DCT

4:18-cv-03527

MagTarget LLC v. May Chen

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 4:18-cv-03527, N.D. Cal., 06/13/2018
  • Venue Allegations: Venue is alleged to be proper in the Northern District of California because the Plaintiffs are located and do business there, and the Defendant is alleged to do business with entities within the district. A substantial portion of the events giving rise to the dispute are also alleged to have occurred in the district.
  • Core Dispute: Plaintiffs seek a declaratory judgment that Jean-Michel Thiers is the sole inventor of a patent and two patent applications, and that Plaintiffs are not in breach of contract, following Defendant's threats of litigation over alleged inventorship rights and equity claims.
  • Technical Context: The technology relates to magnetic mounting and charging systems for portable electronic devices, such as smartphones, designed to provide secure, rotatable coupling for power and data transfer.
  • Key Procedural History: The complaint was filed in response to letters dated April 4, 2018, and June 5, 2018, from Defendant's counsel. These letters allegedly threatened litigation, claiming Defendant Saldana was a co-inventor of intellectual property filed in Plaintiff Thiers's name and was therefore entitled to be listed on the patents.

Case Timeline

Date Event
2013-05-30 U.S. Patent No. 9,019,698 Priority Date
2014-12-01 MagTarget and Defendant Saldana enter into first contract (The 2014 Contract)
2015-04-28 U.S. Patent No. 9,019,698, entitled "Mounting System for Electronic Device," is issued
2015-08-28 Application Serial No. 14839861, entitled "Rotatable Electrical Connector," is filed
2015-09-01 Plaintiff MagTarget is formed
2016-09-21 MagTarget and Defendant Saldana enter into second contract (The 2016 Contract)
2017-06-23 Defendant Saldana is terminated
2017-06-25 Application Serial No. 15632385, entitled "Power Of Ethernet Power And Data Splitting Systems And Methods," is filed
2018-04-04 Defendant's counsel sends letter threatening litigation over inventorship
2018-06-05 Defendant's counsel sends second letter threatening litigation
2018-06-13 Complaint for Declaratory Judgment is filed

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

U.S. Patent No. 9,019,698 - Mounting System for Electronic Device

The Invention Explained

  • Problem Addressed: The patent's background section describes several problems with prior art systems for charging and mounting portable electronics. These include the difficulty of physically aligning connectors, the clutter of external cables, the slow speed and heat generation of wireless charging, and the inability of existing systems to allow for device rotation (e.g., from portrait to landscape) while maintaining a power and data connection (US 9,019,698, col. 1:12-2:13).
  • The Patented Solution: The invention is a two-part mounting system. A "case assembly" for the electronic device contains a "metallic element" and annular conductive traces connected to the device's port. A separate "dock interface assembly" contains magnets and corresponding spring-loaded contacts. When brought together, the magnets attract the metallic element, creating a secure, self-aligning coupling that establishes an electrical connection between the contacts and traces, allowing the device to be rotated 360 degrees while remaining connected and charging (US 9,019,698, Abstract; col. 4:1-4; col. 7:41-54).
  • Technical Importance: This approach combines the security of a physical mount with the convenience of a magnetic connection, while enabling full rotational freedom and maintaining a high-speed data and power link, which was a limitation of prior wireless and cabled solutions (US 9,019,698, col. 3:34-49).

Key Claims at a Glance

  • The complaint does not assert specific claims but disputes inventorship over the entire subject matter of the patent (Compl. ¶ 31). Independent claim 1 is representative of the core invention.
  • Independent Claim 1:
    • a dock interface assembly including a dock housing having one or more contacts;
    • a case assembly including an alignment feature and a case printed circuit board having one or more conductive traces corresponding to the contacts;
    • one of the dock interface assembly and the case assembly having a metallic element;
    • a remaining one of the assemblies having one or more magnets arranged complementary to the metallic element for magnetic coupling; and
    • the dock housing being configured to be received by the alignment feature such that the contacts are aligned with and electrically coupled to the conductive traces.

III. The Accused Instrumentality

Product Identification

The complaint identifies the relevant products as "a line of wireless charging technologies, magnetic charging technologies and related hardware" developed and sold by Plaintiff MagTarget (Compl. ¶ 9).

Functionality and Market Context

The complaint alleges that Defendant Saldana claims to have "helped develop multiple technologies" for which MagTarget now holds patents (Compl. ¶ 27). These technologies are embodied in MagTarget's products, which are "most commonly configured around the wireless charging of cell phones" (Compl. ¶ 9). The complaint does not provide specific technical details or marketing materials for the products themselves, focusing instead on the dispute over their invention and related contracts.

No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

This is a complaint for declaratory judgment, meaning the Plaintiffs are asking the court to declare they are not liable to the Defendant. The complaint does not allege infringement by the Defendant; rather, it preemptively seeks a judgment of non-infringement and proper inventorship in response to the Defendant's threats of litigation (Compl. ¶¶ 18-21, 24). The core of the Defendant's threat, as presented in the complaint, is that he is an un-named co-inventor of the technology patented by Plaintiff Thiers and commercialized by Plaintiff MagTarget (Compl. ¶¶ 27-28).

The complaint does not provide sufficient detail for analysis of infringement via a claim chart. The central dispute is not over claim scope versus product features, but over the factual question of who conceived the invention.

  • Identified Points of Contention:
    • Factual Question: The primary point of contention is one of inventorship. The case will require determining whether Defendant Saldana's alleged "substantive contributions" (Compl. ¶ 27) meet the legal standard of contributing to the "conception" of the invention as defined in the claims of the '698 patent. This will distinguish between inventive contribution and other non-inventive activities, such as reducing an already-conceived invention to practice or performing sales and marketing functions (Compl. ¶ 10).

V. Key Claim Terms for Construction

While claim construction is not the central issue in an inventorship dispute, the scope of the claims defines the "invention" over which inventorship is contested.

  • The Term: "alignment feature" (from Claim 1)
  • Context and Importance: This term is critical because the mechanism for physically aligning the case with the dock to ensure proper electrical contact is a key aspect of the patented solution. The definition of what constitutes an "alignment feature" will help define the boundaries of the invention. Practitioners may focus on this term to determine whether Defendant's alleged contributions relate to a core, claimed element of the invention or to a more general, unclaimed concept.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: Claim 7 states the "alignment feature comprises a circular opening formed in a cover of the case assembly," but the use of the word "comprises" and the fact that this is a dependent claim suggests that other types of alignment features are contemplated by the broader independent claim 1 ('698 Patent, col. 13:57-59). The specification also states the feature "may comprise a circular opening" or depression, using permissive language (col. 7:29-32).
    • Evidence for a Narrower Interpretation: The specification and figures consistently depict the "alignment feature" as a physical, circular depression or opening (element 25 in Fig. 1) designed to receive the correspondingly shaped dock housing ('698 Patent, Fig. 1, Fig. 9; col. 10:65-11:5). A party might argue that the invention is limited to this specific nested, circular configuration shown in all primary embodiments.

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

  1. A core issue will be one of inventorship: What evidence will be presented to determine if the Defendant's alleged "substantive contributions" constituted a contribution to the "conception" of the invention as recited in the patent claims, which is the legal standard for co-inventorship, or if his role was limited to non-inventive activities like business development or product testing?
  2. A secondary, but distinct, issue is contractual: Independent of the patent dispute, do the facts support the Defendant's claims to equity and commissions under the 2014 and 2016 contracts, or does the evidence show, as the Plaintiffs allege, that he failed to meet the required performance milestones?