DCT
3:20-cv-00439
National Products Inc v. ProClip USA Inc
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: National Products Inc. (Washington)
- Defendant: ProClip USA, Inc. (Wisconsin) and Brodit AB (Sweden)
- Plaintiff’s Counsel: Fenwick & West LLP
- Case Identification: 3:20-cv-00439, W.D. Wis., 09/15/2020
- Venue Allegations: Plaintiff alleges venue is proper because Defendant ProClip has its principal place of business in the district and because both defendants have allegedly committed acts of patent infringement within the district.
- Core Dispute: Plaintiff alleges that Defendant’s in-vehicle mounting solutions, including protective sleeves and charging docks for portable electronic devices, infringe four patents related to docking cradles, electrical adapters integrated into protective covers, and combination hand strap/stand supports.
- Technical Context: The technology at issue addresses the market for ruggedized mounting, charging, and support systems for portable electronics like tablets and smartphones, particularly for commercial and in-vehicle applications.
- Key Procedural History: The filing is a Second Amended Complaint, indicating prior iterations of the pleadings. The complaint leverages the filing dates of the original and First Amended Complaint to establish Defendants' knowledge of the patents-in-suit for its willfulness allegations.
Case Timeline
| Date | Event |
|---|---|
| 2014-02-24 | Earliest Priority Date Asserted ('026, '515, '275 Patents) |
| 2015-07-02 | Earliest Priority Date Asserted ('622 Patent) |
| 2017-07-11 | U.S. Patent No. 9,706,026 Issues |
| 2019-10-22 | U.S. Patent No. 10,454,515 Issues |
| 2020-03-24 | U.S. Patent No. 10,595,622 Issues |
| 2020-05-21 | Date of Alleged Knowledge of '026 and '515 Patents |
| 2020-07-06 | Date of Alleged Knowledge of '622 Patent (First Amended Complaint Filing) |
| 2020-09-15 | U.S. Patent No. 10,778,275 Issues |
| 2020-09-15 | Second Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,706,026 - "Docking Sleeve With Electrical Adapter"
- Issued: July 11, 2017
The Invention Explained
- Problem Addressed: The patent addresses the limitations of known protective covers, or "skins," for portable electronic devices in providing for efficient and reliable usage, particularly with respect to docking and charging (U.S. Patent No. 10,454,515, col. 1:36-44).
- The Patented Solution: The invention is a docking cradle system designed to receive a portable electronic device that is already housed within a protective cover. The cradle features a base receiver with specific support surfaces and a female connector with biasing contacts that move to establish an electrical connection with a corresponding male connector on the device's protective cover (U.S. Patent No. 9,706,026, Abstract; col. 8:1-20). This allows the device to be docked and charged without being removed from its protective sleeve.
- Technical Importance: This integrated approach sought to combine the benefits of device protection with the convenience of drop-in docking, a feature of particular value in commercial environments where devices are frequently mounted and removed.
Key Claims at a Glance
- The complaint asserts at least independent claim 1 ('026 Patent, col. 16:29-52; Compl. ¶29).
- Essential elements of claim 1 include:
- A base receiver configured to receive an electronic device disposed in a removable cover having a male connector.
- The base receiver comprising a back support surface and a docking support surface extending away from the back support surface.
- A female connector disposed within the docking support surface, comprising a plurality of contacts configured to connect with the male connector.
- The female connector defining a rim to guide proper mating.
- The contacts of the female connector being biasing contacts that move when the removable cover and electronic device are received.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 10,454,515 - "Docking Sleeve With Electrical Adapter"
- Issued: October 22, 2019
The Invention Explained
- Problem Addressed: As with the '026 Patent, this patent addresses the challenge of seamlessly integrating a protected electronic device with external accessories like chargers or docking stations (U.S. Patent No. 10,454,515, col. 1:36-44).
- The Patented Solution: The invention is an arrangement comprising the electronic device itself and a specially designed adapter. The adapter couples to the device and extends away from it, presenting an external contactor surface and a "male positioning interface" with a surrounding rim. This interface is designed to guide the device into a female receptacle (like a docking cradle) and is configured so the contact surface is the most prominent part of the adapter, facilitating a reliable connection (’515 Patent, Abstract; col. 33:2-22).
- Technical Importance: This patent focuses on the device-side adapter, defining a standardized physical and electrical interface on the protective cover itself to ensure proper mating with an external connector.
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (’515 Patent, col. 34:1-22; Compl. ¶36).
- Essential elements of claim 1 include:
- A portable electronic device.
- An adapter coupleable to the device and extending away from it for mating with an external connector.
- The adapter comprising a contactor and a male positioning interface.
- The contactor having a contactor surface and exposed contacts.
