Voltstar Tech Inc v. Aduro Products LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Voltstar Technologies, Inc. (Illinois)
  • Defendant: Aduro Products LLC (New York)
  • Plaintiff’s Counsel: Sriplaw PLLC
• Case Identification: 1:23-cv-09143, E.D.N.Y., 12/13/2023
• Venue Allegations: Venue is alleged to be proper because Defendant has committed acts of infringement in the district and is subject to personal jurisdiction there.
• Core Dispute: Plaintiff alleges that Defendant’s wall charger infringes a reissue patent related to the specific size, shape, and configuration of compact electrical chargers.
• Technical Context: The technology concerns the mechanical design and packaging of AC-to-DC power converters, commonly known as wall chargers, with a focus on minimizing size to prevent obstruction of adjacent electrical outlets.
• Key Procedural History: The patent-in-suit, RE48,794 E, is a reissue of U.S. Patent No. 9,024,581. The complaint notes that the reissue process amended Claim 1 to add a specific width limitation ("a width of the housing outer profile being less than 1.75 inches"), narrowing the claim from the original patent. This reissue history may be central to arguments regarding claim scope and potential prosecution history estoppel.

Case Timeline

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

U.S. Reissue Patent No. RE48,794 E - Charger Plug with Improved Package

• Patent Identification: 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 issues with prior art electrical chargers being bulky, which often causes them to block adjacent outlets on a wall receptacle or power strip (RE48,794 E Patent, col. 1:42-48). It also notes that conventional manufacturing methods, such as insert-molding AC prongs into the plastic housing and hand-soldering connections, are expensive, time-consuming, and can lead to production waste (RE48,794 E Patent, col. 2:1-30).
• The Patented Solution: The invention discloses a charger with a reduced physical size and an improved internal assembly method. Instead of molding the AC prongs into the housing, the design uses separate blade members that are slidably mounted into the housing (RE48,794 E Patent, col. 3:40-44). Electrical connection to the internal printed circuit board (PCB) is achieved through solder-less spring contacts that press against the blades, simplifying assembly and reducing manufacturing costs (RE48,794 E Patent, col. 3:23-28; Fig. 3). This construction allows for a final product with specific dimensional limitations that prevent it from interfering with adjacent outlets (RE48,794 E Patent, col. 14:45-54).
• Technical Importance: This approach sought to create a charger that is not only smaller and more convenient for the user but also more efficient and less costly to manufacture by eliminating complex molding and soldering steps (RE48,794 E Patent, col. 1:13-18).

Key Claims at a Glance

• The complaint asserts infringement of at least Claim 1 (’794 Patent, Compl. ¶26).
• Independent Claim 1 of the '794 Patent recites the following essential elements:
  • A charger plug for converting 120V input power to DC output power.
  • A housing containing first and second separate blade members with prong portions.
  • A DC connector for a removable power cord.
  • A specific size limitation: a longitudinal length less than 2.0 inches and a width of the housing outer profile being less than 1.75 inches.
  • A functional limitation: the outer profile has "no interference with an adjacent receptacle of the power source" when a like charger is in an adjacent outlet.
• The complaint does not explicitly reserve the right to assert dependent claims.

III. The Accused Instrumentality

Product Identification

The accused product is the "Tech Theory 20 Watt PD Dual Wall Charger" ("Tech Theory Wall Charger") (Compl. ¶17).

Functionality and Market Context

• The complaint alleges the Tech Theory Wall Charger is a "reduced plug-size charger plug" designed to connect between an AC power source and a device like a mobile phone to provide DC power for recharging (Compl. ¶18-19).
• The central accused functionality is the charger's compact size and shape, which Plaintiff alleges does not block or interfere with the use of adjacent outlets (Compl. ¶19). A photograph of the accused charger is provided in the complaint. This image shows a compact white charger with two AC prongs and what appear to be two USB ports (one USB-A and one USB-C) (Compl. p. 5).

