DCT

8:24-cv-01974

TS Optics Corp v. Microsoft Corp

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 8:24-cv-01974, C.D. Cal., 11/26/2024
  • Venue Allegations: Plaintiff alleges venue is proper because Defendant transacts business, has committed acts of infringement, and maintains a regular and established place of business in the Central District of California, citing specific office locations.
  • Core Dispute: Plaintiff alleges that Defendant’s Xbox gaming consoles and Xbox Cloud Gaming service infringe two patents related to optical disc drive actuators and mobile terminal-based virtual game controllers, respectively.
  • Technical Context: The technologies at issue concern the electromechanical components that read optical discs and software systems that enable mobile devices to function as remote controllers for games running on a separate computer or server.
  • Key Procedural History: The complaint alleges Defendant was aware of the ’055 Patent since at least July 2011 via a cross-license agreement with Samsung Electronics that terminated in approximately July 2018. Plaintiff also alleges sending a notice letter regarding the ’055 Patent on November 17, 2022, which may support allegations of willful infringement for conduct after these dates.

Case Timeline

Date Event
2003-06-02 U.S. Patent No. 7,266,055 Priority Date
2007-09-04 U.S. Patent No. 7,266,055 Issue Date
2011-07 Alleged date of Defendant's knowledge of '055 Patent via license
2012-06-22 U.S. Patent No. 9,612,709 Priority Date
2017-04-04 U.S. Patent No. 9,612,709 Issue Date
2018-07 Approximate termination of license agreement including '055 Patent
2022-11-17 Plaintiff sent notice letter to Defendant regarding '055 Patent
2024-11-26 Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 7,266,055 - "Optical pickup actuator and optical disk drive using the same and method," Issued September 4, 2007

The Invention Explained

  • Problem Addressed: The patent’s background section describes the challenge of miniaturizing optical pickup actuators for slim disk drives (Compl. Ex. 1, col. 3:7-13). Conventional designs used magnet arrangements that could interfere with the disc's spindle motor, and adding advanced features like tilt control required additional wiring that complicated the design and assembly (Compl. Ex. 1, col. 2:37-54).
  • The Patented Solution: The invention proposes an improved actuator design featuring a coil positioned horizontally on a movable blade. A key aspect of this solution is dividing the coil into a plurality of vertically separated subcoils (Compl. Ex. 1, Abstract). This configuration is intended to provide greater flexibility in placing the suspension wires and their associated hinges, which can improve tracking and tilt sensitivity while enabling a more compact and lightweight structure (Compl. Ex. 1, col. 6:55-62; Fig. 4).
  • Technical Importance: This design aimed to enhance the precision of optical pickups while simultaneously reducing their size and component count, addressing a key demand for the development of "super-slim disk drives" (Compl. Ex. 1, col. 3:7-13).

Key Claims at a Glance

  • The complaint asserts infringement of one or more claims, referencing independent claim 1 in its discussion of the infringement chart exhibit (Compl. ¶¶10, 12).
  • Independent Claim 1 recites:
    • a blade holding the objective lens;
    • a plurality of suspension wires supporting the blade on the base so that the blade is elastically movable;
    • a magnetic element positioned on the base;
    • a coil positioned horizontally on the blade to generate an electromagnetic force in a focusing and/or tilting direction through an interaction with the magnetic element,
    • wherein the coil is divided into a plurality of subcoils, where each subcoil is separated from an adjacent subcoil in a vertical direction, and
    • wherein the coil comprises a pair of first coils positioned on the blade in a first direction and facing each other with respect to the objective lens.
  • The complaint reserves the right to assert other claims of the ’055 Patent (Compl. ¶10).

U.S. Patent No. 9,612,709 - "Mobile terminal-based virtual game controller and remote control system using the same," Issued April 4, 2017

The Invention Explained

  • Problem Addressed: The patent identifies a conflict between general-purpose controllers like keyboards, which can be "clumsy," and proprietary game console controllers, which are often expensive, complex, and not optimized for every game genre (Compl. Ex. 3, col. 1:28-48).
  • The Patented Solution: The invention describes a remote-control system where a mobile terminal (e.g., a smartphone) functions as a virtual game controller for an application running on a separate computer (Compl. Ex. 3, Abstract). The computer transmits "button setting information" to the mobile terminal, which then generates a corresponding virtual button screen for the user. A distinguishing feature is the system's ability to "dynamically redefine" the mapping between a key input and a virtual input message "based on an event in the application," allowing the controller interface to change in response to in-game context (Compl. Ex. 3, col. 10:14-25; Fig. 3).
  • Technical Importance: The technology allows a ubiquitous device like a smartphone to serve as an application-specific, customizable controller, potentially replacing the need for multiple, specialized hardware peripherals (Compl. Ex. 3, col. 2:49-52).

