DCT
3:19-cv-03144
Fundamental Innovation Systems Intl LLC v. Apple Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Fundamental Innovation Systems International LLC (Delaware)
- Defendant: Apple, Inc. (California)
- Plaintiff’s Counsel: Quinn Emanuel Urquhart & Sullivan, LLP; Mann | Tindel | Thomspon
- Case Identification: 2:18-cv-00048, E.D. Tex., 02/11/2019
- Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas based on Defendant’s operation of retail stores and regular and established places of business within the district.
- Core Dispute: Plaintiff alleges that Defendant’s charging adapters and mobile devices (including iPhones, iPads, and others) infringe five patents related to methods that allow a device to bypass standard USB power limitations and draw higher current for faster charging.
- Technical Context: The technology addresses the need for mobile devices to charge more quickly from a power source using the ubiquitous Universal Serial Bus (USB) port, which traditionally has strict limits on power delivery.
- Key Procedural History: The complaint notes that the asserted patents have been the subject of prior litigation against Samsung, LG, and Huawei, resulting in claim construction orders from the same court and subsequent license agreements with those parties. The complaint also states that multiple petitions for inter partes review (IPR) were filed against the patents-in-suit and that the Patent Trial and Appeal Board (PTAB) denied institution on most, with the exception of one IPR against a single claim not asserted in the current litigation.
Case Timeline
| Date | Event |
|---|---|
| 2001-03-01 | Earliest Priority Date for all Patents-in-Suit |
| 2005-08-30 | ’936 Patent Issued |
| 2007-07-03 | ’111 Patent Issued |
| 2010-11-16 | ’586 Patent Issued |
| 2012-07-31 | ’766 Patent Issued |
| 2014-01-07 | ’550 Patent Issued |
| 2015-12-14 | Plaintiff first sent letter to Apple identifying the Patents-in-Suit |
| 2016-02-01 | Plaintiff filed suit against Samsung on related patents |
| 2016-12-01 | Plaintiff filed suits against LG and Huawei on related patents |
| 2017-08-21 | Plaintiff sent letter to Apple identifying infringing products |
| 2017-08-31 | Plaintiff provided Apple with exemplary claim charts |
| 2018-01-31 | Court issued claim construction order in Samsung Case |
| 2018-04-02 | Court issued claim construction order in LG and Huawei Cases |
| 2018-04-05 | Apple sent letter to Plaintiff regarding pending IPRs |
| 2018-06-13 | Plaintiff notified Apple of PTAB decisions denying IPR institution |
| 2018-07-01 | Plaintiff entered into license agreement with Samsung |
| 2018-09-01 | Plaintiff entered into license agreement with Huawei |
| 2018-10-01 | Plaintiff entered into license agreement with LG |
| 2019-02-11 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,936,936 - “Multifunctional Charger System and Method,” issued August 30, 2005
The Invention Explained
- Problem Addressed: The patent’s background section describes the limitations of the standard USB interface for powering mobile devices. The USB specification requires a device to engage in a host-initiated process called "enumeration" before drawing significant power and imposes strict limits on current draw, which is often insufficient for rapid charging, particularly when a host computer is unavailable (e.g., when using a wall outlet). ( ’936 Patent, col. 1:47-63).
- The Patented Solution: The invention is a power adapter that uses a standard USB connector but includes an "identification subsystem." This subsystem provides a specific electrical signal on the USB data lines (D+ and D-). This signal informs the mobile device that it is connected to a dedicated power source, not a standard USB host. Upon detecting this signal, the mobile device can bypass the enumeration process and draw a higher level of current than the USB specification would normally allow, facilitating faster charging. (’936 Patent, col. 2:1-14; Fig. 3).
- Technical Importance: This approach allowed the ubiquitous USB port to serve as both a data interface and a high-power charging interface, simplifying mobile device design and enabling a better user experience through faster charging. (Compl. ¶14).
Key Claims at a Glance
- The complaint asserts infringement of claims 1-3, 13-15, 25-29, 51-52, 55-56, 63-64, 70-71, 84-86, and 94. (Compl. ¶36). Independent claim 1 is representative of the asserted adapter claims.
- Essential elements of independent claim 1 include:
- A Universal Serial Bus ("USB") adapter for providing a source of power to a mobile device through a USB port, comprising:
- a plug unit for coupling to a power socket and for receiving energy from the power socket;
- a power converter electrically coupled to the plug unit, the power converter being operable to regulate the received energy from the power socket and to output a power requirement to the mobile device;
- a primary USB connector electrically coupled to the power converter for connecting to the mobile device and for delivering the power requirement to the mobile device; and
- an identification subsystem electrically coupled to the primary USB connector for providing an identification signal at one or more data lines of the primary USB connector; wherein the identification signal comprises a logic high signal on the D+ data line and a logic high signal on the D- data line.
U.S. Patent No. 7,239,111 - “Universal Serial Bus Adapter for a Mobile Device,” issued July 3, 2007
The Invention Explained
- Problem Addressed: As a continuation of the '936 Patent, the '111 Patent addresses the same technical problem: the inadequacy of the standard USB protocol for rapidly charging mobile devices due to power limits and the requirement for host-initiated enumeration. (’111 Patent, col. 1:40-62).
