting a portable device holder comprising an interface surface and a pair of substantially rigid arms each rotatable on a common pivot... | The accused product is a portable device holder, shown mounted to a handlebar clamp, and appears to have four rigid arms that rotate from a central body (Compl. ¶49). | ¶49, ¶52, ¶67 | col. 3:41-52 |
| spreading apart the arms of the portable device holder by rotation... wherein spreading apart the arms by rotation further comprises resiliently compressing a biasing member | The visual appearance of the accused product as a spring-loaded "X-Grip" style mount suggests its arms are spread apart against a spring force to insert a device, which would compress an internal biasing member (Compl. ¶49). | ¶49, ¶51, ¶52 | col. 5:48-62 |
| inserting a portable device between substantially upright opposing clamping fingers that are projected from the arms | The accused product has four rubber-tipped fingers at the ends of its arms, positioned to grip the corners or sides of a portable electronic device. The image of the accused product shows a phone-like object held by these fingers (Compl. ¶49). | ¶49, ¶52 | col. 6:35-40 |
| biasing the opposing clamping fingers into a compressive clamping relationship with the portable device | The inferred spring-loading mechanism of the accused product would cause the arms and fingers to exert a continuous compressive force on the inserted device to hold it securely. | ¶49, ¶52 | col. 6:41-45 |
’359 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a body comprising a base portion substantially covered by a cover portion with a plurality of peripheral slots formed therebetween, and two pivots in spaced apart positions... | The accused product has a central body from which the arms extend, presumably through slots. The internal pivot structure is not visible from the complaint's external photograph (Compl. ¶49). | ¶49, ¶53 | col. 7:26-34 |
| two substantially rigid crossed arms that are spreadable about the body, each of the arms pivotably mounted on different ones of the two pivots and extended outwardly through the slots... | The accused product clearly shows two arms that cross each other in an "X" shape (Compl. ¶49). The complaint alleges these infringe the patent, implying they are mounted on internal pivots as claimed. | ¶49, ¶53 | col. 7:35-41 |
| ...and further comprising a clamping finger adjacent to opposite ends thereof and positioned externally of the body and projected above the cover portion thereof | Each of the four arm-ends on the accused product terminates in an upward-projecting, rubber-tipped finger for gripping a device. | ¶49, ¶53 | col. 7:39-44 |
| a biasing member coupled for biasing together opposing pairs of the clamping fingers | The "X-Grip" design of the accused product implies the presence of an internal biasing member (e.g., a spring) that provides the clamping force for the arms and fingers. | ¶49, ¶53 | col. 7:48-51 |
- Identified Points of Contention:
- Structural Questions: The complaint provides only an external photograph of the accused product. A primary technical question will be whether the product's internal mechanism matches the claimed structures. Specifically, does the accused product contain the "two pivots" required by the '359 Patent, or does it use a different configuration, such as the "common pivot" described in the '161 Patent?
- Scope Questions: For the '161 method patent, a legal question may arise as to whether Defendants' alleged acts of manufacturing and selling an apparatus constitute direct infringement of a method claim, or whether Plaintiff must rely solely on its theory of induced infringement, which carries a higher burden of proof regarding intent.
V. Key Claim Terms for Construction
- The Term: "common pivot" ('161 Patent, Claim 1) vs. "two pivots" ('359 Patent, Claim 1 and 8)
- Context and Importance: The distinction between a "common pivot" and "two pivots" may be dispositive for infringement of the apparatus claims in the '359 Patent. Practitioners may focus on this distinction because the parent '161 Patent claims a method using a "common pivot," while the continuation-in-part '359 Patent claims an apparatus with "two pivots." This suggests a potentially deliberate evolution in the claimed structure. The infringement analysis will depend on the internal construction of the accused product, which is not detailed in the complaint.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue "common pivot" ('161 Patent) should be interpreted broadly as a general area of rotation. The '161 Patent specification discloses an embodiment with a single "central axle or pivot 46" around which the arms rotate, which could support a single-pivot construction (ʼ161 Patent, col. 3:65-col. 4:1).
- Evidence for a Narrower Interpretation: The explicit recitation of "two pivots" in the '359 Patent, with figures showing two separate pivot posts (e.g., pivots 143, 145 in Fig. 12), provides strong evidence that this term requires two physically distinct structures. A party could argue that the inventor chose to claim the two-pivot structure specifically to distinguish it from a single-pivot design.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendants induced infringement of all four patents by "making, using, offering to sell, and selling within the United States... products that infringe" (e.g., Compl. ¶68, ¶74, ¶80, ¶86). The factual basis for the knowledge and intent required for inducement is not specified beyond these allegations. The likely theory is that by selling the apparatus, Defendants induce their customers to use it in an infringing manner.
- Willful Infringement: Willfulness is alleged for all four patents "upon information and belief" (e.g., Compl. ¶71, ¶77, ¶83, ¶89). The complaint does not allege any facts to support pre-suit knowledge, such as a prior notice letter or previous litigation, that would typically underpin a claim for willful infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of evidentiary proof versus allegation: The complaint's infringement theories for the utility patents rely on assumptions about the internal mechanics of the accused product (e.g., the number and configuration of its pivots) based solely on external photographs. A key question for the court will be whether the physical evidence, once produced in discovery, reveals a mechanism that actually embodies the specific structural limitations of the asserted claims, particularly the "two pivot" system of the ’359 Patent.
- The case will also involve a question of design patent scope: For the '657 and '278 design patents, the court will need to determine if an "ordinary observer," taking into account the prior art, would be deceived into purchasing the Defendants' product believing it to be the Plaintiff's patented design. This will require a side-by-side comparison of the overall ornamental appearance of the accused product with the designs claimed in the patents.
- Finally, a key legal question will concern the theory of liability for method claim infringement: Given that Defendants are alleged to be sellers of a product, the court will have to analyze whether Plaintiff can sustain a claim for direct infringement of the '161 method patent, or if liability can only be established through a theory of indirect (induced) infringement, which requires a separate showing of the Defendants' specific intent to encourage infringement by end-users.