Yondr, Inc. v. Be Smarter, LLC et al.

Yondr, Inc. has initiated patent infringement litigation against Be Smarter, LLC and James Guerra in the U.S. District Court for the Western District of Texas, concerning U.S. Patent No. 12,133,078 and U.S. Patent No. 9,819,788, along with claims of trademark infringement and unfair competition. Yondr, Inc. is an operating company known for its "Yondr Pouch," a magnetic locking system designed to create phone-free environments in schools, concert venues, and courtrooms, enabling individuals to retain their mobile devices while preventing their use in designated areas. The defendants, Be Smarter, LLC and James Guerra, are accused of "unauthorized and unlicensed copying and use" of Yondr's patented technology and trademark. While Be Smarter, LLC's specific product is not fully detailed in the available information, the context suggests it relates to a competing phone-locking or phone-free solution. James Guerra is also the CEO of JG Consulting, a firm focused on executive searches and a SaaS platform for the education sector.

The asserted U.S. Patent No. 12,133,078 broadly covers a "System and apparatus for selectively limiting user control of an electronic device," which includes a case with a locking mechanism configured to engage or disengage based on pre-determined conditions, such as geographical location or specific time. Similarly, U.S. Patent No. 9,819,788 also describes a "System and apparatus for selectively limiting user control of an electronic device," emphasizing a case with a shell designed to accommodate a mobile device and selectively restrict its use, aiming to reduce distractions and prevent unauthorized recordings at public events. The case, filed on October 31, 2024, was initially assigned to Judge Robert Pitman but was subsequently reassigned to Judge Alan D. Albright, a prominent figure in patent litigation within the Western District of Texas. This venue, particularly under Judge Albright's oversight, has been historically favored by patent plaintiffs due to his fast-track scheduling orders and a general reluctance to stay cases or transfer them out of the district.

This litigation is notable due to Yondr's established position as an industry leader in providing phone-free solutions, making the outcome potentially impactful for competitors in this growing market. Adding a layer of complexity, Be Smarter, LLC and James Guerra have filed an inter partes review (IPR2025-00970) against Yondr's U.S. Patent No. 9,819,788 and a Post-Grant Review (PGR2025-00070) against U.S. Patent No. 12,133,078 at the Patent Trial and Appeal Board (PTAB), challenging the validity of the asserted patents. Judge Albright is known for his policy of denying motions to stay district court proceedings pending IPR outcomes, even when the district court trial is scheduled before a final PTAB decision. This stance suggests that the infringement case is likely to proceed in parallel with the PTAB reviews, potentially leading to a trial before the validity challenges at the PTAB are resolved.

The case of Yondr, Inc. v. Be Smarter, LLC et al. (Case No. 1:24-cv-01326-ADA) in the U.S. District Court for the Western District of Texas involves claims of patent infringement of U.S. Patent No. 12,133,078, trademark infringement, and unfair competition. The litigation is currently active.

Here's a chronological overview of the key legal developments and related proceedings:

Filing & Initial Pleadings:

• 2024-10-31: Yondr, Inc. filed the initial complaint against Be Smarter, LLC and James Guerra in the U.S. District Court for the Western District of Texas. The initial filing asserted patent infringement of U.S. Patent No. 12,133,078, along with claims of trademark infringement and unfair competition.

Pre-trial Motions of Substance:

• 2025-03-25: The case was reassigned from Judge Robert Pitman to Judge Alan D. Albright for all proceedings.

Parallel PTAB IPR/PGR Proceedings:

• 2025-08-13: Be Smarter, LLC and James Guerra, as Petitioners, filed a Post-Grant Review (PGR) petition, designated as PGR2025-00070, challenging U.S. Patent No. 12,133,078 B2, the patent-at-issue in the district court litigation. Yondr, Inc. is identified as the Patent Owner in this proceeding.
• 2025-07-08 (Effective Date): A separate Inter Partes Review (IPR) proceeding, IPR2025-00970, was filed challenging U.S. Patent No. 9,819,788. This patent is related to the '078 patent and is also involved in litigation between Be Smarter and Yondr, Inc. in the same district court case (1:24-cv-01326-ADA).

Current Posture:

The case remains active in the Western District of Texas under Judge Alan D. Albright. The district court litigation is proceeding concurrently with the Post-Grant Review (PGR2025-00070) and an Inter Partes Review (IPR2025-00970) at the Patent Trial and Appeal Board (PTAB) related to the asserted and related patents. No information regarding answers, counterclaims, Markman hearings, discovery milestones, trial events, or final disposition is available in the provided search results beyond the initial filing and reassignment.

Yondr, Inc. is represented by the following counsel from Knobbe, Martens, Olson & Bear, LLP:

• Stephen C. Jensen

  • Role: Lead Counsel
  • Firm: Knobbe, Martens, Olson & Bear, LLP, Irvine, CA office.
  • Relevant Experience: Jensen has nearly three decades of experience handling patent disputes, trade secrets, and regulatory challenges for technology companies. He has a strong background in a diverse range of technologies, including medical devices, semiconductors, computer hardware and software, and telecommunications. He was a member of the jury trial team that secured a $634 million win for Masimo against Apple in a patent infringement case related to heart monitoring technology. He also successfully represented Masimo in a patent infringement case related to digital signal processing in medical devices, where the jury awarded Masimo $134.5 million in damages, and later, in a second trial, over $466 million.

• Rhett D. Ramsey

  • Role: Lead Counsel
  • Firm: Knobbe, Martens, Olson & Bear, LLP, Irvine, CA office.
  • Relevant Experience: Ramsey represents clients in intellectual property disputes, primarily focusing on patent and trade secret litigation across all stages in U.S. District Courts. His experience also includes representing clients in PTAB proceedings, both as a patent owner and patent challenger, with recent cases involving wearables, medical devices, and high-resolution X-ray microscopes.

These attorneys appeared on behalf of Yondr, Inc. in a related Patent Trial and Appeal Board (PTAB) IPR proceeding (IPR2025-00970), which explicitly referenced the district court case 1:24-cv-01326-ADA, indicating their representation in this action.

The defendants, Be Smarter, LLC and James Guerra, are represented by attorneys from Jackson Walker LLP.

Here is the identified counsel:

• Name: Arthur Gollwitzer, III

  • Role: Counsel
  • Firm: Jackson Walker LLP, likely based out of their Austin or Dallas offices, as they have a significant presence in Texas.
  • Experience Note: Arthur Gollwitzer, III, entered an appearance for Be Smarter, LLC and James Guerra and filed an unopposed motion for extension of time to file an answer in this case.

• Name: Melissa Samano Ruiz

  • Role: Counsel
  • Firm: Jackson Walker LLP, likely based out of their Texas offices.
  • Experience Note: Melissa Samano Ruiz is listed as representing Be Smarter, LLC and James Guerra.

• Name: Leisa Talbert Peschel

  • Role: Counsel
  • Firm: Jackson Walker L.L.P., likely based out of their Texas offices.
  • Experience Note: Leisa Talbert Peschel is also listed as representing the defendants, Be Smarter, LLC and James Guerra.