DCT
5:17-cv-01445
Reversible Connections LLC v. As Rock America Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Reversible Connections LLC (Delaware)
- Defendant: ASROCK AMERICA, INC. (California)
- Plaintiff’s Counsel: Friedman, Suder & Cooke
- Case Identification: 5:17-cv-01445, C.D. Cal., 10/01/2021
- Venue Allegations: Venue is alleged to be proper in the Central District of California because the Defendant maintains its principal place of business in Chino, California, which is located within the district.
- Core Dispute: Plaintiff alleges that Defendant’s computer motherboards and other electronics incorporating USB Type-C ports infringe a patent related to double-sided, reversible electrical connectors that include short-circuit prevention technology.
- Technical Context: The technology concerns reversible data and power connectors, which enhance usability by allowing insertion into a corresponding port in either of two orientations, a feature popularized by the USB Type-C standard.
- Key Procedural History: The patent-in-suit, U.S. Patent No. 7,458,825, underwent an ex parte reexamination requested in 2020. During this proceeding, the original claims 1-24 were cancelled, and new claims 25-43 were added and confirmed as patentable by the USPTO. This amended complaint, filed after the reexamination certificate was issued, asserts infringement of the newly-added claim 25, whereas the original complaint asserted the now-cancelled claim 1. This history may give rise to a defense of intervening rights, which could limit past damages.
Case Timeline
| Date | Event |
|---|---|
| 2004-06-17 | ’825 Patent Priority Date |
| 2008-12-02 | ’825 Patent Issue Date |
| 2017-07-20 | Original Complaint Filing Date |
| 2020-04-29 | Ex Parte Reexamination Request Filed |
| 2021-07-07 | Reexamination Certificate Issued; New Claims 25-43 Added |
| 2021-10-01 | First Amended Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,458,825 - DOUBLE-SIDED USB-COMPATIBLE PLUG CONNECTOR ADAPTED FOR INSERTION IN EITHER ORIENTATION INTO A USB-COMPATIBLE RECEPTACLE
- Patent Identification: U.S. Patent No. 7,458,825, DOUBLE-SIDED USB-COMPATIBLE PLUG CONNECTOR ADAPTED FOR INSERTION IN EITHER ORIENTATION INTO A USB-COMPATIBLE RECEPTACLE, issued December 2, 2008 (the "’825 Patent").
The Invention Explained
- Problem Addressed: The patent’s background section describes the inconvenience of conventional USB connectors that can only be inserted in a single orientation ('825 Patent, col. 2:18-24). It further identifies a critical technical problem with creating a simple, double-sided connector: if inserted incorrectly, the power contacts (VBUS) could make contact with the metallic, grounded components of the female receptacle, causing a dangerous short circuit ('825 Patent, col. 2:40-53).
- The Patented Solution: The invention discloses a double-sided male connector with two sets of contacts on opposing surfaces arranged in a "mutually opposed relationship" ('825 Patent, col. 17:12-16). This physical arrangement allows the connector to establish a proper electrical connection regardless of its insertion orientation ('825 Patent, col. 6:1-11). To solve the short-circuit problem, the invention incorporates an "electronic short circuit prevention device," such as diodes or a relay, which ensures that current does not flow if the VBUS contacts are improperly connected to ground ('825 Patent, col. 6:42-58; Figs. 2d, 2e).
- Technical Importance: The invention provided a framework for creating user-friendly reversible connectors while addressing the inherent electrical safety risks of such a design ('825 Patent, Abstract).
Key Claims at a Glance
- The complaint asserts at least independent claim 25 (Compl. ¶7).
- The essential elements of independent claim 25 are:
- A multi-contact connector with first and second sets of mutually opposed contacts on opposite surfaces.
- The contacts are electrically interconnected and spatially aligned to allow connection in two orientations to a corresponding USB-compatible receptacle, achieving identical functionality regardless of orientation.
- The connector includes an electronic short circuit prevention device to prevent a short circuit between the VBUS and GND contacts of the receptacle upon insertion.
- The complaint’s prayer for relief seeks judgment on "one or more claims of the Patent-in-Suit," suggesting the potential assertion of additional claims (Compl. p. 7).
III. The Accused Instrumentality
Product Identification
- The complaint accuses "desktop computers, computer motherboards, and other electronics that include USB Type C ports (connectors)" manufactured and sold by ASRock (Compl. ¶7). A specific list of accused products is referenced as "Exhibit B" but is not attached to the filed complaint (Compl. ¶7).
