MagTarget LLC v. May Chen

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: MagTarget, LLC (California) and Jean-Michel Thiers (California)
  • Defendant: Darrell Saldana (California)
  • Plaintiff’s Counsel: CHAN PUNZALAN LLP
• Case Identification: 3:18-cv-03527, N.D. Cal., 05/06/2019
• Venue Allegations: Venue is alleged to be proper as the Plaintiffs are located and conduct business within the district, and the Defendant also conducts business with entities within the district.
• Core Dispute: This is a declaratory judgment action in which Plaintiffs seek a judicial declaration that Plaintiff Jean-Michel Thiers is the sole and proper inventor of a patent and related applications, countering Defendant Darrell Saldana's claims of co-inventorship.
• Technical Context: The technology at issue relates to magnetic mounting and charging systems for portable electronic devices, which aim to provide a secure, rotatable, and electrically conductive connection.
• Key Procedural History: The complaint alleges that the action was precipitated by threat letters from Defendant's counsel in April and June 2018, which asserted that Defendant Saldana was a co-inventor of Plaintiffs' intellectual property and threatened litigation if he was not added to the patents.

Case Timeline

Date	Event
2013-05-30	U.S. Patent No. 9019698 Priority Date (Filing Date)
2014-12-01	MAGTARGET and Defendant Saldana enter into first contract
2015-04-28	U.S. Patent No. 9,019,698 issues
2015-08-28	Application Serial No. 14839861 filed
2015-09-01	Plaintiff MagTarget formed
2016-09-21	Parties enter into second contract
2017-06-23	Defendant Saldana terminated
2017-06-25	Application Serial No. 15632385 filed
2018-06-13	Original complaint filed
2019-05-06	First Amended Complaint 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 identifies several drawbacks with prior art methods for mounting and charging portable electronic devices like smartphones. These include the inconvenience of physical cables requiring careful alignment, the slow speed and heat generation of wireless charging, and the inability of existing systems to allow for device rotation while maintaining a power and data connection (’698 Patent, col. 1:11 - col. 2:14). The patent particularly highlights a need for a mount that allows for "simple one-handed movement to securely install and connect the electronic device" (’698 Patent, col. 2:34-37).
• The Patented Solution: The invention is a two-part mounting system comprising a case assembly for the electronic device and a dock interface assembly. One assembly contains magnets, while the other contains a complementary metallic element, creating a secure magnetic attraction (’698 Patent, Abstract). The case features conductive traces (often in the form of rings) that align with contacts on the dock. This arrangement allows a user to magnetically attach the device to the dock, establishing an electrical connection for power and data that is maintained even if the device is rotated (’698 Patent, col. 4:1-4; col. 9:18-24).
• Technical Importance: The technology sought to combine the ease of use of a magnetic connection with the robust functionality of a direct electrical connection, addressing the limitations of both conventional wired chargers and early-generation wireless charging pads (’698 Patent, col. 2:54-65).

Key Claims at a Glance

• The complaint seeks a declaratory judgment regarding inventorship of the patent as a whole, rather than asserting specific claims. Independent claim 1 is representative of the core invention.
• Independent Claim 1 recites a mounting system comprising:
  • A dock interface assembly with a dock housing and one or more contacts.
  • A case assembly with an alignment feature and a case printed circuit board having conductive traces that correspond to the contacts.
  • A metallic element on one assembly and one or more magnets on the other assembly to create a magnetic coupling.
  • The dock housing is configured to be received by the alignment feature to align the contacts with the conductive traces for electrical coupling.

III. The Accused Instrumentality

Product Identification

The technology at issue is the "magnetic charging dock technology" developed by Plaintiff Thiers and commercialized by Plaintiff MagTarget (Compl. ¶16).

Functionality and Market Context

The complaint describes the technology as a line of "wireless charging technologies, magnetic charging technologies and related hardware," with products most commonly configured for the wireless charging of cell phones (Compl. ¶¶6, 9). The dispute centers on Defendant Saldana's alleged contribution to the conception of this technology, for which he claims he is entitled to be named as a co-inventor on the related intellectual property (Compl. ¶27).

