DCT
2:17-cv-07047
Blackbird Tech LLC v. Makita USA Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Blackbird Tech LLC d/b/a Blackbird Technologies (Delaware)
- Defendant: Makita U.S.A., INC. (California)
- Plaintiff’s Counsel: Stamoulis & Weinblatt LLC
- Case Identification: 2:17-cv-07047, D. Del., 04/28/2017
- Venue Allegations: Plaintiff alleges venue is proper in the District of Delaware based on Defendant’s regular business in the state, including marketing and selling the accused products through its own website, third-party e-commerce sites, and at least two physical retail stores located in Delaware.
- Core Dispute: Plaintiff alleges that Defendant’s power tool battery accessories, which adapt power tool batteries to charge other devices or function as lights, infringe a patent related to multi-functional rechargeable battery accessories.
- Technical Context: The technology at issue involves modular accessories that attach to the standardized docking ports of cordless power tool battery packs to provide new capabilities, such as USB charging ports and integrated flashlights.
- Key Procedural History: The patent-in-suit was issued on April 11, 2017, and the complaint was filed 17 days later on April 28, 2017. The complaint does not mention any prior litigation, licensing history, or administrative proceedings related to the patent.
Case Timeline
| Date | Event |
|---|---|
| 2013-03-13 | ’989 Patent Priority Date |
| 2017-04-11 | ’989 Patent Issued |
| 2017-04-28 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,620,989 - “Rechargeable Battery Accessories,” issued April 11, 2017
The Invention Explained
- Problem Addressed: The patent identifies the limited utility of conventional rechargeable battery packs for power tools, which are typically dedicated to a single purpose and lack features like charge indicators or the ability to power other devices (Compl. ¶8; ’989 Patent, col. 1:29-37).
- The Patented Solution: The invention is an accessory that mechanically and electrically connects to a standard power tool battery pack. This accessory acts as an adapter, drawing power from the battery to provide new functions through additional interfaces, such as a USB port to charge a mobile phone or an integrated light source to serve as a flashlight (’989 Patent, Abstract; col. 1:42-57). The core concept is to transform a single-purpose power tool battery into a versatile, multi-functional power source (’989 Patent, col. 2:38-44).
- Technical Importance: This technology expands the utility of costly power tool battery ecosystems, making them more useful on construction sites or in remote locations where convenient power sources are scarce (’989 Patent, col. 1:24-28).
Key Claims at a Glance
- The complaint asserts infringement of at least claims 10 and 15, which depend from independent claim 1 (Compl. ¶10).
- Independent Claim 1 requires, in brief:
- A housing with a "first interface" on one side.
- The first interface has a "first mechanical interface" with two "alignment guides" on opposite lateral edges for slidably connecting to a battery pack.
- The first interface also has a "first electrical interface" for connecting to the battery pack.
- A "second interface" is defined in the housing with its own mechanical and electrical components for connecting to a "first device."
- The complaint reserves the right to assert other claims (’989 Patent, col. 8:1-18; Compl. ¶10).
III. The Accused Instrumentality
Product Identification
- Makita ADP05 18V LXT Lithium-Ion Cordless Power Source
- Makita DML807 18V LXT Lithium-Ion Cordless L.E.D. Lantern/Flashlight (Compl. ¶10).
Functionality and Market Context
- The complaint alleges that the Makita ADP05 is an accessory that attaches to a compatible Makita power tool battery pack (Compl. ¶11). The complaint provides an image of the Makita ADP05 Power Source, showing its overall shape, handle, and two USB ports (Compl. p. 4). Its key alleged function is to provide two USB ports that draw power from the battery to charge external devices like mobile phones (Compl. ¶11).
- The Makita DML807 is described as a lantern/flashlight that also connects to a Makita battery pack (Compl. ¶12). A picture of the Makita DML807 Lantern/Flashlight is also included, illustrating its form factor as a light source mounted on a battery-compatible base (Compl. p. 5). The complaint alleges it provides "three L.E.D. lighting modes," including a "flashlight mode" (Compl. ¶12).
- The complaint alleges these products are sold through Defendant's website and major retailers like Amazon and Home Depot (Compl. ¶6).