Functionality and Market Context
- The accused functionality resides within the USB Type-C ports incorporated into ASRock’s products (Compl. ¶7). The complaint alleges these ports, by adhering to the USB Type-C standard, necessarily include a connector with two sets of mutually opposed contacts that allow for reversible connection (Compl. ¶7). It further alleges that the products contain "circuitry connected to the USB ports that provides short circuit prevention" as required by the claims (Compl. ¶7). The allegations suggest that infringement is based on compliance with the USB Type-C standard itself (Compl. ¶7).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
Claim Chart Summary
- The complaint alleges that the accused products meet every limitation of at least claim 25. The core allegations are summarized below.
’825 Patent Infringement Allegations
| Claim Element (from Independent Claim 25) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A multi-contact connector supporting on opposite surfaces first and second sets of mutually opposed contacts... | The USB Type C ports in the Accused Products include a connector having two sets of mutually opposed contacts. | ¶7 | col. 5:40-45 |
| ...wherein corresponding contacts in each set are electrically interconnected and are spatially aligned in a mutually opposed relationship allowing the multi-contact connector to be connected in two opposed orientations directly to a corresponding USB-compatible receptacle... | The corresponding contacts in each set are electrically interconnected and are spatially aligned in a mutually opposed relationship. As a result, the USB connectors are capable of being connected in either orientation... | ¶7 | col. 6:1-6 |
| ...said multi-contact connector further comprising an electronic short circuit prevention device to prevent an electric short circuit between a VBUS contact of the USB-compatible receptacle and a GND contact of the USB-compatible receptacle on inserting the multi-contact connector therein. | The Accused Products further include circuitry connected to the USB ports that provides short circuit prevention for the port, including electronic short circuit prevention for preventing an electric short circuit between a VBUS contact...and a GND contact... | ¶7 | col. 6:42-58 |
Identified Points of Contention
- Scope Questions: The central dispute may concern whether the circuitry used in standard USB Type-C ports constitutes an "electronic short circuit prevention device" as that term is used in the patent. The defense may argue that the term, in the context of the patent, refers to a specific component designed to solve the physical mis-insertion shorting problem, whereas the accused circuitry in a standard USB-C port performs broader power management and negotiation functions that are technically distinct.
- Technical Questions: The complaint alleges infringement based on adherence to the USB Type-C standard (Compl. ¶7). This raises the question of what specific circuitry within ASRock's implementation of that standard performs the claimed short-circuit prevention function, and whether its method of operation is the same as that disclosed in the ’825 Patent.
V. Key Claim Terms for Construction
- The Term: "electronic short circuit prevention device"
- Context and Importance: This term is the central technical limitation of claim 25 and was added during reexamination. Its construction will be dispositive, as the infringement case hinges on whether the standard circuitry in the accused USB Type-C ports falls within its scope. Practitioners may focus on this term because the patent discloses specific embodiments to solve a particular problem, while the accused products implement a universal industry standard that may solve different or broader problems.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim uses broad, functional language: a device "to prevent an electric short circuit." Plaintiff may argue this covers any electronic means that achieves the stated preventative function. The specification also refers generally to "means to prevent an electric short circuit" (’825 Patent, col. 4:45-47).
- Evidence for a Narrower Interpretation: The specification explicitly discloses specific structures for this device, namely diodes (Fig. 2d) and a "relay unit" (Fig. 2e) that act upon detecting an improper physical connection (’825 Patent, col. 6:42-58). Defendant may argue the term should be construed as limited to these or structurally similar components that address the specific VBUS-to-GND shorting problem on inverted insertion, rather than general-purpose power protection circuitry.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement.
- Inducement is alleged based on Defendant providing products with knowledge of the patent and providing user guides and marketing materials that instruct customers on the normal (and allegedly infringing) operation of the USB Type-C ports (Compl. ¶12-13).
- Contributory infringement is alleged on the basis that the accused USB connectors are especially made for an infringing use and have no substantial non-infringing uses (Compl. ¶15).
- Willful Infringement: The complaint alleges Defendant has had knowledge of the ’825 Patent since at least July 13, 2017, from a notification letter, and knowledge of the newly-added claims since at least July 7, 2021, when the reexamination certificate was issued (Compl. ¶10). This alleged pre-suit and post-reexamination knowledge forms the basis for potential willfulness allegations and the request for a declaration of an "exceptional case" under 35 U.S.C. § 285 (Compl. p. 7).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this case may depend on the court’s answers to two central questions:
- A core issue will be one of technological scope: does the general power management and protection circuitry inherent in the universal USB Type-C standard constitute the specific "electronic short circuit prevention device" claimed in the ’825 Patent, which was disclosed as a targeted solution to a physical short circuit upon inverted insertion?
- A key legal issue will be the doctrine of intervening rights: given that the asserted claim was added during reexamination after the originally-asserted claim was cancelled, what limitations, if any, apply to Plaintiff's ability to recover damages for products sold or activities undertaken by Defendant before the reexamination certificate issued on July 7, 2021?