IV. Analysis of Infringement Allegations

The complaint is a declaratory judgment action concerning inventorship and does not contain traditional infringement allegations or a claim chart. The central dispute arises from Defendant Saldana’s pre-suit assertions, via counsel, that he is a co-inventor of the technology embodied in the ’698 Patent and related applications (Compl. ¶¶18, 27). The complaint quotes from a demand letter stating that "while working full time for MagTarget, Mr. Saldana helped develop multiple technologies... Based on his substantive contributions, Mr. Saldana should be added to these patents" (Compl. ¶27).

Plaintiffs initiated this lawsuit to obtain a judicial declaration that Plaintiff Thiers is the sole inventor, thereby preempting a potential future suit from the Defendant to correct inventorship (Compl. ¶¶32-33). The complaint does not provide specific details about the technical contributions allegedly made by Defendant Saldana.

No probative visual evidence provided in complaint.

• Identified Points of Contention:
  • Evidentiary Question: The central issue is factual: what specific, corroborated evidence can the Defendant provide to demonstrate a contribution to the "conception" of the invention claimed in the ’698 patent? The law requires more than simply assisting in the reduction to practice or performing tasks under the direction of the inventor.
  • Legal Question: A key legal question will be whether any proven contribution by the Defendant meets the standard for co-inventorship. To be a co-inventor, an individual must have contributed in a significant manner to the conception of the invention as recited in at least one patent claim. The court will have to distinguish between inventive conception and activities that do not qualify, such as explaining well-known concepts or providing general market feedback.

V. Key Claim Terms for Construction

While claim construction is not the primary focus in an inventorship dispute, the scope of the claims defines the invention to which a putative inventor must have contributed.

• The Term: "alignment feature"

• Context and Importance: This term is fundamental to the physical and electrical coupling between the case and the dock. The nature of this feature defines a key aspect of the inventive concept. To be a co-inventor, Defendant Saldana would need to demonstrate a contribution to the conception of this specific mechanism.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification suggests the feature is not limited to one form, stating it may comprise a "circular opening 23 or a circular depression" (’698 Patent, col. 8:29-32).
  • Evidence for a Narrower Interpretation: Claim 7 more narrowly recites "the dock housing having a circular outer shape configured to nest within the circular opening," which, in combination with figures like FIG. 1 and FIG. 10, suggests a specific physical nesting geometry as a primary embodiment.

• The Term: "annular conductive traces"

• Context and Importance: The "annular" (ring-shaped) nature of the traces enables a key functional advantage highlighted in the patent: the ability to rotate the device while maintaining a continuous electrical connection. Practitioners may focus on this term because a contribution to this specific concept would be highly relevant to an inventorship claim.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The patent states that the traces may have an "annular configuration" but also discloses they could be formed in "arcuate shapes (not shown) of less than 360 degrees" (’698 Patent, col. 8:38-42).
  • Evidence for a Narrower Interpretation: Claim 7 requires an "annular configuration arranged in a manner such that the contacts are maintained in contacting relation when the electronic device is rotated relative to the dock interface assembly." This functional requirement, tied to the problem of device rotation, may suggest that only configurations enabling such continuous contact fall within the scope of the claim.

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

• A core issue will be one of inventorship and proof: What specific, corroborated evidence can Defendant Saldana present to establish that he contributed to the mental act of "conception" of the invention defined in the claims of the '698 Patent, as opposed to contributing to its subsequent reduction to practice, marketing, or business development?
• A key legal question will be the significance of contribution: Assuming the Defendant can provide evidence of some technical input, did that input constitute a significant contribution to the inventive concept, or was it merely the suggestion of a desired result, the provision of well-known principles, or the execution of tasks under the direction of Plaintiff Thiers, none of which would satisfy the legal standard for co-inventorship?