DCT
2:23-cv-10561
BMW Of North America LLC v. Scramoge Technology Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: BMW of North America, LLC (Delaware)
- Defendant: Scramoge Technology Ltd. (Ireland)
- Plaintiff’s Counsel: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP; Tealstone Law, PLC
- Case Identification: 2:23-cv-10561, E.D. Mich., 03/09/2023
- Venue Allegations: Plaintiff asserts venue is proper in the Eastern District of Michigan because Defendant is subject to personal jurisdiction there, having previously filed suit in the district to enforce the same patents against other, unrelated parties.
- Core Dispute: Plaintiff seeks a declaratory judgment that its automobiles equipped with wireless chargers do not infringe four patents owned by Defendant related to wireless power transmission technology.
- Technical Context: The patents-in-suit relate to the design and operation of wireless charging systems, a technology increasingly integrated into vehicles for charging consumer electronic devices.
- Key Procedural History: This declaratory judgment action was filed by BMW of North America, LLC (BMW NA) in Michigan after its German parent company, Bayerische Motoren Werke AG (BMW AG), was sued for infringement of the same four patents in the Eastern District of Texas. BMW NA, the U.S. importer and distributor, argues that it is the proper party for any infringement actions in the United States, not BMW AG. Defendant Scramoge has also previously sued other automotive companies on the same patents in the Eastern District of Michigan. All patents were acquired by Scramoge from their original assignees, LG Innotek Co., Ltd. and Harris Corporation. Subsequent to the filing of this complaint, all claims of the '392 patent were cancelled in an inter partes review proceeding (IPR2022-00529), with a certificate issued on December 1, 2023.
Case Timeline
| Date | Event |
|---|---|
| 2008-11-14 | '537 Patent Priority Date |
| 2010-11-02 | '537 Patent Issue Date |
| 2014-01-08 | '392 Patent Priority Date |
| 2014-04-03 | '685 Patent Priority Date |
| 2015-12-03 | '400 Patent Priority Date |
| 2019-01-29 | '392 Patent Issue Date |
| 2019-03-26 | '400 Patent Issue Date |
| 2020-01-28 | '685 Patent Issue Date |
| 2021-02-02 | Scramoge acquires '685, '392, and '400 patents from LG Innotek |
| 2021-09-28 | Scramoge acquires '537 patent from Harris Global Communications |
| 2022-12-14 | Scramoge sues BMW AG in the Eastern District of Texas |
| 2023-03-09 | BMW NA files this Declaratory Judgment action in E.D. Michigan |
| 2023-12-01 | All claims of '392 Patent cancelled via Inter Partes Review |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,546,685 - "WIRELESS POWER TRANSMITTING APPARATUS," issued January 28, 2020
The Invention Explained
- Problem Addressed: The patent seeks to increase the efficiency of power transmission and reception in multi-coil wireless charging systems by minimizing power loss between the transmitting apparatus and the receiving apparatus ('685 Patent, col. 1:43-47).
- The Patented Solution: The invention describes a specific physical structure for the soft magnetic substrate that holds the transmitting coils. This substrate features a groove with a wall surrounding the coils and precisely shaped protrusions with stepped portions that are configured to support and position a multi-coil array, thereby optimizing the magnetic flux path and improving durability ('685 Patent, Abstract; col. 6:36-62).
- Technical Importance: The geometric arrangement of coils and their underlying substrate is a critical factor in managing magnetic flux, reducing energy loss, and ensuring reliable performance in compact wireless chargers, particularly in the automotive environment.
Key Claims at a Glance
- The complaint asserts non-infringement of claims 1-18, with independent claims 1, 7, and 13 being representative (Compl. ¶16, 45).
- Independent Claim 1: An apparatus comprising: a first, second, and third transmitting coil; and a substrate to accommodate the coils, wherein the substrate comprises a wall, a first protrusion, and a second protrusion, and wherein the first and second protrusions each comprise a "stepped portion to support the third transmitting coil."
- Independent Claim 7: An apparatus comprising: a first, second, and third transmitting coil; and a substrate to accommodate the coils, wherein the substrate comprises a first and second protrusion, and wherein the third coil is disposed between them, with each protrusion comprising a "stepped portion to support the third transmitting coil."
- Independent Claim 13: An apparatus comprising: a first, second, and third transmitting coil; and a substrate to accommodate them, wherein the substrate has first and second protrusions, each with a "first stepped portion to support the third transmitting coil."
U.S. Patent No. 10,193,392 - "WIRELESS POWER TRANSFER DEVICE AND WIRELESS POWER TRANSFER SYSTEM," issued January 29, 2019
The Invention Explained
- Problem Addressed: Wireless power transmitters can generate unwanted harmonic components (spurious waves) that cause electromagnetic interference (EMI) with surrounding electronics and have a harmful effect on the human body ('392 Patent, col. 1:49-59). Conventional transmitters using a simple square wave output are particularly prone to high harmonic distortion ('392 Patent, col. 2:27-38).
