DCT

5:24-cv-04972

Maxell Ltd v. LG Electronics Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 5:24-cv-04972, E.D. Tex., 12/29/2023
  • Venue Allegations: Venue is alleged to be proper in the Eastern District of Texas based on Defendant LG Electronics U.S.A., Inc. maintaining regular and established places of business within the district.
  • Core Dispute: Plaintiff alleges that Defendant’s smartphones, laptops, and tablets infringe nine patents related to digital imaging, video processing, power management for cellular communications, and user interface technologies.
  • Technical Context: The asserted patents cover technologies that are foundational to the functionality of modern consumer electronics, particularly in how devices capture, process, store, and display digital media, and manage power.
  • Key Procedural History: The complaint notes that U.S. Patent Nos. 6,973,334; 8,339,493; 6,856,760; and 8,736,729 were previously asserted by Plaintiff in the same district against other parties. It also states that challenges to the patentability of the ’760, ’493, and ’729 patents were subject to inter partes review (IPR) proceedings where the Patent Trial and Appeal Board denied institution, finding no reasonable likelihood that the challenger would prevail.

Case Timeline

Date Event
1998-11-10 ’334 Patent Priority Date
1999-07-05 ’760 Patent Priority Date
2000-01-11 ’493 and ’729 Patents Priority Date
2002-02-27 ’821 Patent Priority Date
2002-03-05 ’188 Patent Priority Date
2004-12-02 ’449 and ’072 Patents Priority Date
2005-02-15 ’760 Patent Issued
2005-12-06 ’334 Patent Issued
2007-04-03 ’821 Patent Issued
2008-09-02 ’188 Patent Issued
2012-12-25 ’493 Patent Issued
2014-05-27 ’729 Patent Issued
2017-11-14 ’449 Patent Issued
2019-02-05 ’072 Patent Issued
2019-03-26 ’284 Patent Issued
2021-07-19 Plaintiff allegedly provides notice of infringement to Defendant.
2023-12-29 Complaint Filed

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

U.S. Patent No. 6,856,760 - “Recording Medium”

  • Patent Identification: U.S. Patent No. 6,856,760, titled “Recording Medium,” issued on February 15, 2005.

The Invention Explained

  • Problem Addressed: The patent’s background section describes the challenge of recording and reproducing both moving pictures and high-resolution still pictures on the same digital medium, as conventional techniques for moving pictures (like MPEG) were not optimized for high-resolution stills. (Compl. ¶21; ’760 Patent, col. 1:19-43).
  • The Patented Solution: The invention provides for a recording medium and methods where still pictures can be encoded in multiple formats. This includes encoding a still picture using a first method (e.g., the same as for moving pictures, like MPEG) and also encoding it using a second, different method (e.g., a higher-resolution format like JPEG), enabling compatibility with various types of playback devices. (Compl. ¶21; ’760 Patent, col. 2:30-43).
  • Technical Importance: This approach provided greater flexibility for early digital media devices to manage and display different types of content from a single recording medium. (Compl. ¶21).

Key Claims at a Glance

  • The complaint asserts dependent claims 4, 6, 7, and 9. (Compl. ¶22). These claims depend from independent claim 1.
  • The essential elements of asserted independent claim 1 include:
    • A recording medium which records thereon moving pictures encoded by a first encoding method.
    • First pictures corresponding to the moving pictures, having a smaller number of pixels.
    • Still pictures encoded by a second encoding method.
    • Second pictures corresponding to the still pictures, having a smaller number of pixels.

U.S. Patent No. 6,973,334 - “Cellular Telephone”

  • Patent Identification: U.S. Patent No. 6,973,334, titled “Cellular Telephone,” issued on December 6, 2005.

