DCT

8:17-cv-01252

Reversible Connections LLC v. Toshiba America Information Systems Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 8:17-cv-01252, C.D. Cal., 07/20/2017
  • Venue Allegations: Venue is alleged to be proper in the Central District of California because the Defendant maintains its principal place of business in Irvine, California, which is within the district.
  • Core Dispute: Plaintiff alleges that Defendant’s laptops equipped with USB Type-C ports infringe a patent directed to a double-sided, reversible electrical plug connector.
  • Technical Context: The technology addresses a common usability problem with earlier USB standards, which required a plug to be inserted in a single, specific orientation.
  • Key Procedural History: The complaint alleges that the Defendant was notified of the patent-in-suit via a letter dated July 13, 2017, one week prior to the filing of the complaint. Subsequent to the filing of this complaint, the asserted patent underwent both an ex parte reexamination and an inter partes review (IPR). The reexamination resulted in the cancellation of original claims 1-24, including the lead claim asserted in this complaint, and the addition of new claims 25-43. The IPR proceeding, IPR2018-00326, which was filed after this complaint, concluded that original claims 1-13 and 16-24 were patentable. The conflict between these outcomes and the fact that the complaint asserts a now-cancelled claim presents a significant procedural issue for the case.

Case Timeline

Date Event
2004-06-17 ’825 Patent - Earliest Priority Date
2008-12-02 ’825 Patent - Issue Date
2017-07-13 Plaintiff sends notice letter to Defendant
2017-07-20 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 Invention Explained

  • Problem Addressed: The patent's background section identifies the inconvenience of prior art USB connectors, which can only be inserted in one orientation, making connection difficult, particularly when the port is not easily visible (e.g., on the back of a computer). It also notes the risk that inserting a connector incorrectly could cause the power (VBUS) and ground (GND) contacts to short circuit. (’825 Patent, col. 2:21-29, col. 2:40-54).
  • The Patented Solution: The invention is a male plug connector with two sets of electrical contacts on its opposing top and bottom surfaces. The contacts are arranged in a "mutually opposed" or "anti-phase" configuration, allowing the plug to be inserted into a standard, single-sided female receptacle in either orientation while still establishing the correct electrical pathways. The connector also incorporates a "short circuit prevention device," such as a diode or relay, to prevent a harmful electrical short if the power and ground pins were to misalign upon insertion. (’825 Patent, Abstract; col. 5:42-col. 6:6).
  • Technical Importance: This design provided a solution to a widely recognized usability flaw in the USB standard before the official introduction of the inherently reversible USB Type-C standard. (Compl. ¶6).

Key Claims at a Glance

  • The complaint asserts infringement of "at least claim 1" of the ’825 Patent (Compl. ¶11).
  • Independent Claim 1 of the ’825 Patent recites:
    • A multi-contact connector supporting on opposite surfaces first and second sets of mutually opposed contacts
    • wherein corresponding contacts in each set are electrically interconnected and are spatially aligned in a mutually opposed relationship
    • allowing the connector to be connected in two opposed orientations to a corresponding FCCS-compatible receptacle supporting on an internal surface thereof a multi-contact data connector having only a single set of contacts
    • said connector further comprising a short circuit prevention device to prevent an electric short circuit between contacts of the receptacle on inserting the connector therein.
  • The complaint’s prayer for relief seeks a judgment that "one or more claims" have been infringed (Compl., Prayer for Relief ¶a).

III. The Accused Instrumentality

Product Identification

  • The complaint names a series of Toshiba laptops, including various models from the Portege, Tecra, X20W, X30, and Z20t series, collectively referred to as the "Accused Products" (Compl. ¶11).

Functionality and Market Context

  • The accused functionality is the inclusion of "USB ports adhering to the USB 3.1 Type C standard." (Compl. ¶11). The complaint alleges these ports feature a connector with two sets of mutually opposed contacts, can be connected in either orientation, and contain circuitry for short circuit prevention, thereby allegedly practicing the invention. (Compl. ¶11). The complaint does not provide further technical details about the operation of the accused USB Type-C ports.

