DCT
1:15-cv-00146
Uusi LLC v. Samsung Electronics Co Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: UUSI, LLC D/B/A NARTRON (Michigan)
- Defendant: Samsung Electronics Co., Ltd. (South Korea); Samsung Electronics America, Inc. (New York)
- Plaintiff’s Counsel: Smith Haughey Rice & Roegge
- Case Identification: 1:15-cv-00146, W.D. Mich., 02/13/2015
- Venue Allegations: Venue is alleged to be proper in the Western District of Michigan because Samsung transacts business, commits acts of patent infringement, and a substantial part of the events giving rise to the claims occurred in the district.
- Core Dispute: Plaintiff alleges that Defendant’s tablet computing products, which incorporate capacitive touchscreens, infringe a patent related to electronic switching circuits that improve touchscreen reliability.
- Technical Context: The lawsuit concerns the fundamental technology of capacitive touchscreens, which detect a user's touch by sensing changes in electrical capacitance and are a core component of modern tablets and smartphones.
- Key Procedural History: The patent-in-suit was subject to two ex parte reexaminations at the USPTO, which resulted in the issuance of a first Reexamination Certificate on April 29, 2013, and a second Reexamination Certificate on June 27, 2014. Claims that survive reexamination are generally considered to have a strengthened presumption of validity.
Case Timeline
| Date | Event |
|---|---|
| 1996-01-31 | U.S. Patent No. 5,796,183 Priority Date |
| 1998-08-18 | U.S. Patent No. 5,796,183 Issue Date |
| 2013-04-29 | First Reexamination Certificate (’183 C1) Issued |
| 2014-06-27 | Second Reexamination Certificate (’183 C2) Issued |
| 2015-02-13 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 5,796,183 - "Capacitive Responsive Electronic Switching Circuit"
- Patent Identification: U.S. Patent No. 5,796,183, "Capacitive Responsive Electronic Switching Circuit," issued August 18, 1998 (the "’183 Patent"). The complaint asserts claims from the first and second reexamination certificates (’183 C1 and ’183 C2).
The Invention Explained
- Problem Addressed: The patent’s background section describes problems with prior art touch switches, particularly their susceptibility to false activations caused by surface contaminants like moisture or skin oils. Such contaminants can form a conductive film that "capacitively couple[s] adjacent or multiple touch pads," leading to erroneous inputs. (’183 Patent, col. 4:15-24).
- The Patented Solution: The invention proposes operating the capacitive sensing circuit at a high frequency, such as 50 kHz or greater. At these high frequencies, the electrical impedance of the glass dielectric layer drops significantly, while the impedance of water-based contaminants (which is primarily resistive) remains high. This creates a large, detectable difference between the impedance path of a genuine user touch and an incidental path created by contamination, thereby reducing crosstalk and improving reliability. (’183 Patent, Abstract; col. 8:30-34; col. 11:1-12).
- Technical Importance: This high-frequency approach provided a method to improve the robustness and reliability of capacitive touch sensors, a key challenge for their use in dense arrays like keyboards or in devices used in varied environmental conditions. (’183 Patent, col. 5:44-54).
Key Claims at a Glance
- The complaint alleges infringement of claims from the ’183 C1 and ’183 C2 certificates without specifying particular claims (Compl. ¶14). Reexamined claim 40, added by the ’183 C2 certificate, is a representative independent apparatus claim.
- The essential elements of independent claim 40 include:
- An oscillator providing a periodic output signal.
- A microcontroller that uses the signal from the oscillator to selectively provide signal output frequencies to a plurality of input touch terminals of a keypad.
- The plurality of input touch terminals defining adjacent areas on a dielectric substrate.
- A detector circuit, responsive to signals from the oscillator via the microcontroller and the presence of an operator's body capacitance, to provide a control output signal.
- Wherein the oscillator frequency and signal output frequencies are selected to decrease the impedance of the dielectric substrate relative to the impedance of any contaminant.
- The complaint does not explicitly reserve the right to assert dependent claims, but such a reservation is implied by the general nature of the allegations.
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are a range of Samsung tablet products, including the Galaxy Tab S, Galaxy Tab 4, Galaxy Note, Galaxy Tab 4 NOOK, Galaxy Tab 2, and Galaxy Note Pro series (collectively, "the accused Samsung tablet products") (Compl. ¶14).
Functionality and Market Context
- The complaint alleges that the accused products incorporate either a "Melfas-200 or Atmel MXT1168 touchscreen controller" (Compl. ¶15).
- This controller is alleged to take a periodic signal from an oscillator and selectively provide it to input touch terminals on the touchscreen. A "detector circuit" is alleged to respond to these signals and a user's touch (via body capacitance) to generate a control output signal (Compl. ¶15).
- Crucially, the complaint alleges that the accused products "use input and output frequencies such that the change in impedance caused by the user's touch differs from any change in impedance that may create an electrical path caused by contaminates on the substrate" (Compl. ¶15).
