DCT
3:18-cv-00939
Cyntec Co Ltd v. Chilisin Electronics Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Cyntec Company, Ltd. (Taiwan)
- Defendant: Chilisin Electronics Corp. (Taiwan) and Chilisin America Ltd. (California)
- Plaintiff’s Counsel: Wilson Sonsini Goodrich & Rosati
- Case Identification: Cyntec Company, Ltd. v. Chilisin Electronics Corp. et al., 3:18-cv-00939, N.D. Cal., 02/14/2018
- Venue Allegations: Venue is asserted based on Defendant Chilisin America Ltd. having its principal place of business in the Northern District of California and both defendants allegedly conducting business in the district, including importing, marketing, and selling the accused products.
- Core Dispute: Plaintiff alleges that Defendant’s power choke products infringe four patents related to the structural design and manufacturing methods of miniature electronic inductors.
- Technical Context: Power chokes are ubiquitous passive components essential for power management and signal filtering in high-volume electronics such as computers, smartphones, and automotive systems.
- Key Procedural History: The complaint alleges that Defendants had pre-suit knowledge of the patents-in-suit as of December 14, 2017. Subsequent to the filing of the complaint, U.S. Patent Nos. 8,922,312 and 9,481,037 underwent ex parte reexamination proceedings, which noted the instant litigation and resulted in the confirmation of all original claims.
Case Timeline
| Date | Event |
|---|---|
| 2009-02-27 | Priority Date for ’641 and ’580 Patents |
| 2009-05-15 | Priority Date for ’312 and ’037 Patents |
| 2012-07-03 | ’641 Patent Issued |
| 2014-12-30 | ’312 Patent Issued |
| 2015-08-25 | ’580 Patent Issued |
| 2016-11-01 | ’037 Patent Issued |
| 2017-12-14 | Alleged Pre-Suit Knowledge of Patents-in-Suit |
| 2018-02-14 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,212,641, "Choke," issued July 3, 2012
The Invention Explained
- Problem Addressed: The patent describes challenges in manufacturing small electronic chokes. Conventional methods that involve pressure-molding magnetic material around a pre-wound wire coil can crack or deform the delicate coil, especially as components shrink. Other methods using certain resins can have long, inefficient fabrication times. (’641 Patent, col. 1:55-66, col. 2:17-31).
- The Patented Solution: The invention proposes an electronic device built around a pre-formed "drum-core" consisting of a central pillar situated between a top and bottom board. A wire is wound around this more robust pillar, after which a magnetic material (a metallic powder mixed with a thermosetting resin) fills the surrounding space. This approach protects the wire from direct pressure during manufacturing. The specification also discloses specific structural and material properties, such as the top board being smaller than the bottom board to facilitate certain manufacturing steps. (’641 Patent, Abstract; col. 5:14-31, col. 6:61-66).
- Technical Importance: This design enables the reliable mass production of smaller and more durable power chokes, a critical factor for the ongoing miniaturization of consumer and industrial electronics. (’641 Patent, col. 1:30-41).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 1 (Compl. ¶39).
- Claim 1 requires:
- A core comprising a pillar, a top board, and a bottom board, forming a winding space.
- A wire wound around the pillar and located in the winding space.
- A magnetic material filling the winding space and encapsulating the wire.
- The magnetic material comprises a resin and an iron powder, with the powder having an average particle diameter smaller than 20 µm and the overall material having a permeability between 4 and 6.
U.S. Patent No. 8,922,312, "Electronic Device and Manufacturing Method Thereof," issued December 30, 2014
The Invention Explained
- Problem Addressed: When manufacturing chokes from magnetic powders, the pressure molding process can create internal strains in the material, leading to energy loss (known as "core loss"). Reducing these strains often requires a high-temperature annealing process, which can damage the wire's thin insulating layer and create short circuits. (’312 Patent, col. 1:21-48).
- The Patented Solution: The invention is an electronic device made from a mixture of two distinct magnetic powders. A "first" magnetic powder has larger particles and a greater Vicker's Hardness, while a "second" powder has smaller particles and is softer. During molding, the smaller, softer particles are able to fill the voids between the larger, harder ones. This specified difference in hardness allows the powders to be compressed into a dense, integral magnetic body at a much lower temperature, which avoids damaging the wire's insulation. (’312 Patent, Abstract; col. 2:1-12, col. 2:37-44).
- Technical Importance: This approach allows for the fabrication of magnetic components with improved density and lower core loss, enhancing electrical efficiency without resorting to high-temperature manufacturing steps that risk damaging the device. (’312 Patent, col. 2:13-24).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 1 (Compl. ¶45).
- Claim 1 requires:
- A first magnetic powder and a second magnetic powder.
