By Eric Schweibenz
On May 25, 2011, Otter Products, LLC of Fort Collins, Colorado (“Otter”) filed a complaint requesting that the ITC commence an investigation pursuant to Section 337.

The complaint alleges that the following entities (collectively, the “Proposed Respondents”) unlawfully import into the U.S., sell for importation, and/or sell within the U.S. after importation certain protective cases and components thereof that infringe various claims of U.S. Patent No. 7,933,122 (the ‘122 patent), one or more of U.S. Design Patent Nos. D600,908, D617,784, D615,536, D617,785, D634,741, and D636,386 (collectively, the “asserted design patents”), and one or more of U.S. Trademark Registration Nos. 3,788,534, 3,788,535, 3,623,789, and 3,795,187 (collectively, the “asserted trademarks”):

  • A.G. Findings and Mfg. Co., Inc. d/b/a Ballistic of Sunrise, Florida

  • AFC Trident Inc. of Chino, California

  • Alibaba.com Hong Kong Ltd. of China

  • Anbess Electronics Co. Ltd. of China

  • Cellairis Franchise, Inc. of Alpharetta, Georgia

  • Cellet Products of Santa Fe Springs, California

  • DHgate.com of China

  • Griffin Technology, Inc. of Nashville, Tennessee

  • Guangzhou Evotech Industry Co., Ltd. of China

  • Hardcandy Cases LLC of Sacramento, California

  • Hoffco Brands, Inc. of Wheat Ridge, Colorado

  • Hong Kong Better Technology Group Ltd. of China

  • Hong Kong HJJ Co. Ltd. of China

  • Hypercel Corporation of Valencia, California

  • InMotion Entertainment of Jacksonville, Florida

  • MegaWatts Computers, LLC of Tulsa, Oklahoma

  • National Cellular of Brooklyn, New York

  • OEMBargain.com of Wantagh, New York

  • One Step Up Ltd. of New York, New York

  • Papaya Holdings Ltd. of Hong Kong

  • Quanyun Electronics Co., Ltd. of China

  • ShenZhen Star & Way Trade Co., Ltd. of China

  • Sinatech Industrial Co., Ltd. of China

  • SmileCase of Windsor Mill, Maryland

  • Suntel Global Investment Ltd. of China

  • TheCaseInPoint.com of Titusville, Florida

  • TheCaseSpace of Fort Collins, Colorado

  • Topter Technology Co. Ltd. of China

  • Trait Technology (Shenzhen) Co., Ltd. of China

According to the complaint, the ‘122 patent is directed to a multi-layer enclosure that protects various types of electronic devices from moisture, dust, dirt, and other contaminants, and also provides shock protection against drops and bumps.  The asserted design patents are directed to the ornamental features of Otter’s protective case designs for handheld electronic devices, including smart phones, tablet computers, and other mobile devices.  The asserted trademarks are directed to “OtterBox®,” “Otter Box®,” “Defender Series®,” and “Impact Series®.”

In the complaint, Otter states that the Proposed Respondents import and sell products that infringe the ‘122 patent, the asserted design patents, and the asserted trademarks.  The complaint specifically names a number of allegedly infringing products from each of the Proposed Respondents.

Regarding domestic industry, Otter states that its Defender Series protective cases practice the ‘122 patent and that its Impact Series, Defender Series, and Commuter Series cases each practice one or more of the asserted design patents.  Otter further states that all of its products bear one or more of the asserted trademarks.  As to the economic prong, Otter states that it conducts extensive activities in the U.S. relating to products that practice the ‘122 patent, the asserted design patents, and the asserted trademarks.  According to the complaint, these activities include engineering, research and development, design, quality control, assembly, packaging, technical support, warranty support, and customer service.

As to related litigation, the complaint states that Otter has filed six civil actions in the U.S. District Court for the District of Colorado since 2009 alleging that various entities infringe certain patents and trademarks including, inter alia, the ‘122 patent, one of the asserted design patents, and the OtterBox®, Otter Box®, Defender Series® trademarks.  Additionally, the complaint states that on January 5, 2011, Global Cellular, Inc. and Cellairis Franchise, Inc. filed a declaratory judgment action against Otter in the U.S. District Court for the Northern District of Georgia.

With respect to potential remedy, Otter requests that the Commission issue a general exclusion order (or in the alternative, a limited exclusion order) and a permanent cease and desist order directed at the Proposed Respondents.