The Invention Explained

  • Problem Addressed: The patent addresses the problem of high current consumption in the power amplifiers of cellular telephones, which shortens battery life and communication time. (’334 Patent, col. 1:10-14).
  • The Patented Solution: The invention proposes a method to improve power efficiency by controlling both the gain of a variable amplitude amplifier and the bias condition of the power amplifier in coordination. This is achieved using a stored function that defines the relationship between the required gain and the optimal bias, thereby reducing current draw, especially at lower output power levels. (Compl. ¶35; ’334 Patent, col. 2:21-31).
  • Technical Importance: This technology relates to power control efficiency, a critical design consideration for any battery-powered wireless communication device. (Compl. ¶35).

Key Claims at a Glance

  • The complaint asserts independent claim 4 and dependent claim 6. (Compl. ¶36).
  • The essential elements of asserted independent claim 4 include:
    • Receiving a first communication signal and a transmitting power control signal.
    • Generating a power control signal derived from the received signal.
    • Controlling a transmitter with an open-loop power control followed by a closed-loop power control.
    • Controlling the gain of a variable amplitude amplifier and the bias condition of a power amplifier.
    • This control is performed using a "function defining a relation between bias data and gain data stored in memory," where the bias condition increases gradually as output intensity increases.

U.S. Patent No. 7,199,821 - “Imaging Apparatus and Method for Controlling White Balance”

  • Patent Identification: U.S. Patent No. 7,199,821, titled “Imaging Apparatus and Method for Controlling White Balance,” issued on April 3, 2007.
  • Technology Synopsis: The patent addresses inaccuracies in automatic white balance correction, particularly in scenarios where lighting conditions, distance to the subject, or zoom levels vary. (Compl. ¶¶ 56-57). The solution involves an imaging apparatus that corrects white balance based not only on color data but also on detected object brightness, zoom value, and distance to the object. (Compl. ¶57).
  • Asserted Claims: At least claim 6. (Compl. ¶58).
  • Accused Features: The complaint alleges that the autofocus, brightness measurement, zoom, and white balance functions in LG smartphones and laptops infringe. (Compl. ¶59). The complaint provides a screenshot from an LG user manual for "Portrait" mode, which blurs the background based on subject distance, as an example of the accused functionality. (Compl. ¶60, p. 23).

U.S. Patent No. 10,244,284 - “Display Apparatus and Video Processing Apparatus”

  • Patent Identification: U.S. Patent No. 10,244,284, titled “Display Apparatus and Video Processing Apparatus,” issued on March 26, 2019.
  • Technology Synopsis: The patent addresses the need for a device to handle multiple wireless data transfers simultaneously, such as transmitting video to an external display while also maintaining a connection to the internet. (Compl. ¶¶ 73-74). The disclosed technique involves a device with multiple radio communication circuits where one circuit can be prioritized for high-bandwidth tasks like video transfer, while another handles network connectivity. (Compl. ¶74).
  • Asserted Claims: At least claims 18-20. (Compl. ¶75).
  • Accused Features: The complaint alleges that LG products, such as the V60 ThinQ 5G, infringe by using a first radio (e.g., Wi-Fi) to transmit video to an external device while simultaneously using a second radio (e.g., cellular) to connect to the Internet, and prioritizing the video transmission. (Compl. ¶¶ 76-79).

U.S. Patent No. 8,339,493 - “Electric Camera”

  • Patent Identification: U.S. Patent No. 8,339,493, titled “Electric Camera,” issued on December 25, 2012.
  • Technology Synopsis: The patent addresses the challenge for a single electric camera to effectively capture both high-quality still images and moving images, as the two modes have different requirements for pixel resolution and dynamic range. (Compl. ¶93). The solution involves an image sensor where different numbers of pixel lines can be used depending on whether the camera is in still image, moving video, or monitoring mode, thereby optimizing sensor use for each task. (Compl. ¶93).
  • Asserted Claims: At least claims 10 and 12-14. (Compl. ¶94).
  • Accused Features: LG smartphones and laptops are accused of infringing by allowing users to select between a static image (photo) mode and a moving video mode, where the device allegedly generates an image using all pixel lines for a still image but a mixed or culled set of pixel lines for video or preview modes. (Compl. ¶¶ 95-96). The complaint includes images of accused LG Gram laptops. (Compl. ¶94, pp. 34-36).

