DCT
2:20-cv-10207
Pilot Inc v. Battery Biz Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Pilot, Inc. (California)
- Defendant: Battery-Biz, Inc. (California)
- Plaintiff’s Counsel: Payne & Fears LLP
- Case Identification: 2:20-cv-10207, C.D. Cal., 11/06/2020
- Venue Allegations: Plaintiff alleges venue is proper because Defendant maintains an established place of business in the district, transacts business in the district, and committed the alleged acts of patent infringement in the district.
- Core Dispute: Plaintiff alleges that Defendant’s DURACELL-branded portable lithium-ion jump starters infringe two patents related to microcontroller-based safety circuits.
- Technical Context: The technology concerns safety systems in portable automotive jump starters that use microcontrollers to prevent dangerous conditions like short circuits or reverse polarity connections.
- Key Procedural History: The complaint notes that Plaintiff previously sued Schumacher Electric Corporation, which is now a licensee of the patents. It also mentions a resolved lawsuit against Winplus North America, Inc., which included the voluntary dismissal of an inter partes review (IPR2018-00488) against a related patent. The complaint alleges Defendant had knowledge of the patents-in-suit as of July 20, 2020, based on a lawsuit filed against "The Duracell Company."
Case Timeline
| Date | Event |
|---|---|
| 2014-04-28 | Earliest Priority Date for ’653 and ’806 Patents |
| 2014-09-01 | Plaintiff's first product delivery to Lowe's |
| 2018-08-14 | U.S. Patent No. 10,046,653 Issued |
| 2019-06-25 | U.S. Patent No. 10,328,806 Issued |
| 2020-07-20 | Alleged notice to Defendant via complaint against The Duracell Company |
| 2020-11-06 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,046,653 - “Automobile Charger”
- Patent Identification: U.S. Patent No. 10,046,653, issued August 14, 2018.
The Invention Explained
- Problem Addressed: The patent’s background section describes safety issues with existing automobile chargers, noting their inability to automatically detect conditions such as whether a load is connected, if the connection to a car battery is reversed, or if the battery state is suitable for receiving a high-current charge (Compl. ¶¶9-11; ’653 Patent, col. 1:20-28). These issues created fire and combustion risks, making retailers hesitant to stock portable lithium-ion jump starters (Compl. ¶9).
- The Patented Solution: The invention is a charging device that uses a microcontroller in coordination with several detection modules to manage power delivery safely (’653 Patent, Abstract; Fig. 1). A battery level detector and a load detector feed information to the microcontroller, which then generates a signal to control switching circuitry. This architecture ensures power is only transferred from the jump starter to the vehicle when safety prerequisites, such as proper connection type and sufficient internal battery level, are met (’653 Patent, col. 2:58-65).
- Technical Importance: This technology provided a control system to mitigate the primary safety risks of lithium-ion jump starters, which the complaint alleges was critical to their commercial acceptance and success in the automotive aftermarket (Compl. ¶¶25, 28).
Key Claims at a Glance
- The complaint asserts independent claim 7 (Compl. ¶38).
- The essential elements of claim 7 are:
- a battery level detector to detect a level of a first battery;
- a load detector to detect a type of connection of a load;
- a microcontroller to generate an output signal based on the level of the first battery and the type of connection of the load; and
- switching circuitry to selectively connect the first battery to the load based on the output signal.
- The complaint also asserts dependent claims 8, 9, 10, and 11 (Compl. ¶65).
U.S. Patent No. 10,328,806 - “Automobile Charger”
- Patent Identification: U.S. Patent No. 10,328,806, issued June 25, 2019.
The Invention Explained
- Problem Addressed: Like its family member, the ’806 patent addresses the dangers of portable chargers, including improper user operations and reversed polarity, which can cause damage to the vehicle or the charger itself (’806 Patent, col. 2:32-37; Compl. ¶31).
- The Patented Solution: The ’806 patent claims a specific implementation of the safety circuit architecture. It explicitly requires the switching circuitry to include a "plurality of MOSFETs" (Metal-Oxide-Semiconductor Field-Effect Transistors) and adds the requirement of a "boost device for boosting a gate voltage of the plurality of MOSFETs" (’806 Patent, claim 1). This configuration provides a robust electronic switch controlled by the microcontroller to connect or disconnect the power source based on detected conditions (’806 Patent, col. 4:5-10).
- Technical Importance: The use of MOSFETs controlled by a boost device allows for efficient and precise high-current switching, refining the safety system for the demanding application of jump-starting a vehicle (Compl. ¶¶42, 53).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶50).
