In early October, mobile hardware developer Nite Ize of Boulder, CO, filed a Section 337 patent infringement complaint with the U.S. International Trade Commission (ITC). The complaint alleges that 32 Chinese respondents, some of which are in Hong Kong’s jurisdiction, and eight U.S. entities are infringing upon patents held by Nite Ize in the field of mobile electronic device holders.
There are three patents-in-suit being enforced by Nite Ize in this case, including two design patents:
- U.S. Patent No. 8870146, titled Multi-Positional Mount for Personal Electronic Devices with a Magnetic Interface. It protects a stand assembly comprised of two sections which are held together by a magnetic material as well as a high-friction elastomeric material in such a way that allows the stand to hold an electronic device in a multitude of positions, making it easier for an operator to conduct quick interactions with the device without using both hands to hold the device.
- U.S. Patent No. 8602376, same title as above. It claims a stand assembly with a first section shaped to lay stably on a flat surface on one end and curved on the other end, the curved end having a magnetic material which is received within an indentation of the front surface of a second section.
- U.S. Patent No. D734746, entitled Phone Kit. It claims the ornamental design for a phone kit consisting of a flat surface mounted upon a spherical base.
- U.S. Patent No. D719959, which is titled Large Socket. It protects the ornamental design for a large socket consisting of a circular surface which appears to have a central indentation.
Nite Ize’s ownership of these patents stems back to December 2012, when the company acquired the intellectual property rights to market the Steelie mobile device holder and mount invented by Frank Vogel, a Colorado resident residing in Boulder County. Since obtaining the rights to practice the technology covered by these patents, Nite Ize’s complaint notes that the company has improved upon the original engineering of the Steelie mount to come up with innovative products like the Steelie Vent Mount Kit and the Steelie Connect Case System. Nite Ize markets a total of thirteen products under the Steelie brand name, each of which enables a portable electronic device to be secured in various environments.
As Nite Ize acknowledges in its ITC complaint, mobile devices are now ubiquitous in the world. Nite Ize’s Steelie products gives consumers a means by which a smartphone or another mobile device can be secured in a variety of contexts without having to physically hold the device themselves. Exhibits attached to the complaint showcase devices sold by the respondents which Nite Ize feels are “essentially copies, often nearly exact copies, of the Steelie Products.
The respondents named by Nite Ize in this ITC filing are entities that import products Nite Ize alleges infringes upon the aforementioned patents. The accused products are generally sold through e-commerce website portals like eBay.com, Amazon.com and Wish.com. In at least some cases, the accused products, which are sold by entities other than Nite Ize, are inscribed with the Steelie brand name. Accused products are also sold under other brand names such as Spinido and TI-Ball.
Nite Ize’s Section 337 complaint alleges copying of the Steelie line of products based on a few specifically engineered components protected by the patents-in-suit which also appear in the accused products. They include a phone socket component which is composed of a machined aluminum base with a circular magnet centered with flexible silicon which attaches to the back of a phone or a hard case. The silicon center is a high friction material which provides a strong grip on a device. The other component is a ball mount with an aluminum base topped with a steel ball and can be attached to a dashboard, as in the case of the Steelie Car Mount Kit. The phone socket rotates around the ball mount around which the phone socket can rotate so that the mobile electronic device can be positioned in either landscape or portrait views. Both components are backed with foam adhesive tape developed by 3M which allows these phone docking kits to be mounted to a variety of surfaces. Nite Ize notes that its phone docking technology holds a device securely in place despite impacts, such as when a car drives over a pothole.
With so many entities involved in the widespread infringement of Nite Ize’s patents, the mobile device developer insists that the unauthorized copying and selling of the Steelie products “has reached an epidemic level.” Nite Ize’s complaints notes that the accused products used packaging or had packaging inserts which indicated that the products were made in China, indicating that the accused products were imported for sale from overseas.
As the federal agency charged with investigating unfair trade practices which impact U.S. industries, the ITC will look not just at the infringement of Nite Ize’s patents but also the effects of selling the accused products on the company’s domestic interests. Nite Ize’s counsel notes that the company has made a “significant investment” in its domestic industry here in America. To exploit the patents-in-suit and make a profit, Nite Ize has invested in research and development, marketing as well as technical and customer support activities. In Boulder, CO, Nite Ize operates three facilities which employ a total of 224 workers for those business activities. All of Nite Ize’s business activities are conducted at the Boulder facilities.
Seeking a general exclusion order on the accused products, Nite Ize also brought up a victory earned by the company in previous intellectual property litigation which counsel believes is related to this case. A previous lawsuit filed by Nite Ize in Colorado state court targeted two entities, Mobio Holdings and a state resident, which Nite Ize accused of selling a knockoff product, violating Colorado state law and the Lanham Act. The parties settled the case, which was dismissed in October 2013, and Nite Ize claims that the Mobio products are no longer on the market.