DCT
2:22-cv-02670
inMusic Brands Inc v. Innovative Technology Electronics LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: inMusic Brands, Inc. (Florida)
- Defendant: Innovative Technology Electronics, LLC (Delaware)
- Plaintiff’s Counsel: Hinckley, Allen & Snyder LLP
- Case Identification: 2:22-cv-02670, E.D.N.Y., 05/09/2022
- Venue Allegations: Venue is based on Defendant's principal place of business being located within the district and alleged acts of infringement occurring in the district.
- Core Dispute: Plaintiff alleges that Defendant’s "Victrola" brand turntables, which feature built-in USB outputs for digitizing records, infringe a patent related to integrating analog-to-digital conversion within a turntable.
- Technical Context: The technology addresses the market shift from analog vinyl records to digital music by embedding digital conversion hardware directly into turntables, simplifying the process for consumers to create digital archives.
- Key Procedural History: The asserted patent was assigned to Plaintiff inMusic from the original assignee, Stanton Magnetics, Inc. Subsequent to the filing of this complaint, an Inter Partes Review (IPR2023-00294) was filed against the patent on December 1, 2022. That proceeding concluded with the issuance of an IPR Certificate on November 12, 2024, which cancelled all asserted claims (1-6) of the patent-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2004-06-08 | '498 Patent Priority Date |
| 2009-07-28 | '498 Patent Issue Date |
| 2021-04-05 | Defendant allegedly receives notice of '498 Patent |
| 2022-05-09 | Complaint Filing Date |
| 2022-12-01 | IPR2023-00294 filed against '498 Patent |
| 2024-11-12 | IPR Certificate issues cancelling claims 1-6 of '498 Patent |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 7,567,498, "Phonographic Turntable with Built-in Audio to USB or Firewire Device," issued July 28, 2009.
The Invention Explained
- Problem Addressed: The patent's background describes the diminishing popularity of traditional analog turntables due to the rise of digital music. It notes that connecting turntables to computers for digitization was cumbersome, often requiring external conversion devices or reliance on computer sound card inputs. The patent also identifies that existing digital outputs on turntables, like SPDIF, were not "standard protocol such as USB...or firewire" (’498 Patent, col. 1:13-39).
- The Patented Solution: The invention integrates the necessary conversion electronics—specifically, an analog-to-digital converter (ADC) and a controller for a standard computer protocol like USB or Firewire—directly "within the turntable" (’498 Patent, col. 2:21-23). This allows the turntable to output a ready-to-use digital audio signal through a standard port, such as a USB jack, for "simple connection to a computer" (’498 Patent, col. 1:56-59; Fig. 1).
- Technical Importance: This integrated approach was intended to eliminate the need for external converters, thereby simplifying the user experience for digitizing vinyl record collections (’498 Patent, col. 1:43-46).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 2-6 (Compl. ¶12).
- Independent Claim 1 requires:
- A rotatable platter
- A tonearm for receiving a phono cartridge for generating an analog audio signal
- An analog to digital converter (ADC) for receiving the analog signal
- A controller responsive to the ADC for generating an output digital audio signal
- The ADC and controller are "included within said turntable"
- The output digital audio signal "uses standard computer protocol"
III. The Accused Instrumentality
Product Identification
- The complaint names a series of "Victrola" branded turntables, including the VTA-205B, V50-200, and VTA-750B, among others. The V50-200 model is identified as an exemplary product (Compl. ¶¶ 11, 24).
Functionality and Market Context
- The accused products are described as "ADC turntables" that include a rotatable platter and a tonearm (Compl. ¶12). Their key accused functionality is the ability to digitize vinyl recordings and output a digital audio signal via a built-in USB port. A product description for the V50-200, included as a visual in the complaint, highlights the feature to "Record from Vinyl to MP3 via USB with included easy-to-use recording software" (Compl. p. 6). A diagram from the product manual shows a "USB SOCKET" on the rear of the device, corroborating the presence of a physical USB output (Compl. p. 6). The complaint alleges these products are sold in direct competition with Plaintiff's own ADC turntables (Compl. ¶11).