- The complaint positions Samsung as a "global company that makes and sells tablet computing products" throughout the United States (Compl. ¶4).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
The complaint provides a narrative infringement theory but does not include a claim chart. The following table summarizes the allegations in paragraph 15 of the complaint as they map to the elements of representative claim 40 of the ’183 C2 Patent.
’183 Patent Infringement Allegations
| Claim Element (from Independent Claim 40) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an oscillator providing a periodic output signal having a predefined frequency; | The accused products' touchscreen controller "takes a periodic signal from an oscillator with a pre-defined frequency..." | ¶15 | col. 5:62-64 |
| a microcontroller using the periodic output signal from the oscillator, the microcontroller selectively providing signal output frequencies to a plurality of small sized input touch terminals of a keypad... | The "Melfas-200 or Atmel MXT1168 touchscreen controller... selectively provides a signal output frequency to each row of input touch terminals." | ¶15 | col. 18:43-49 |
| the plurality of small sized input touch terminals defining adjacent areas on a dielectric substrate for an operator to provide inputs by proximity and touch; and | "On the touchscreen, the input touch terminals define adjacent areas on a substrate for a user to provide inputs." | ¶15 | col. 5:64-66 |
| a detector circuit coupled to said oscillator for receiving said periodic output signal... and coupled to said input touch terminals... being responsive to signals from said oscillator via said microcontroller and a presence of an operator's body capacitance to ground... to provide a control output signal... | "When touched by an operator, a detector circuit within the accused Samsung tablet products responds to signals from the oscillator through the touchscreen controller and the presence of a user's body capacitance to ground to provide a control output signal." | ¶15 | col. 6:1-4 |
| wherein said predefined frequency of said oscillator and said signal output frequencies are selected to decrease a first impedance of said dielectric substrate relative to a second impedance of any contaminate that may create an electrical path on said dielectric substrate between said adjacent areas... | The accused products "use input and output frequencies such that the change in impedance caused by the user's touch differs from any change in impedance that may create an electrical path caused by contaminates on the substrate." | ¶15 | col. 11:1-12 |
- Identified Points of Contention:
- Technical Questions: A primary question for the court will be an evidentiary one: what proof exists that the accused Melfas and Atmel controllers operate as alleged? The complaint's allegation that the operating frequencies are specifically chosen to mitigate contamination by creating an impedance differential is a technical assertion that will require factual support, such as through product testing or technical documentation.
- Scope Questions: The infringement analysis may raise the question of whether the functionality of the accused off-the-shelf controllers, designed for general-purpose touch sensing, falls within the scope of the patent's claims, which describe a specific solution to the problem of contaminant-based crosstalk.
V. Key Claim Terms for Construction
- The Term: "selected to decrease a first impedance of said dielectric substrate relative to a second impedance of any contaminate"
- Context and Importance: This limitation appears to be the central inventive concept and the primary basis for distinguishing the patent from prior art. The outcome of the infringement analysis will depend heavily on whether this phrase is interpreted to require a specific design intent or is met by any system that inherently produces the described effect.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue that the claim language is purely functional. Any system that uses frequencies that have the effect of creating the specified impedance differential would infringe, regardless of the designer's stated purpose. The claim recites a result, not the intent behind achieving it.
- Evidence for a Narrower Interpretation: Practitioners may focus on this term because the specification provides a detailed technical rationale for choosing high frequencies, including calculations comparing the impedance of glass to that of water ( Compl. ¶15; ’183 Patent, col. 8:30-34, col. 10:55-col. 11:12). A party could argue this context limits the claim to systems where the frequency was chosen for the explicit purpose of mitigating contaminant-based crosstalk, as opposed to systems where high-frequency operation was chosen for other reasons (e.g., faster response time) and the anti-contaminant effect is merely incidental.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement, stating that Samsung's website, online user manuals, and marketing materials actively encourage customers to use the accused tablets in an infringing manner (Compl. ¶18). It also alleges contributory infringement, asserting that the accused products are a material part of the invention and are not staple articles of commerce suitable for substantial non-infringing use (Compl. ¶19).
- Willful Infringement: The complaint does not use the term "willful," but it alleges that "Samsung has written notice of its infringement at least by virtue of the filing and service of this Complaint" (Compl. ¶20). This allegation may serve as a basis for seeking enhanced damages for any infringement that occurs after Samsung was served with the complaint.
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of evidentiary proof: can the Plaintiff demonstrate that the accused Samsung products, which use commercial off-the-shelf controllers, actually implement the specific contaminant-rejection technology described in the ’183 patent? This includes proving that the operating frequencies are selected for the purpose recited in the claims.
- The case will likely also turn on a question of claim scope: does the limitation "selected to decrease" require proof of a specific design choice aimed at solving the contaminant problem detailed in the patent, or is the claim met if an accused device simply operates at a high frequency that inherently results in the claimed impedance differential?