DCT
1:24-cv-00013
NL Giken Inc v. Apple Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: NL Giken Inc. (Japan)
- Defendant: Apple Inc. (California)
- Plaintiff’s Counsel: Young Conaway Stargatt & Taylor, LLP; Wolf, Greenfield & Sacks, P.C.
- Case Identification: 1:24-cv-00013, D. Del., 01/05/2024
- Venue Allegations: Plaintiff alleges venue is proper in the District of Delaware based on Defendant’s operation of a retail store in Newark, Delaware, and its commission of infringing acts within the district.
- Core Dispute: Plaintiff alleges that a wide range of Defendant’s products and services—including iPhones, Apple Watches, iCloud Photos, SharePlay, and Apple TV+—infringe eight U.S. patents related to digital camera memory management, shared content viewing, emergency device operation, streaming content delivery, and wired data transmission.
- Technical Context: The patents-in-suit address distinct functionalities common in modern consumer electronics, which are often integrated into multifaceted devices and services like those offered by Defendant.
- Key Procedural History: The complaint does not mention any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history related to the asserted patents.
Case Timeline
| Date | Event |
|---|---|
| 2006-04-07 | Priority Date for ’236, ’615, and ’784 Patents |
| 2006-06-18 | Priority Date for ’910, ’617, and ’547 Patents |
| 2008-09-14 | Priority Date for ’968 Patent |
| 2009-03-29 | Priority Date for ’422 Patent |
| 2012-01-10 | Issue Date for U.S. Patent No. 8,094,236 |
| 2013-07-09 | Issue Date for U.S. Patent No. 8,482,617 |
| 2013-07-30 | Issue Date for U.S. Patent No. 8,497,910 |
| 2014-02-04 | Issue Date for U.S. Patent No. 8,643,784 |
| 2016-04-19 | Issue Date for U.S. Patent No. 9,319,615 |
| 2018-01-01 | Alleged Infringement Start Date |
| 2018-04-17 | Issue Date for U.S. Patent No. 9,948,968 |
| 2020-03-17 | Issue Date for U.S. Patent No. 10,592,547 |
| 2020-09-01 | Issue Date for U.S. Patent No. 10,764,422 |
| 2024-01-05 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,497,910 - “Digital camera having communication function”
Issued July 30, 2013
The Invention Explained
- Problem Addressed: The patent’s background section describes the problem of limited storage capacity in digital cameras, which restricts the number of photos a user can take before needing to delete old ones. (Compl. ¶19; ’547 Patent, col. 1:26-34).
- The Patented Solution: The invention proposes a digital camera that wirelessly sends full-size original photos to an external server for backup. This allows the full-size image to be deleted from the device to free up memory. The camera retains smaller, lower-resolution versions—specifically a "thumbnail image" and an "intermediate-sized image"—for on-device viewing and playback, preserving memory while allowing access to different image sizes as needed. (Compl. ¶19; ’547 Patent, Abstract, col. 2:1-16).
- Technical Importance: This approach addresses the persistent challenge of finite on-device storage in an era of increasing image resolutions and user demand for capturing large numbers of digital photos. (Compl. ¶12).
Key Claims at a Glance
- The complaint asserts at least independent claim 1. (Compl. ¶35).
- Essential elements of claim 1 include:
- A digital camera comprising an image taking portion, an image storage portion, a wireless communicator, a display, and a storage controller.
- The image storage portion stores full-size image data and two smaller size image data (display size and thumbnail size).
- The storage controller is adapted to treat the full-size image data and the display size image data unequally if the full-size image data has already been sent outside the camera.
- The complaint reserves the right to assert additional claims. (Compl. ¶35).
U.S. Patent No. 8,482,617 - “Digital camera with communication function”
Issued July 9, 2013
The Invention Explained
- Problem Addressed: This patent, from the same family as the ’910 patent, addresses the same problem of limited on-device memory for digital photos. (Compl. ¶20; ’547 Patent, col. 1:26-34).