- The Patented Solution: The invention uses a power conversion part with a full bridge inverter controlled by Pulse Width Modulation (PWM) signals. By controlling the PWM duty ratio based on feedback, the system can approximate a sine wave output, which minimizes the magnitude of harmonic components relative to the fundamental frequency and improves the harmonic distortion ratio ('392 Patent, Abstract; col. 3:1-9, col. 4:56-65).
- Technical Importance: Minimizing EMI is critical for regulatory compliance and operational safety in modern vehicles, which contain numerous sensitive electronic systems that could be disrupted by stray emissions from a wireless charger.
Key Claims at a Glance
- The complaint asserts non-infringement of claims 1-8, with independent claim 1 being representative (Compl. ¶20, 50-53). As noted, all claims of this patent were cancelled via IPR subsequent to the complaint's filing.
- Independent Claim 1: A transmitter with a power conversion part comprising four switching elements, where:
- when the first and fourth switching elements are turned on...the positive polarity output voltage is generated,
- when the second and third switching elements are turned on...the negative polarity output voltage is generated,
- a duty ratio of the positive polarity output voltage is determined by a falling time of the fourth AC power control signal, and
- a duty ratio of the negative polarity output voltage is determined by a falling time of the third AC power control signal.
U.S. Patent No. 7,825,537 - "INDUCTIVE POWER TRANSFER SYSTEM AND METHOD," issued November 2, 2010
- Technology Synopsis: The patent describes a method for improving the efficiency of an inductive power transfer system. The system's base unit monitors a parameter indicative of power transfer efficiency and, in response, automatically adjusts at least one characteristic of the time-varying electric current (such as operating frequency) to maximize that efficiency ('537 Patent, Abstract).
- Asserted Claims: The complaint indicates that independent claims 1, 12, 23, and 28 are at issue (Compl. ¶24).
- Accused Features: The accused functionality is the system's alleged ability to "automatically adjusting at least one characteristic of said time varying electric current responsive to said parameter to maximize efficiency of power transfer" (Compl. ¶58).
U.S. Patent No. 10,243,400 - "WIRELESS POWER TRANSMITTER," issued March 26, 2019
- Technology Synopsis: The patent discloses a wireless power transmitter designed to improve transfer efficiency by increasing the thickness and reducing the resistance of the transmission coils. The invention achieves this through a specific structural arrangement where multiple transmission coils are attached to opposite sides of a Printed Circuit Board (PCB), with at least one coil on each side, to form a layered assembly ('400 Patent, Abstract).
- Asserted Claims: The complaint indicates that independent claims 1, 10, and 18 are at issue (Compl. ¶28).
- Accused Features: The non-infringement allegation centers on the physical construction of the transmitter, specifically that the accused products do not include "a Printed Circuit Board (PCB)" as required by the claims (Compl. ¶66).
III. The Accused Instrumentality
- Product Identification: The accused instrumentalities are "certain automobiles with a wireless charger," including specific BMW wireless charging tray models (WCH-184a, WCH-189, and WCH-189a) installed in various vehicle series such as the BMW 5, 6, X5, X7, and M3 series (Compl. ¶35, 36, 40).
- Functionality and Market Context: The complaint, being a declaratory judgment action for non-infringement, does not affirmatively describe the products' functionality. Instead, it systematically denies that the accused wireless chargers possess the specific structural and functional features recited in the asserted patents (Compl. ¶45, 50-53, 58, 66). Plaintiff BMW NA is the exclusive U.S. importer and distributor for BMW-brand vehicles and has sold the accused products in the United States (Compl. ¶5, 41).
- Visual Evidence: No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
'685 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a substrate to accommodate the first transmitting coil, the second transmitting coil, and the third transmitting coil | Plaintiff denies its products include the claimed substrate configuration. | ¶45 | col. 10:11-14 |
| wherein the first protrusion comprises a first stepped portion to support the third transmitting coil, and | Plaintiff states on information and belief that its products do not include a substrate with the claimed first and second protrusions. | ¶45 | col. 10:30-32 |
| wherein the second protrusion comprises a second stepped portion to support the third transmitting coil. | As above, Plaintiff denies the presence of protrusions with the claimed "stepped portion" structure. | ¶45 | col. 10:33-35 |
- Identified Points of Contention:
- Scope Questions: A primary dispute will be the interpretation of the terms "protrusion" and "stepped portion." The case will question whether any raised or supporting structures within the BMW charging tray meet these claim limitations, which are defined in the patent by specific geometries shown in the figures ('685 Patent, Fig. 11).
- Technical Questions: The core factual question is what the physical construction of the accused BMW wireless charging tray's substrate actually is. This will likely be resolved through reverse engineering of the accused products and comparison against the claim language.