- The first powder has a larger mean particle diameter than the second.
- The first powder has a greater Vicker's Hardness than the second.
- A conducting wire (with an insulating encapsulant) is buried in the mixture of the two powders.
- The mixture and wire are combined "by means of the first hardness difference" to form an integral magnetic body at a temperature below the melting point of the wire's insulation.
U.S. Patent No. 9,117,580, "Choke," issued August 25, 2015
Technology Synopsis
This patent discloses a choke with a single-piece core, similar to the '641 patent, but focuses on a specific pillar geometry. The pillar has a "non-circular and non-rectangular" cross-section, such as an oval-like shape with flattened sides, which is designed to maximize the pillar’s cross-sectional area (improving electrical performance) while avoiding the sharp corners of a rectangular pillar that could damage the wire during winding (’580 Patent, Abstract).
Asserted Claims
At least independent claim 1 (Compl. ¶51).
Accused Features
The LVF252A12-2R2M-N power choke is accused of infringement (Compl. ¶51).
U.S. Patent No. 9,481,037, "Electronic Device and Manufacturing Method Thereof," issued November 1, 2016
Technology Synopsis
This patent claims the manufacturing method for the device described in the '312 patent. The method involves providing an insulated wire, forming a mixture containing the wire buried within two distinct magnetic powders (one harder/larger, one softer/smaller), and performing a molding process where the hardness difference allows the components to be combined into an integral body at a low temperature (’037 Patent, Abstract).
Asserted Claims
At least independent claim 1 (Compl. ¶57).
Accused Features
The HEI201610A-2R2M-Q8 power choke is alleged to be manufactured using the patented process (Compl. ¶57).
III. The Accused Instrumentality
Product Identification
- The complaint names several series of power chokes, including the HEI, BDHE, LVS, and LVF series (Compl. ¶28-29). Specific products identified are the LVS404018-4R7M-N, HEI201610A-2R2M-Q8, and LVF252A12-2R2M-N (Compl. ¶39, ¶45, ¶51).
Functionality and Market Context
- The accused products are power chokes, also known as inductors, designed for use in a wide range of electronics (Compl. ¶21, ¶26). The complaint provides screenshots from distributor websites showing the products for sale, described as "Inductor Power Shielded Wirewound" and "Power Choke Molded Multi-Layer" (Compl. Fig. 5, p. 5; Fig. 7, p. 6). Marketing materials included in the complaint show these chokes are intended for incorporation into devices such as smartphones, tablets, wearable devices, and PC peripherals (Compl. Fig. 12, p. 11; Fig. 13, p. 12). The complaint alleges Defendants are a "major supplier in the power choke industry" (Compl. ¶27).
IV. Analysis of Infringement Allegations
The complaint references, but does not attach, claim chart exhibits. The analysis below is based on the complaint's narrative allegations and the provided figures.
8,212,641 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a core comprising a pillar, a top board and a bottom board... | The accused LVS series products are shielded wirewound power chokes alleged to be constructed with the claimed core structure. | ¶39, Fig. 7 | col. 5:14-20 |
| at least a wire, winded around the pillar... | The accused product is described as a "Wirewound" inductor, necessarily containing a wire wound into a coil. | Fig. 7 | col. 6:35-39 |
| a magnetic material, filling the winding space, encapsulating the wire... comprising a resin and a magnetic powder, wherein... the magnetic powder comprises an iron powder... | The accused products are "molded" and "shielded" chokes, which are alleged to be made by encapsulating the wire coil in a composite magnetic material as claimed. | ¶20, Fig. 7 | col. 7:35-45 |
| ...an average particle diameter of the magnetic powder is smaller than 20 µm... | The complaint alleges infringement, which implies the iron powder in the accused product meets this size limitation. | ¶39 | col. 1:49-54 |
| ...a permeability of the magnetic material is between 4 and 6. | The complaint alleges infringement, which implies the composite magnetic material of the accused product meets this permeability range. | ¶39 | col. 9:1-2 |
- Identified Points of Contention: The infringement analysis for the '641 patent will likely focus on questions of fact determinable through technical testing of the accused products. Key questions include: (1) Does the magnetic material used in the LVS series product in fact comprise an iron powder with an average particle diameter below 20 µm? and (2) Does the composite magnetic material exhibit a permeability within the narrowly defined range of 4 to 6, as required by the claim?