- The Patented Solution: The solution is substantively identical to that of the ’910 patent: wirelessly backing up full-size photos to an external location while retaining smaller versions on the device. (Compl. ¶20; ’547 Patent, Abstract). A figure included in the complaint shows a user interface with a "Capacity Full" warning, illustrating a related aspect of the invention. (Compl. p. 4, Fig. 7). This patent family also discloses a capacity indicator that informs the user about available storage space, including whether room can be made by deleting backed-up display-size images. (’547 Patent, col. 2:56-64).
- Technical Importance: Providing a user with clear information about storage capacity helps manage the trade-offs between on-device storage and cloud backup. (Compl. ¶12).
Key Claims at a Glance
- The complaint asserts at least independent claim 1. (Compl. ¶50).
- Essential elements of claim 1 include:
- A digital camera with an image taking portion, wireless communicator, display, and image storage portion.
- The image storage portion stores full-size and display-size image data.
- A storage controller treats the full-size and display-size data unequally if the full-size data has been sent outside.
- A capacity indicator adapted to indicate information relating to the room for the image storage portion to store new digital image data.
- The complaint reserves the right to assert additional claims. (Compl. ¶50).
U.S. Patent No. 10,592,547 - “Digital camera with communication function”
Issued March 17, 2020
- Technology Synopsis: This patent, also in the same family, is directed to devices that store versions of photos both locally and externally, and focuses on overwriting and editing image data on the local device in connection with the externally located image. (Compl. ¶12, ¶21).
- Asserted Claims: At least independent claim 20. (Compl. ¶65).
- Accused Features: The complaint alleges that Apple’s iPhones and iPads with the iCloud Photos application infringe this patent. (Compl. ¶66).
U.S. Patent No. 8,094,236 - “Television system, television set and remote controller”
Issued January 10, 2012
- Technology Synopsis: The technology relates to a system where a television and other devices can communicate with each other, enabling multiple people to watch content together. (Compl. ¶13). The complaint includes a system diagram from the patent illustrating two "Home" systems communicating. (Compl. p. 5, '236 patent, Fig. 1).
- Asserted Claims: At least independent claim 1. (Compl. ¶80).
- Accused Features: The complaint accuses Apple’s SharePlay and FaceTime capabilities on devices such as Apple TVs, iPhones, and iPads of infringement. (Compl. ¶81).
U.S. Patent No. 9,319,615 - “Television system, television set and remote controller”
Issued April 19, 2016
- Technology Synopsis: This patent is a continuation of the ’236 patent and is directed to the same technology for enabling shared content viewing across multiple devices. (Compl. ¶13, ¶23).
- Asserted Claims: At least independent claim 1. (Compl. ¶91).
- Accused Features: The complaint accuses Apple’s SharePlay and FaceTime capabilities on various Apple devices. (Compl. ¶92).
U.S. Patent No. 8,643,784 - “Television system, television set and remote controller”
Issued February 4, 2014
- Technology Synopsis: The invention relates to an appliance, such as a smartwatch or smartphone, that determines whether a key has been operated in an "abnormal manner" (e.g., repeatedly or rapidly) and, in response, sends a signal indicating an emergency. (Compl. ¶14).
- Asserted Claims: At least independent claim 11. (Compl. ¶102).
- Accused Features: The complaint accuses the Emergency SOS and/or emergency call functions on Apple Watches and iPhones of infringement. (Compl. ¶103).
U.S. Patent No. 9,948,968 - “Digital contents receiving apparatus”
Issued April 17, 2018
- Technology Synopsis: This invention relates to a system that receives digital moving image content (e.g., streaming video) and automatically designates and displays a succeeding part of the content, such as automatically playing the next episode in a series. (Compl. ¶15, ¶119).
- Asserted Claims: At least independent claim 1. (Compl. ¶113).
- Accused Features: The complaint accuses the Apple TV+ app, which is preinstalled on various Apple devices, of infringement. (Compl. ¶114).
