DCT
1:19-cv-00798
NuCurrent Inc v. Samsung Electronics Co Ltd
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: NuCurrent Inc. (Illinois)
- Defendant: Samsung Electronics Co., Ltd. (South Korea); Samsung Electronics America, Inc. (New York)
- Plaintiff’s Counsel: Caldwell Cassady & Curry
- Case Identification: 6:18-cv-00051, E.D. Tex., 06/19/2018
- Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendant Samsung maintains regular and established places of business in Richardson and Plano, Texas.
- Core Dispute: Plaintiff alleges that Defendant’s Galaxy smartphone and Note product lines infringe five patents related to high-efficiency wireless charging antennas and that Defendant misappropriated Plaintiff's trade secrets to develop these features.
- Technical Context: The technology concerns multi-layer inductor (antenna) designs for wireless power transfer that mitigate the "skin effect"—a phenomenon that increases electrical resistance and reduces efficiency at high frequencies.
- Key Procedural History: The complaint alleges that in 2015, under a confidentiality agreement, Plaintiff disclosed proprietary and patented technology to Defendant for the purpose of a potential partnership, which Defendant then allegedly incorporated into its products without authorization. Subsequent to the filing of this complaint, Inter Partes Review (IPR) proceedings concluded, resulting in the cancellation of several asserted claims. The IPR certificates for U.S. Patent Nos. 8,680,960; 8,698,591; and 8,710,948 indicate that the sole independent claim asserted from each of those patents (Claim 1) was cancelled.
Case Timeline
| Date | Event |
|---|---|
| 2009-03-09 | Priority Date for ’960, ’591, ’948, and ’046 Patents |
| 2014-03-25 | U.S. Patent No. 8,680,960 Issues |
| 2014-04-15 | U.S. Patent No. 8,698,591 Issues |
| 2014-04-29 | U.S. Patent No. 8,710,948 Issues |
| 2015-01-13 | NuCurrent and Samsung execute Confidentiality Agreement |
| 2015-03-30 | NuCurrent delivers sample wireless power coils to Samsung |
| 2015-08 | Samsung launches Galaxy Note 5 and S6 Edge+ |
| 2016-03-29 | U.S. Patent No. 9,300,046 Issues |
| 2018-04-10 | U.S. Patent No. 9,941,729 Issues |
| 2018-06-19 | First Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,680,960 - “Multi-layer-multi-turn structure for high efficiency inductors”
The Invention Explained
- Problem Addressed: At high frequencies, alternating current (AC) tends to flow only near the surface or "skin" of a conductor. This "skin effect" increases electrical resistance and energy loss, which reduces the efficiency and performance (known as Quality Factor, or Q factor) of inductors used for applications like wireless power transfer. (’960 Patent, col. 2:36-54)
- The Patented Solution: The invention proposes an inductor constructed from a multi-layer wire, comprising multiple conductive layers separated by thin insulating layers. By creating more conductor surfaces for the current to flow on, this structure mitigates the skin effect, reduces overall resistance, and thereby increases the inductor's efficiency and Q factor, particularly at radio frequencies. (’960 Patent, Abstract; col. 3:26-44)
- Technical Importance: This design enables the creation of smaller and more efficient inductors suitable for high-frequency wireless power applications in compact consumer electronics. (Compl. ¶17-18)
Key Claims at a Glance
- The complaint asserts independent claim 1. (Compl. ¶89)
- Claim 1 of the ’960 Patent requires:
- An inductor comprising:
- a first conductor layer;
- a second electrically conductive conductor layer spaced apart from the first;
- an insulator layer positioned between the first and second conductor layers;
- at least one connector electrically connecting the first and second conductor layers;
- wherein propagating an electrical current generates a magnetic flux; and
- wherein a change in the electrical current generates an inductance.
U.S. Patent No. 9,300,046 - “Method for manufacture of multi-layer-multi-turn high efficiency inductors”
The Invention Explained
- Problem Addressed: The patent addresses the same technical problem as the ’960 Patent: the inefficiency of conventional inductors at high frequencies due to the skin effect. (Compl. ¶17)
- The Patented Solution: This patent claims a method for manufacturing the high-efficiency inductor structure. The core steps involve providing first and second conductor layers, positioning an insulator layer between them, and using at least two connectors to establish an "electrically parallel connection" between the layers. This manufacturing process results in the multi-layer structure designed to increase conductor surface area. (’046 Patent, Abstract; col. 10:4-29)
- Technical Importance: The claimed method provides a way to fabricate the high-efficiency inductor structures, enabling their integration into commercial products that require compact and efficient wireless power transfer. (Compl. ¶16, 18)
Key Claims at a Glance
- The complaint asserts independent claim 1. (Compl. ¶110)
- Claim 1 of the ’046 Patent requires a method of manufacturing an inductor by:
- providing a first and a second electrically conductive conductor layer;
- positioning an insulator layer between the first and second conductor layers; and
- connecting the first and second conductor layers in an electrically parallel connection with at least two connectors, each having an electrical impedance.
