DCT
4:17-cv-00143
J&M Corp v. Sena Tech Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: J&M Corporation (Arizona)
- Defendant: Sena Technologies, Inc. (a corporation with principal places of business in South Korea and California)
- Plaintiff’s Counsel: Quarles & Brady LLP
- Case Identification: 4:17-cv-00143, D. Ariz., 03/30/2017
- Venue Allegations: Plaintiff alleges venue is proper in the District of Arizona because Defendant conducts business in the state, sells products through an interactive website accessible to Arizona residents, and ships products to at least four dealers in Tucson, constituting a substantial part of the events giving rise to the action.
- Core Dispute: Plaintiff alleges that Defendant’s FreeWire dongle, which enables wireless audio connections for motorcycles, infringes a patent related to the simultaneous wireless transmission of voice and stereo audio.
- Technical Context: The technology addresses wireless audio systems for vehicles, particularly motorcycles, where users require simultaneous, high-quality stereo audio playback and two-way voice communication (e.g., intercom or phone calls).
- Key Procedural History: The complaint alleges that Plaintiff J&M informed Defendant Sena of the alleged infringement on January 19, 2017, approximately two months before filing the suit. This pre-suit notice is asserted as a basis for willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2009-12-09 | U.S. Patent No. 9,398,620 Priority Date |
| 2016-07-19 | U.S. Patent No. 9,398,620 Issued |
| 2017-01-19 | Plaintiff allegedly notified Defendant of infringement |
| 2017-03-30 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,398,620 - "Simultaneous Voice and Audio Traffic Between Two Devices on a Wireless Personal-Area Network," Issued July 19, 2016
The Invention Explained
- Problem Addressed: The patent’s background section identifies a limitation in then-existing wireless personal-area networks (PANs), such as Bluetooth®, which were not configured to support the "simultaneous transport of stereo audio and real-time voice signals between two devices" (’620 Patent, col. 1:19-22). This forced applications like motorcycle audio systems to rely on a "wire cable" to connect headsets to the onboard audio system ('620 Patent, col. 1:28-31).
- The Patented Solution: The invention describes a wireless system that "cut[s] the cord" by using two separate logical connections—an "upstream connection" and a "downstream connection"—over a single wireless PAN ('620 Patent, col. 1:33-34, col. 2:5-18). This architecture allows a first device (like a dongle connected to a motorcycle) to transmit a digitized stereo audio signal to a second device (like a rider's helmet headset), while the second device simultaneously transmits a digitized voice signal back to the first device ('620 Patent, Abstract). The system may use low-latency codecs to minimize perceptible delay in the audio and voice streams ('620 Patent, col. 4:45-50).
- Technical Importance: The described solution enables full-duplex, high-fidelity wireless communication for applications where both entertainment audio and voice communication are needed concurrently, a key feature for modern motorcycle and vehicle infotainment systems ('620 Patent, col. 1:23-28).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claims 1 and 11 ('620 Patent, Compl. ¶¶12, 20).
- Independent Claim 1 recites a system comprising:
- A vehicle audio system producing an analog stereo audio signal
- A first device with an interface to the audio system, an analog-to-digital converter, and a wireless interface configured to simultaneously transmit digitized stereo audio and receive digitized voice
- A second device configured to simultaneously receive the digitized stereo audio and transmit the digitized voice
- Independent Claim 11 recites a system comprising:
- A dongle configured to plug into an analog audio jack of a motorcycle audio system
- The dongle is configured to receive an analog audio signal from the jack and output an analog microphone signal to the jack
- The dongle includes "means for converting" the analog audio to digital audio and "means for converting" a digitized microphone signal to an analog microphone signal
- The dongle is configured to "simultaneously transmit the digitized audio signal and receive the digitized microphone signal" over a wireless PAN
- The complaint does not explicitly reserve the right to assert dependent claims but makes general allegations of infringement of the ’620 Patent.
III. The Accused Instrumentality
Product Identification
The accused instrumentality is the "Sena FreeWire dongle product" ("FreeWire") ('620 Patent, Compl. ¶9).
Functionality and Market Context
The FreeWire is described as a dongle product that allows a user to wirelessly connect a Bluetooth headset to a motorcycle's onboard audio system ('620 Patent, Compl. ¶¶14, 19). The complaint alleges the FreeWire has an "Onboard Audio-In port" to plug into a motorcycle's analog audio jack and is configured to manage audio signals to and from the headset, including from sources like a CB radio or GPS system ('620 Patent, Compl. ¶¶14-15). The product is marketed and sold to motorcycle riders through an interactive e-commerce website and a network of dealers ('620 Patent, Compl. ¶¶3, 5).
IV. Analysis of Infringement Allegations
The complaint’s infringement theory centers on the allegation that the Sena FreeWire dongle, when used with a Bluetooth headset, forms a system that practices the patented method of simultaneous, bidirectional wireless audio communication.
No probative visual evidence provided in complaint.
