Voltstar Tech Inc v. Foto Electric Supply Co Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Voltstar Technologies, Inc. (Illinois)
  • Defendant: Foto Electric Supply Co., Inc. (New York)
  • Plaintiff’s Counsel: Sriplaw PLLC
• Case Identification: Voltstar Technologies, Inc. v. Foto Electric Supply Co., Inc., 1:23-cv-08520, E.D.N.Y., 11/16/2023
• Venue Allegations: Venue is alleged to be proper because Defendant has a regular and established place of business in the district and has committed acts of infringement there.
• Core Dispute: Plaintiff alleges that Defendant’s wall chargers infringe a reissue patent related to the compact physical design of such chargers.
• Technical Context: The technology concerns the mechanical design and packaging of AC-to-DC power converters, commonly known as wall chargers, to minimize their size and prevent them from obstructing adjacent electrical outlets.
• Key Procedural History: The patent-in-suit, U.S. Reissue Patent No. RE48,794 E, is a reissue of U.S. Patent No. 9,024,581. During reissue, the scope of Claim 1 was amended to be narrower, changing a length requirement from "equal to or less than 2.0 inches" to "less than 2.0 inches" and adding a new width limitation of "less than 1.75 inches." This amendment history may inform the construction of the asserted claim terms.

Case Timeline

II. Technology and Patent(s)-in-Suit Analysis

U.S. Reissue Patent No. RE48,794 E - "Charger Plug with Improved Package," issued October 26, 2021

The Invention Explained

• Problem Addressed: The patent describes prior art wall chargers as being bulky, often blocking adjacent outlets on a power strip or wall receptacle. It also identifies manufacturing inefficiencies, such as the need for expensive and time-consuming insert molding to secure the electrical blades in the housing and manual soldering to connect them to the internal circuitry (RE48,794 E, col. 1:42-68, col. 2:1-41).
• The Patented Solution: The invention proposes a charger with a reduced physical profile achieved through a specific housing design and internal construction. The design aims to be small enough to avoid interfering with adjacent outlets, particularly by specifying maximum length and width dimensions (RE48,794 E, Claim 1). The patent also discloses an improved assembly method using slidably mounted blades and spring contacts, which obviates the need for insert molding and direct soldering, simplifying manufacturing (RE48,794 E, Abstract; col. 3:13-28).
• Technical Importance: This approach sought to create smaller, more user-friendly chargers that were also less costly and complex to manufacture (RE48,794 E, col. 1:15-19).

Key Claims at a Glance

• The complaint asserts independent Claim 1 (Compl. ¶34).
• Essential elements of independent Claim 1 include:
  • A charger plug with a housing and separate first and second blade members for connecting to a power source.
  • A DC connector for providing power to a rechargeable device.
  • The charger plug housing having specific sizing: a longitudinal length of less than 2.0 inches and a width of the housing outer profile of less than 1.75 inches.
  • The housing's outer profile having "no interference with an adjacent receptacle of the power source located on all sides."
• The complaint does not explicitly reserve the right to assert other claims but references infringement of "at least one of the claim" (Compl. ¶23).

III. The Accused Instrumentality

Product Identification

• The complaint identifies two accused products: the "Chargeworx 2.4 AMP Dual USB Wall Charger" and the "Chargeworx Dual USB Wall Charger" (collectively, the "Accused Products") (Compl. ¶¶18, 25).

Functionality and Market Context

• The Accused Products are described as AC-to-DC power converters that plug into a wall outlet to charge electronic devices via USB ports (Compl. ¶¶19, 26). The complaint alleges that the key infringing functionality resides in their physical dimensions and shape. Specifically, the products are alleged to employ a "reduced plug-size" design that prevents them from blocking or interfering with the use of adjacent outlets (Compl. ¶¶20, 27). The complaint includes an image of the first accused product, showing a compact, rectangular wall charger. (Compl. ¶18, p. 5). A nearly identical visual is provided for the second accused product. (Compl. ¶25, p. 7).