- The essential elements of claim 1 are:
- a battery connected to a voltage regulator, the battery supplying a charging current;
- a battery voltage detector, connected to a microcontroller, to detect a voltage of an automobile battery;
- a load detector, connected to the microcontroller, to detect when the charging device is connected to the automobile battery;
- the microcontroller generating an output signal based on a detected voltage of the automotive battery;
- switching circuitry including a plurality of MOSFETs to selectively connect a negative terminal of the battery to the automobile battery based on the output signal; and
- a boost device for boosting a gate voltage of the plurality of MOSFETs.
- The complaint also asserts dependent claims 5, 6, 10, 11, 13, and 14 (Compl. ¶73).
III. The Accused Instrumentality
Product Identification
The DURACELL DRLJS20 and DRLJS110B Lithium-Ion Jump Starters, collectively referred to as the "Accused Duracell Jump Starters" (Compl. ¶¶32, 35).
Functionality and Market Context
The accused products are portable power packs for jump-starting vehicles and are marketed with safety features branded as "Spark Proof Technology" and "SafeJump™" (Compl. ¶34). The complaint alleges these features, which include reverse polarity and short-circuit protection, are managed by a microcontroller and associated circuitry housed within the device's jumper cables (Compl. ¶¶33, 39). The system provides user feedback via LED indicators; for example, a solid green light signals that the connection is correct and ready to start, while a red light and alarm indicate a fault (Compl. ¶41). The complaint alleges that Defendant introduced these products to compete with Plaintiff's offerings by copying the patented safety technology (Compl. ¶31). The complaint includes an image of the accused DRLJS20 product, showing the main battery unit and the jumper cables with their integrated control housing (Compl. p. 10).
IV. Analysis of Infringement Allegations
’653 Patent Infringement Allegations
The complaint provides annotated photographs of the DRLJS20's internal circuit board, purporting to show the physical components corresponding to the claim elements (Compl. p. 16).
| Claim Element (from Independent Claim 7) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a battery level detector to detect a level of a first battery | The accused devices have an internal lithium battery and a power button that activates an LED display to show the current charge level of that battery. | ¶40 | col. 6:29-30 |
| a load detector to detect a type of connection of a load | The devices' user manuals state they detect when connected to a vehicle battery and can identify the "type of connection," such as correct polarity (green LED) or reverse polarity (red LED and alarm). | ¶41 | col. 6:31-32 |
| a microcontroller to generate an output signal based on the level of the first battery and the type of connection of the load | The devices contain a microcontroller that receives data from the detectors and, based on that data, generates an output signal that controls the LEDs and the switching circuitry. | ¶¶41, 42 | col. 6:33-36 |
| switching circuitry to selectively connect the first battery to the load based on the output signal | The devices utilize MOSFETs as the switching circuitry, which only permit power to flow to the vehicle battery upon receiving the proper signal from the microcontroller. | ¶42 | col. 6:37-39 |
Identified Points of Contention
- Technical Questions: Claim 7 requires the microcontroller to generate a signal based on "the level of the first battery and the type of connection of the load." A question may arise as to whether the accused device's logic strictly adheres to this conjunctive requirement for all of its output signals, or if certain signals (e.g., a reverse polarity warning) are generated based on only one of these inputs.
- Scope Questions: The interpretation of "type of connection" could be a point of dispute. The complaint alleges this covers correct polarity and reverse polarity connections. A defense could argue the term, in the context of the patent, requires the detection of a wider or different range of connection types.
’806 Patent Infringement Allegations
The complaint alleges that the accused products' "SafeJump™" feature, which verifies "polarity, voltage of vehicle and jump-starter," embodies the patented invention (Compl. ¶51, citing Ex. D). The complaint also includes annotated photographs of the accused products' circuit boards identifying the alleged "plurality of MOSFETs" and "Boost device" (Compl. p. 22).