Multi-Patent Capsule: U.S. Patent No. 8,698,591 - “Method for operation of multi-layer-multi-turn high efficiency inductors”
- Technology Synopsis: This patent claims a method for operating an electrical circuit containing the multi-layer inductor. The method includes steps such as adjusting power levels and operating frequency, propagating a current to generate magnetic flux, and selecting an adjustable inductor quality factor. (’591 Patent, col. 33:14-34:5)
- Asserted Claims: Independent claim 1 is asserted. (Compl. ¶132)
- Accused Features: The complaint alleges that the accused Samsung products are capable of performing the claimed method of operation for their wireless charging functionality. (Compl. ¶133-142)
Multi-Patent Capsule: U.S. Patent No. 8,710,948 - “Method for operation of multi-layer-multi-turn high efficiency inductors”
- Technology Synopsis: This patent, part of the same family as the ’591 patent, also claims a method for operating an electrical circuit containing a multi-layer inductor. The steps are substantially similar to those in the ’591 patent, focusing on providing the circuit and changing current characteristics to generate magnetic flux. (’948 Patent, col. 33:13-33:40)
- Asserted Claims: Independent claim 1 is asserted. (Compl. ¶157)
- Accused Features: The complaint alleges the accused products are capable of performing the claimed operational method when their wireless charging coils are in use. (Compl. ¶158-165)
Multi-Patent Capsule: U.S. Patent No. 9,941,729 - “Single Layer Multi Mode Antenna for Wireless Power Transmission Using Magnetic Field Coupling”
- Technology Synopsis: This patent describes a single-layer antenna with two distinct coils (an outer coil and an inner coil) connected in series. The structure includes multiple terminals that allow for different electrical connections to be made, which in turn tunes the antenna to operate at different resonant frequencies, enabling multi-mode functionality (e.g., for both Qi wireless charging and Magnetic Secure Transmission). (’729 Patent, Abstract)
- Asserted Claims: Independent claim 1 is asserted. (Compl. ¶180)
- Accused Features: The complaint alleges that the antennas in the Samsung Galaxy S8, S9, and Note 8 products, which combine wireless charging and Magnetic Secure Transmission (MST) functions, embody this claimed structure. (Compl. ¶182-188)
III. The Accused Instrumentality
Product Identification
- The accused products are certain Samsung smartphones, including the Galaxy S6 Edge+, Galaxy Note 5, Galaxy S7, Galaxy S7 Edge, Galaxy S8, Galaxy S8+, Galaxy Note 7, Galaxy Note 8, Galaxy S9, and Galaxy S9+ ("Products Accused of Patent Infringement"). (Compl. ¶89, 180)
Functionality and Market Context
- The accused products contain internal inductor structures (coils) that enable inductive wireless charging. (Compl. ¶90). The complaint alleges that beginning with the Galaxy Note 5 and S6 Edge+, Samsung transitioned from a single-layer conductor coil to a two-conductor-layer coil. (Compl. ¶47, 51). For later devices like the Galaxy S8, the complaint alleges the use of a single-layer, multi-mode antenna that integrates both a wireless power coil and a Magnetic Secure Transmission ("MST") coil. (Compl. ¶182-183, 187). Plaintiff alleges that the adoption of its technology enabled Samsung to be a "pioneer" in "fast wireless charging," which it marketed as a key differentiator for its products. (Compl. ¶46, 48-49). This image shows a cross-section of the wireless power coil from a Samsung Note 5, which the complaint presents as evidence of a double conductive layer structure. (Compl. p. 16).
IV. Analysis of Infringement Allegations
U.S. Patent No. 8,680,960 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an inductor comprising: a) a first conductor layer; b) a second conductor layer spaced apart from the first conductor layer...the first...and the second conductor layer being electrically conductive | The accused products' inductors consist of two layers of copper traces that form copper wire coils and are electrically conductive. | ¶91 | col. 7:4-14 |
| c) an insulator layer positioned in the space between the first conductor layer and the second conductor layer | The two copper conductor layers in the accused products are spaced apart by a layer of dielectric material. | ¶92 | col. 7:4-6 |
| d) at least one connector electrically connecting the first conductor layer and the second conductor layer | The first and second conductor layers are electrically connected by pathways of copper, or vias. | ¶93 | col. 7:6-7 |
| e) wherein when an electrical current is propagated within at least the first conductor layer, a magnetic flux is generated within the inductor | When the accused inductors enter an electromagnetic field from a wireless charger, an electrical current is propagated in the first conductor layer, generating a magnetic flux. | ¶94 | col. 7:59-64 |
| f) wherein when a change in...the propagated electrical current occurs, an inductance is generated | The wireless power coils in the accused products operate using inductive power transfer and generate an inductance upon a change in the propagated current. | ¶95 | col. 2:51-60 |
Identified Points of Contention:
- Procedural Question: A threshold issue is that the provided IPR certificate for the ’960 Patent indicates that claim 1 was cancelled. This raises the question of whether the cause of action based on this patent remains viable.
