DCT
1:22-cv-01554
Power Integrations Inc v. Waverly Licensing LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Power Integrations, Inc. (Delaware)
- Defendant: Waverly Licensing LLC, Mavexar LLC, Array IP LLC, and IP Edge LLC (Texas)
- Plaintiff’s Counsel: Fish & Richardson P.C.
- Case Identification: 1:22-cv-01554, D. Del., 12/22/2022
- Venue Allegations: Plaintiff is a Delaware corporation. Defendants are alleged to have purposely availed themselves of the Delaware district by filing numerous patent lawsuits in the district, including suits asserting the patent-in-suit.
- Core Dispute: Plaintiff seeks a declaratory judgment that its integrated circuit products do not infringe Defendant's patent related to authenticated wireless charging, and further alleges an improper litigation campaign by the Defendants.
- Technical Context: The technology concerns wireless power transfer systems that can authenticate a charging source before initiating a charge to prevent damage or unauthorized power draw.
- Key Procedural History: This declaratory judgment action was filed in response to a patent infringement lawsuit brought by Defendant Waverly Licensing LLC against Plaintiff Power Integrations in the Western District of Texas. The complaint details an alleged pattern of litigation by the Defendants, asserting that they are related entities operating under the IP Edge umbrella and using mailbox-rental locations as principal places of business to engage in widespread litigation.
Case Timeline
| Date | Event |
|---|---|
| 2009-12-25 | ’246 Patent Priority Date |
| 2021-03-02 | ’246 Patent Issue Date |
| 2021-07-15 | ’246 Patent assigned to Array IP LLC |
| 2022-10-31 | Waverly Licensing files infringement suit against Power Integrations in W.D. Tex. |
| 2022-12-22 | Power Integrations files this Declaratory Judgment Complaint |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,938,246 - "Method and Apparatus for Charging a Battery-Operated Device," issued March 2, 2021
The Invention Explained
- Problem Addressed: Existing wireless power standards were not primarily designed to address the challenges of authenticating charging sources before initiating power transfer, creating risks of incompatibility or connection with unauthorized chargers in a diverse ecosystem of devices (’246 Patent, col. 4:15-21). The patent notes that prior art standards "assume that the slaves have access to some power source" and do not address charging devices before communication (’246 Patent, col. 8:21-24).
- The Patented Solution: The patent describes a "battery-operated device" and a corresponding charging method that includes an authentication step. Before accepting energy, the device is configured to receive an identification credential from the charger, check if that credential is on a pre-stored list of "authorized chargers," and only proceed with charging if a match is found (’246 Patent, Abstract). This creates a closed-loop system where power transfer is conditioned on successful verification, as illustrated in the system diagrams showing communication between "master" chargers and "slave" devices (’246 Patent, Fig. 1).
- Technical Importance: This approach seeks to enhance the safety, security, and interoperability of wireless charging by ensuring that a device is only charged by approved, compatible sources (’246 Patent, col. 4:15-21).
Key Claims at a Glance
- The complaint’s non-infringement arguments focus on the independent claims (Compl. ¶¶30, 32). The primary asserted independent claim appears to be Claim 1.
- Independent Claim 1 recites a "battery-operated device" with the following essential elements:
- a battery;
- an electronic circuitry configured to be powered by the battery;
- a converter configured to receive energy from any of a plurality of authorized chargers, and generate power from the energy for charging the battery using the power;
- the battery-operated device is configured to:
- receive a charger identification from a charger;
- determine whether the charger identification is in a list of charger identifications belonging to the plurality of authorized chargers;
- in response to a positive determination, receive the energy, generate power with the converter, charge the battery, and use the battery to power the electronic circuitry.
- The complaint does not explicitly reserve the right to assert dependent claims but seeks a declaration of non-infringement for "any claim of the '246 patent" (Compl. ¶34).
III. The Accused Instrumentality
Product Identification
Plaintiff’s "InnoSwitch3-PD" families of integrated circuit (IC) products (Compl. ¶19, ¶28).
Functionality and Market Context
The complaint describes the accused product not as a consumer-facing device but as a "single surface-mounted off-line flyback switcher IC," which is a semiconductor component (Compl. ¶4). These ICs combine primary-side and secondary-side controllers for use in power conversion applications (Compl. ¶4).
