USB Tech LLC v. Verbatim Americas LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: USB Technologies, LLC (California)
  • Defendant: Verbatim Americas, LLC (Delaware)
  • Plaintiff’s Counsel: O'Kelly Ernst & Joyce, LLC
• Case Identification: 1:19-cv-00621, D. Del., 04/02/2019
• Venue Allegations: Venue is alleged to be proper in the District of Delaware because the Defendant maintains a registered principal place of business in the district.
• Core Dispute: Plaintiff alleges that Defendant’s dual-interface flash drive products infringe a patent related to flash memory cards featuring two different data interfaces and circuitry to automatically switch between them.
• Technical Context: The technology addresses interoperability for portable storage, enabling a single device to connect to different types of host systems (e.g., a camera and a computer) without requiring a separate adapter.
• Key Procedural History: The complaint does not mention any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history related to the patent-in-suit.

Case Timeline

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

U.S. Patent No. 7,809,866 - "DOUBLE INTERFACE SD FLASH MEMORY CARD"

• Patent Identification: U.S. Patent No. 7,809,866, "DOUBLE INTERFACE SD FLASH MEMORY CARD", issued October 5, 2010.

The Invention Explained

• Problem Addressed: The patent's background section describes an interoperability problem where data on a Secure Digital (SD) memory card, commonly used in devices like digital cameras, could not be easily accessed by computer systems that primarily used Universal Serial Bus (USB) interfaces, necessitating a separate card reader or adaptor (’866 Patent, col. 1:35-50). This added cost and complexity for the user.
• The Patented Solution: The invention proposes integrating both an SD-type interface and a USB-type interface into a single memory card device. The core of the solution is an "interface detection and switching circuit" that automatically detects which interface is connected to a host system—for example, by sensing a specific "initialized signal" associated with one of the interfaces—and then directs data flow through the active interface to the internal flash memory (’866 Patent, Abstract; col. 2:57-65). Figure 1 illustrates this architecture, showing a USB plug (32) and an SD bus connection feeding into an interface detection and switching circuit (24) that controls access to the microprocessor (16) and flash memory (14).
• Technical Importance: This integrated approach was designed to eliminate the need for an external adapter, thereby reducing system cost and simplifying the process of transferring data between different types of electronic devices (’866 Patent, col. 2:3-8).

Key Claims at a Glance

• The complaint asserts infringement of at least independent Claim 1 (Compl. ¶24, Prayer for Relief ¶A).
• The essential elements of Claim 1 include:
  • A double interface flash memory card with a first transmission interface, a circuit board, a microprocessor, and flash memory.
  • A first bus interface circuit for a system interface of the flash memory card.
  • A second bus interface circuit for other information apparatuses.
  • An interface detection and switching circuit that detects an "initializing signal" from the system interface circuit and switches between the first and second bus interface circuits based on whether the signal is generated.
  • A microprocessor that switches to a working mode and starts a suitable system interface circuit mode based on the detection, allowing the microprocessor to "detect, determine and support a connection action signal automatically."
• The complaint does not explicitly reserve the right to assert dependent claims.

III. The Accused Instrumentality

Product Identification

• The complaint identifies the accused products as "double interface flash memory card products," including specifically the "Verbatim 16GB Store ‘n’ Go Dual USB 3.0 Flash Drive for Apple Lightning Devices" (the "ACCUSED PRODUCTS") (Compl. ¶17).

Functionality and Market Context

• The complaint alleges the Accused Products feature both a USB interface and an Apple Lightning interface, allowing them to connect to different types of host devices (Compl. ¶18). The core accused functionality is the products' alleged ability to automatically detect which interface is active (USB or Lightning) and switch its internal circuitry to support data transmission through that interface (Compl. ¶¶21-22). The complaint alleges that Verbatim makes, sells, offers for sale, and/or imports the Accused Products in the United States (Compl. ¶17).