U.S. Patent No. 8,736,729 - “Electric Camera”

  • Patent Identification: U.S. Patent No. 8,736,729, titled “Electric Camera,” issued on May 27, 2014.
  • Technology Synopsis: This patent, related to the ’493 patent, also addresses the problem of capturing both static and moving images. (Compl. ¶110). The solution here involves changing the effective set of pixels used by the camera based on a detected amount of image instability (e.g., camera shake), allowing the camera to dynamically adjust the sensor area to achieve image stabilization. (Compl. ¶110).
  • Asserted Claims: At least claims 3 and 4. (Compl. ¶111).
  • Accused Features: LG products are accused of infringement by implementing image stabilization that detects image instability (e.g., via a gyroscope) and corrects for it by varying the portion of the image sensor used for recording, which may result in different viewing angles for static versus moving video modes. (Compl. ¶¶ 113-114). The complaint references technical specifications for the LGV60 ThinQ 5G listing different resolutions for its various cameras. (Compl. ¶115, p. 43).

U.S. Patent No. 7,421,188 - “Information Edition Device, Information Edition Method, Information Edition Program, and Information Recording Medium”

  • Patent Identification: U.S. Patent No. 7,421,188, titled “Information Edition Device, Information Edition Method, Information Edition Program, and Information Recording Medium,” issued on September 2, 2008.
  • Technology Synopsis: The patent relates to a method for preventing the accidental change or deletion of a thumbnail image that represents recorded content. (Compl. ¶127). The described method includes a process for deciding if a thumbnail can be changed and a process for prohibiting the change, for instance, to protect thumbnails set by a content holder or user. (Compl. ¶127).
  • Asserted Claims: At least claims 4, 5, and 6. (Compl. ¶128).
  • Accused Features: LG products are accused of implementing a method that includes a deciding process (user action), a change prohibiting process (e.g., preventing deletion of system albums and displaying a warning), and a changing process (e.g., moving a deletable item to trash). (Compl. ¶¶ 129-131).

U.S. Patent No. 9,818,449 - “Editing Method and Recording and Reproducing Device”

  • Patent Identification: U.S. Patent No. 9,818,449, titled “Editing Method and Recording and Reproducing Device,” issued on November 14, 2017.
  • Technology Synopsis: The patent describes a method for managing and editing video information organized into different groups (e.g., albums). (Compl. ¶142). The method allows for video information to be included in multiple groups and to be deleted from one group (e.g., a "Favorites" album) while remaining in another (e.g., the main "Camera" album) and on the recording medium itself. (Compl. ¶¶ 142, 144).
  • Asserted Claims: At least claims 9 through 12. (Compl. ¶143).
  • Accused Features: The "Gallery" application in LG products is accused of infringing by allowing a video to be present in multiple albums, where deleting it from one album does not delete it from other albums or from the device's storage. (Compl. ¶¶ 144-145, 148).

U.S. Patent No. 10,199,072 - “Editing Method and Recording and Reproducing Device”

  • Patent Identification: U.S. Patent No. 10,199,072, titled “Editing Method and Recording and Reproducing Device,” issued on February 5, 2019.
  • Technology Synopsis: This patent, related to the ’449 patent, describes an information processing method involving recording, reproducing, and editing video data. (Compl. ¶159). The method includes features for organizing video data into groups, displaying and editing the order of thumbnails within those groups, and deleting video data from one group without deleting it from the recording medium. (Compl. ¶¶ 162-163, 167).
  • Asserted Claims: At least claims 11 through 15. (Compl. ¶160).
  • Accused Features: The "Gallery" application in LG products is accused of infringing by allowing users to select groups of videos (albums), edit the order of thumbnails within those albums (e.g., via a "Sort by" function), and delete a video from one album while it remains in others and on the device. (Compl. ¶¶ 161-163).