IV. Analysis of Infringement Allegations

RE48,794 E Infringement Allegations

The complaint alleges infringement of at least Claim 1 and references a claim chart in an exhibit not provided with the filing (Compl. ¶26). The following chart summarizes the infringement theory based on the narrative allegations in the complaint.

Identified Points of Contention

• Scope Questions: A central dispute may arise over the meaning of "no interference." A defendant could argue this term is indefinite or that its product does cause some minimal interference with oversized plugs in an adjacent outlet, thereby avoiding infringement. The analysis will depend on whether "no interference" requires zero physical overlap with the adjacent outlet's space or merely allows a standard plug to be used.
• Technical Questions: The complaint provides specific measurements for the accused product (Compl. ¶23). A key factual question will be whether these measurements are accurate and how the "width of the housing outer profile" is properly measured according to the patent's specification and figures. The outcome could depend on the precise measurement methodology (e.g., including or excluding certain contours or radii of the housing).

V. Key Claim Terms for Construction

Term: "width of the housing outer profile"

• Context and Importance: This term is critical because it defines a precise numerical boundary for infringement (less than 1.75 inches). The complaint alleges the accused product's width is 1.668 inches, placing it just inside this limit (Compl. ¶23). Practitioners may focus on this term because the entire infringement case for this limitation could turn on a difference of millimeters and the specific points on the housing between which the "width" is measured.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claim language itself, "housing outer profile," could be argued to mean the maximum width at any point along the housing's body, providing a simple, objective standard.
  • Evidence for a Narrower Interpretation: The patent specification includes figures showing specific embodiments, such as the front elevation view in Figure 15. A party could argue the "width" should be measured in a manner consistent with the proportions and definitions shown in that specific figure, potentially excluding certain protrusions or requiring measurement at a specific cross-section.

Term: "no interference with an adjacent receptacle"

• Context and Importance: This functional language is less precise than a dimensional limitation and is a likely candidate for a dispute over indefiniteness under 35 U.S.C. § 112. Its construction will determine the standard for infringement. The complaint alleges the accused product meets this limitation (Compl. ¶19).
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation (Favoring Patentee): The patent repeatedly emphasizes the goal of allowing use of adjacent outlets, suggesting "no interference" means that a standard, NEMA-compliant plug can be fully inserted into an adjacent receptacle without being physically obstructed by the accused charger's housing (RE48,794 E Patent, col. 12:12-15).
  • Evidence for a Narrower Interpretation (Favoring Accused Infringer): The term "no interference" is absolute. An accused infringer could argue that if the housing so much as overhangs the faceplate of the adjacent outlet, it constitutes "interference," even if another plug can still be inserted. This could lead to an argument that the term is indefinite because it fails to inform a person of ordinary skill in the art of the scope of the invention with reasonable certainty.

VI. Other Allegations

Indirect Infringement

The complaint does not plead specific facts to support claims of induced or contributory infringement.

Willful Infringement

The complaint includes a prayer for a finding of willful infringement and enhanced damages (Compl., Prayer for Relief ¶C). However, the body of the complaint does not allege specific facts to support willfulness, such as pre-suit knowledge of the patent or objectively reckless conduct.

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

1. A central issue will be one of claim construction and measurement: How is the "width of the housing outer profile" to be measured? The case may depend on whether the defendant's product, measured according to the legally construed definition of that term, is in fact narrower than the 1.75-inch limit set by the claim.
2. A second core issue will be the scope and definiteness of functional language: Can the patentee prove that the accused charger causes "no interference" with adjacent outlets, and will a court find that term to be sufficiently definite to be enforceable? The outcome will depend on the evidence presented regarding the product's performance in various standard outlet configurations.
3. A key legal question will be the impact of the reissue proceeding: The defendant will likely use the prosecution history of the '794 reissue patent, where the width limitation was added, to argue that the patentee disclaimed any claim scope beyond a very specific configuration, potentially limiting the doctrine of equivalents and narrowing the literal scope of the claims.