DCT
9:22-cv-80617
Voltstar Tech Inc v. Publix Super Markets Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Voltstar Technologies, Inc. (Illinois)
- Defendant: Publix Super Markets, Inc. (Florida)
- Plaintiff’s Counsel: Sriplaw PLLC
- Case Identification: 9:22-cv-80617, S.D. Fla., 04/21/2022
- Venue Allegations: Plaintiff alleges venue is proper because Defendant has a regular and established place of business in the district and committed acts of infringement there, including the sale of the accused product at a specific store location in Boca Raton, Florida.
- Core Dispute: Plaintiff alleges that Defendant’s "iessentials USB Car & Wall Charger" infringes a patent related to the mechanical design and compact dimensions of AC/DC power adapters.
- Technical Context: The technology concerns the design of small, wall-pluggable power adapters for consumer electronics, a market where compact size and non-interference with adjacent outlets are significant competitive features.
- Key Procedural History: The patent-in-suit, RE48,794, is a reissue of U.S. Patent No. 9,024,581. During reissue, Claim 1 was amended to narrow its scope, changing a dimensional limitation for the charger's longitudinal length from "equal to or less than 2.0 inches" to "less than 2.0 inches" and adding a new limitation that the "width of the housing outer profile being less than 1.75 inches." This amendment may create a basis for arguments related to prosecution history estoppel, potentially limiting the scope of equivalents for the amended terms.
Case Timeline
| Date | Event |
|---|---|
| 2008-05-21 | Patent Priority Date (U.S. Pat. No. 9,024,581) |
| 2015-05-05 | U.S. Patent No. 9,024,581 Issued |
| 2021-10-26 | U.S. Reissue Patent No. RE48,794 E Issued |
| 2022-04-03 | Accused Product Purchased by Plaintiff |
| 2022-04-21 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Reissue Patent No. RE48,794 E - Charger Plug With Improved Package, Issued October 26, 2021
The Invention Explained
- Problem Addressed: The patent describes issues with prior art power adapters, which were often bulky. This bulkiness could cause the plug to block adjacent outlets on a power strip or wall receptacle, and their length could make them protrude inconveniently from the wall (RE48,794 E, col. 1:42-58). The background also identifies the manufacturing process of insert-molding electrical blades into a plastic housing and then soldering connections as being costly, time-consuming, and prone to error (RE48,794 E, col. 2:1-20).
- The Patented Solution: The invention proposes a charger with a more compact physical package and a simplified assembly method. The design uses a two-part (e.g., clamshell) housing that receives electrical blades without insert molding (RE48,794 E, col. 3:14-28). Instead of soldering, the blades are connected to the internal printed circuit board (PCB) via pressure-based spring contacts (RE48,794 E, col. 3:21-28). This construction, as illustrated in the exploded view of Figure 2B, is intended to reduce manufacturing complexity and enable a smaller final product (RE48,794 E, col. 4:8-12).
- Technical Importance: This approach claims to improve manufacturability while achieving specific dimensional goals for the charger's housing, making it less likely to interfere with adjacent outlets or protrude excessively from a wall (RE48,794 E, col. 12:10-15).
Key Claims at a Glance
- The complaint asserts infringement of at least Claim 1 (Compl. ¶23).
- Independent Claim 1 of the ’794 Patent recites the following essential elements for a charger plug:
- A housing containing a DC connector and aperture for a power cord.
- First and second separate blade members with prong portions to be received in a power source.
- The housing having a specific size:
- a longitudinal length of less than 2.0 inches, and
- a width of the housing outer profile of less than 1.75 inches.
- The housing's outer profile having no interference with an adjacent receptacle.
- The configuration allowing for convenient mounting and removal of the power cord while the charger remains plugged in.
III. The Accused Instrumentality
Product Identification
The accused product is the "iessentials USB Car & Wall Charger" (Compl. ¶14).
Functionality and Market Context
The complaint alleges the accused product is a power adapter that connects between an AC power source, like a wall outlet, and a device to be charged, such as a mobile phone (Compl. ¶15). The complaint includes a photograph of the accused product, a compact black plastic wall adapter with two prongs and a USB port. This photograph shows the accused "iessentials USB Wall Charger" (Compl. p. 5). The complaint alleges the product employs a "reduced plug-size" design which ensures it "does not block or interfere with the use of adjacent outlets" (Compl. ¶16). It is further alleged that the product's size and shape allow for easy insertion and removal of a power cord while the charger is plugged into the wall (Compl. ¶17).
IV. Analysis of Infringement Allegations
The complaint references a claim chart in "Exhibit 2" which was not provided with the filing (Compl. ¶18, 23). However, the body of the complaint contains narrative allegations mapping the accused product to the elements of Claim 1.