The complaint states that Power Integrations is a "chip company which designs, makes and sells integrated circuits," not finished "battery chargers and adapters" or "battery-operated device[s]" (Compl. ¶31). The InnoSwitch3-PD ICs are allegedly used by other companies within products like USB-compliant power supplies (Compl. ¶19). A photo included in an exhibit to the complaint, taken from Power Integrations' website, shows the InnoSwitch3-PD IC as a component for USB power delivery applications (Compl. Ex. B at ¶19).
IV. Analysis of Infringement Allegations
This action is for a declaratory judgment of non-infringement. The following table summarizes the Plaintiff's (Power Integrations') arguments for why its product does not meet the limitations of the asserted patent claim.
’246 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Plaintiff's Stated Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A battery-operated device comprising: a battery; | The InnoSwitch3-PD is an integrated circuit, not a "battery-operated device," and it does not include "a battery." | ¶30, ¶32 | col. 35:1-3 |
| an electronic circuitry configured to be powered by the battery; | The InnoSwitch3-PD does not include "electronic circuitry configured to be powered by the battery." | ¶32 | col. 35:1-3 |
| a converter configured to receive energy from any of a plurality of authorized chargers. | The InnoSwitch3-PD is not a "converter" in the claimed sense, as it is a component within a larger power supply. | ¶32 | col. 35:1-3 |
| the battery-operated device configured to: receive a charger identification from a charger; | The InnoSwitch3-PD is not a "charger" and cannot be configured to "receive a charger identification from a charger." | ¶32 | col. 35:1-3 |
| determine whether the charger identification is in a list of charger identifications... | The InnoSwitch3-PD does not perform the claimed function of determining if a charger ID is on an authorized list. | ¶32-33 | col. 35:1-3 |
Identified Points of Contention
- Scope Questions: A central issue is whether Plaintiff’s integrated circuit, which is a component sold to other manufacturers, can be considered a "battery-operated device" as recited in the claim. The complaint argues it cannot, as the IC itself lacks a battery and the other recited elements (Compl. ¶32). This raises the question of whether the claim is directed to a finished end-product or if it can be read to cover a key component that enables the functionality in an end-product.
- Technical Questions: The complaint asserts that the InnoSwitch3-PD chip does not and cannot perform the claimed authentication method (receiving an ID and checking it against a list) (Compl. ¶¶32-33). A key factual question will be what functions the accused IC actually performs, both on its own and when incorporated into a finished power supply by a third party.
V. Key Claim Terms for Construction
- The Term: "battery-operated device"
- Context and Importance: The definition of this term is critical to the dispute. Plaintiff’s core non-infringement argument is that its product is an integrated circuit component, not a complete "device" that is "battery-operated" as claimed (Compl. ¶¶30, 32). The resolution of this issue may determine whether the claims can read on Plaintiff's products at all. Practitioners may focus on this term because it represents a potential dispositive mismatch between the claimed invention and the accused instrumentality.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent specification describes various end-user systems, such as a "Slave B (Cell phone)" in Figure 20, which could suggest the term "device" is meant to encompass final consumer products. The specification’s repeated references to laptops, cell phones, and PDAs could support an argument that "device" should be construed to cover the types of systems where Plaintiff's IC is ultimately used (’246 Patent, col. 16:9-12).
- Evidence for a Narrower Interpretation: Claim 1 explicitly recites "A battery-operated device comprising: a battery...". This language suggests that the "device" itself must contain a battery as one of its components. The patent's abstract reinforces this, stating, "There is provided a battery-operated device that include a battery..." (’246 Patent, Abstract). Further, diagrams like Figure 3 show the "Battery" (315) as an element physically located within the boundary of the "Slave" device (310), supporting an interpretation of a self-contained unit.
VI. Other Allegations
- Indirect Infringement: The complaint argues that since the InnoSwitch3-PD chip cannot be used to implement the limitations recited in the independent claims, Power Integrations cannot be liable for indirect infringement (Compl. ¶33).
- Willful Infringement: This is a declaratory judgment action of non-infringement; no allegations of willful infringement are made against the Plaintiff.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "battery-operated device", which the patent claims recite as "comprising: a battery," be construed to read on an integrated circuit component that does not itself contain a battery but is later incorporated into such devices by downstream manufacturers?
- A second central question is procedural and equitable: given that this is a discretionary declaratory judgment action, what effect will the complaint's extensive allegations regarding Defendants' litigation practices, corporate structure, and use of alleged "sham" business addresses—supported by visual evidence of commercial mail-drop locations (Compl. pp. 4-6)—have on the court's management of the case and any potential fee-shifting analysis?