U.S. Patent No. 10,764,422 - “Digital image viewing system, a cellar phone and a digital photo frame”
Issued September 1, 2020
- Technology Synopsis: The technology relates to a system for transmitting both power and data along wired paths between a phone and a display, where data transmission is conditioned on the user admitting or trusting the connected display. (Compl. ¶16).
- Asserted Claims: At least independent claim 8. (Compl. ¶129).
- Accused Features: The complaint accuses Apple devices like iPhones and iPads that can both transfer data and charge via wired connections (e.g., USB-C cables) of infringement. (Compl. ¶130, ¶135).
III. The Accused Instrumentality
Product Identification
- The complaint identifies a broad range of accused products and services, including: iCloud Photos; SharePlay; FaceTime; Apple Watches and iPhones with emergency/SOS modes; Apple TV and the Apple TV+ service; and Apple hardware (e.g., iPhones, iPads) and software (e.g., iOS) capable of transmitting power and data over wired connections. (Compl. ¶29-30).
Functionality and Market Context
- The complaint alleges that these products incorporate the patented technologies:
- iCloud Photos is alleged to increase available device memory by wirelessly backing up full-resolution photos to an external location (iCloud) while retaining smaller versions on the device. (Compl. ¶19, ¶36).
- SharePlay and FaceTime are alleged to be video-streaming applications that allow multiple users on different devices to watch content together. (Compl. ¶81, ¶92).
- Emergency SOS on Apple Watches and iPhones is alleged to be a function that sends an emergency signal in response to abnormal key operations, such as unique presses of a side button. (Compl. ¶103, ¶108).
- The Apple TV+ app is alleged to be a service that automatically plays the next episode in a TV series. (Compl. ¶114, ¶119).
- iPhones and iPads are alleged to be capable of transmitting both power and data over wired paths to other devices. (Compl. ¶130, ¶135).
IV. Analysis of Infringement Allegations
U.S. Patent No. 8,497,910 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a digital camera, comprising: an image taking portion... | Apple's iPhones and iPads are digital cameras with an image taking portion. | ¶36 | col. 1:65-67 |
| a wireless communicator adapted to send... and to receive... | The accused devices have wireless communicators (e.g., Wi-Fi, cellular) to send and receive data from iCloud. | ¶36 | col. 2:1-4 |
| an image storage portion adapted to store a full size image data... and two smaller size image data... | The accused devices with iCloud Photos store full-size originals externally and retain smaller, lower-resolution versions on the device. | ¶19, ¶36, ¶41 | col. 2:5-10 |
| a storage controller adapted to treat the full size image data and the display size image data unequally in the image storage portion if the full size image data has been already sent to outside of the digital camera | The iCloud Photos application manages storage of photos and videos, treating images differently once they are backed up. | ¶36, ¶43 | col. 2:11-16 |
U.S. Patent No. 8,482,617 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a digital camera, comprising: an image taking portion... an image storage portion... a wireless communicator... a display... | Apple's iPhones and iPads are digital cameras with the recited components. | ¶51 | col. 1:65-67 |
| a storage controller adapted to treat the full size image data and the display size image data unequally... if the full size image data has been already sent... | The iCloud Photos application manages on-device versus cloud storage based on backup status. | ¶51, ¶58 | col. 2:11-16 |
| a capacity indicator adapted to indicate information relating to the room for the image storage portion to store new digital image data | The complaint does not provide sufficient detail for analysis of this element. | ¶20 | col. 2:56-60 |
Identified Points of Contention
- Scope Questions: A primary issue may be whether a "digital camera," as used in the ’910 and ’617 patents, can be construed to cover a distributed system comprising a local device (e.g., an iPhone) and a remote cloud service (iCloud). The patents' figures and descriptions, such as the one showing a "1st Digital camera," may support a narrower construction limited to a single, self-contained apparatus. (Compl. p. 4, Fig. 4). This raises the question of whether the "image storage portion" must be physically part of the camera itself.
