DCT
1:22-cv-06599
Waverly Licensing LLC v. Phihong USA Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Waverly Licensing LLC (New York)
- Defendant: Phihong USA Corp. (California)
- Plaintiff’s Counsel: Loaknauth Law, P.C.; Garteiser Honea PLLC
- Case Identification: 1:22-cv-06599, E.D.N.Y., 10/30/2022
- Venue Allegations: Plaintiff alleges venue is proper because Defendant maintains a regular and established place of business within the Eastern District of New York.
- Core Dispute: Plaintiff alleges that Defendant’s USB-C power adapters, when used to charge a battery-operated device, infringe a patent related to a method for authenticating chargers before initiating a charge.
- Technical Context: The technology concerns power management and security protocols in battery charging, specifically methods for a device to verify that a connected power source is "authorized" before accepting energy.
- Key Procedural History: The complaint asserts that the patent-in-suit is valid and enforceable, having been duly issued by the USPTO after examination. No other significant procedural history, such as prior litigation or post-grant proceedings, is mentioned in the complaint.
Case Timeline
| Date | Event |
|---|---|
| 2009-12-25 | ’246 Patent Priority Date |
| 2021-03-02 | ’246 Patent Issue Date |
| 2022-10-30 | 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," issued March 2, 2021
The Invention Explained
- Problem Addressed: The patent describes a need for a "slave" device (e.g., a smartphone) to prevent "non-authorized masters" (i.e., chargers) from charging it or powering it up (’246 Patent, col. 3:15-20). This addresses a potential security or compatibility risk where a device could be connected to an unknown or improper power source.
- The Patented Solution: The invention is a method performed by the battery-operated device itself. The device receives an identification from a connected charger and checks that identification against a pre-stored list of "authorized" chargers. Only if the charger is on this authorized list does the device proceed to accept energy from it to charge its battery (’246 Patent, Abstract; col. 3:15-24). This acts as a gatekeeping function controlled by the device being charged.
- Technical Importance: This approach provides a device-centric security layer for battery charging, allowing the device to control which power sources it interacts with, rather than passively accepting power from any compatible source. (’246 Patent, col. 13:6-14).
Key Claims at a Glance
- The complaint asserts infringement of at least Claim 1 (Compl. ¶27).
- Independent Claim 1 (Method):
- A method of charging a battery-operated device comprising a battery, electronic circuitry, and a converter.
- The battery-operated device receives a charger identification from a charger.
- The device determines whether the charger identification is in a list of charger identifications belonging to a plurality of authorized chargers.
- In response to a positive determination, the device:
- receives energy from the charger.
- generates power from the received energy using the converter.
- charges the battery using the generated power.
- uses the battery to power the electronic circuitry.
- The complaint does not explicitly reserve the right to assert dependent claims, but the prayer for relief is for infringement of the patent generally (Compl., Prayer for Relief ¶1).
III. The Accused Instrumentality
Product Identification
- The "Accused Instrumentalities" are identified as Defendant's battery chargers and adapters, with the Phihong USA AQ18A-59CFA-H model cited as a representative example (Compl. ¶19).
Functionality and Market Context
- The accused product is described as a USB-C wall charger that is compliant with the USB Power Delivery (PD) 3.0 standard (Compl. ¶¶19, 21). A screenshot from Defendant's website shows the accused AQ18A-59CFA-H is an 18W USB PD 3.0 charger (Compl. ¶19, p. 5).
- The complaint alleges that the accused charger functions by engaging in a negotiation protocol defined by the USB PD standard when connected to a device like a smartphone or laptop (Compl. ¶22). This protocol involves the charger (the "Source Port") sending a "Source_Capabilities" message to the device (the "Sink Port"), which then responds with a power request (Compl. ¶¶8-9, pp. 8-9). The complaint provides a table comparing USB PD versions, highlighting that the accused PD 3.0 standard provides for variable voltage and is backward compatible with PD 2.0 (Compl. ¶21, p. 6).