- The Patented Solution: The invention describes a USB adapter with a power converter and an identification subsystem. The subsystem generates a signal indicating to a connected mobile device that the power source is not a standard USB host or hub. This signal allows the mobile device to draw power without being constrained by the limits imposed by the standard USB specification. (’111 Patent, col. 2:1-19).
- Technical Importance: The technology contributed to the standardization of using USB ports for high-power charging, moving beyond their original design as a data and low-power peripheral interface. (Compl. ¶14).
Key Claims at a Glance
- The complaint asserts infringement of claims 1-3, 6-8, and 16-18. (Compl. ¶52). Independent claim 1 is representative.
- Essential elements of independent claim 1 include:
- A Universal Serial Bus ("USB") adapter for providing power to a mobile device through a USB port, comprising:
- a plug unit configured to receive energy from a power socket;
- a power converter coupled to the plug unit, the power converter being configured to regulate the received energy from the power socket to generate a power output;
- an identification subsystem configured to generate an identification signal, wherein the identification signal is configured to indicate to the mobile device that the power socket is not a USB host or hub; and
- a USB connector coupled to the power converter and the identification subsystem, the USB connector being configured to couple the power output and the identification signal to the mobile device.
U.S. Patent No. 7,834,586 - “Multifunctional Charger System and Method,” issued November 16, 2010
- Technology Synopsis: This patent focuses on the mobile device side of the interaction. It describes a mobile device with a USB interface and a charging subsystem configured to detect an identification signal on its D+ and D- data lines, where the signal is "different than USB enumeration," thereby enabling the device to charge its battery using the power supplied on the V-bus line.
- Asserted Claims: 8-13. (Compl. ¶67).
- Accused Features: The complaint alleges that Apple's mobile devices, such as iPhones and iPads, include a USB interface and charging subsystem that can detect specific non-enumeration voltage signals from a charging adapter to enable high-current charging. (Compl. ¶¶68-72). The complaint provides a photograph of a "PMU/Charger in Apple iPad 6" as evidence of the accused charging subsystem (Compl. ¶69, p. 17).
U.S. Patent No. 8,232,766 - “Multifunctional Charger System and Method,” issued July 31, 2012
- Technology Synopsis: This patent claims a mobile device with a charging subsystem that is enabled to "draw current unrestricted by at least one predetermined USB Specification limit." This enablement is responsive to the detection of an "abnormal USB data condition," such as having both the D+ and D- lines driven to a high voltage, which is distinct from the differential signaling used in normal USB data communication.
- Asserted Claims: 1-24. (Compl. ¶82).
- Accused Features: Apple’s mobile devices are accused of having charging subsystems that detect abnormal voltage conditions on their USB data lines—specifically, the voltage pairs generated by Apple's chargers—to enable drawing current beyond standard USB limits. (Compl. ¶¶83-85).
U.S. Patent No. 8,624,550 - “Multifunctional Charger System and Method,” issued January 7, 2014
- Technology Synopsis: This patent returns focus to the adapter. It describes a charging adapter that can supply current on the USB VBUS line at levels such as 1A, 2.1A, or 2.4A, which is "without regard to the current limits in the USB specification." The adapter accomplishes this by generating specific voltage pairs on the D+ and D- lines and supplies the current "without conducting USB enumeration."
- Asserted Claims: 3-8, 12-17. (Compl. ¶95).
- Accused Features: The complaint accuses Apple’s 1A, 2.1A, and 2.4A charging adapters of generating specific, highlighted voltage pairs on their D+ and D- lines to signal their current-supplying capability to a connected device, thereby operating outside the standard USB enumeration protocol. (Compl. ¶¶96-97).
III. The Accused Instrumentality
Product Identification
The complaint names a wide range of Apple products. These fall into two categories: (1) charging adapters, specifically the Apple 1A, 2.1A, and 2.4A charging adapters; and (2) mobile devices, including numerous models of the iPhone, iPad, iPod, Apple Watch, Beats Pill+, and various Macbooks. (Compl. ¶16).
Functionality and Market Context
The complaint alleges that the accused adapters and devices work together as a system. The adapters are alleged to generate specific DC voltage levels on the D+ and D- data pins of their USB port (Compl. ¶18). The table provided in the complaint, sourced from a third-party document, shows specific voltage pairs corresponding to Apple's 1A, 2.1A, and 2.4A chargers (Compl. ¶40, p. 11). The accused mobile devices are alleged to have charging subsystems that detect these specific voltage signals. Upon detection, the devices recognize the power source as a dedicated charger and are enabled to draw current at levels (e.g., 1A, 2.1A, 2.4A) that exceed the standard 500mA limit of an unconfigured USB 2.0 port. (Compl. ¶17).