8,922,312 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a first magnetic powder; a second magnetic powder... | The accused HEI series product, described as a "Molded Multi-Layer" choke, is alleged to be constructed from a mixture of at least two distinct magnetic powders. | ¶45, Fig. 5 | col. 4:3-6 |
| ...the mean particle diameter of the first magnetic powder is larger than the mean particle diameter of the second magnetic powder... | The complaint's infringement allegation asserts that the two alleged powders in the accused product have this relative size relationship. | ¶45 | col. 4:16-19 |
| ...the Vicker's Hardness of the first magnetic powder is greater than the Vicker's Hardness of the second magnetic powder... | The complaint's infringement allegation asserts that the two alleged powders in the accused product have this relative hardness relationship. | ¶45 | col. 4:6-9 |
| a conducting wire buried in the mixture... | The accused HEI series product is an inductor and therefore contains a conducting wire encapsulated within its molded body. | ¶45, Fig. 5 | col. 4:56-64 |
| wherein by means of the first hardness difference... the mixture and the conducting wire... are combined to form an integral magnetic body at a temperature lower than the melting point of the insulating encapsulant. | The complaint alleges that the accused HEI product is formed by a process that relies on the claimed hardness differential to achieve a low-temperature consolidation. | ¶45 | col. 2:1-12 |
- Identified Points of Contention: The infringement analysis for the '312 patent raises complex technical questions. A primary issue is whether the accused HEI product is in fact made from two distinct magnetic powders with the claimed differences in both particle size and hardness. A second, and more challenging, point of contention will be the product-by-process limitation: what evidence does the complaint provide that the accused product is formed "by means of the first hardness difference," a limitation that speaks to the underlying manufacturing method? The Defendant may argue that its "Molded Multi-Layer" product (Compl. Fig. 5, p. 5) is manufactured by a different, non-infringing process.
V. Key Claim Terms for Construction
The Term: "core" (’641 Patent, Claim 1)
- Context and Importance: This term is foundational to the structure of the '641 invention. The patent’s solution to the problem of wire damage rests on first forming a "drum-core" and then winding the wire onto it. Practitioners may focus on whether this term implies a particular sequence of manufacturing.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue "core" simply refers to the final magnetic structure of the choke without limitation as to how or when it was formed relative to the wire winding.
- Evidence for a Narrower Interpretation: The specification states, "During the fabrication of the choke 100 of the present embodiment, the drum-core 110 is first formed, and then the wire 120 is winded" (’641 Patent, col. 7:12-14). This language may support a construction where "core" means a structure that is substantially formed before the wire is wound upon it, distinguishing it from prior art where a magnetic body is molded around a freestanding coil.
The Term: "by means of the first hardness difference" (’312 Patent, Claim 1)
- Context and Importance: This "wherein" clause links the claimed product structure (a mixture of two powders) to the method of its creation. The construction of this term is critical because it determines whether infringement requires proof of not just the product's composition, but also the physical mechanism by which it was formed.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A plaintiff might argue that if the claimed hardness difference exists and the final product was formed at a low temperature, this limitation is met, as the hardness difference is the inherent reason such a process works.
- Evidence for a Narrower Interpretation: The specification explains that this specific mechanism allows for low-temperature formation to avoid melting the wire's insulation (’312 Patent, col. 2:30-37). A defendant could argue this clause requires the plaintiff to prove that the hardness differential was the actual, operative reason for the successful low-temperature molding, a potentially high evidentiary bar.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement and contributory infringement for all four patents. It asserts that Defendants encourage infringement by advertising the accused chokes, providing datasheets and technical support, and marketing them for incorporation into downstream electronic devices (Compl. ¶40, ¶46, ¶52, ¶58). A marketing graphic showing the accused products' use in a smartphone is provided as evidence of this encouragement (Compl. Fig. 12, p. 11).
- Willful Infringement: The complaint alleges willful infringement based on Defendants having actual, pre-suit knowledge of the patents-in-suit as of December 14, 2017, following direct communication from the Plaintiff, and continuing their allegedly infringing activities thereafter (Compl. ¶37, ¶43).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of factual proof and reverse engineering: Can the Plaintiff produce sufficient technical evidence to demonstrate that the accused products, which are sold as mass-produced commodity components, possess the specific and nuanced material properties required by the claims—such as the narrow permeability range in the ’641 patent or the dual-powder composition with specific hardness and size differentials in the ’312 patent?
- A key legal and evidentiary question will be one of process versus product: For the ’312 and ’037 patents, the dispute may turn on whether the Plaintiff can prove that the Defendant’s "Molded Multi-Layer" chokes are manufactured "by means of" the patented low-temperature process that relies on a hardness differential, or whether the Defendant can establish that its products are made by a distinct, non-infringing manufacturing technology.
- A third critical question concerns the impact of post-grant proceedings: How will the successful ex parte reexaminations, which confirmed the patentability of the asserted claims in the ’312 and ’037 patents, affect the litigation? This history could substantially strengthen the Plaintiff’s arguments on patent validity, potentially shifting the case’s focus squarely to the question of infringement.