IV. Analysis of Infringement Allegations

The complaint references claim charts in Exhibits 2 and 3, which were not attached to the publicly filed document. However, the body of the complaint contains specific allegations mapping the features of the Accused Products to the elements of Claim 1 of the '794 Patent.

'794 Patent Infringement Allegations

• Identified Points of Contention:
  • Technical Questions: A primary question will be factual verification. Do the Accused Products, as sold, consistently meet the specific dimensional limitations (< 2.0 inches length, < 1.75 inches width) required by Claim 1? The complaint provides specific measurements for representative products, which will be subject to discovery and testing (Compl. ¶¶24, 31).
  • Scope Questions: The analysis may focus on the functional limitation requiring "no interference with an adjacent receptacle." A question for the court could be whether this limitation requires a complete absence of any physical obstruction, or whether it means the adjacent outlet remains usable by a standard plug, even if the fit is tight.

V. Key Claim Terms for Construction

The Term: "housing outer profile"

• Context and Importance: This term is central to the two key limitations of Claim 1: the specific dimensional requirements (width < 1.75 inches) and the functional requirement of "no interference." The definition of what constitutes the "profile" will determine how the product is measured and whether it infringes. Practitioners may focus on this term because its boundaries—whether it includes only the main body of the housing or extends to other features—are not explicitly defined in the claim itself.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The complaint does not provide specific detail for analysis of this element.
  • Evidence for a Narrower Interpretation: The patent distinguishes between the "housing" and the "blades" or "prongs" (RE48,794 E, col. 3:15-21). The claim language itself refers to the "housing outer profile," which may support an interpretation that the profile is defined by the contours of the plastic casing alone, excluding the metal prongs that extend from it (RE48,794 E, col. 13:50).

The Term: "no interference with an adjacent receptacle"

• Context and Importance: This is a functional limitation that could be a significant point of dispute. Its interpretation is critical because it sets the standard for non-infringement. If the Accused Product causes any contact or makes it slightly more difficult to use an adjacent outlet, does that constitute "interference"?
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation (i.e., less strict for patentee): The patent repeatedly frames the goal in terms of usability. The background notes that prior art plugs provide "little or no interference with use of an adjacent receptacle" (RE48,794 E, col. 1:45-48). This may support a construction where "no interference" means no prevention of the use of the adjacent outlet, rather than a total absence of any physical overlap or contact.
  • Evidence for a Narrower Interpretation (i.e., more strict for patentee): The claim language is absolute ("no interference"). A defendant may argue this requires a complete lack of physical impingement on the space defined by a standard adjacent receptacle, and that any contact, however minor, means there is "interference."

VI. Other Allegations

• Indirect Infringement: The complaint does not contain specific factual allegations to support claims for either induced or contributory infringement. The sole count is for direct infringement (Compl. p. 8).
• Willful Infringement: The complaint's prayer for relief requests a finding of willful infringement and enhanced damages (Compl. ¶C, p. 9). However, the factual allegations in the body of the complaint do not assert that Defendant had pre-suit knowledge of the '794 Patent or of its alleged infringement.

VII. Analyst’s Conclusion: Key Questions for the Case

The dispute appears to be a straightforward case of literal infringement centered on the physical design of a consumer product. The key questions for the court will likely be:

1. A core issue will be one of factual proof: Can Voltstar demonstrate through evidence that the accused "Chargeworx" products, as manufactured and sold, consistently fall within the precise dimensional limitations of Claim 1 (i.e., length < 2.0" and width < 1.75")?
2. A secondary, but potentially dispositive, issue will be one of claim construction: How will the court interpret the functional requirement of "no interference with an adjacent receptacle"? The outcome may depend on whether this is construed as requiring a complete absence of any physical contact with the adjacent outlet's space, or more practically, as simply ensuring the adjacent outlet remains usable.