Iottie Inc. v. Innovations

• Decision Date: 29 December 2017
• Docket Number: Civ. No. 2:15-cv-6597-KM-JBC
• Parties: IOTTIE INC. and HSM CO., LTD., Plaintiffs, v. MERKURY INNOVATIONS, Defendant.
• Court: U.S. District Court — District of New Jersey

IOTTIE INC. and HSM CO., LTD., Plaintiffs, v. MERKURY INNOVATIONS, Defendant.

Civ. No. 2:15-cv-6597-KM-JBC

UNITED STATES DISTRICT COURT FOR THE DISTRICT OF NEW JERSEY

December 29, 2017

OPINION

KEVIN MCNULTY, U.S.D.J.

:

Plaintiffs iOttie Inc. ("iOttie") and HSM Co., Ltd. ("HSM") assert that defendant Merkury Innovations has infringed and continues to infringe one or more claims of United States Patent No. 8,627,953 ("the '953 Patent"). The '953 Patent relates to a "holder for a portable device"—i.e., a cell-phone holder or mount that can be used with cell phones of various sizes. (Compl. ¶ 11);¹ (Def.Br. 1); ('953 Patent 1:33-40). Defendant Merkury now moves for summary judgment of non-infringement. (Def. Br.).

I. BACKGROUND

A. Factual History²

Plaintiff HSM, a South Korean corporation, owns the '953 Patent, which is for a portable device holder. (Compl. ¶¶ 3, 13). HSM has granted plaintiff iOttie, a New York corporation, the exclusive right to sell, re-sell, and distribute the products under iOttie's brand name. (Compl. ¶¶ 4, 14). These holders can be used for many purposes, such as mounting a cell phone on a car windshield or dashboard. ('953 Patent 1:26-32). It is adjustable and can be used with different-sized devices. ('953 Patent 1:33-40). Figures 1 and 2 illustrate the patent-at-issue:³

Figure 1

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Figure 2

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('953 Patent fig.4, fig.6).

Plaintiffs' device has three brackets that are used to secure a portable device: brackets 410 and 510 can be moved inward and outward; bracket 70 can be moved vertically or laterally. ('953 Patent 1:49-67, 2:51-64, 5:27-35). Bracket 70 is the bottom bracket, which is fixed to the main body through knob 92 and nut 95. ('953 Patent 3:24-34, 3:63-67). Bracket 70 may be moved or fixed depending on whether knob 92 is open or closed. ('953 Patent 3:66-67). Claim 1 states, in part, that the device comprises "a hole formed at the bottom of the rear cover and coupled to a knob for fixing or moving a bracket ...." ('953 Patent 7:15-16).

The '953 Patent was originally filed in South Korea and then as an international patent pursuant to the Patent Cooperation Treaty. ('953 Patent 1:6-11). Under the Patent Cooperation Treaty, an applicant files an "international application" in any of the contracting states and that application is recognized as a national patent application in as many contracting states as the applicant elects to designate. Patent Cooperation Treaty, June 19, 1970, 28 U.S.T. 7645, 1160 U.N.T.S. 231. The international application is forwarded to one of the major patent offices throughout the world, such as the US Patent and Trademark Office ("the PTO"), Korean Patent Office, European Patent Office, etc. Id. That patent office completes the prior art search and issues an opinion about whether the patent application has satisfied the criteria for patentability. See U.S. Patent & Trademark Office, U.S. Dep't of Commerce, Manual of Patent Examining Procedure §§ 708.02(a), 709(I)(c) (8th ed., 7th rev. 2008). This search and opinion provide the basis for an international preliminary examination report, which is sent to the patent offices of all the countries selected by the application. Id. § 1801. See Michael Abramowicz 8s John F. Duffy, Ending the Patent Monopoly, 157 U. Pa. L. Rev. 1541, 1567-68 (2009).

This patent was filed as Korean Patent Application No. 10-2011-0024222 on March 18, 2018 in the Korean Intellectual Property Office. ('953 Patent 1:6-11). It was then filed under the Patent Cooperation Treaty as International Application No. PCT/KR2011/004668 on June 27, 2011. (Id.). The international application was in Korean and designated the United States as the country in which the patent was sought. (Id.).

The originally filed claim 1 for the international application designated for the United States was as follows:

1. A holder for a portable device, comprising:

a main body having the portable device received on a front surface portion thereof;

a first switch formed at a designated position on the front surface portion of the main body so as to be push into and protruded from the front surface portion;

first and second arms formed at both side surfaces of the main body, and having a distance provided therebetween and varied by the first switch such that the portable device is attached or detached; and

a second switch comprising a first button formed to be physically connected to the first arm inside the main body and a second button formed to be physically connected to the second arm inside the main body, and varying the distance between the first and second arms.

