Swissdigital USA Co Ltd v. Wenger SA

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Swissdigital USA Co., Ltd. (Delaware)
  • Defendant: Wenger S.A. (Switzerland)
  • Plaintiff’s Counsel: Keyhani LLC; Naman Howell Smith & Lee, PLLC
• Case Identification: 6:21-cv-00453, W.D. Tex., 11/24/2021
• Venue Allegations: Venue is asserted on the basis that the Defendant is not a resident of the United States, which under 28 U.S.C. § 1391(c)(3) makes venue proper in any judicial district.
• Core Dispute: Plaintiff alleges that Defendant’s SWISSGEAR branded backpacks, which feature integrated USB charging ports, infringe two U.S. patents related to the design and construction of charging-enabled bags and sheaths for USB connectors.
• Technical Context: The technology concerns the integration of external USB ports into bags and luggage, allowing users to charge electronic devices from a power bank stored inside the bag without opening it.
• Key Procedural History: The complaint alleges that Plaintiff provided Defendant with pre-suit notice of infringement. This includes an initial notification to Wenger's counsel on January 11, 2021, regarding the '071 Patent and the then-allowed application for the '138 Patent, followed by a detailed, claim-by-claim infringement analysis on March 30, 2021. This history is presented to support the allegation of willful infringement.

Case Timeline

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 10,574,071 - “Bag or Luggage with USB Charging Connector”

• Issued: February 25, 2020.

The Invention Explained

• Problem Addressed: The patent addresses the inconvenience faced by travelers and mobile individuals who need to charge portable electronic devices on the go. Existing solutions required opening a bag or piece of luggage to access a portable power source, which is described as inconvenient ʼ071 Patent, col. 1:21-31
• The Patented Solution: The invention is a bag or piece of luggage that integrates an external charging system. It provides an internal pocket or "placing space" for a power storage device (e.g., a power bank) and features a "power cable outlet" on the bag's exterior ʼ071 Patent, col. 1:41-45 A USB extension cable runs from the internal power bank to the external outlet, where a female USB connector is housed within a waterproof "sheath," allowing users to plug in and charge their devices without opening the bag ʼ071 Patent, col. 1:45-54
• Technical Importance: This design provides a convenient and protected external interface for on-the-go charging, integrating the power source into the structure of the bag itself ʼ071 Patent, col. 2:26-32

Key Claims at a Glance

• The complaint asserts independent claim 1 Compl. ¶31
• The essential elements of independent claim 1 include:
  • A bag or luggage body with an internal placing space for a power storage device and an external power cable outlet.
  • A USB extension cable with a male connector and a female connector with four sides and an operative end.
  • The male connector is located inside the bag body for connection to the power storage device.
  • The female connector is retained outside, adjacent to the outlet, with one of its four sides in communication with the bag body.
  • The other three sides of the female connector are covered by a waterproof sheath that provides it in a flat position.
  • The sheath does not cover the operative end of the female connector, which remains exposed and fixedly attached above the bag's exterior.
• The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 10,931,138 - “Sheath for USB Charger”

• Issued: February 23, 2021.

The Invention Explained

• Problem Addressed: Similar to the '071 Patent, this invention aims to solve the problem of conveniently charging personal electronics without needing to open a bag, but it focuses on the specific component that enables this functionality across a wider range of products ʼ138 Patent, col. 1:16-25
• The Patented Solution: The invention is a "sheath" component designed to be incorporated into various "bodies" like bags, clothing, or other wearables ʼ138 Patent, col. 2:30-40 The sheath has a "raised portion" that extends above the body's outer surface and a "surrounding bottom portion" for attachment. It is designed to receive and hold the female end of a USB cable at an opening in the body, keeping the connector's operative end uncovered, in a flat position, and readily accessible for charging ʼ138 Patent, abstract
• Technical Importance: This patent describes a modular component that allows manufacturers to easily add a robust, externally accessible USB charging port to a wide variety of goods ʼ138 Patent, col. 2:30-40

Key Claims at a Glance

• The complaint asserts independent claim 23 Compl. ¶51
• The essential elements of independent claim 23 include:
  • A sheath with a "raised portion" extending above a body's outer surface and a "surrounding bottom portion."
  • The body has an inner surface, an outer surface, and a body opening between them.
  • The sheath is located at the body opening, with the raised portion above the outer surface and the bottom portion in communication with the body.
  • The sheath holds a female end of a USB cable, which has four sides, an operative end, and a cord end.
  • The operative end of the female USB connector is retained in the USB opening in a flat position, uncovered, and above the outer surface of the body.
• The complaint does not explicitly reserve the right to assert dependent claims.