IV. Analysis of Infringement Allegations
’936 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a plug unit for coupling to a power socket and for receiving energy from the power socket | The adapter products include a plug unit with prongs that can be plugged into an electrical socket to receive energy. | ¶37 | col. 7:3-7 |
| a power converter electrically coupled to the plug unit... operable to regulate the received energy... and to output a power requirement | The adapters contain a power converter that regulates energy from the socket, converting 100-240V AC to 5V DC. | ¶38 | col. 7:17-23 |
| a primary USB connector electrically coupled to the power converter for connecting to the mobile device and for delivering the power requirement | The adapters include a USB connector (port) electrically connected to the power converter to deliver power to a mobile device. | ¶39 | col. 6:51-54 |
| an identification subsystem electrically coupled to the primary USB connector for providing an identification signal | The adapters include an identification subsystem with resistors connected to the D+ and D- lines of the USB connector. | ¶40 | col. 8:12-14 |
| wherein the identification signal comprises a logic high signal on the D+ data line and a logic high signal on the D- data line | The subsystem generates an identification signal consisting of voltage pairs on the D+ and D- lines, which are alleged to be logic high signals. | ¶¶40-41 | col. 9:10-23 |
’111 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a power converter... configured to regulate the received energy from the power socket to generate a power output | The adapters include a power converter that regulates energy and converts 100-240V AC to a 5V DC power output. | ¶54 | col. 7:17-23 |
| an identification subsystem configured to generate an identification signal | The adapters include an identification subsystem in the form of resistors connected to the D+ and D- lines. | ¶55 | col. 8:12-14 |
| wherein the identification signal is configured to indicate to the mobile device that the power socket is not a USB host or hub | The voltage pairs generated by the subsystem allegedly indicate to the mobile device that the power source is not a USB host or hub. | ¶56 | col. 8:14-16 |
| a USB connector... configured to couple the power output and the identification signal to the mobile device | The adapter's USB connector is configured to couple the power output and the identification signal to a mobile device via a USB cable. | ¶57 | col. 6:51-54 |
Identified Points of Contention
- Scope Questions: A central question may be whether Apple's alleged use of specific, and in some cases asymmetric, voltage pairs (e.g., 2.7V on one line and 2.0V on another) meets the claim limitation of "a logic high signal on the D+ data line and a logic high signal on the D- data line" (’936 Patent, Claim 1). The interpretation of "logic high" and whether it requires identical or merely sufficient voltage levels on both lines may be a point of dispute.
- Technical Questions: The complaint relies on a third-party document to assert the specific voltage pairs generated by Apple's chargers (Compl. ¶40, p. 11). The case may raise the question of what discovery and testing will show regarding the actual operation of the extensive list of accused products and whether they all function in the precise manner required by the asserted claims.
V. Key Claim Terms for Construction
- The Term: "identification signal"
- Context and Importance: This term is the core of the asserted invention. Its construction will determine the scope of protection and whether Apple's alleged method of using specific voltage dividers on the D+/D- lines constitutes infringement. Practitioners may focus on this term because the patents disclose multiple potential embodiments for the signal, creating a potential dispute over whether the claims cover all such embodiments or are limited to a narrower subset.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification of the ’936 Patent states that the signal "could be the communication of a single voltage on one or more of the USB data lines, different voltages on the two data lines, a series of pulses or voltage level changes, or other types of electrical signals." (’936 Patent, col. 8:15-19). This language may support an argument that the term is not limited to a single implementation.
- Evidence for a Narrower Interpretation: The language of claim 1 of the ’936 Patent itself requires "a logic high signal on the D+ data line and a logic high signal on the D- data line." Further, the patent's flow chart in Figure 3 depicts a specific check for "D- > 2V and D+ > 2V?", which could be argued to limit the scope of the invention to embodiments where both data lines are driven above a certain threshold. (’936 Patent, Fig. 3).
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement, stating that Apple provides user guides and instructions that direct customers to connect their devices to the accused power adapters, thereby causing direct infringement by the end-users. (Compl. ¶¶30, 43, 58). Contributory infringement is also alleged on the basis that the accused products are a material part of the invention and not suitable for substantial non-infringing use. (Compl. ¶¶44, 59).
- Willful Infringement: The complaint alleges willful infringement based on Apple’s purported knowledge of the patents since at least December 14, 2015. It alleges that Plaintiff sent multiple letters, specifically identified infringing Apple products, and provided exemplary claim charts to Apple in 2017, more than a year before the complaint was filed. (Compl. ¶¶19, 47, 62).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the claim language requiring "a logic high signal on the D+ data line and a logic high signal on the D- data line" be construed to cover the specific, and sometimes asymmetric, voltage pairs (e.g., 2.7V/2.0V) that Apple’s adapters allegedly generate, or will the claims be limited to embodiments where both lines are driven to a similar "high" state?
- A key evidentiary question will be one of technical proof: what evidence will be required to demonstrate that the wide array of accused Apple products, spanning many generations and device types, all generate and/or detect the claimed "identification signal" in a manner that falls within the court's construction of the claims?
- The case will also present a question of damages and willfulness: given the extensive pre-suit notice alleged in the complaint, including the provision of claim charts and notification of litigation against competitors who subsequently took licenses, the court will likely need to evaluate whether Apple's continued alleged infringement was objectively reckless, potentially leading to enhanced damages.