DCT
1:16-cv-06339
HS Asset Technology LLC v. Canon USA Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: HS Asset and Technology, LLC (Texas)
- Defendant: Canon U.S.A., Inc. (Delaware/New York) and Canon, Inc. (Japan)
- Plaintiff’s Counsel: DNL Zito
- Case Identification: 1:16-cv-06339, E.D.N.Y., 11/15/2016
- Venue Allegations: Venue is alleged to be proper based on Defendant Canon U.S.A., Inc.'s principal place of business being located within the district and because both Defendants sell the accused products within the judicial district.
- Core Dispute: Plaintiff alleges that Defendants’ digital cameras, which feature a multi-functional control ring, infringe a patent related to a switch that provides different tactile feedback for discrete versus continuous adjustments.
- Technical Context: The technology concerns the human-machine interface on complex electronic devices like digital cameras, aiming to improve usability by consolidating multiple functions into a single, intuitive physical control.
- Key Procedural History: The provided documents indicate that after this complaint was filed, inter partes review (IPR) proceedings were initiated against the patent-in-suit (IPR2018-00499 and IPR2018-00501). An IPR Certificate issued on June 5, 2020, states that all claims of the patent (Claims 1-9) have been cancelled. The cancellation of all claims subsequent to the filing of the complaint is a dispositive event for the litigation.
Case Timeline
| Date | Event |
|---|---|
| 2012-07-18 | U.S. Patent 9,264,614 Priority Date |
| 2016-02-16 | U.S. Patent 9,264,614 Issue Date |
| 2016-11-15 | Complaint Filing Date |
| 2018-01-15 | IPR Proceedings Initiated Against U.S. Patent 9,264,614 |
| 2020-06-05 | IPR Certificate Issued Cancelling All Claims (1-9) of U.S. Patent 9,264,614 |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,264,614 - Digital Camera with Rotary Switch
- Patent Identification: U.S. Patent No. 9,264,614, "Digital Camera with Rotary Switch," issued February 16, 2016.
The Invention Explained
- Problem Addressed: The patent's background section describes the challenge of controlling the numerous functions of a modern digital camera without cluttering the device with an excessive number of buttons, which can lead to "complicated operations" (’614 Patent, col. 1:39-41). It further notes that a single rotary control needs to be effective for adjusting both "discrete values" (like shutter speed) and "continuous values" (like zoom), which have different operational requirements ('614 Patent, col. 2:7-13).
- The Patented Solution: The invention is a single rotary switch that can operate in two distinct modes. A "state changing switch" toggles the rotary switch between a "restricted state" and a "non-restricted state" ('614 Patent, col. 2:35-39). In the restricted state, a mechanical "restricting member" engages with depressions on the switch, creating a "clicking feel" suitable for stepping through discrete settings like aperture values ('614 Patent, col. 5:15-34). In the non-restricted state, the member disengages, allowing for smooth, continuous rotation ideal for functions like manual focusing or zooming ('614 Patent, col. 5:10-14).
- Technical Importance: This approach allows a single physical dial to provide two different types of tactile feedback, matching the feel of the control to the type of parameter being adjusted and thereby improving usability and "ensur[ing] the compatibility between convenience and downsizing" ('614 Patent, col. 3:64-65).
Key Claims at a Glance
- The complaint asserts independent system Claim 1 (Compl. ¶9).
- The essential elements of Claim 1 include:
- A digital camera with a rotary switch, a state changing switch, and a restricting member.
- The rotary switch has "depressed portions," and the restricting member engages them to "mechanically generate a clicking feel" in a "restricted state."
- The state changing switch toggles between this restricted state and a "non-restricted state."
- In the restricted state, rotation is restricted with a click, and the switch controls a "first function" with "discrete output values" (e.g., shutter speed or aperture).
- In the non-restricted state, rotation is not restricted (no click), and the switch controls a "second function" with "continuous output values" (e.g., focusing or zoom).
- The complaint alleges infringement of "one or more of the claims" of the patent, suggesting the potential assertion of other claims, including dependent claims (Compl. ¶11).
III. The Accused Instrumentality
Product Identification
- The accused products are Canon digital cameras, with the "Canon PowerShot G7 X Mark II" being specifically identified (Compl. ¶7, 10).
Functionality and Market Context
- The complaint alleges that the accused cameras "include a rotary switch, a state changing switch and a restricting member which interact to control the functional settings of the camera in a manner claimed in the '614 patent" (Compl. ¶7, 10). The complaint does not provide further technical detail regarding the specific design or operation of these components in the accused products. No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint provides a high-level, conclusory allegation of infringement without mapping specific features of the accused product to the elements of the asserted claim. The following chart is based on the general allegations made.
