Swissdigital USA Co., Ltd. v. Samsonite International SA Et Al. (D. Mass. 24-cv-11636).

Swissdigital had accused Samsonite of directly and indirectly infringing four patents – one covering luggage with a USB charging connector and three covering sheaths that can be incorporated into wearables or bags/luggage that provide for charging of personal devices. One of the sheath patents is a continuation of the luggage patent, and the other two sheath patents are continuations-in-part of the luggage patent.

Following construction of a number of claim terms, Judge Kobick addressed Samsonite’s motion for partial summary judgment. Samsonite asserted that the three sheath patents were not entitled to claim priority to the first luggage patent due to the inclusion of a claim term – “surrounding bottom portion” that is recited as connecting the sheath to a bag or piece of luggage or the like – that appeared in the claims of the latter three patents. If the three patents were required to rely on their filing dates rather than claim priority to the earlier patent, they would be invalid under the on-sale bar because two of the accused Samsonite products were sold before that date.

The term in dispute – “surrounding bottom portion” of the sheath – is not found in the specification of the original patent. A priority claim to an earlier patent is only effective if the disclosure of the earlier patent provides §112 written description support for the claims of the later applications. This requirement exists to prevent overreach by an inventor by requiring a description of the invention sufficient to show that the inventor was in possession of the claimed subject matter as of the date relied upon.

Judge Kobick agreed that Swissdigital did not meet this requirement. He noted that the specification not only lacked reference to the full claim limitation, it lacked the words “surround,” “surrounding,” or “portion” altogether. Additionally, the original patent had no embodiments portraying anything extending from the bottom of the sheath that could be used for attachment. Accordingly, he determined that the three later patents were not entitled to claim priority to the filing date of the original patent.

Judge Kobick next considered whether the latter patents were thus invalid under the on-sale bar. To qualify as prior art, a product must both have been the subject of a commercial sale or a commercial offer for sale and must have been ready for patenting. For the first of these, the product that was the subject matter of the offer for sale must satisfy each claim limitation of the patent. Samsonite relied on a photograph of an alleged prior art bag having a USB sheath found in a 2015 sales brochure and a confidential design specification of a prototype. Judge Kobick found this to be insufficient to demonstrate by clear and convincing evidence that the design specification matches with the bag allegedly sold prior to the critical date, noting that Samsonite had provided no evidence expressly linking the design to the as-sold bag. With respect to a second alleged prior art bag, sold by a third party, Judge Kobick found testimony from that party’s product design manager as to the nature of the bag sold and the number of bags sold prior to the critical date, combined with exhibits depicting the bag’s design and the sheath employed by the third party to be sufficient to prove prior offers for sale and sales. He accordingly held the relevant claims invalid.

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