- Technical Questions: For the ’617 patent, the infringement theory will depend on identifying a specific feature in the accused products that performs the function of the claimed "capacity indicator." The complaint alleges the existence of such an indicator but does not specify which part of the Apple user interface it is, creating a key factual question for the litigation. (Compl. ¶20, ¶51).
V. Key Claim Terms for Construction
The Term: "digital camera"
- Context and Importance: The definition of "digital camera" is central to the infringement allegations for the ’910, ’617, and ’547 patents. The dispute may center on whether this term, as claimed, is limited to a single physical device or can encompass a system of a local device operating in conjunction with a remote cloud server.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims do not explicitly restrict the location of the "image storage portion" to be within the physical housing of the camera, which may support an argument that a functionally integrated but physically distributed storage system falls within the claim scope.
- Evidence for a Narrower Interpretation: The specification consistently refers to the invention as a "digital camera" and its components as being part of that camera. (e.g., ’547 Patent, col. 2:1-11). The patent figures exclusively depict a single, self-contained camera apparatus, which may suggest the claimed "digital camera" is intended to be a unitary device. (Compl. p. 4, Figs. 4 and 7).
The Term: "capacity indicator" (in the ’617 Patent)
- Context and Importance: This term is a key limitation distinguishing the ’617 patent from the ’910 patent. Practitioners may focus on this term because the complaint does not map it to a specific feature of the accused products, making its construction critical to determining whether there is infringement.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent describes the indicator's function as providing "information relating to the room for the image storage portion," which could be interpreted broadly to cover any user interface element that conveys storage status. (’547 Patent, col. 2:57-59).
- Evidence for a Narrower Interpretation: The specification further details that the indicator can show if "an extra room...can be secured by replacing the stored display image data," suggesting a specific function beyond a simple "storage full" alert. (’547 Patent, col. 2:60-63). A figure in the complaint from the '910 patent family shows a specific "Capacity Full" visual overlay, which may be argued to limit the scope of the term. (Compl. p. 4, Fig. 7).
VI. Other Allegations
- Indirect Infringement: For each asserted patent, the complaint alleges induced infringement. The allegations state that Defendant encourages infringement by customers through user manuals, product documentation, and advertising, and by third-party resellers through its distribution channels and reseller support programs. (Compl. ¶40-41, ¶55-56, ¶70-71, ¶85-86, ¶96-97, ¶107-108, ¶118-119, ¶134-135). The complaint also pleads contributory infringement for the ’910, ’617, ’547, ’968, and ’422 patents, alleging the accused features are not staple articles of commerce and are especially made or adapted for infringing use. (e.g., Compl. ¶42-45).
- Willful Infringement: The complaint does not contain an explicit count for willful infringement. However, it requests enhanced damages under 35 U.S.C. § 284. (Compl. p. 37, ¶d). For each patent, the complaint alleges that Defendant has had knowledge of the patent "Since at least as early as the filing of this Complaint," establishing a basis for alleging only post-suit willful infringement. (e.g., Compl. ¶37, ¶52, ¶67).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "digital camera," rooted in patent specifications and figures that depict a self-contained apparatus, be construed to cover the distributed system of a local device (e.g., an iPhone) and a remote cloud service (e.g., iCloud)? The outcome of this question will be pivotal for the infringement analysis of three of the asserted patents.
- A second central question will concern infringement by integration: the lawsuit targets a wide array of distinct software features implemented across Defendant's product ecosystem. The case will test whether Plaintiff's portfolio, comprising patents on disparate technologies, can be successfully asserted against integrated software functionalities that were developed years after the patents' priority dates.
- A key evidentiary question will be one of technical mapping: for several asserted claims, such as the "capacity indicator" in the '617 patent and the "abnormal manner" of key operation in the '784 patent, the litigation will likely focus on whether the accused product features perform the specific functions required by the claims, or if there is a fundamental mismatch in technical operation.