DCT
8:17-cv-01159
Lantronix Inc v. Jinan Usr IoT Technology Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Lantronix, Inc. (Delaware)
- Defendant: Jinan USR IOT Technology, Ltd. (China)
- Plaintiff’s Counsel: Lapple Ubell IP Law, LLP
- Case Identification: 8:17-cv-01159, C.D. Cal., 07/07/2017
- Venue Allegations: Venue is alleged to be proper based on Defendant regularly conducting business in the district, combined with Plaintiff’s principal place of business being located there. An alternative basis asserted is that Defendant is an alien corporation.
- Core Dispute: Plaintiff alleges that Defendant’s "SuperPort" line of compact serial-to-Ethernet converters infringes patents related to technology for miniaturizing and housing all necessary conversion circuitry entirely within a standard RJ-45 network jack.
- Technical Context: The technology enables devices with older serial communication ports to connect to modern Ethernet networks, a key function for integrating legacy equipment into the "Internet of Things" (IoT).
- Key Procedural History: The complaint alleges that the Defendant had pre-suit knowledge of the patents-in-suit and its infringement of them through letters sent by the Plaintiff. This allegation forms the basis for the claims of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2002-04-15 | Priority Date for '096 and '242 Patents |
| 2005-04-19 | U.S. Patent No. 6,881,096 Issues |
| 2006-03-28 | U.S. Patent No. 7,018,242 Issues |
| 2016 (Early Summer) | Alleged Launch of Accused USR IOT "SuperPort" Products |
| 2017-07-07 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,881,096, "Compact Serial-To-Ethernet Conversion Port" (April 19, 2005)
The Invention Explained
- Problem Addressed: Prior art methods for connecting serial devices to Ethernet networks required numerous electronic components to be mounted on a printed circuit board (PCB) adjacent to, but outside of, the physical RJ-45 network jack, consuming significant and critical space on the device's main board (Compl. ¶25; ’096 Patent, col. 2:7-13).
- The Patented Solution: The invention miniaturizes and integrates all the necessary electronic components for the conversion—including controller hardware, firmware, and magnetic signal-conditioning circuits—and houses them entirely within the shielded housing of a standard RJ-45 jack, creating a self-contained, compact module (’096 Patent, Abstract; col. 2:32-44). The internal arrangement uses multiple small PCBs to fit all the components inside the housing, as depicted in the patent's figures (e.g., ’096 Patent, FIG. 4).
- Technical Importance: This approach allows for the simple and cost-effective addition of Ethernet connectivity to a new or existing product, requiring very few connections and no more physical space than a typical, non-functional RJ-45 jack (’096 Patent, col. 2:60-65).
Key Claims at a Glance
- The complaint asserts infringement of independent claims 20, 39, and 43.
- Independent Claim 20 (Apparatus): A communication module comprising:
- a port for receiving the plug of the cable;
- an interface for connecting to the electronic component and for carrying serial data; and
- a circuit in communication with the port and the interface, the circuit comprising a controller for converting Ethernet data received at the port to serial data.
- The complaint reserves the right to assert dependent claims 21–22, 25–26, 30–34, 36, 40-41, and 44 (Compl. ¶41-42, ¶54, ¶60-64).
U.S. Patent No. 7,018,242, "Serial-To-Ethernet Conversion Port" (March 28, 2006)
The Invention Explained
- Problem Addressed: As with its parent patent, the '242 Patent addresses the problem of serial-to-Ethernet conversion systems requiring a "substantial footprint which takes up critical limited space" due to circuitry being located outside the network jack (’242 Patent, col. 2:7-12).
- The Patented Solution: The invention is a self-contained module for mounting on an electronic board that houses a logic circuit within the jack's housing to translate between serial and Ethernet protocols (’242 Patent, Abstract; col. 2:30-38). This allows a device manufacturer to add network connectivity with minimal redesign and space allocation (’242 Patent, col. 2:56-62).
- Technical Importance: The invention provides a complete, modular Ethernet interface for devices, including those that lack an onboard microcontroller, simplifying the process of network-enabling a wide variety of electronic products (’242 Patent, col. 1:21-28).
Key Claims at a Glance
- The complaint asserts infringement of independent claim 1.
- Independent Claim 1 (Apparatus): A module for mounting on an electronic component board, comprising:
- a connector for connection to the board;
- a logic circuit electronically coupled to the connector within a housing that translates between a serial protocol and an Ethernet protocol; and
- an Ethernet output electronically coupled to the logic circuit.
- The complaint reserves the right to assert dependent claims 2–8, 10-11, and 13-15 (Compl. ¶74).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are Defendant’s "SuperPort" products, including models designated "K1," "K2," "K3," and their variants (e.g., "USR-K1") (Compl. ¶30).
Functionality and Market Context
- The complaint alleges the accused products are "serial-to-Ethernet conversion ports that are housed entirely in an RJ-45 jack" (Compl. ¶43, ¶75). The complaint includes a photograph of the accused "USR-K3" product, alleging it bears a "striking resemblance" to Lantronix's own patented products, suggesting it serves the same function in the same form factor (Compl. ¶31). The complaint characterizes the Defendant as a "recent entrant into the market for IoT-related products" (Compl. ¶29).