IV. Analysis of Infringement Allegations
’989 Patent Infringement Allegations (re: Makita ADP05 and Claim 10)
| Claim Element (from Independent Claim 1 and Dependent Claims 9 & 10) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a cordless power tool battery pack accessory comprising: a housing... | The Makita ADP05 includes "a housing (the plastic body)" | ¶11 | col. 8:1-2 |
| a first interface defined on the first side of the housing comprising: a first mechanical interface comprising a first...and a second alignment guide...configured to slidably and detachably connect the accessory to a...battery pack | The ADP05 has a "first interface (the interface on the underside) having a first mechanical interface having first and second alignment guides defined along the lateral edges (the guide members on the longer sides of the underside)" which "are configured to slidably and detachably connect" the product to a battery pack. | ¶11 | col. 8:3-8 |
| a first electrical interface...configured to electrically connect the accessory to the battery pack | The ADP05 includes a "first electrical interface (metal contacts on the underside)." | ¶11 | col. 8:8-11 |
| a second interface defined in the housing comprising...a second mechanical interface...and a second electrical interface...configured to electrically connect the accessory to the first device | The ADP05 includes "second and third interfaces, each having mechanical and electrical interfaces (the two USB ports) configured to electrically connect the accessory to devices (e.g., USB-power devices like mobile phones)." The complaint appears to map one of the USB ports to the "second interface" limitation. | ¶11 | col. 8:12-18 |
| [from claim 9] further comprising a third interface defined in the housing... | The complaint alleges the ADP05 has "second and third interfaces," mapping the other of the two USB ports to the "third interface" limitation. | ¶11 | col. 8:39-46 |
| [from claim 10] wherein said third interface comprises a female universal serial bus (USB) port | The complaint identifies the "second and third interfaces" as "the two USB ports." | ¶11 | col. 8:47-49 |
’989 Patent Infringement Allegations (re: Makita DML807 and Claim 15)
The complaint’s allegations regarding the DML807 are more conclusory. It alleges the DML807 "includes first and second interfaces, as described in the preceding paragraph" (referring to the ADP05 analysis), and that it "also includes 'three L.E.D. lighting modes,' including a 'flashlight mode'" to meet the "flashlight" limitation of claim 15 (Compl. ¶12; ’989 Patent, col. 8:61).
Identified Points of Contention
- Scope Questions: The complaint maps two adjacent USB ports on the ADP05 to the distinct "second interface" and "third interface" limitations of claims 1 and 9. This raises the question of whether two adjacent, identical ports can be considered separate "interfaces" under the patent's definition, or if they constitute a single interface with multiple ports.
- Technical Questions: For the DML807, the complaint alleges its battery connection mechanism is infringing by incorporating by reference the description of the ADP05's interface (Compl. ¶12). A key question for the court will be whether the DML807's mechanical interface in fact contains the "first and second alignment guides" on opposite lateral edges as required by claim 1.
V. Key Claim Terms for Construction
The Term: "interface"
- Context and Importance: Claims 1, 9, and 10 require a "first," "second," and "third" interface. The complaint alleges two side-by-side USB ports on the ADP05 satisfy the requirements for both a "second" and a "third" interface. The construction of what constitutes a distinct "interface" is therefore critical to determining infringement of claim 10.
- Intrinsic Evidence for a Broader Interpretation: The patent does not provide an explicit definition of "interface", which may support an interpretation where any distinct connection point, regardless of proximity to another, qualifies as a separate interface (’989 Patent, col. 8:9-18, 39-46).
- Intrinsic Evidence for a Narrower Interpretation: The patent's figures depicting embodiments with multiple interfaces often show them on different sides or areas of the housing (e.g., "front and rear USB connectors"), which could support an argument that "interfaces" must be physically distinct in location or type, not merely adjacent identical ports (’989 Patent, col. 2:30-32; FIGS. 5A-5F).
The Term: "alignment guide"
- Context and Importance: Claim 1 requires a pair of "alignment guides" to facilitate the slidable connection to the battery. Dependent claim 13 further specifies these as "flange-like" members that mate with "channel-like" members. The complaint identifies "guide members on the longer sides" of the accused product as the "alignment guides" (Compl. ¶11). Whether these "guide members" meet the structural definition of "alignment guide" as used in the patent will be a central infringement question.
- Intrinsic Evidence for a Broader Interpretation: Independent claim 1 does not specify the shape of the "alignment guide," potentially allowing it to cover any structure that aligns the accessory during connection.
- Intrinsic Evidence for a Narrower Interpretation: The specification describes and illustrates specific "elongate, flange-like guide member[s]" (’989 Patent, col. 6:53-61; Fig. 10b). A defendant may argue that this disclosed structure informs the proper, narrower construction of the term even in claim 1.
VI. Other Allegations
- Indirect Infringement: The complaint does not allege indirect infringement. The single count is for direct infringement under 35 U.S.C. § 271(a) (Compl. Prayer for Relief A).
- Willful Infringement: The complaint does not explicitly allege willful infringement. It requests that the case be found "exceptional under 35 U.S.C. § 285" for an award of attorneys' fees but does not plead facts concerning pre-suit knowledge or willfulness that would typically support a claim for enhanced damages under § 284 (Compl. Prayer for Relief D).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction: can the term "interface" be construed such that two physically adjacent and functionally identical USB ports satisfy the claim requirements for a separate "second interface" and "third interface," as is necessary to prove infringement of asserted claim 10?
- A key evidentiary question will be one of proof: for the Makita DML807 Lantern/Flashlight, can the plaintiff demonstrate that the product’s battery connection mechanism meets the specific structural limitations of claim 1, such as the opposing "alignment guides," given the highly conclusory infringement allegations for that product in the complaint?
- A central question of infringement will be whether the "guide members" on the accused products are structurally equivalent to the "alignment guides" recited in the claims, a dispute that may turn on whether the term is limited to the "flange-like" embodiments disclosed in the patent specification.