Key Claims at a Glance

  • The complaint asserts infringement of one or more claims, referencing independent claim 4 in its discussion of the infringement chart exhibit (Compl. ¶¶18, 20).
  • Independent Claim 4 recites a computer comprising a virtual controller server with several key units:
    • A "button setting generating unit" to generate and transmit button setting information (including a mapping relationship) to a virtual controller client.
    • A "server message interfacing unit" to transmit settings and receive virtual input messages from the client.
    • A "key mapping unit" to identify a key input value mapped to the received virtual input message.
    • The claim further requires that the "mapping relationship dynamically redefines" the virtual input message based on "an event in the application", and that the system can generate and transmit "second button setting information" in response to such an event to change the virtual controller.
  • The complaint reserves the right to assert other claims of the ’709 Patent (Compl. ¶18).

III. The Accused Instrumentality

Product Identification

  • The complaint names two categories of accused products.
    1. '055 Accused Products: Microsoft's Xbox One, Xbox One S, Xbox One X, and Xbox Series X gaming consoles, all of which contain optical disc drives (Compl. ¶10, p. 4:1-2).
    2. '709 Accused Products: The "XBOX Cloud Gaming" service, which allows users to play games hosted on Microsoft's servers by streaming them to various devices, including mobile terminals that can act as virtual controllers (Compl. ¶18).

Functionality and Market Context

  • The '055 Accused Products are home entertainment consoles that use an internal optical drive to read game and media data from Blu-ray discs (Compl. ¶10). The complaint alleges these drives contain an infringing optical pickup actuator (Compl. ¶12).
  • The '0709 Accused Products represent a system where the game logic runs on Microsoft's remote servers and video is streamed to a user's device (Compl. ¶18). The user provides inputs through a controller, which can be a virtual controller on a mobile terminal. The complaint alleges that this system, comprising Microsoft's servers and the client software on user devices, infringes the ’709 patent (Compl. ¶20).

IV. Analysis of Infringement Allegations

The complaint references claim chart exhibits for both asserted patents (Exhibits 2 and 4), but these exhibits were not filed with the complaint (Compl. ¶¶12, 20). The complaint’s narrative infringement theory is conclusory, alleging that the accused products "satisfy all claim limitations" without providing a detailed, element-by-element mapping in the body of the complaint itself (Compl. ¶¶12, 20). No probative visual evidence provided in complaint.

  • '055 Patent Infringement Allegations
    The complaint alleges that the Xbox consoles, by containing an optical pickup actuator, directly infringe one or more claims of the ’055 Patent (Compl. ¶10). The core of this allegation rests on the physical construction of the actuator inside the console's optical drive. Without the claim chart or further detail, the specific factual basis for how the accused actuator meets each element of claim 1 remains unspecified.

  • '709 Patent Infringement Allegations
    The complaint alleges that the Xbox Cloud Gaming service directly infringes one or more claims of the ’709 Patent (Compl. ¶18). This infringement theory relies on the combined operation of Microsoft's servers (the claimed "virtual controller server") and the software client running on a user's mobile device. The allegation is that this system provides a virtual controller interface to the user that changes dynamically based on events within the game executing on the server, thereby meeting the limitations of claim 4 (Compl. ¶¶18, 20).

  • Identified Points of Contention:

    • '055 Patent - Structural Correspondence: A central question will be whether the coil assembly in the accused Xbox optical drives has the specific physical structure required by claim 1, particularly the limitation reciting a coil that is "divided into a plurality of subcoils, where each subcoil is separated from an adjacent subcoil in a vertical direction." The outcome may depend on discovery into the precise design and manufacturing of the actuator.
    • '709 Patent - Dynamic Functionality: The infringement analysis for the ’709 patent raises the question of whether the Xbox Cloud Gaming service performs the claimed function where the "mapping relationship dynamically redefines the virtual input message... based on an event in the application." The case may turn on evidence demonstrating that the virtual controller layout or function automatically changes in response to specific in-game events, rather than simply offering a static or user-configurable interface.