(Mandaro Decl. Ex. 3, '953 Patent File History at 1, 11); (PSMF ¶ 22). Claim 10 of the Korean application provided:

10. The holder according to the claim 9, wherein the rear cover comprises:

a housing unit comprising an upper housing unit having the switch assembling hole formed in the center thereof and a lower housing unit formed adjacent to the bottom of the upper housing unit; and

a hole formed at the bottom of the rear cover and coupled to a knob for fixing or moving the bracket.

(Mandaro Decl. Ex. 3, '953 Patent File History at 3); (Pl. Br. 10).

The Korean Patent Office rejected the application twice, stating that "a person skilled in the art would have easily invented claims 1 to 10 and 19 to 23before filing the present application." (PSMF ¶ 26); (DSMF ¶ 26); (Mandaro Decl. ¶¶ 14-15). Plaintiffs then amended their application to add, among other things, the "knob" and "hole" features of the originally filed claim 10 into claim 1. (Pl. Br. 9-10).

Korea and the United States participate in the Patent Prosecution Highway ("PPH"), which speeds up the examination process when corresponding applications are submitted in participating countries. (PSMF ¶ 29); (DSMF ¶ 29). Under the PPH program, if at least one of a patent applicant's claims is allowed, the applicant can file a request to accelerate examination of a corresponding application that is pending in another participating country's patent office. (PSMF ¶ 30); (DSMF ¶ 30). Plaintiffs took advantage of the PPH and made a request for accelerated examination in the United States. (PSMF ¶ 31); (DSMF ¶ 31). Plaintiffs amended the claims of their PTO application to correspond to the Korean application and submitted a document confirming that the U.S. PTO claims are "substantially corresponding" to the Korean Claims. (PSMF ¶ 33); (DSMF ¶ 33); (Mandaro Decl. ¶ 22).

On September 19, 2013, plaintiffs' request to participate in the PPH was granted. (PSMF ¶ 35); (DSMF ¶ 35); (Mandaro Decl. ¶ 24). The '953 patent was approved in the United States on January 14, 2014. ('953 Patent). Claim 1 of the patent, which is at the center of this dispute, provides:

1. A holder for a portable device, comprising:

a main body having the portable device received on a front surface portion thereof;

a first switch formed at a designated position of the front surface portion of the main body so as to be pushed into and protruded from the front surface portion;

first and second arms formed at both side surfaces of the main body, and having a distance provided therebetween and varied by the first switch such that the portable device is attached or detached;

a second switch comprising a first button formed to be physically connected to the first arm inside the main body and a secondbutton formed to be physically connected to the second arm inside the main body, and for varying the distance between the first and second arms;

wherein the main body comprises:

a front cover having a switch through-hole through which the first switch is pushed and protruded, and

a rear cover having a switch assembling hole formed at a position corresponding to the switch through-hole, and formed to be coupled to the front cover;

wherein the rear cover comprises:

a housing unit comprising an upper housing unit having the switch assembling hole formed in the center thereof and a lower housing unit formed adjacent to the bottom of the upper housing unit, and

a hole formed at the bottom of the rear cover and coupled to a knob for fixing or moving a bracket; and

a first attach/detach control unit comprises:

a first arm moving shaft having one side extended perpendicular from the first arm, housed in one side of the upper housing unit, and having a first switch coupling groove formed at an end of the other side thereof so as to be coupled to the first switch;

a first button moving shaft formed at a position spaced at a designated distance in a direction perpendicular to the extension direction of the first arm moving shaft, extended in the same direction as the extension direction of the first arm moving shaft, and housed in the other side of the lower housing unit,

a first button formed at an end of one side of the first button moving shaft, which faces the side to which the first button moving shaft and the first moving shaft are connected, and

a first elastic member formed to a designated length in a formation direction of the first arm moving shaft from an end of the other side of the first button moving shaft, and coupled to a first elastic member.

('953 Patent 6:56-7:36) (emphasis added).

B. Procedural History

Plaintiffs assert that Merkury incorporates the technology claimed in the '953 Patent for its own products and that Merkury therefore infringes. (Compl. ¶ 16). Figures 3 and 4 illustrate an example of Merkury's product, which is also marketed as a portable device holder:⁴

Figure 3

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Figure 4

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On September 2, 2015, plaintiffs asserted three counts against Merkury:

Count I: Direct Infringement of the '953 Patent under 35 U.S.C. § 271(a) (Compl. ¶¶ 19-29)

Count II: Contributory Infringement of the '953 Patent under 35 U.S.C. § 271(c) (Compl. ¶¶ 30-39)

Count III: Active Inducement of Infringement of the '953 Patent under 35 U.S.C. § 271(b) (Compl. ¶¶ 40-48)

On June 23, 2017,...