IV. Analysis of Infringement Allegations

The complaint references a preliminary claim chart as "Exhibit B," but this exhibit was not attached to the filed document. The following chart is constructed from the narrative allegations in paragraphs 18-22 of the complaint.

No probative visual evidence provided in complaint.

’866 Patent Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: The complaint's allegations raise the question of whether the claim term "double interface flash memory card," which the patent repeatedly describes in the context of an SD card (’866 Patent, Title, Abstract, col. 1:21-24), can be interpreted to read on the accused "Flash Drive" with USB and Lightning interfaces. A further question is whether the Apple Lightning interface constitutes a "bus interface circuit for...other information apparatuses" as claimed.
  • Technical Questions: The complaint alleges the accused device detects an "initializing signal" (Compl. ¶21), a critical trigger for the claimed switching function. The patent provides a specific technical example of this signal in an SD card context ("74 pulses/s") (’866 Patent, col. 3:36-40). What evidence the complaint provides that an analogous signal exists and performs the same function in the accused USB/Lightning product is a central technical question.
  • Allegation Ambiguity: The complaint alleges the "second bus interface circuit" limitation is met by both the USB interface (Compl. ¶19) and the Lightning interface (Compl. ¶20), while providing no allegation for the "first bus interface circuit" limitation. This raises a question about how Plaintiff maps the two physical interfaces of the accused product to the two distinct interface circuits required by the claim.

V. Key Claim Terms for Construction

• The Term: "double interface flash memory card"

  • Context and Importance: This term appears in the preamble of Claim 1. Its construction is critical because the accused product is a flash drive with USB and Lightning interfaces, whereas the patent's title, abstract, and detailed description are heavily focused on an "SD flash memory card." The dispute will center on whether "flash memory card" is a fundamental structural limitation or merely an exemplary environment for the dual-interface switching invention.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A party could argue that Claim 1 itself does not limit the "first bus interface circuit" to an SD interface, suggesting the "SD" context is merely a preferred embodiment and the true invention is the dual-interface architecture itself.
    • Evidence for a Narrower Interpretation: A party could argue that the consistent and repeated use of "SD flash memory card" throughout the patent—including the title, abstract, and background—limits the scope of the claims to that specific type of device and form factor (’866 Patent, Title, Abstract, col. 1:21-34).

• The Term: "initializing signal"

  • Context and Importance: This signal is the trigger for the claimed "interface detection and switching circuit." The functionality of the entire invention hinges on its detection. Practitioners may focus on this term because the patent provides a specific example tied to SD card standards (’866 Patent, col. 3:36-40), while the complaint does not specify what constitutes this signal in the accused USB/Lightning product (Compl. ¶21).
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A party may argue that "initializing signal" should be construed broadly to mean any signal generated upon connection that allows the microprocessor to identify the active interface, regardless of its specific protocol.
    • Evidence for a Narrower Interpretation: A party may argue the term is limited by the specific disclosure, which describes a signal characteristic of the SD card protocol ("74 pulses/s") (’866 Patent, col. 3:36-40), and that a different type of handshake or enumeration signal in a USB or Lightning device does not meet this limitation.

VI. Other Allegations

The complaint does not contain specific factual allegations to support claims for indirect infringement or willful infringement.

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

• A core issue will be one of definitional scope: can the term "double interface flash memory card", rooted in the patent’s explicit context of SD/USB technology, be construed to cover the accused "flash drive" with USB and Apple Lightning interfaces?
• A key evidentiary question will be one of technical operation: does the accused product utilize an "initializing signal" to trigger an automatic switching circuit in the specific manner claimed by the patent, or is there a fundamental mismatch between the patent’s SD-protocol-based disclosure and the actual operation of the accused USB/Lightning device?
• A central question of claim mapping will be how the Plaintiff reconciles its allegations, which appear to map two different physical interfaces (USB and Lightning) to the single "second bus interface circuit" limitation while remaining silent on the "first bus interface circuit" limitation required by Claim 1.