DCT
1:22-cv-06661
Waverly Licensing LLC v. VisionTek Products LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Waverly Licensing LLC (Texas)
- Defendant: VisionTek Products LLC (Illinois)
- Plaintiff’s Counsel: Direction IP Law; Garteiser Honea, PLLC
- Case Identification: 1:22-cv-06661, N.D. Ill., 11/29/2022
- Venue Allegations: Plaintiff alleges venue is proper in the Northern District of Illinois because Defendant is an Illinois corporation with a place of business in the district, where it retains employees, generates substantial revenue, and conducts business.
- Core Dispute: Plaintiff alleges that Defendant’s USB-C power adapters infringe a patent related to methods and systems for charging battery-operated devices by authenticating authorized chargers.
- Technical Context: The technology concerns power management protocols for electronic devices, where a device verifies a charger's identity or capabilities against a list of approved parameters before accepting a charge.
- Key Procedural History: The complaint notes that the asserted patent claims priority back to a 2009 provisional application and has been cited in 355 subsequent patents issued to various technology companies.
Case Timeline
| Date | Event |
|---|---|
| 2009-12-25 | Earliest Priority Date for U.S. Patent 10,938,246 |
| 2021-03-02 | Issue Date of U.S. Patent 10,938,246 |
| 2022-11-29 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,938,246 - “Method and Apparatus for Charging a Battery-Operated Device”
- Patent Identification: U.S. Patent No. 10,938,246 (“the ’246 Patent”), issued March 2, 2021.
The Invention Explained
- Problem Addressed: While the patent background discusses the limitations of different wireless power technologies, the claimed invention addresses the problem of ensuring a battery-operated device is charged only by an appropriate or authorized power source (’246 Patent, col. 4:15-24; Abstract).
- The Patented Solution: The invention describes a battery-operated device that receives a "charger identification" from a connected charger and checks it against an internal "list of charger identifications." If the received identification is on the list, the device proceeds to accept energy from the charger to power its circuitry and charge its battery. This acts as a gatekeeping function to control which chargers can supply power to the device (’246 Patent, Abstract; col. 33:46-34:23).
- Technical Importance: This verification process provides a layer of security and compatibility, which can prevent damage from unauthorized or incompatible chargers and ensure optimal charging performance (’246 Patent, col. 13:5-24).
Key Claims at a Glance
- The complaint asserts independent claims 1 (apparatus) and 11 (method) (’246 Patent, col. 33:46-34:23, col. 35:41-36:20; Compl. ¶28). The elements of independent claim 1 are:
- 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 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 determining that the charger identification is in the list of charger identifications:
- receive the energy from the charger;
- generate, using the converter, the power from the energy received from the charger;
- charge the battery using the power received from the converter; and
- use the battery to power the electronic circuitry.
III. The Accused Instrumentality
Product Identification
- The "VisionTek 20W USB-C Power Adapter" and any related platforms (collectively, the "Accused Instrumentalities") (Compl. ¶19).
Functionality and Market Context
- The Accused Instrumentalities are wall chargers that provide up to 20 watts of power via a USB-C connection (Compl. ¶19). The complaint alleges they operate in compliance with the USB Power Delivery (PD) 3.0 standard, which includes features like Programmable Power Supply (PPS) and is backward compatible with USB PD 2.0 (Compl. ¶22). The complaint provides a screenshot of the accused product, which lists "Fast Charge PD 3.0" as a feature (Compl. p. 5). The core of the infringement theory rests on the allegation that the negotiation protocol inherent in the USB PD standard, where a power source and a sink device exchange capability information, constitutes the claimed method of verifying a charger's identity (Compl. ¶23).
