DCT

3:20-cv-00205

Princeps Secundus LLC v. ASUSTeK Computer Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 5:20-cv-00205, N.D. Cal., 05/29/2020
  • Venue Allegations: Venue is alleged to be proper for Defendant Asus Computer International (ACI), a California corporation, based on its residence in the district. Venue for foreign Defendant AsusTeK Computer Inc. (ATC) is alleged based on its sales and offers for sale within the district and its introduction of products into the stream of commerce with the knowledge they would be sold there.
  • Core Dispute: Plaintiff alleges that Defendants’ smartphones featuring software keyboards infringe a patent related to multifunctional, small-profile input devices.
  • Technical Context: The technology concerns methods for providing extensive input functionality (e.g., alphanumeric, symbols, commands) on compact keyboards, a central design challenge for portable electronic devices like smartphones.
  • Key Procedural History: The complaint alleges that Defendants were made aware of the asserted patent and its alleged infringement in a prior, dismissed lawsuit (C.A. No. 5:19-cv-04298-NC) filed on August 2, 2019. This allegation of pre-suit knowledge forms the basis for the willfulness claim.

Case Timeline

Date Event
2001-09-20 U.S. Patent No. 6,703,963 Priority Date
2004-03-09 U.S. Patent No. 6,703,963 Issued
2019-08-02 Date Defendants allegedly became aware of patent in a prior lawsuit
2020-05-29 Complaint Filed

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

U.S. Patent No. 6,703,963 - "Universal Keyboard", Issued March 9, 2004 (’963 Patent)

The Invention Explained

  • Problem Addressed: The patent describes the state of data input for small electronic devices as being constrained by the drawbacks of traditional QWERTY keyboards. These keyboards are identified as being too large for portable, single-hand use, having an inefficient key layout, and typically being limited to a single alphanumeric functionality, which is insufficient for modern devices requiring more varied inputs from a smaller physical space (Compl. ¶17; ’963 Patent, col. 1:37-2:23).
  • The Patented Solution: The invention is a "multifunctional input device" that uses a system of "functional modes" (e.g., alphanumeric, telephone, calculator) and hierarchical "domain levels" within each mode (e.g., "A-L" characters, "M-X" characters) to expand the capability of a compact set of programmable input keys. A key aspect is the inclusion of a display that indicates the current value or function assigned to each key, which changes as the user navigates between different modes and levels (’963 Patent, Abstract; col. 4:20-45). This allows a small number of keys to perform a large number of functions.
  • Technical Importance: The invention purports to solve the technical problem of maximizing the versatility and efficiency of data entry on small-profile input devices by creating a dynamic and customizable user interface (’963 Patent, col. 2:33-45; Compl. ¶¶19, 21).

Key Claims at a Glance

  • The complaint asserts independent claim 1 and dependent claims 2, 3, 9, 12, and 60 (Compl. ¶28).
  • Independent Claim 1 of the ’963 Patent recites:
    • A functional mode control for selecting a first functional mode of operation.
    • A domain control for selecting one of multiple domain levels within the functional mode.
    • A plurality of input keys, separate and distinct from the domain control, assigned to the set of domain-level values.
    • A function-specific display indicating a domain-level value associated with each input key.
    • The input keys and domain control are simultaneously presented by the input device.
  • The complaint reserves the right to assert additional claims (Compl. ¶34).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are "Asus phones with proprietary and/or third-party apps utilizing keyboard functionalities (e.g., via the ZenUI keyboard) and an operating system such as the Android operating system" (Compl. ¶28).

Functionality and Market Context

  • The complaint targets the software keyboards on Asus smartphones. The relevant functionality is the on-screen keyboard that allows users to input data. This keyboard can switch between different layouts, such as alphabetic, numeric, and symbolic, which the plaintiff appears to map to the claimed "functional modes" and "domain levels" (Compl. ¶28). The complaint alleges that Defendant Asus is a for-profit organization with annual revenues of approximately $14 billion (Compl. ¶32).