U.S. Patent No. 9,398,620 Infringement Allegations
| Claim Element (from Independent Claim 11) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a dongle configured to plug into an analog audio jack of a motorcycle audio system providing an analog audio signal, | The FreeWire has an "Onboard Audio-In port, which allows a FreeWire to be plugged into an analog audio jack of a motorcycle audio system." | ¶14 | col. 2:49-52 |
| the dongle configured to receive the analog audio signal from and outputting an analog microphone signal to the motorcycle audio system through the jack, | The FreeWire is configured to "receive the analog audio signal from and outputting[s] an analog microphone signal to the motorcycle audio system through the jack". | ¶16 | col. 2:52-54 |
| the dongle including means for converting the analog audio signal to a digitized audio signal | The FreeWire has "means for 'converting the analog audio signal to a digitized audio signal...'" | ¶17 | col. 2:55-58 |
| and means for converting a digitized microphone signal to the analog microphone signal; | The FreeWire "contains means for 'converting a digitized microphone signal to the analog microphone signal.'" | ¶18 | col. 2:58-60 |
| and the dongle also configured to simultaneously transmit the digitized audio signal and receive the digitized microphone signal over a wireless personal area network (PAN). | The FreeWire is configured for "a simultaneous connection to a motorcycle's audio system and utilization of a Bluetooth® headset," thereby allowing it to "simultaneously transmit the digitized audio signal and receive the digitized microphone signal over a wireless personal area network (PAN)." | ¶19 | col. 2:60-64 |
Identified Points of Contention
- Scope Questions: Claim 11 includes "means for converting" limitations. Under 35 U.S.C. § 112(f), the scope of these elements is limited to the corresponding structures disclosed in the patent specification and their equivalents. The specification discloses a "PAN interface core" such as a "BlueCore5-Multimedia chip" which includes A/D and D/A converters ('620 Patent, col. 3:10-20). A central question will be whether the specific hardware and software architecture within the accused FreeWire constitutes an equivalent structure.
- Technical Questions: The claim requires the dongle to "simultaneously" transmit and receive signals. The complaint alleges this capability ('620 Patent, Compl. ¶19). However, the patent specification contemplates that where bandwidth is insufficient, transmissions can be "temporally staggered" by alternating packets, which is perceived by the user as simultaneous ('620 Patent, col. 6:30-45). The factual question will be how the FreeWire product actually handles data transmission and whether that method falls within the proper construction of the term "simultaneously."
V. Key Claim Terms for Construction
The Term: "means for converting" (recited twice in Claim 11)
- Context and Importance: This term is drafted in means-plus-function format, making its construction critical for determining the scope of infringement. The analysis will require the court to first identify the claimed function (e.g., "converting the analog audio signal to a digitized audio signal") and then identify the corresponding structure in the specification that performs this function. Practitioners may focus on this term because the infringement analysis will hinge on a comparison between the accused device's internal components and the specific structures disclosed in the '620 Patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue the function is performed by any suitable analog-to-digital or digital-to-analog converter, as these are well-known components.
- Evidence for a Narrower Interpretation: The specification explicitly links this function to a specific, integrated solution: a "PAN interface core," which is "preferably a system-on-a-chip solution, such as the BlueCore5-Multimedia chip available from CSR, Plc." containing converters, a processor, memory, and codecs ('620 Patent, col. 3:10-20; Fig. 2). This could support an argument that the term is limited to this integrated system-on-a-chip architecture or its direct structural equivalent.
The Term: "simultaneously" (recited in Claims 1 and 11)
- Context and Importance: This term defines the core functional advantage claimed by the patent over the prior art. Whether the accused device operates "simultaneously" will be a dispositive issue. Practitioners may focus on this term because its definition—whether it requires true, concurrent transmission or allows for rapidly alternating, "perceptually simultaneous" transmission—could decide the outcome of the infringement analysis.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification discloses an embodiment where, if bandwidth is insufficient, the devices can "alternate transmissions" in a "temporally staggered" manner to reduce "user-perceived audio latency" ('620 Patent, col. 6:30-45). This language may support a construction where "simultaneously" means perceptually simultaneous to the user, not necessarily technically concurrent.
- Evidence for a Narrower Interpretation: The patent abstract and summary consistently describe the system as configured to "simultaneously transmit... and receive" signals, and the claims recite this without qualification ('620 Patent, Abstract; col. 2:41-48). Further, the system is described as establishing two separate connections (upstream and downstream), which could imply the capability for truly parallel, non-alternating data flow ('620 Patent, col. 2:5-18).
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement. Inducement is based on the allegation that Sena "knowingly encourag[es] third parties to use infringing FreeWire Products" and provides instructions for users to connect the device in an infringing manner ('620 Patent, Compl. ¶¶25, 28). Contributory infringement is alleged based on Sena making, selling, and offering to sell the FreeWire products ('620 Patent, Compl. ¶29).
- Willful Infringement: The complaint alleges willfulness based on pre-suit knowledge. It explicitly states that "Sena has had knowledge of the '620 Patent since at least January 19, 2017 when J&M informed Sena about the infringement of the '620 Patent" ('620 Patent, Compl. ¶31).
VII. Analyst’s Conclusion: Key Questions for the Case
This dispute appears to center on highly specific technical and legal definitions. The outcome will likely depend on the court's resolution of two key questions:
A core issue will be one of structural equivalence: are the internal components of the accused Sena FreeWire, particularly its audio-to-digital converters and processing architecture, structurally the same as or equivalent to the specific "system-on-a-chip" solution described in the '620 Patent specification, as required by the "means for converting" claim limitations?
A second key issue will be one of definitional scope: does the term "simultaneously," as used in the claims, require truly concurrent wireless transmission, or can it be construed more broadly to cover the rapidly alternating packet transmission that is common in wireless protocols and described as a "temporally staggered" embodiment in the patent itself?