DCT
1:17-cv-00223
MEC Resources LLC v. Apple Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Prowire LLC (Texas)
- Defendant: Apple Inc. (Delaware)
- Plaintiff’s Counsel: O'Kelly & Ernst, Joyce
- Case Identification: 1:17-cv-00223, D. Del., 03/02/2017
- Venue Allegations: Venue is alleged based on Defendant conducting business, operating retail stores, and having established minimum contacts within the District of Delaware.
- Core Dispute: Plaintiff alleges that inductors within Defendant’s iPad 4 tablet computers infringe a patent related to inductors with minimized electromagnetic interference (EMI) and the methods of manufacturing them.
- Technical Context: The technology concerns inductors, fundamental electronic components used for energy storage and filtering, and methods to make them smaller and more efficient for use in compact consumer electronics.
- Key Procedural History: The complaint was filed on March 2, 2017. Subsequent to the filing, an Inter Partes Review (IPR) proceeding was initiated against the patent-in-suit. An IPR certificate issued on July 2, 2021, indicates that all claims of the patent (Claims 1-20) have been cancelled, rendering the patent unenforceable.
Case Timeline
| Date | Event |
|---|---|
| 1999-05-03 | Priority Date for U.S. Patent No. 6,137,390 |
| 2000-10-24 | U.S. Patent No. 6,137,390 Issues |
| 2012-11-02 | Approximate launch date of the accused iPad 4 |
| 2017-03-02 | Complaint Filed |
| 2019-01-24 | IPR against '390 Patent Filed (IPR2019-00583) |
| 2021-07-02 | IPR Certificate Issued Cancelling All Claims of '390 Patent |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,137,390 - Inductors with Minimized EMI Effect and the Method of Manufacturing the Same
The Invention Explained
- Problem Addressed: The patent’s background section describes a need in the electronics industry for smaller inductors that provide high inductance while reducing undesirable electromagnetic interference and magnetic leakage, without substantially increasing manufacturing cost or complexity (ʼ390 Patent, col. 1:38-48).
- The Patented Solution: The invention involves embedding a conventional inductor (a coil wound around a magnetic core) in a special magnetic resin layer, which is a polymer containing dispersed magnetic powder. This layer is applied via compression molding, a process that minimizes void space around the coil (’390 Patent, col. 2:50-59). By filling these voids, the design increases the inductance per unit volume and reduces EMI and magnetic leakage that would otherwise escape through air gaps (’390 Patent, Abstract; col. 2:5-9).
- Technical Importance: This approach aimed to provide a cost-effective manufacturing method for producing compact, high-performance inductors suitable for the increasing miniaturization of consumer electronic devices (ʼ390 Patent, col. 1:15-21).
Key Claims at a Glance
- The complaint asserts independent claims 1 (an apparatus claim) and 11 (a method claim).
- Independent Claim 1 (Apparatus):
- a magnetic core;
- an electrically conducting coil wound about said magnetic core;
- a magnetic resin layer compression-molded to embed at least a portion of an outer periphery of said electrically conducting coil;
- wherein said magnetic resin layer contains a magnetic powder dispersed in a polymer resin.
- Independent Claim 11 (Method):
- winding an electrically conducting coil about a magnetic core;
- forming a magnetic resin layer by compression molding to embed at least a portion of an outer periphery of said electrically conducting coil;
- wherein said magnetic resin layer matrix contains a magnetic powder dispersed in a polymer resin.
- The complaint alleges infringement of one or more claims of the patent-in-suit, which could include dependent claims (Compl. ¶9).
III. The Accused Instrumentality
Product Identification
- Defendant’s line of iPad 4 tablet computers (Compl. ¶9).
Functionality and Market Context
- The complaint alleges that the accused iPad 4 tablets contain inductors used on their circuit boards (Compl. ¶11). The infringement allegations focus on the physical structure and material composition of these specific inductor components, which are essential for managing power and signals within the electronic device. The complaint includes a photograph of an iPad 4 circuit board with arrows pointing to the alleged infringing inductors (Compl. p. 4).