V. Key Claim Terms for Construction

  • For the ’055 Patent:

    • The Term: "divided into a plurality of subcoils, where each subcoil is separated from an adjacent subcoil in a vertical direction" (claim 1)
    • Context and Importance: This limitation defines the core structural novelty of the claimed actuator coil. Practitioners may focus on this term because the infringement analysis will depend heavily on whether the physical construction of the accused coil meets this specific geometric definition.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification suggests some flexibility, noting that the third coil 150 can be "vertically divided into two subcoils" or, "depending on the related conditions," into "three or more subcoils" (Compl. Ex. 1, col. 9:16-17, 33-35). This could support an argument that any clear vertical division in the winding constitutes a "separation."
      • Evidence for a Narrower Interpretation: Figure 4 of the patent depicts a clear physical gap between the upper and lower subcoils (151 and 152). A defendant could argue this implies a distinct, physical space is required, rather than merely different layers of a continuous winding. The stated purpose is to "permit flexibility in determining a location of a hinge" (Compl. Ex. 1, col. 6:58-62), which might be used to argue that the "separation" must be substantial enough to accommodate a hinge.

  • For the ’709 Patent:

    • The Term: "the mapping relationship dynamically redefines the virtual input message associated with a given key input based on an event in the application" (claim 4)
    • Context and Importance: This clause distinguishes the invention from a static virtual controller. The viability of the infringement claim depends on proving that the accused system performs this specific, event-triggered re-mapping.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The patent describes the dynamic change in broad terms, for example, "the virtual controller server 10 may dynamically change the button setting information in accordance with a game environment" (Compl. Ex. 3, col. 8:65-col. 9:1). This could support a reading where any change to the virtual controller interface triggered by game state satisfies the limitation.
      • Evidence for a Narrower Interpretation: The claim requires that the mapping for a "given key input" is redefined. A defendant might argue that this requires more than just adding or removing on-screen buttons; it requires that an existing input (e.g., a specific touch region) is re-mapped to a different game function. The patent provides an example: "sometimes a character needs to move in a field and in another time a character needs to grow up. Those cases may require different game interfaces" (Compl. Ex. 3, col. 8:62-65), suggesting a context-driven functional change.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement of infringement for both patents. It asserts that Microsoft encourages and instructs end users, through user manuals and online materials, to use the accused products in a manner that directly infringes the asserted patents (Compl. ¶¶11, 19). For the ’709 patent, this allegation is particularly relevant, as infringement requires actions by both Microsoft (operating the server) and the end user (operating the client on a mobile device).
  • Willful Infringement:
    • For the ’055 Patent, the complaint alleges pre-suit knowledge dating back to at least July 2011, based on a cross-license agreement with Samsung that allegedly included the patent, and a subsequent notice letter sent in November 2022 after that license terminated (Compl. ¶9). These allegations form a basis for willful infringement for the period after the license terminated and/or after the notice letter was received (Compl. ¶14).
    • For the ’709 Patent, the complaint alleges knowledge "at least as of the date this Complaint was filed," which would only support a claim for post-suit willfulness (Compl. ¶19). The prayer for relief specifically requests a judgment of willfulness for the "'055 patents" [sic], but does not explicitly mention the ’709 patent in the same sub-part (Compl. p. 6:27-28).

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

  1. A central issue will be one of structural correspondence: does the coil assembly within the accused Xbox optical drives possess the specific physical structure of a coil "divided into a plurality of subcoils" that are "separated...in a vertical direction," as required by the ’055 patent, or is there a material difference in its construction that places it outside the claim scope?
  2. A key evidentiary question will be one of dynamic functionality: does the Xbox Cloud Gaming service perform the specific function of "dynamically redefin[ing]" the virtual controller mapping "based on an event in the application" as claimed by the ’709 patent, or does it merely provide a static or user-configurable interface?
  3. A significant legal and damages question will center on the timeline of alleged infringement and willfulness: with respect to the ’055 patent, the case may focus on Microsoft's conduct after the alleged termination of its license in July 2018, as this date is critical to Plaintiff's theory of knowing and willful infringement.