IV. Analysis of Infringement Allegations
10,938,246 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a battery-operated device comprising: a battery; an electronic circuitry configured to be powered by the battery; and a converter... | An exemplary device, such as a smartphone, contains a battery, electronic circuitry (e.g., for a display), and a converter to transform received USB power for battery charging (Compl. ¶¶20-21). The complaint includes a third-party diagram illustrating the internal components of a smartphone, including the battery (Compl. p. 6). | ¶20, ¶21 | col. 33:47-53 |
| the battery-operated device configured to: receive a charger identification from a charger; | The device (e.g., smartphone) receives messages from the charger according to the USB PD standard (Compl. ¶28(iii)). The complaint alleges the "charger identification" is the "specification revision value and capabilities of the charger as indicated in the Source_Capabilities message" (Compl. ¶28(v)). The complaint provides an excerpt from the USB PD specification showing the "Specification Revision" field in a message header (Compl. p. 9). | ¶28(iv), ¶28(v) | col. 34:1-2 |
| determine whether the charger identification is in a list of charger identifications belonging to the plurality of authorized chargers; | The device determines whether the received "specification revision value and capabilities" from the charger's Source_Capabilities message is on a list of such values "supported by the smartphone" (Compl. ¶28(v)). The complaint presents a table illustrating different USB PD versions and their supported features, implying this forms the basis for the "list" (Compl. p. 8). |
¶28(v), ¶28(vi) | col. 34:3-6 |
| in response to determining that the charger identification is in the list... receive the energy from the charger... [and] charge the battery... | If the charger's capabilities and revision value are supported, the device establishes a power contract and receives energy to charge its battery (Compl. ¶28(vii)). If the charger is not supported (e.g., it uses an older, incompatible PD version), the complaint alleges the "smartphone will not consider the charger as an authorized charger" and communication fails, preventing charging at negotiated levels (Compl. ¶28(vi)). The complaint includes a block diagram illustrating the USB host-device connection through which energy is transferred (Compl. p. 8). | ¶28(vi), ¶28(vii) | col. 34:7-17 |
Identified Points of Contention
- Scope Questions: A central question for the court will be whether the patent's concept of a "charger identification" and a "list of charger identifications" can be interpreted to cover the negotiation of technical capabilities and protocol versions under the public USB PD standard. The defense may argue the patent contemplates a proprietary security or authentication system, not a public compatibility standard.
- Technical Questions: The analysis will likely focus on the functional difference between "authorization" and "compatibility." What evidence does the complaint provide that the USB PD handshake performs the specific function of verifying an "authorized" charger, as the patent claims require, rather than simply negotiating a compatible power profile between two compliant devices?
V. Key Claim Terms for Construction
The Term: "charger identification"
Context and Importance: This term's definition is critical. The infringement case hinges on whether a standard-based capabilities message (from the USB PD protocol) qualifies as a "charger identification." Practitioners may focus on this term because its construction will likely determine whether a public standard can infringe a patent that appears to describe a proprietary verification system.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The body of Claim 1 itself does not define the format of the "identification," which could support an argument that any data set used to approve a charger falls within its scope (’246 Patent, col. 34:1-2).
- Evidence for a Narrower Interpretation: The specification provides examples of identifying information such as a "MAC ID, network Internet protocol (IP) address, name, serial number, product name and manufacturer, capabilities, etc." (’246 Patent, col. 4:10-14). This list suggests the term refers to a unique identifier, not just a generic capability profile shared by all chargers of a certain type. The patent consistently refers to "authorized" chargers, which may imply a security or gatekeeping function beyond simple technical compatibility.
The Term: "list of charger identifications"
Context and Importance: The meaning of "list" is dependent on the construction of "charger identification." The dispute will center on whether a set of logical rules for checking compatibility with a technical standard constitutes the claimed "list."
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term "list" is not explicitly defined, which may allow for a functional interpretation where any data structure or set of rules that performs the checking function qualifies (’246 Patent, col. 34:3-6). The complaint alleges this is the set of "specification revision values and source capabilities supported by the smartphone" (Compl. ¶28(v)).
- Evidence for a Narrower Interpretation: The specification refers to an "authorized master's list stored on the slave" and a "slave information database," which suggests a stored data table of pre-approved identifiers rather than a set of abstract compatibility rules (’246 Patent, col. 4:19-20; col. 12:35-40).
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement, asserting that Defendant, with knowledge of the patent from this lawsuit, continues to sell the accused products and advertises them for an infringing use (Compl. ¶¶33, 36).
- Willful Infringement: The complaint alleges willfulness based on both post-suit and pre-suit conduct. It alleges that infringement will be willful from the date of service of the complaint (Compl. ¶32) and also alleges pre-suit willful blindness, based on Defendant's alleged "practice of not performing a review of the patent rights of others" before launching products (Compl. ¶37).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "charger identification," which the patent specification links to unique identifiers like a MAC address or serial number, be construed to cover the standardized capability and protocol-version messages exchanged as part of the public USB Power Delivery standard?
- A key evidentiary question will be one of functional purpose: does the accused product's use of the USB PD negotiation protocol perform the function of verifying an "authorized" charger as contemplated by the patent, or is it merely a technical "compatibility" check that falls outside the claimed invention's scope?