- The male positioning interface defining a rim surrounding the perimeter of the contactor surface to guide mating.
- The adapter being configured so that, when coupled to the device, the contactor surface is disposed further from the device than any other portion of the adapter to form a male connector.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 10,595,622 - "Combination Strap and Stand Support for Tablets and Hand Held Electronic Devices"
- Issued: March 24, 2020
- Technology Synopsis: The patent describes a support for a portable electronic device that combines a hand strap and a support stand, both attached to a rotatable base on the back of the device's case. The support stand is independent of the strap and can be swiveled into a deployed position to prop the device up on a surface ('622 Patent, Abstract).
- Asserted Claims: At least independent claim 1 (Compl. ¶45).
- Accused Features: The complaint accuses Defendants' "Kickstands with Handstraps" of infringement, referencing a product image that shows a combination hand strap and a deployable kickstand on the back of a tablet case (Compl. ¶¶45-47; Compl. p. 12).
U.S. Patent No. 10,778,275 - "Docking Sleeve With Electrical Adapter"
- Issued: September 15, 2020
- Technology Synopsis: The patent describes a protective arrangement for an electronic device, focusing on the structure of the cover itself. The invention includes a cover that forms an interior cavity, a male plug with connectors extending into that cavity to mate with the device's socket, and an external contactor with electrical contacts on the outside surface of the cover, with internal conductors linking the plug and the contactor (’275 Patent, Abstract).
- Asserted Claims: At least independent claim 1 (Compl. ¶55).
- Accused Features: The complaint accuses Defendants' "Tough Sleeves, Tough Sleeve Kits, and/or Charging Docks" of infringement (Compl. ¶55). The allegations describe a cover with an interior cavity, a male plug for the device, and an external contactor for docking (Compl. ¶¶57-58).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are Defendants' "Tough Sleeve Kits," "Charging Docks," "Tough Sleeves," and "Kickstands with Handstraps" (Compl. ¶¶29, 36, 45, 55).
Functionality and Market Context
The complaint alleges these products form a system for mounting, protecting, and charging portable electronic devices (Compl. ¶¶2, 4, 6). The "Tough Sleeve" is a protective cover for a device, and the "Charging Dock" is a cradle that receives the device while it is in the sleeve to provide power and support (Compl. ¶¶31-32, 38-39). The "Kickstands with Handstraps" are accessories that attach to the back of a device case to provide a hand-hold and a self-supporting stand (Compl. ¶¶47-49). The complaint provides an image of an accused charging dock, which appears to be a vehicle mount with pogo-pin style electrical contacts (Compl. p. 7).
IV. Analysis of Infringement Allegations
U.S. Patent No. 9,706,026 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a base receiver configured to receive an electronic device disposed in a removable cover having a male connector with a plurality of contacts | The accused product is a cradle that acts as a base receiver for an electronic device housed in a removable cover, which has a male connector. | ¶31 | col. 8:12-15 |
| the base receiver comprising a back support surface to support a back of the removable cover and electronic device and a docking support surface extending away from the back support surface | The base receiver of the accused cradle comprises a back support surface and a docking support surface extending from it. | ¶31 | col. 8:15-18 |
| a female connector disposed within the docking support surface of the base receiver comprising a plurality of contacts configured to connect with one or more of the plurality of contacts of the male connector | The accused product includes a female connector within its docking support surface with contacts that connect to the male connector on the removable cover. | ¶32 | col. 8:36-40 |
| the female connector defining a rim to guide proper mating... | The female connector of the accused product defines a rim that guides the mating of the male connector on the removable cover. | ¶32 | col. 8:40-42 |
| the contacts of the female connector are biasing contacts that move when the removable cover and electronic device are received | The contacts of the accused product's female connector are described as biasing contacts that move upon receipt of the device. | ¶32 | col. 8:42-45 |
Identified Points of Contention
- Scope Questions: A central question may be whether the combination of Defendants' separate "Tough Sleeve" product and "Charging Dock" product, when used together, constitutes the claimed "docking cradle" system. The analysis may explore whether the distinct structural elements required by the claim—a "back support surface" and a "docking support surface"—are present as separate, identifiable components in the accused docks.
- Technical Questions: The complaint alleges the accused products have "biasing contacts that move." A technical question for the court will be what evidence demonstrates that the contacts in the accused dock, such as the pogo pins depicted in the complaint's visual evidence (Compl. p. 7), perform the specific function of "moving" in the manner required by the claim when the device is received.