IV. Analysis of Infringement Allegations
'498 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a. a rotatable platter; | The accused products comprise a "rotatable platter." A product photo shows this feature on the exemplary V50-200. | ¶24(1), p. 5 | col. 2:11-12 |
| b. a tonearm for receiving a phono cartridge for generating an analog audio signal representative of an audio recording; | The accused products comprise a "tonearm with a cartridge." A product photo shows this feature on the exemplary V50-200. | ¶24(1), p. 5 | col. 2:12-16 |
| c. an analog to digital converter for receiving an analog audio signal from the phono cartridge; | The complaint asserts the products contain "an ADC for receiving an analog audio signal from the phono cartridge." | ¶24(2) | col. 2:18-19 |
| d. a controller responsive to said analog to digital converter for generating an output digital audio signal...; | The complaint asserts the products contain "a controller that is responsive to the ADC for generating an output digital audio signal." | ¶24(3) | col. 2:20-21 |
| e. wherein said analog to digital converter and said controller are included within said turntable; and | The complaint asserts the "ADC and controller are included within the turntable." | ¶24(4) | col. 2:21-23 |
| f. wherein said output digital audio signal is output from said turntable and uses standard computer protocol. | The products output a digital signal via USB, as evidenced by product marketing stating "Record from Vinyl to MP3 via USB" and a manual diagram showing a "USB SOCKET." | ¶24(5), p. 6 | col. 3:7-9 |
- Identified Points of Contention:
- Technical Questions: The complaint makes conclusory allegations that the accused products contain an "analog to digital converter" and a separate "controller" (Compl. ¶24(2-3)). However, it provides no non-public evidence (e.g., from a product teardown) to support this specific internal architecture. This raises the question of what evidence exists to prove the accused products implement these two claimed elements as distinct functional components, rather than as a single, more highly integrated semiconductor chip that performs both functions.
- Scope Questions: The complaint alleges infringement of dependent claim 3, which requires the use of the "firewire (IEEE-1394) protocol" (Compl. ¶25). However, all visual and descriptive evidence provided in the complaint points exclusively to the use of a "universal serial bus (USB) protocol" (Compl. p. 6). This raises the question of whether any factual basis exists for the allegation of infringing the Firewire-specific claim.
V. Key Claim Terms for Construction
The Term: "controller responsive to said analog to digital converter"
- Context and Importance: The relationship between the "controller" and the "ADC" is central to the claimed invention. The construction of this phrase will determine whether the claim requires two structurally or logically separate components, or if a single integrated circuit can meet both limitations. Practitioners may focus on this term to dispute whether the accused products' internal hardware matches the claimed architecture.
- Intrinsic Evidence for a Broader Interpretation: The specification describes the components in functional terms (e.g., "USB controller 20"), without mandating a specific physical separation from the ADC (’498 Patent, col. 2:20-21). This could support an interpretation where a single chip embodying both functions would infringe.
- Intrinsic Evidence for a Narrower Interpretation: The patent's block diagrams in Figures 1 and 2 depict the "ADC" and the "controller" as distinct, separate boxes. A party could argue this graphical separation implies a requirement for distinct components, consistent with the technological capabilities common at the time of the invention.
The Term: "standard computer protocol"
- Context and Importance: This term defines the type of digital output required. Its scope is critical, as the patent was intended to distinguish its invention from prior art digital outputs like SPDIF, which it characterized as not a "standard protocol" (’498 Patent, col. 1:35-39).
- Intrinsic Evidence for a Broader Interpretation: A party might argue the term should be read broadly to encompass any widely adopted digital communication standard used by computers at the time of infringement, not just those existing in 2004.
- Intrinsic Evidence for a Narrower Interpretation: The specification explicitly identifies "USB (universal serial bus) or firewire (IEEE 1394)" as the "standard protocol" the invention is directed towards (’498 Patent, col. 1:38-39). Dependent claims 2 and 3 separately claim these two protocols, which could be used to argue that the scope of "standard computer protocol" in claim 1 is informed and potentially limited by these specific examples.
VI. Other Allegations
- Indirect Infringement: The complaint's prayer for relief includes boilerplate language seeking to enjoin inducement and contribution (Compl. Prayer C). However, the body of the complaint does not allege specific facts to support a claim for indirect infringement, focusing instead on direct infringement under 35 U.S.C. § 271(a) (Compl. ¶17).
- Willful Infringement: The complaint alleges that Defendant had pre-suit knowledge of the ’498 patent "no later than April 5, 2021," when it allegedly received a notice letter from Plaintiff (Compl. ¶13). This alleged knowledge, more than a year before the suit was filed, forms the basis of the claim for willful and intentional infringement (Compl. ¶27).
VII. Analyst’s Conclusion: Key Questions for the Case
- The primary issue in this case is procedural and existential: given that an Inter Partes Review certificate has formally cancelled all asserted claims of the '498 patent, the continued viability of the litigation is in substantial doubt.
- A central evidentiary question, should the case have proceeded, would be one of internal architecture: what technical evidence would be presented to prove the accused products contain the specific "analog to digital converter" and "controller" architecture as claimed, versus a different or more integrated hardware design?
- Finally, a key question of evidentiary support exists regarding the allegation of infringement of claim 3, which requires the "Firewire" protocol. The court would have to consider whether the complaint provides any factual basis for this claim when all accompanying evidence points exclusively to USB functionality.