IV. Analysis of Infringement Allegations
’246 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a method of charging a battery-operated device... | Defendant is alleged to directly infringe by making, using, and selling the Accused Instrumentalities, which practice the method when used with a device like a Macbook or smartphone (e.g., the device, battery, circuitry, and converter). | ¶27(i) | col. 33:45-53 |
| receiving a charger identification from a charger | A device (e.g., smartphone) connected to the accused product receives messages according to USB PD standards. This message, referred to as the "Source_Capabilities" message, indicates the charger's capabilities and its specification revision value. The complaint maps this message to the claimed "charger identification." A provided diagram illustrates the structure of this message (Compl. ¶9, p. 9). | ¶27(iii), ¶27(v) | col. 34:5-7 |
| determining whether the charger identification is in a list of charger identifications... | The device (e.g., smartphone) determines if the charger's "specification revision value and capabilities" are on a list of supported values. This is described as the device checking for compatibility. | ¶27(v) | col. 34:8-11 |
| ...belonging to the plurality of authorized chargers | The complaint alleges that if a charger complies with a supported USB PD specification (e.g., PD 2.0 or 3.0) and provides requested capabilities, the device considers it "authorized." If it does not (e.g., it only complies with PD 1.0 or fails to provide requested capabilities), communication fails and it is not considered authorized. | ¶27(vi) | col. 34:10-11 |
| in response to determining that the charger identification is in the list... receiving the energy... | In response to the device determining that the charger's identification (i.e., its USB PD capabilities and revision) is on its list of supported identifications, the device receives energy from the accused product. | ¶27(vii) | col. 34:12-16 |
| charging the battery using the power received from the converter... | The device uses the received energy, converted from USB power, to charge its battery. | ¶27(ix) | col. 34:20-22 |
- Identified Points of Contention:
- Scope Questions: The central dispute may concern the meaning of an "authorized charger." The complaint equates this with a charger whose capabilities, communicated via the standard USB PD protocol, are technically compatible with and supported by the receiving device. An alternative interpretation suggested by the patent specification is that "authorized" implies a pre-vetted list of specific devices (e.g., by brand, model, or serial number) for security or exclusivity purposes, rather than a simple technical compatibility check.
- Technical Questions: The infringement theory relies on mapping the claimed "list of charger identifications" to a device's internal logic for processing the standard USB PD "Source_Capabilities" message. A key question for the court will be whether the routine negotiation of power profiles under the USB PD standard constitutes the specific act of "determining whether the charger identification is in a list... belonging to the plurality of authorized chargers" as required by the claim.
V. Key Claim Terms for Construction
- The Term: "list of charger identifications belonging to the plurality of authorized chargers"
- Context and Importance: The construction of this term is fundamental to the infringement analysis. The case may turn on whether this "list" refers to a dynamic check of technical compatibility standards (as alleged by the complaint) or a static, pre-defined whitelist of specific, authenticated chargers. Practitioners may focus on this term because the plaintiff's theory hinges on a broad interpretation that reads on the standard USB PD negotiation protocol.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent claims are written at a high level of generality and do not explicitly limit the "list" to specific brands or models, which may support an argument that any method of discriminating between chargers, including by technical capability, falls within the scope.
- Evidence for a Narrower Interpretation: The patent specification repeatedly frames the invention in the context of preventing "non-authorized masters" from charging a device, suggesting a security function (’246 Patent, col. 3:15-20). The specification further gives examples of "identifying information" that a master might provide, including "MAC ID, network Internet protocol (IP) address, name, serial number, product name and manufacturer," which are attributes of a specific device rather than a technical standard (’246 Patent, col. 4:10-14). This language may support a narrower construction tied to verifying specific, pre-approved charger identities.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendant induces infringement by "advertising an infringing use" and making, using, and selling the accused chargers for use in a manner that directly infringes the ’246 Patent (Compl. ¶¶32, 35). This is pleaded as an alternative to the direct infringement claim.
- Willful Infringement: The complaint alleges willfulness based on Defendant's knowledge of the patent acquired upon service of the complaint (Compl. ¶31). It also alleges willful blindness based on a purported practice of "not performing a review of the patent rights of others" before launching products (Compl. ¶36).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: Does the claim term "list of charger identifications belonging to the plurality of authorized chargers" require a check against a pre-defined whitelist of specific charger identities for security, or can it be construed to cover a standard-based technical compatibility negotiation, as occurs under the accused USB PD 3.0 protocol?
- A central infringement question will follow: Does the normal operation of the USB Power Delivery standard—where a device assesses a charger's capabilities and requests a compatible power profile—constitute the specific, two-step "receive identification" and "determine if on list of authorized chargers" method required by Claim 1 of the ’246 Patent?
- An underlying liability question will be whether Defendant can be held liable for direct infringement for selling a standard-compliant charger, or if the case is more appropriately analyzed under a theory of indirect infringement based on inducing the conduct of end-users and their devices.