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint.

’825 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A multi-contact connector supporting on opposite surfaces first and second sets of mutually opposed contacts The Accused Products' "USB ports include a connector having two sets of mutually opposed contacts." ¶11 col. 5:42-50
wherein corresponding contacts in each set are electrically interconnected and are spatially aligned in a mutually opposed relationship allowing the connector to be connected in two opposed orientations to a corresponding FCCS-compatible receptacle... "The USB ports are capable of being connected in either orientation with a compatible receptacle that is plugged into the port." ¶11 col. 5:51-62
said connector further comprising a short circuit prevention device to prevent an electric short circuit between contacts of the receptacle on inserting the connector therein. "The Accused Products further include circuitry connected to the USB ports that provides short circuit prevention for the port." ¶11 col. 6:2-6

Identified Points of Contention

  • Scope Questions: A central question may be whether the accused products, which implement the "USB 3.1 Type C standard," fall within the scope of the claims. The claims were written with reference to pre-existing, non-reversible USB receptacles, and the court may need to determine if the patented invention can read on the distinct architecture of the modern USB-C standard.
  • Technical Questions: The complaint makes the conclusory allegation that the accused products meet every limitation of claim 1 by "adhering to the USB 3.1 Type C standard." (Compl. ¶11). A key evidentiary question will be whether the power negotiation and orientation-sensing logic of the USB-C standard performs the same function in the same way as the "short circuit prevention device" disclosed in the patent, which is described as a diode- or relay-based circuit.

V. Key Claim Terms for Construction

  • The Term: "short circuit prevention device"
  • Context and Importance: This term is a critical limitation distinguishing the invention from a simple double-sided connector. The definition of this "device" will be central to the infringement analysis, as the accused USB-C standard uses a complex protocol for power and data-role negotiation, which differs from the specific circuits disclosed in the patent.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The plaintiff may argue the term is functional and should be construed to cover any component or circuitry that achieves the stated purpose of preventing a short circuit. The specification provides multiple examples (diodes and a relay), suggesting the term is not limited to a single structure. (’825 Patent, col. 6:55-col. 7:6; Figs. 2d, 2e).
    • Evidence for a Narrower Interpretation: The defendant may argue the term should be limited to the structures actually disclosed, such as the specific diode circuit of Figure 2d or the relay of Figure 2e. These embodiments represent direct current-blocking mechanisms, which may be argued to be structurally and operationally different from the logic-based handshake protocol of the USB-C standard.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges both induced and contributory infringement. The inducement allegation is based on Toshiba providing "user guides and other sales-related materials" that instruct customers on the normal use of the accused USB connectors (Compl. ¶13). The contributory infringement allegation is based on the assertion that the connectors have "no substantial non-infringing uses" and are especially made for use in an infringing manner (Compl. ¶15).
  • Willful Infringement: The complaint does not explicitly allege willful infringement or seek enhanced damages under 35 U.S.C. § 284. It does, however, request that the court declare the case "exceptional" and award attorney's fees under 35 U.S.C. § 285 (Compl., Prayer for Relief ¶e). The factual basis for this appears to be knowledge of the patent as of the July 13, 2017 notice letter (Compl. ¶9).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A threshold procedural question will be the viability of the asserted claim. Given that Claim 1 was cancelled during ex parte reexamination after the complaint was filed, the court must determine if the action can proceed, potentially requiring the plaintiff to amend its pleadings to assert one of the claims that survived post-grant proceedings.
  • A key technical issue will be one of functional and structural correspondence: does the complex, protocol-based power and role negotiation system within the accused USB Type-C standard constitute a "short circuit prevention device" as that term is used and described in the ’825 patent, which discloses simpler, direct current-blocking circuits?
  • The case may also turn on a question of claim scope: can the claims, drafted to solve a problem with non-reversible USB-A type receptacles, be construed to cover products implementing the entirely different, natively reversible USB-C standard?