'392 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| wherein when the first and fourth switching elements are turned on in response to the first and fourth AC power control signals, the positive polarity output voltage is generated | Plaintiff denies its products generate a positive polarity output voltage in this specific manner. | ¶50 | col. 20:30-34 |
| and when the second and third switching elements are turned on in response to the second and third AC power control signals, the negative polarity output voltage is generated | Plaintiff denies its products generate a negative polarity output voltage in this specific manner. | ¶51 | col. 20:34-38 |
| wherein a duty ratio of the positive polarity output voltage is determined by a falling time of the fourth AC power control signal | Plaintiff denies the duty ratio of the positive voltage is determined by the falling time of the fourth control signal. | ¶52 | col. 20:39-42 |
| and wherein a duty ratio of the negative polarity output voltage is determined by a falling time of the third AC power control signal. | Plaintiff denies the duty ratio of the negative voltage is determined by the falling time of the third control signal. | ¶53 | col. 20:42-45 |
- Identified Points of Contention:
- Technical Questions: The dispute centers on the precise operational logic of the power converter in the BMW system. The key question is whether the system's PWM control scheme for generating output voltage and determining its duty cycle matches the highly specific methodology required by claim 1, particularly concerning the use of the falling times of the third and fourth control signals.
- Legal Questions: Given that all claims of the '392 patent were cancelled in an IPR proceeding after this complaint was filed, a threshold legal question is whether the controversy regarding this patent is now moot, potentially leading to dismissal of this cause of action.
V. Key Claim Terms for Construction
Term ('685 Patent): "protrusion comprises a ... stepped portion"
- Context and Importance: Plaintiff's entire non-infringement argument for the '685 Patent rests on the assertion that its products lack this specific physical feature (Compl. ¶45). The definition of this structural term is therefore dispositive for this patent.
- Intrinsic Evidence for a Broader Interpretation: The specification does not provide a formal definition, which could support an argument that the term should be given its plain and ordinary meaning, potentially encompassing any raised structure that provides support.
- Intrinsic Evidence for a Narrower Interpretation: The specification repeatedly links the invention to the embodiments shown in the figures, stating that the groove may include protrusions and walls ('685 Patent, col. 6:36-62). Figures 11 and 12 depict a very specific geometry for the protrusions (1006, 1007) and their stepped nature. A party would argue the term is limited to structures with this explicit, depicted multi-level shape.
Term ('392 Patent): "duty ratio...is determined by a falling time"
- Context and Importance: This functional limitation is one of the specific operational steps that Plaintiff denies its products perform (Compl. ¶52, 53). The interpretation of whether the "falling time" must be the exclusive or merely a contributing factor in determining the duty ratio is central to the infringement analysis.
- Intrinsic Evidence for a Broader Interpretation: The phrase "determined by" could be argued to mean "influenced by" or "related to," not necessarily "exclusively defined by," which might bring more control schemes within the claim's scope.
- Intrinsic Evidence for a Narrower Interpretation: The patent's timing diagrams (e.g., Fig. 12, 13) and detailed description show a direct causal link where the falling time of a specific control signal (e.g., Tf21, Tf22) explicitly defines the end of the power transfer interval (Ton) ('392 Patent, col. 15:5-15). This provides strong evidence for a narrow interpretation where the falling edge is the dispositive event that determines the duty ratio.
VI. Other Allegations
- Indirect Infringement: The complaint seeks a declaratory judgment of non-infringement both directly and indirectly (Compl. ¶46). It references the underlying EDTX complaint, which alleges that BMW AG induces infringement by providing customers with user manuals and instructional videos that allegedly instruct on infringing use of the accused products (Compl. ¶33, 38).
- Willful Infringement: The complaint does not contain facts or allegations related to willful infringement. The filing of the prior lawsuit in the Eastern District of Texas serves as notice of the patents to BMW, which could form the basis for a future willfulness claim by Scramoge should infringement be found.
VII. Analyst’s Conclusion: Key Questions for the Case
- Jurisdictional Priority: A threshold issue is procedural: which of the two parallel cases—Scramoge’s infringement action in the Eastern District of Texas or BMW’s declaratory judgment action in the Eastern District of Michigan—will proceed first? The resolution of this "first-to-file" dispute will determine the forum and could significantly influence the strategic direction of the litigation.
- Structural vs. Functional Infringement: The case presents two distinct types of infringement analysis. For the '685 and '400 patents, the core issue will be one of structural comparison: does the physical architecture of BMW's wireless charger, including its substrate and the arrangement of its coils, embody the specific structures claimed? For the '392 and '537 patents, the key question is one of functional operation: does the control logic of the accused device perform the exact, multi-step methods recited in the claims for managing harmonics and maximizing efficiency?
- Impact of Post-Filing Developments: A critical question for the '392 patent is one of mootness. With all asserted claims having been cancelled in an IPR proceeding that concluded after the complaint was filed, the court must decide whether a live controversy still exists for this patent, which may lead to the dismissal of the corresponding cause of action.