III. The Accused Instrumentality

Product Identification

• The accused instrumentalities are "SWISSGEAR branded backpacks" from the "USB Power Ready Collection," including but not limited to models such as the SWISSGEAR 3670, 3672, and 2760 Compl. ¶18 Compl. ¶19

Functionality and Market Context

• The accused backpacks are alleged to incorporate an "integrated USB sheath socket" or "integrated USB socket" that allows for on-the-go charging Compl. ¶20 Compl. ¶32 A screenshot in the complaint shows a product page for the "Swissgear 3672 USB ScanSmart Laptop Backpack" which advertises a "Built-in power-ready USB port" Compl. p. 9
• The functionality involves a space inside the bag for a power bank, an internal cord to connect to that power bank, and an external USB port on the side of the bag Compl. ¶20 Compl. ¶34 The complaint includes a screenshot of the Defendant's website menu, which highlights a "USB Power Ready Collection" of backpacks Compl. p. 8
• The complaint alleges these products are sold through Defendant's www.swissgear.com website and major U.S. retailers, indicating their commercial presence in the U.S. market Compl. ¶17

IV. Analysis of Infringement Allegations

’071 Patent Infringement Allegations

’138 Patent Infringement Allegations

Identified Points of Contention

• Scope Questions: A primary point of contention may arise over the specific structural language of the claims. For the ’071 Patent, the requirement that a "water proof sheath" covers "the other three sides" of the female connector while one side remains "in communication with the bag or luggage body" presents a very specific geometric configuration ʼ071 Patent, col. 6:1-3 The infringement analysis will question whether the accused "integrated USB socket" meets this precise structural arrangement.
• Technical Questions: For the ’138 Patent, the dispute may center on whether the accused product's port assembly constitutes a "sheath" with a distinct "raised portion" and a "surrounding bottom portion" as claimed ʼ138 Patent, col. 9:32-38 The patent figures depict a specific component, and the court will have to determine if the integrated port on the SWISSGEAR backpacks is structurally equivalent or if there is a fundamental mismatch between the claimed component and the accused product's design.

V. Key Claim Terms for Construction

• The Term: "water proof sheath" (’071 Patent, Claim 1)

• Context and Importance: This term is critical because its definition, particularly its structural relationship with the USB connector, is a core limitation of claim 1. The claim requires the sheath to cover exactly three sides of the connector. Practitioners may focus on this term because infringement will depend on whether the accused product’s port assembly can be characterized as a "sheath" with this specific three-sided geometry.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification's summary describes the sheath's purpose as being "for water proofing" ʼ071 Patent, col. 1:51-54 A party could argue that any component providing water resistance around the external connector meets the functional aspect of the term.
  • Evidence for a Narrower Interpretation: The claim language itself is highly specific, requiring that "the other three sides of the female connector are covered by a water proof sheath" ʼ071 Patent, col. 6:1-3 The patent figures also depict a distinct component (element 3) wrapped around the connector ʼ071 Patent, Fig. 1 This suggests the term may be limited to a structure with this precise three-sided coverage.

• The Term: "a sheath having a raised portion ... and a surrounding bottom portion" (’138 Patent, Claim 23)

• Context and Importance: This composite phrase defines the core structure of the invention in the ’138 Patent. The infringement allegation hinges on whether the single "integrated USB sheath socket" of the accused backpacks can be dissected into these two claimed structural components.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The abstract describes the invention more functionally as a sheath that "extends above an outer surface of a body" ʼ138 Patent, abstract This could support an argument that any protruding port assembly with an attachment flange meets the claim's requirements.
  • Evidence for a Narrower Interpretation: The patent's figures and detailed description show a component with clearly distinct parts: a protruding section to house the USB connector and a flat flange for attachment to the body ʼ138 Patent, Figs. 12, 45 For example, Figure 12 shows a "sheath (1200)" with sides (e.g., 1206) and a bottom portion (e.g., 1202). This may support a narrower construction requiring two structurally distinct features within the single "sheath" component.

VI. Other Allegations

• Indirect Infringement: The complaint alleges both induced and contributory infringement.
  • Inducement: The inducement claim is based on allegations that Wenger, through its www.swissgear.com website, provides instructions and marketing that "encouraged, aided, and abetted" customers and retailers to use the backpacks in an infringing manner Compl. ¶39 Compl. ¶40 The website's promotion of the "USB Power Ready Collection" and instructions to "plug into its USB port anytime, anywhere" are cited as affirmative acts of inducement Compl. ¶20 Compl. ¶24
  • Contributory: The complaint alleges that the backpacks are "not suitable for substantial non-infringing use" and that Defendant provides them to retailers and customers for infringing use Compl. ¶46
• Willful Infringement: The willfulness claim is supported by allegations of pre-suit knowledge. The complaint states that Plaintiff provided Wenger's counsel with notice of infringement of the '071 Patent and the allowed application that became the '138 Patent on January 11, 2021, and followed up with a detailed claim-element analysis on March 30, 2021 Compl. ¶25 Compl. ¶43 The complaint alleges that Defendant continued its infringing activities despite this notice Compl. ¶42 Compl. ¶44

VII. Analyst’s Conclusion: Key Questions for the Case

• A core issue will be one of structural interpretation: can the "integrated USB socket" of the accused SWISSGEAR backpacks be mapped onto the specific structural and geometric limitations of the asserted claims? For the '071 Patent, this centers on the "three sides covered" requirement for the "water proof sheath," while for the '138 Patent, it involves identifying a distinct "raised portion" and "surrounding bottom portion" within the accused port assembly.
• The case will also turn on a question of claim construction: will the term "sheath" be interpreted broadly based on its general function of housing and protecting a USB port, or will it be construed narrowly to encompass only the specific physical embodiments depicted in the patent figures? The outcome of this construction will likely define the scope of the patents and determine whether the accused products fall within it.
• A key jurisdictional and liability question will be whether a foreign parent company can be held liable for infringement in the U.S. The complaint makes numerous allegations aimed at establishing Wenger S.A.'s control over the SWISSGEAR brand and its direction of sales into the U.S. market, which will be critical for establishing both personal jurisdiction and ultimate liability for the alleged infringement.