’9264,614 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A digital camera, comprising: a rotary switch, a state changing switch, and a restricting member... | The complaint alleges Canon manufactures and sells digital cameras, including the PowerShot G7 X Mark II, which include a rotary switch, a state changing switch, and a restricting member. | ¶7, 10 | col. 11:3-7 |
| ...the rotary switch has a surface with a plurality of depressed portions... and the restricting member engages with the depressed portion... such that engagement and disengagement... mechanically generate a clicking feel... | The complaint alleges the interaction of the accused components controls the camera's functional settings in the manner claimed. It does not specify the mechanism that generates the clicking feel. | ¶7, 10 | col. 11:10-21 |
| ...the state changing switch is configured to switch between two states... the restricted state and a non-restricted state... | The complaint alleges the accused products include a "state changing switch" and that they operate in the claimed manner, implying the ability to switch between the two states. | ¶7, 10 | col. 11:25-30 |
| in the restricted state, the rotation... is restricted with the clicking feel, and a function of... a shutter speed and an aperture... is related to the rotating operation... | The complaint does not provide specific facts about how the accused cameras operate in a restricted state to control discrete functions. | ¶9 | col. 11:31-37 |
| in the non-restricted state, the rotation... is not restricted... and a function of... focusing, and a zoom magnification... is related to the rotating operation... | The complaint does not provide specific facts about how the accused cameras operate in a non-restricted state to control continuous functions. | ¶9 | col. 11:38-44 |
- Identified Points of Contention:
- Evidentiary Question: The complaint is devoid of technical specifics regarding the accused product's operation. A central question for the court will be what evidence the Plaintiff can produce to show that the accused Canon camera's internal control ring mechanism actually performs the specific functions recited in the claim, such as the mechanical generation of a "clicking feel" via a "restricting member" engaging "depressed portions."
- Scope Question: The infringement analysis may turn on whether the accused camera's user interface can be demonstrated to have two distinct and switchable modes of operation—one "restricted" and one "non-restricted"—that are mapped to discrete and continuous functions, respectively, as required by the claim structure.
V. Key Claim Terms for Construction
The Term: "state changing switch"
- Context and Importance: This term is critical as it defines the action or component that triggers the patented dual-mode functionality. The viability of the infringement claim depends on identifying a corresponding "switch" in the accused product. Practitioners may focus on this term because its construction will determine whether a physical button, a software menu selection, or a different physical action (like pushing the dial itself) on the accused camera meets the claim limitation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Claim 6 claims a "state changing switch" that is operated by "pressing the rotary switch into a chassis side or pulling the rotary switch." This suggests the term is not limited to a separate, dedicated button.
- Evidence for a Narrower Interpretation: The specification's primary embodiment describes a distinct, physical "selector switch 105" separate from the rotary ring itself, which is "disposed in a vicinity of the lens-barrel" ('614 Patent, col. 3:12-14, Fig. 1A). This could support an argument that the term requires a physically separate component.
The Term: "mechanically generate a clicking feel"
- Context and Importance: This term is at the heart of the invention's claimed tactile feedback. The infringement analysis will require a technical comparison between the patented mechanism and the mechanism used in the accused camera. Practitioners may focus on this term to dispute whether the accused product's haptic feedback, if any, is generated "mechanically" through the specific type of engagement and disengagement described in the patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself is functional, describing the result ("generate a clicking feel") of an action ("engagement and disengagement"). This could be argued to cover a variety of mechanical structures that achieve the same tactile result.
- Evidence for a Narrower Interpretation: The specification provides a detailed embodiment where the feel is generated by a "restricting portion 107" that is "projected by the spring 111" moving into and out of a "trough position" between "projecting portions 201" ('614 Patent, col. 5:15-34, Figs. 3A-3B). This specific structure could be used to argue for a narrower construction limited to spring-loaded detent mechanisms.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement (Compl. ¶11, 16). The factual basis alleged is general, stating that Canon induces infringement "through sales of accused products which are resold and through the sale of Accused Products which are used in an infringing manner" (Compl. ¶12). The complaint does not cite specific user manuals, marketing materials, or other evidence of intent.
- Willful Infringement: The complaint alleges that Defendant acted "with full knowledge" of Plaintiff's rights and in "disregard" of them (Compl. ¶18). It does not specify whether this knowledge was pre- or post-suit, providing a boilerplate basis for willfulness.
VII. Analyst’s Conclusion: Key Questions for the Case
- A primary issue will be one of evidentiary proof: Given the complaint's lack of specific technical mappings, the case would have turned on what evidence Plaintiff could introduce to demonstrate that the accused Canon cameras' internal mechanisms perform the specific mechanical and functional operations recited in each limitation of Claim 1.
- A dispositive question for the litigation is the effect of subsequent claim cancellation: The central issue for any observer of this case is the legal and practical consequence of the U.S. Patent and Trademark Office's cancellation of all claims of the '614 patent in an inter partes review proceeding that concluded after the complaint was filed. This event fundamentally undermines the basis for the infringement action.