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a charger plug... being electrically connectable to a rechargeable electronic device via a power cord | The "iessentials USB Wall charger" is for connecting between an AC power source and a device such as a mobile phone to be charged. | ¶15 | col. 13:18-24 |
| first and second separate blade members secured within the housing so as to have prong portions... adapted to be received in the receptacle openings of the power source | The accused product has two prongs for insertion into a wall outlet. The complaint provides a photograph of the accused product showing these prongs. | ¶16; p. 5 | col. 13:26-31 |
| i) being sized so that the charger plug housing comprises a longitudinal length extending between the front wall and the rear end and the longitudinal length is less than 2.0 inches, a width of the housing outer profile being less than 1.75 inches | The "iessentials USB Wall Charger has a longitudinal length less than 2 inches, approximately 1.077 inches, and a width of less than 1.75 inches, approximately 1.343 inches." | ¶20 | col. 13:46-col. 14:3 |
| ii) the outer profile having no interference with an adjacent receptacle of the power source | The accused product "does not block or interfere with the use of adjacent outlets." | ¶16 | col. 14:4-9 |
| so that when space is limited... the power cord plug end may be conveniently received by the DC connector and the power cord plug end can be conveniently removed... while leaving the charger plug connected to the receptacle | "the size and shape of the iessentials USB Wall Charger are such that a power cord for the device to be charged may be easily inserted into and removed from the iessentials USB Wall Charger while the charger is plugged into the source of AC power..." | ¶17 | col. 14:10-18 |
Identified Points of Contention
- Scope Questions: A central question may be the proper method for measuring the "longitudinal length" and "width of the housing outer profile." The defense could challenge the measurement points used by the plaintiff to arrive at the alleged dimensions of 1.077 and 1.343 inches.
- Technical Questions: The complaint makes a conclusory statement that the product causes "no interference with an adjacent receptacle" (Compl. ¶16). The determination of infringement for this limitation may depend on evidence regarding the product's dimensions relative to standard NEMA outlet spacing and the size of standard adjacent plugs.
V. Key Claim Terms for Construction
- The Term: "outer profile"
- Context and Importance: This term is critical to the infringement analysis for Claim 1, as the specific numerical limitation "less than 1.75 inches" is applied to the width of this "outer profile." The outcome of the case could depend on whether the measured width of the accused product falls inside or outside this limit, which in turn depends on how the profile is defined. Practitioners may focus on this term because its definition dictates the precise points of measurement on the charger's housing.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent uses the term generally without providing an explicit definition, which may support an argument for its plain and ordinary meaning, potentially encompassing the maximum width of the housing at any point along its length. The claim refers to the profile of the "housing" as a whole (RE48,794 E, col. 14:1), which could suggest an all-encompassing measurement.
- Evidence for a Narrower Interpretation: The figures, such as the perspective views in Fig. 1 and Fig. 2A, show a housing with a main body and potentially radiused or tapered edges. A party could argue that "outer profile" refers to the primary body contours and excludes minor protrusions or the curvature of the corners, which could result in a smaller measured width. The patent’s emphasis on non-interference with adjacent outlets (RE48,794 E, col. 12:10-15) might be used to argue the "profile" should be interpreted in a functional way related to that objective.
VI. Other Allegations
Indirect Infringement
The complaint asserts a claim for induced infringement, alleging that Publix knowingly encouraged its customers, purchasers, and users to use the infringing products (Compl. ¶¶ 28, 31). The factual support for this claim is stated in general terms, referencing the distribution of "guidelines and instructions to third parties on how to use the '794 infringing products" without specifying the content of such instructions (Compl. ¶31).
Willful Infringement
The complaint's prayer for relief seeks a determination of willful infringement and enhanced damages (Prayer ¶C). The body of the complaint does not allege any specific facts indicating Defendant had pre-suit knowledge of the ’794 Patent or its predecessor. The allegation of willfulness appears to be based on continued infringement after the filing of the lawsuit.
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this dispute will likely center on the following questions:
- A core issue will be one of claim construction and measurement: How is the "width of the housing outer profile" to be construed and measured under Claim 1? The case may turn on whether the accused product's dimensions, when measured according to the court's definition of that term, meet the "less than 1.75 inches" limitation.
- A key evidentiary question will be one of factual proof: Assuming a claim construction is established, can Plaintiff provide sufficient evidence to prove that the accused product's specific dimensions and functional characteristics, such as its alleged "no interference with an adjacent receptacle," literally meet the limitations as claimed?
- A significant procedural question will be the impact of the reissue: How will the narrowing amendments made during the reissue of the '581 patent into the '794 patent affect the litigation? This history may give rise to a defense of prosecution history estoppel, which could prevent the Plaintiff from recapturing, through the doctrine of equivalents, any subject matter that was surrendered to obtain the patent.