U.S. Patent No. 10,454,515 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an adapter coupleable to the portable electronic device and extending away from the portable electronic device for mating with an external connector | The accused product is an adapter that extends away from the portable electronic device to couple with an external connector. | ¶38 | col. 34:4-7 |
| the adapter comprising a contactor and a male positioning interface | The adapter of the accused product includes a contactor and a male positioning interface. | ¶38 | col. 34:7-9 |
| the contactor comprising a contactor surface and a plurality of contacts exposed and arranged on the contactor surface and electrically coupleable to the portable electronic device | The accused product's adapter includes a contactor with exposed contacts on its surface that are electrically coupleable to the device. | ¶38 | col. 34:9-12 |
| the male positioning interface defining a rim surrounding, and in contact with, a perimeter of the contactor surface of the contactor of the adapter to guide proper mating | The accused product's adapter has a male positioning interface with a surrounding rim that guides mating with an external connector. | ¶38 | col. 34:12-16 |
| the adapter is configured so that, when coupled to the portable electronic device, the contactor surface is disposed further than any other portion of the adapter from the portable electronic device to form... a male connector | The accused product's adapter is configured such that its contactor surface is the most prominent portion, forming a male connector. | ¶39 | col. 34:17-21 |
Identified Points of Contention
- Scope Questions: The claim requires a "male positioning interface" that defines a "rim surrounding... a perimeter of the contactor surface." The infringement analysis will likely scrutinize the geometry of the accused adapter to determine if it possesses a structure that meets this specific definition.
- Technical Questions: A key factual question will be whether the accused adapter is configured such that its "contactor surface is disposed further than any other portion of the adapter" from the device. This requires a dimensional analysis of the accused product's geometry to see if it satisfies this claim limitation, which is intended to ensure the electrical contacts are the first point of engagement during mating.
V. Key Claim Terms for Construction
For the ’026 Patent
- The Term: "docking support surface"
- Context and Importance: This term is critical because it defines a specific structural component of the claimed cradle, distinct from the "back support surface." The infringement case may depend on whether the accused product has a surface that performs the function of "docking support" separate from the function of "back support."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims describe the surface by its function ("docking support") and its position ("extending away from the back support surface"), which may support an argument that any surface fulfilling this role, regardless of its specific shape, falls within the claim scope (U.S. Patent No. 9,706,026, col. 16:35-37).
- Evidence for a Narrower Interpretation: The specification consistently depicts the "docking support surface" (103) as the bottom ledge or tray upon which the device rests, physically distinct from the upright "back support surface" (101) (U.S. Patent No. 9,706,026, Fig. 3; col. 8:15-18). This could support an argument that the term requires two structurally separate and angularly distinct surfaces.
For the ’515 Patent
- The Term: "male positioning interface"
- Context and Importance: The definition of this term is central to the infringement analysis for the ’515 Patent. Whether the accused adapter has this specific interface, which includes a "rim" for guiding mating, will be a primary point of contention.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language defines the interface functionally as serving "to guide proper mating" (’515 Patent, col. 34:15-16). This functional language could be argued to encompass any physical feature on the adapter that achieves this guiding purpose.
- Evidence for a Narrower Interpretation: The specification describes this feature in the context of a "locator dam" (132) that "cooperates with a socket receiver of docking cradle 5 for positively positioning" the device (’515 Patent, col. 14:48-52). The figures show this as a distinct, raised perimeter. This may support a narrower construction requiring a physically raised structure that mechanically nests within a corresponding female socket.
VI. Other Allegations
Indirect Infringement
The complaint alleges both induced and contributory infringement for the '515 and '622 patents. Inducement is based on allegations that Defendants provide customers with instructions, advertising, and technical support that encourage infringing use (Compl. ¶¶40, 50). Contributory infringement is based on allegations that Defendants supply components that are material parts of the patented inventions, are especially adapted for infringing use, and have no substantial non-infringing use (Compl. ¶¶41, 51).
Willful Infringement
Willfulness is alleged for all four patents. The complaint asserts that Defendants had actual knowledge of the '026 and '515 patents since at least May 21, 2020; the '622 patent since at least July 6, 2020; and the '275 patent since the filing of the Second Amended Complaint on September 15, 2020 (Compl. ¶¶34, 43, 53, 60).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of system-level construction: can the combination of Defendants’ separately sold protective sleeves and charging docks meet the limitations of claims that recite an integrated system, such as the "docking cradle" of the ’026 Patent? The court will need to determine if the elements recited in the claims are present and arranged as required when the separate accused products are used together.
- A second key question will be one of structural and geometric correspondence: does the physical design of the accused adapters and docks incorporate the specific structures claimed, such as a "docking support surface" distinct from a "back support surface" ('026 Patent) or a "male positioning interface" with a guiding "rim" (’515 Patent)? This will likely require a detailed comparison of the accused products against the specific embodiments and definitions provided in the patents.