- Scope Questions: Assuming the claim were valid, a potential point of contention could be the definition of "connector." The complaint identifies "vias" as satisfying this element, which is consistent with the patent's specification (Compl. ¶93; ’960 Patent, col. 5:28). However, the specific structure and function of the accused vias compared to the patent's disclosure could be a point of dispute.
U.S. Patent No. 9,300,046 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method of manufacturing an inductor structure...comprising...providing a first conductor layer and a second conductor layer...being electrically conductive | The inductor structures in the accused products contain two layers of copper traces that are electrically conductive. | ¶112 | col. 9:5-12 |
| positioning an insulator layer between the first conductor layer and the second conductor layer | The inductor structures contain a layer of dielectric material positioned in the space between the two copper layers. | ¶113 | col. 9:8-9 |
| and connecting the first conductor layer and the second conductor layer in an electrically parallel connection with at least two connectors, each connector having an electrical impedance | The two conductor layers are electrically connected by copper pathways, or vias, which are conductive and have an electrical impedance. The complaint alleges this structure results from a parallel connection manufacturing step. | ¶114 | col. 9:10-12 |
Identified Points of Contention:
- Procedural Question: The provided IPR certificate for the ’046 Patent indicates that this claim was also subject to post-grant proceedings, raising a question about its current status and enforceability.
- Evidentiary Questions: As this is a method claim, infringement analysis raises the question of whether the final structure of the accused product is sufficient to prove it was manufactured by the claimed process. For example, what evidence does the complaint provide that the vias create an "electrically parallel connection" as required by the claim, as opposed to another type of electrical connection? This image, showing a top view of connectors on the Samsung Note 5 coil, is used to support the allegation that the layers are connected by vias. (Compl. p. 33).
V. Key Claim Terms for Construction
The Term: "connector" (’960 Patent, Claim 1)
- Context and Importance: The definition of this term is central to whether the physical structures connecting the conductive layers in the accused devices (identified as "vias") fall within the claim's scope. (Compl. ¶93). Practitioners may focus on this term because the specific implementation of the via could be argued to be structurally or functionally different from what the patent contemplates.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification provides a non-exhaustive list of examples, stating a connector "may be but is not limited to a via, a solder, a tab, a wire, a pin, or a rivet," which suggests the term should be interpreted broadly to cover various means of electrical connection. (’960 Patent, col. 7:25-27)
- Evidence for a Narrower Interpretation: A party could point to specific figures in the patent (e.g., FIG. 14B) that depict a particular physical arrangement for the connector and argue that the term should be limited to structures that share key characteristics with these illustrated embodiments.
The Term: "electrically parallel connection" (’046 Patent, Claim 1)
- Context and Importance: This term defines the nature of the electrical pathway created during the manufacturing process. Infringement requires proving that the accused products are made using a method that results in this specific type of circuit connection, which is intended to allow current to flow through both layers simultaneously to mitigate the skin effect.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent family's background explains that the goal is to increase the area of conductance to reduce resistance, a principle consistent with the general understanding of a parallel circuit. (’960 Patent, col. 3:31-35). This context may support a broad, functional definition.
- Evidence for a Narrower Interpretation: The patent does not appear to provide an explicit definition. A party might argue that in the context of printed circuit design, the term has a more specific meaning that requires a particular layout or configuration not present in the accused manufacturing process.
VI. Other Allegations
Indirect Infringement
- The complaint alleges Samsung induces infringement by its suppliers by "providing designs and specifications" that require the manufacture of infringing antennas. (Compl. ¶99, 120). It also alleges inducement of customers by "encouraging those customers to...use the infringing inductors." (Compl. ¶99)
Willful Infringement
- Willfulness is alleged based on pre-suit knowledge. The complaint asserts that NuCurrent's CEO provided Samsung with a list of NuCurrent's patents on January 30, 2015, and that NuCurrent representatives educated Samsung on the patented technology during in-person meetings in March 2015, prior to the launch of the first accused products. (Compl. ¶27, 31, 105)
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue for a substantial portion of the lawsuit will be one of procedural viability: can the infringement counts based on U.S. Patent Nos. 8,680,960; 8,698,591; and 8,710,948 proceed as pleaded, given that the asserted independent claims from these patents were cancelled in Inter Partes Review proceedings that concluded after the filing of this complaint?
- For the asserted method claims (e.g., in the ’046 Patent), a key evidentiary question will be one of inferential proof: is the physical structure of the accused wireless charging coils, as depicted in the complaint, sufficient evidence to establish that they were necessarily manufactured by the specific steps of the claimed method, including the formation of an "electrically parallel connection"?
- For the antenna design patent (’729 Patent), a primary technical question will be one of structural correspondence: does the accused multi-mode antenna in Samsung's later smartphones, which combines two coils for different functions, meet every structural and connective limitation of claim 1, or is there a material difference in the number of layers, coil arrangement, or terminal connections?