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a battery connected to a voltage regulator, the battery supplying a charging current | The accused devices include a lithium battery that supplies the charging current for the jump-start operation. | ¶51 | col. 5:9-11 |
| a battery voltage detector... to detect a voltage of an automobile battery | The devices' documentation states they verify the "voltage of vehicle" before enabling a jump-start and will not operate if the vehicle battery voltage is below a 3-volt threshold. | ¶51; p. 20 | col. 5:12-15 |
| a load detector... to detect when the charging device is connected to the automobile battery | The device's status LEDs activate or change state when the clamps are connected to a battery, indicating detection of the load. | ¶52; p. 15 | col. 5:16-19 |
| the microcontroller generating... an output signal based on a detected voltage of the automotive battery | The microcontroller receives voltage information and produces an output signal that is sent to the switching circuitry to control the connection. | ¶53 | col. 5:19-22 |
| switching circuitry including a plurality of MOSFETs to selectively connect a negative terminal of the battery... | The charging cables contain a circuit board with multiple MOSFETs that function as the switch to connect the jump starter to the vehicle battery. | ¶53 | col. 5:23-27 |
| a boost device for boosting a gate voltage of the plurality of MOSFETs | The circuit includes a component, identified by Plaintiff as a DC-DC boost converter, located between the microcontroller and the MOSFETs. | ¶54 | col. 5:28-30 |
Identified Points of Contention
- Technical Questions: A central technical question will be whether the component identified by Plaintiff as a "DC-DC boost converter" (Compl. p. 22) actually performs the function of "boosting a gate voltage of the plurality of MOSFETs" as claimed. The defense may argue this component serves a different primary purpose and does not function as the claimed "boost device."
- Scope Questions: The term "boost device" is not explicitly defined in the patent. Its construction will be critical. The court will need to determine if the term should be interpreted broadly to cover any circuit that increases voltage in the system, or more narrowly to mean a specific type of circuit, like a charge pump, designed for the express purpose of driving MOSFET gates.
V. Key Claim Terms for Construction
"load detector" (in ’653 claim 7 and ’806 claim 1)
- Context and Importance: The function of the entire safety system is predicated on the information supplied by the "load detector". The definition of this term, particularly what constitutes a "type of connection," is fundamental to the infringement analysis for both patents. Practitioners may focus on this term because its scope determines what capabilities the accused device must possess to infringe.
- Intrinsic Evidence for a Broader Interpretation: The patent states that the load detection module "detects whether the load module is correctly connected" ('653 Patent, col. 2:63-65), which could support an interpretation covering any circuit that verifies a proper electrical connection.
- Intrinsic Evidence for a Narrower Interpretation: The patent background focuses on specific problems like detecting "whether an electrode is connected with an automobile storage battery reversely" ('653 Patent, col. 1:24-25). This could support an argument that the term requires the ability to distinguish between specific, distinct types of connections (e.g., correct, reversed, shorted) rather than simply detecting the presence of a load.
"boost device" (in ’806 claim 1)
- Context and Importance: The infringement allegation for the ’806 patent hinges on the identification of a specific component as the "boost device" (Compl. ¶54). Its definition is therefore dispositive for this patent.
- Intrinsic Evidence for a Broader Interpretation: The claim language itself is functional: "a boost device for boosting a gate voltage." This could be argued to encompass any component that results in an increased gate voltage for the MOSFETs. The patent's circuit diagram simply labels a "BOOST 12V DEVICE" without further structural definition (’806 Patent, Fig. 2).
- Intrinsic Evidence for a Narrower Interpretation: An opponent could argue that in the context of power electronics for switching high currents, one of ordinary skill in the art would understand a "boost device" for a MOSFET gate to be a circuit, such as a charge pump, specifically designed to raise the gate voltage relative to the source to ensure the transistor is fully saturated. They may argue the accused "DC-DC boost converter" serves a different primary circuit function.
VI. Other Allegations
- Indirect Infringement: While not pleaded as a separate count, the complaint lays a factual groundwork for potential claims of induced infringement by alleging that Defendant's user manuals and on-product instructions direct consumers to use the accused products in a manner that performs the steps of the patented methods (Compl. ¶¶40-41; p. 15).
- Willful Infringement: The complaint alleges that Defendant's infringement became willful and intentional after it received notice of the asserted patents. This notice is alleged to have occurred on July 20, 2020, via a separate lawsuit filed by Plaintiff against "The Duracell Company" involving the same patents and similar allegations (Compl. ¶¶68, 75).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of component function: does the circuit element that Plaintiff identifies as a "DC-DC boost converter" in the accused products function as a "boost device for boosting a gate voltage" as required by claim 1 of the ’806 patent, or does this component serve a different primary purpose in the device's overall design?
- A second key question will be one of definitional scope: can the term "load detector", which the patent states "detects whether the load module is correctly connected," be construed to read on the accused products' system that checks for voltage and polarity, or does the patent's context require a more sophisticated detection capability?
- Finally, the willfulness claim will raise a legal question regarding the sufficiency of notice: is a lawsuit against a third-party brand licensor ("The Duracell Company") legally sufficient to establish that the manufacturer (Defendant Battery-Biz, Inc.) had the requisite knowledge for its subsequent alleged infringement to be considered willful?