IV. Analysis of Infringement Allegations
'390 Patent Infringement Allegations (Claim 1)
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| (a) a magnetic core | The inductors in the iPad 4 are alleged to contain a magnetic core, with supporting evidence provided through elemental analysis purporting to show the presence of magnetic materials like Nickel-zinc ferrite (NiZnFe2O4) (Compl. p. 5). | ¶13 | col. 3:20-24 |
| (b) an electrically conducting coil wound about said magnetic core | The inductors are alleged to contain an electrically conducting coil wound around the magnetic core. | ¶14 | col. 3:2-4 |
| (c) a magnetic resin layer compression-molded to embed...said...coil | The inductors are alleged to have been made using a compression molding method to form a magnetic resin layer that embeds the coil. | ¶21 | col. 3:12-16 |
| (d) wherein said magnetic resin layer contains a magnetic powder dispersed in a polymer resin | The magnetic resin layer is alleged to contain magnetic powder dispersed in a polymer resin, supported by elemental analysis showing the presence of carbon (C) from the polymer resin and iron (Fe) from the magnetic powder (Compl. p. 6). | ¶15 | col. 3:20-28 |
'390 Patent Infringement Allegations (Claim 11)
| Claim Element (from Independent Claim 11) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| (a) winding an electrically conducting coil about a magnetic core | The complaint alleges the inductors were made using a method that includes winding a conducting coil around a magnetic core. | ¶20 | col. 5:63-64 |
| (b) forming a magnetic resin layer by compression molding to embed...said...coil | The inductors were allegedly made using a method that forms a magnetic resin layer by compression molding to embed the coil. | ¶21 | col. 6:1-3 |
| (c) wherein said magnetic resin layer matrix contains a magnetic powder dispersed in a polymer resin | The manufacturing process is alleged to use a magnetic resin matrix containing magnetic powder dispersed in a polymer resin. This is supported by an image presenting elemental analysis of the resin layer (Compl. p. 6). | ¶17, ¶18 | col. 7:1-3 |
- Identified Points of Contention:
- Process vs. Product Evidence: A central question is whether Plaintiff can prove the use of "compression molding" as required by both asserted claims. The complaint relies on analysis of the finished product to infer the manufacturing process (Compl. ¶¶18, 21), which may raise evidentiary challenges regarding how the inductors were actually made.
- Technical Questions: The complaint provides its own elemental analysis of the accused inductors (Compl. pp. 5-6). A technical dispute may arise over whether the specific material compositions identified (e.g., "Zn(X)Fe(Y)") and their proportions fall within the scope of the materials described and claimed in the patent.
V. Key Claim Terms for Construction
- The Term: "compression-molded" / "compression molding"
- Context and Importance: This term appears in both asserted independent claims and describes a specific manufacturing process. The definition is critical because infringement hinges on whether the accused inductors were made using this particular method. Practitioners may focus on this term because the complaint does not allege direct observation of Defendant's manufacturing process, but rather infers it from the final product's characteristics.
- Intrinsic Evidence for Interpretation:
- Evidence for a Narrower Interpretation: The specification describes a specific sequence of steps for the process: "the conventional induction coil with the magnetic core is first placed inside a mold, then the magnetic resin is poured into the mold, which is then compressed to the final dimension" (ʼ390 Patent, col. 3:16-20). A party could argue this detailed description limits the claim term to this exact method.
- Evidence for a Broader Interpretation: A party might argue that the term should be given its plain and ordinary meaning in the art at the time, potentially encompassing any molding process that involves applying pressure to consolidate the resin, even if it differs from the specific sequence described in the preferred embodiment.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendant infringes by importing products (iPad 4 tablet computers) that incorporate inductors made by the patented process claimed in Claim 11 (Compl. ¶¶16, 18). This alleges infringement under 35 U.S.C. § 271(g).
- Willful Infringement: The complaint does not contain a formal count of willful infringement but states that "Prowire reserves the right to amend to assert a claim of willful infringement if the evidence obtained in discovery supports such assertion" (Compl. ¶25).
VII. Analyst’s Conclusion: Key Questions for the Case
Patent Validity: The most critical issue is the enforceability of the patent itself. Given that an Inter Partes Review certificate issued in 2021 cancelled all claims of the '390 Patent, the patent is no longer enforceable. This development, which occurred after the complaint was filed, is dispositive and would terminate the litigation.
Evidentiary Proof of Process: Had the patent remained valid, a key question would be one of evidentiary sufficiency: can analysis of a finished inductor component conclusively prove it was manufactured by a "compression molding" process, as required by the claims, or is direct evidence of the manufacturing method required?
Technical Scope: A further issue would have been one of material composition: does the elemental makeup of the accused inductors, as presented in the complaint's own evidence, technically meet the definitions of "magnetic core" and "magnetic resin layer" as described and claimed in the patent specification, or is there a material difference in composition that places them outside the claim scope?