IV. Analysis of Infringement Allegations

The complaint references, but does not include, preliminary claim charts in Exhibits A-1 and A-2 (Compl. ¶28). The narrative infringement theory suggests that the software-based keyboards on accused Asus phones embody the claimed invention. The ability to switch the on-screen keyboard between different character sets (e.g., QWERTY, numbers, symbols) is alleged to correspond to the claimed "functional mode control" and "domain control." The tappable keys on the touchscreen are alleged to be the "plurality of input keys," and the visual representation of the character on each key is alleged to be the "function-specific display." The simultaneous presence of these elements on the phone's screen is alleged to meet the final limitation of Claim 1.

No probative visual evidence provided in complaint.

V. Key Claim Terms for Construction

1. The Term: "domain control"

  • Context and Importance: This term is critical because the patent’s primary embodiment illustrates the "domain control" (e.g., item 20 in FIG. 5a) as a set of physical buttons separate from the main "input keys" (item 30). The accused products are software keyboards on a touchscreen. The infringement analysis will turn on whether a software menu icon or mode-switching key on a touchscreen can be considered a "domain control" that is "separate and distinct from the... input keys," as required by Claim 1.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claims do not explicitly limit the "control" to a physical button. Claim 12 describes the domain control as "a second set of continuously present controls," which could arguably encompass persistent on-screen software icons (’963 Patent, col. 14:12-15).
    • Evidence for a Narrower Interpretation: The detailed description and figures consistently depict the domain control as a bank of physical buttons (20) physically separate from the main input keypad (30) (’963 Patent, FIG. 1, 5a; col. 4:45-54). An argument could be made that the invention requires this physical separation, distinguishing it from a simple software state change on a unified interface.

2. The Term: "function-specific display indicating a domain-level value associated with each input key"

  • Context and Importance: Practitioners may focus on this term because the patent's figures show a distinct display element (32) for each physical input key (30) (’963 Patent, FIG. 5a). On an accused smartphone, the key and the display are a single, integrated element on the touchscreen. The dispute may center on whether a single touchscreen element that is both the "key" and its own "display" meets this limitation.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification explicitly contemplates a touch screen embodiment, stating that the screens/displays and keys/controls could be combined "into a single element" using a touch screen (’963 Patent, col. 5:35-40). This language may directly support an argument that the integrated nature of a touchscreen key/display falls within the claim's scope.
    • Evidence for a Narrower Interpretation: The language "display... associated with each input key" could suggest two distinct but linked components, as depicted in the primary embodiments (’963 Patent, col. 5:24-26). A defendant might argue that if the key is the display, it cannot be "associated with" itself in the manner contemplated by the inventor.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges Defendants lead to indirect revenues and profit by making, using, and selling the Accused Instrumentalities to customers. It further suggests that offering products at reduced prices to certain customers (e.g., students) serves as an inducement to use the allegedly infringing tools (Compl. ¶32).
  • Willful Infringement: The willfulness allegation is based on pre-suit knowledge. The complaint asserts that Defendants were put on notice of the ’963 Patent and the alleged infringement through a complaint served in a prior, dismissed lawsuit on August 2, 2019 (Compl. ¶30).

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

  1. A core issue will be one of definitional scope: can claim terms like "domain control," which the patent specification primarily illustrates as a distinct physical hardware component, be construed to read on an integrated software icon or menu function within a unified touchscreen interface?
  2. A second key question will relate to the patent's own disclosure: how will the specification's explicit contemplation of a "touch screen" embodiment, where keys and displays are combined ('963 Patent, col. 5:35-40), impact the interpretation of claims that appear to describe separate elements based on the figures and primary embodiments?
  3. An evidentiary question will be one of pre-suit knowledge: does the notice provided in the prior, dismissed lawsuit from 2019 constitute the kind of "wanton and malicious" conduct needed to support a finding of willful infringement, and how will the specific facts of that prior interaction influence the analysis?