III. The Accused Instrumentality

Product Identification

  • The complaint identifies a broad range of Defendant’s products, including numerous models from the LG G, K, Q, Stylo, and V families of smartphones, as well as LG Gram laptops and other telecommunications technology. (Compl. ¶¶ 22, 36, 58). The LG V60 ThinQ 5G is frequently cited as a representative example. (Compl. ¶¶ 23, 38, 59).

Functionality and Market Context

  • The accused functionalities are core features of modern smartphones and laptops. For the ’760 Patent, the complaint points to the devices' capability to record still pictures and reproduce thumbnail images from various encoding standards, such as DNG and JPEG, including where a single image is stored as two separate files (e.g., RAW and JPEG). (Compl. ¶23).
  • For the ’334 Patent, the complaint alleges the accused cellular telephones operate on CDMA systems and utilize RF transmitters that perform both open-loop and closed-loop power control. (Compl. ¶¶ 37, 43). It further alleges the use of a variable amplitude amplifier and a power amplifier whose bias condition is controlled via a function stored in memory, a technique it identifies as envelope tracking, allegedly implemented in components like a Qualcomm Snapdragon chip. (Compl. ¶44).

IV. Analysis of Infringement Allegations

U.S. Patent No. 6,856,760 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A recording medium which records thereon moving pictures encoded by a first encoding method The accused products record moving pictures and store them on internal memory. (Compl. ¶24). ¶24 col. 5:24-26
first pictures corresponding to the moving pictures, said first pictures having pixels smaller than the moving pictures The accused products have the capability to reproduce thumbnail images for each moving picture recorded on the recording media. (Compl. ¶23). The reproduced thumbnail images are constructed from a smaller number of pixels. ¶23 col. 3:4-7
still pictures encoded by a second encoding method, said second encoding method being different from said first encoding method The accused products have still picture recording capabilities and reproduce still pictures from internal memory in various formats and encoding standards, such as DNG and JPEG. (Compl. ¶23). ¶23 col. 5:27-33
and second pictures corresponding to the still pictures, said second pictures having pixels smaller than the still pictures The accused products reproduce thumbnail images for each still picture recorded on the recording media. (Compl. ¶23). ¶23 col. 3:4-7

U.S. Patent No. 6,973,334 Infringement Allegations

Claim Element (from Independent Claim 4) Alleged Infringing Functionality Complaint Citation Patent Citation
receiving a first communication signal and a transmitting power control signal (TPC) from a cell-site station The accused products receive a communication signal and a TPC signal on a downlink channel from a base station. (Compl. ¶38). ¶38 col. 10:25-29
generating a power control signal derived from the TPC received from the cell-site station The accused products derive a power control step in response to TPC commands and generate a power control signal to carry out power control of the RF transmitter. (Compl. ¶39). ¶39 col. 10:30-34
controlling a transmitter... so that an open-loop power control is performed prior to a closed-loop power control that is performed according to the power control signal The accused products first perform open-loop power control and then perform closed-loop power control according to the generated power control signal. (Compl. ¶43). ¶43 col. 10:43-52
controlling a gain of a variable amplitude amplifier and a bias condition of a power amplifier using a function defining a relation between bias data and gain data stored in memory The accused products use a function stored in memory that defines a relation between bias data and gain data to control the gain of a variable amplitude amplifier and the bias condition of a power amplifier, for example through an envelope tracker. (Compl. ¶44). ¶44 col. 10:53-59
wherein... said bias condition increases gradually to the maximum value when output intensity increases to the value taken when said cellular telephone is very far from the cell-site station The control is such that the bias condition increases gradually to the maximum value when output intensity increases to the value taken when the phone is very far from the cell-site station. (Compl. ¶44). ¶44 col. 10:62-67
  • Identified Points of Contention:
    • Scope Questions (’760 Patent): The analysis may turn on whether storing a single image in two different file formats (e.g., a RAW DNG file and a JPEG file) constitutes encoding "still pictures" by a "second encoding method... different from said first encoding method," as alleged in the complaint (Compl. ¶23). The scope of "encoding method" will be a central question.
    • Technical Questions (’334 Patent): The complaint alleges the use of third-party components like the Qualcomm Snapdragon chip to perform the claimed power control. (Compl. ¶44). A key technical question will be what evidentiary basis exists to show that the specific algorithms and operational characteristics of these components, particularly the envelope tracker, meet the detailed claim limitations of the "function" and the "gradually" increasing bias condition.