IV. Analysis of Infringement Allegations
'096 Patent Infringement Allegations
| Claim Element (from Independent Claim 20) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a port for receiving the plug of the cable | The Infringing Products are housed in an RJ-45 jack, which constitutes a port for receiving an Ethernet cable plug. | ¶44 | col. 3:1-4 |
| an interface for connecting to the electronic component and for carrying serial data | The Infringing Products have an interface, comprised of input/output pins, for connecting to an external electronic component and carrying serial data. | ¶44, ¶49 | col. 5:20-24 |
| a circuit in communication with the port and the interface, the circuit comprising a controller for converting Ethernet data received at the port to serial data | The Infringing Products contain an internal circuit with a controller that converts Ethernet data received at the RJ-45 port into serial data for output at the interface. | ¶44 | col. 6:18-24 |
'242 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a connector for connection to the board | The Infringing Products are modules for mounting on a board and include a connector (a plurality of pins) for that purpose. | ¶76, ¶84 | col. 3:50-55 |
| a logic circuit electronically coupled to the connector within a housing that translates between a serial protocol and an Ethernet protocol | The Infringing Products contain a logic circuit inside their housing that is coupled to the connector and performs the function of translating between serial and Ethernet protocols. | ¶76 | col. 5:10-21 |
| an Ethernet output electronically coupled to the logic circuit | The Infringing Products provide an Ethernet output (the jack itself) that is electronically coupled to the internal logic circuit. | ¶76, ¶78 | col. 5:1-9 |
Identified Points of Contention
- Scope Questions: The dispute may center on whether the accused products' internal architecture falls within the scope of the claims. For example, a question for the court could be whether the term "logic circuit" as used in the '242 Patent, which the specification describes as including a microprocessor and other components ('242 Patent, FIG. 5), reads on the specific combination of components used in the Defendant's products.
- Technical Questions: The complaint's allegations are based primarily on the external form factor and high-level function of the accused products. The complaint includes an image of the accused USR-K3 product alongside patent drawings to allege a "striking resemblance" (Compl. ¶26, ¶31). A central evidentiary question will be what proof exists that the internal operation of the accused product's "controller" or "logic circuit" performs the exact translation and conversion functions in the manner required by the claims, beyond just achieving a similar end result.
V. Key Claim Terms for Construction
Term: "a circuit... comprising a controller for converting Ethernet data received at the port to serial data" ('096 Patent, Claim 20)
- Context and Importance: This term defines the core functionality of the claimed invention. The definition of "controller" and the specific acts encompassed by "converting" will be critical to the infringement analysis. Practitioners may focus on this term to determine if the defendant's implementation, even if functionally similar, is structurally or methodologically different in a way that avoids infringement.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the "controller block 56" in broad functional terms, stating it "handles all of the conversion between serial and ethernet" and includes "processing of the digital (serial) and analog (ethernet) signals" (’096 Patent, col. 6:18-22). This language may support a construction not tied to a specific hardware architecture.
- Evidence for a Narrower Interpretation: The specification also discloses that in the described embodiment, the controller components include "a microprocessor and an ethernet controller (combined in an ASIC for the present invention)" (’096 Patent, col. 6:60-63). This disclosure of a specific implementation could be used to argue for a narrower construction limited to similar integrated circuit designs.
Term: "a logic circuit... that translates between a serial protocol and an Ethernet protocol" ('242 Patent, Claim 1)
- Context and Importance: This is the central functional element of the '242 Patent's primary independent claim. The scope of "logic circuit" is a fundamental question; a broad definition would cover many possible hardware implementations, while a narrow one could excuse products with different internal designs.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: "Logic circuit" is an inherently broad term in electrical engineering. The patent does not provide an explicit definition, which may support giving the term its plain and ordinary meaning to one of skill in the art, covering any circuitry that performs the claimed "translates" function.
- Evidence for a Narrower Interpretation: The detailed description shows the "logic circuit" as part of a larger "controller block 56" that includes specific sub-components like a "communications processor," "supervisory circuit," and "flash memory" (’242 Patent, FIG. 5). An argument could be made that the term "logic circuit" should be construed in light of these surrounding disclosed components, thereby importing limitations from the preferred embodiment.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement, asserting that Defendant provides customers with product literature, datasheets, and user manuals (referenced as Exhibits C-I) that instruct and encourage them to use the accused products in an infringing manner (Compl. ¶57, ¶91). The complaint also pleads contributory infringement, alleging the products are "especially made or especially adapted for use in the infringement" and are not staple articles suitable for substantial non-infringing use (Compl. ¶58, ¶92).
- Willful Infringement: Willfulness is alleged based on Defendant having received "actual knowledge of its infringement" through pre-suit letters from Plaintiff (Compl. ¶55, ¶89). The complaint asserts that Defendant's continued infringement despite this notice demonstrates "objective and subjective reckless disregard" for Plaintiff's patent rights (Compl. ¶71, ¶100).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of technical mapping: while the accused products appear to replicate the form factor and high-level function of the patented invention, the case will depend on whether their internal circuitry and method of operation can be mapped precisely onto the specific limitations of the asserted claims. The key question is not if the accused product converts serial to Ethernet, but how it does so, and if that "how" is the same as what was claimed.
- The outcome will likely hinge on claim construction: can the functional terms at the heart of the patents, such as "controller for converting" and "logic circuit that translates," be interpreted broadly to cover any device that achieves the claimed result, as Plaintiff will likely argue? Or, will the court narrow these terms to the specific hardware architectures and component arrangements disclosed in the patents' detailed descriptions, potentially allowing Defendant to design around the claims?