V. Key Claim Terms for Construction

  • Patent: U.S. Patent No. 6,856,760
    • The Term: "a first still picture corresponding to the moving picture" (Claim 1)
    • Context and Importance: This term is central to infringement, as the complaint alleges that "thumbnail images for each... moving picture" meet this limitation. (Compl. ¶23). The dispute may focus on whether a low-resolution thumbnail generated from a video frame is a "still picture" in the context of the patent, which distinguishes between moving and still pictures.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The patent does not appear to provide an explicit, limiting definition of "still picture," which may support an argument for its plain and ordinary meaning, potentially encompassing any single, non-moving image representation.
      • Evidence for a Narrower Interpretation: The patent consistently discusses "still pictures" in the context of a camera's still picture recording mode, often involving higher resolution and different encoding (like JPEG) than moving pictures (MPEG). (’760 Patent, col. 1:24-33). This context may support an argument that a "still picture" must be an image captured in a dedicated still mode, not merely a derivative thumbnail from a video.
  • Patent: U.S. Patent No. 6,973,334
    • The Term: "a function defining a relation between bias data and gain data stored in memory" (Claim 4)
    • Context and Importance: The infringement theory relies on this term reading on the envelope tracking functionality of modern mobile chipsets. (Compl. ¶44). The construction of "function" will determine whether a lookup table, a hardware-implemented algorithm, or another mechanism meets this limitation.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification describes the function in broad terms as defining a "relation," which could encompass various implementations, including storing data pairs in a table that are then looked up by the processor. (’334 Patent, Abstract; col. 2:28-31).
      • Evidence for a Narrower Interpretation: The detailed embodiments may suggest a more specific implementation. The patent repeatedly refers to the controller "calculating" the bias, which could imply a requirement for an algorithmic computation rather than a simple table lookup. The term's meaning will likely be assessed in the context of the state of the art at the time of the invention.

VI. Other Allegations

  • Indirect Infringement: For each asserted patent, the complaint alleges induced infringement, stating that Defendant provides user guides and manuals that instruct customers on how to use the accused features (e.g., using the camera, sharing files via Wi-Fi Direct). (Compl. ¶¶ 26, 46, 63, 83). The complaint also pleads contributory infringement, alleging that components like camera hardware, software, and RF amplification modules are material parts of the inventions and not staple articles of commerce suitable for substantial non-infringing use. (Compl. ¶¶ 28, 48, 65, 85).
  • Willful Infringement: The complaint alleges willful infringement for all asserted patents. The basis for this allegation is Defendant's alleged knowledge of the patents since at least July 19, 2021, based on correspondence from Plaintiff to Defendant that identified the patents, exemplary claims, and accused products. (Compl. ¶¶ 29-30, 49-50, 66-67, 86-87).

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

  • A core issue will be one of technical implementation: For patents directed at specific hardware functions like the ’334 power control patent, a central evidentiary question will be whether the operation of modern, integrated, third-party chipsets can be proven to map onto the specific functional steps and relationships required by the claim language.
  • The case will also present a question of technological evolution and scope: Can claim terms drafted for technologies of the late 1990s and early 2000s, such as distinct MPEG/JPEG encoding (’760 patent) or basic camera modes (’493 patent), be construed to cover their modern analogues, such as simultaneous RAW+JPEG capture and computationally intensive "Portrait" modes that blend multiple imaging techniques?
  • A third key question will be one of intent: Given the complaint’s allegation of pre-suit notice in July 2021 and the prior successful defense of several asserted patents in IPR proceedings, the dispute over willful infringement will likely be significant, focusing on the objective reasonableness of Defendant’s actions after being made aware of the patents-in-suit.