Waverly Licensing LLC v. Parrot Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Waverly Licensing LLC (Texas)
  • Defendant: Parrot, Inc. (New York)
  • Plaintiff’s Counsel: Loaknauth Law, P.C.; Chong Law Firm PA
• Case Identification: 1:22-cv-02665, S.D.N.Y., 03/31/2022
• Venue Allegations: Venue is asserted on the basis that Defendant is incorporated in the Southern District of New York and has allegedly committed acts of patent infringement within the district.
• Core Dispute: Plaintiff alleges that certain of Defendant’s products infringe a patent related to methods and systems for securely charging battery-operated devices.
• Technical Context: The technology concerns wireless power transfer systems that first authenticate a device by checking its identification against an authorized list before commencing charging.
• Key Procedural History: The patent-in-suit claims priority back to a 2009 provisional application and is the result of a long chain of continuation applications. The complaint notes the patent was issued after a "full and fair examination," but mentions no other litigation, licensing, or post-grant review history.

Case Timeline

Date	Event
2009-12-25	Earliest Patent Priority Date (Provisional App.)
2021-03-02	U.S. Patent No. 10,938,246 Issues
2022-03-31	Complaint Filed

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

U.S. Patent No. 10,938,246 - METHOD AND APPARATUS FOR CHARGING A BATTERY-OPERATED DEVICE

The Invention Explained

• Problem Addressed: The patent’s background section identifies shortcomings in prior wireless power technologies, noting that conventional induction methods are non-directive and inefficient over distances, while existing standards often assume the device to be charged already has power for communication protocols (’246 Patent, col. 1:37-54; col. 3:21-25).
• The Patented Solution: The invention describes a "master-slave" charging system where a device authenticates a charger before accepting power (’246 Patent, col. 4:5-21). As described in the abstract, a battery-operated device first receives a "charger identification" from a potential charger. It then checks this identification against an internal "list of charger identifications" for authorized chargers. Only if a match is found does the device proceed to receive energy and charge its battery, thereby creating a secure and managed power-transfer environment (’246 Patent, Abstract). The system architecture, depicted in Figure 1, shows how multiple "master" charging devices can interact with various "slave" devices within a networked system (’246 Patent, Fig. 1).
• Technical Importance: This selective charging approach allows for the creation of controlled wireless power ecosystems, preventing unauthorized devices from drawing power and enabling network-based management of charging resources (’246 Patent, col. 4:15-21).

Key Claims at a Glance

• The complaint asserts infringement of "one or more claims" of the ’246 Patent but does not specify which claims, instead referring to charts in an unattached exhibit (Compl. ¶11, ¶13). Independent claim 1 is representative of the apparatus claims.
• The essential elements of independent claim 1 are:
  • a battery;
  • an electronic circuitry powered by the battery;
  • a converter to receive energy from one of a "plurality of authorized chargers" and generate power for charging;
  • the device being configured to "receive a charger identification";
  • the device being configured to "determine whether the charger identification is in a list of charger identifications"; and
  • in response to a positive determination, the device is configured to receive energy, generate power via the converter, charge the battery, and use the battery to power the circuitry.
• The complaint reserves the right to assert additional claims, which may include method claims (like independent claim 11) and dependent claims (Compl. ¶11).

III. The Accused Instrumentality

Product Identification

The complaint does not identify any specific accused products by name (Compl. ¶11). It refers generally to "Exemplary Defendant Products" that are purportedly identified in charts within "Exhibit 2," which was not filed with the complaint (Compl. ¶13).

Functionality and Market Context

The complaint does not provide sufficient detail for analysis of the accused products' functionality or market context. It alleges only that these products "practice the technology claimed by the ’246 Patent" (Compl. ¶13). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint incorporates by reference claim charts from Exhibit 2, which was not filed with the complaint (Compl. ¶14). As such, a detailed claim chart analysis is not possible based on the provided documents. The infringement theory is narratively described as the "Exemplary Defendant Products" practicing the technology claimed by the ’246 Patent and satisfying all elements of the asserted claims (Compl. ¶13).

• Identified Points of Contention: Based on the language of the ’246 Patent and the general nature of the allegations, the infringement analysis raises several questions.
  • Scope Questions: A central question for the court will be whether the functionality of the accused products falls within the scope of the claims. For example, does any form of handshake protocol between a device and a charger meet the "receive a charger identification" limitation, or does the claim require a more specific, security-oriented data exchange?
  • Technical Questions: What evidence does the complaint provide that the accused products perform the sequential logic required by claim 1? Specifically, discovery will need to establish whether the accused products contain and consult "a list of charger identifications" and, crucially, whether the charging process is enabled only after a successful check against that list.

V. Key Claim Terms for Construction

• The Term: "charger identification"

  • Context and Importance: This term is fundamental to the claimed invention, as it is the piece of information that initiates the authorization process. The definition of this term will be critical to the infringement analysis, as it dictates what type of data or signal qualifies as the claimed authentication token.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification provides a wide-ranging list of potential identifiers, including a "MAC ID, network Internet protocol (IP) address, name, serial number, product name and manufacturer, capabilities, etc." (’246 Patent, col. 4:10-14). This language may support a construction that encompasses many forms of device-related data.
    • Evidence for a Narrower Interpretation: The patent repeatedly frames the invention in the context of security and authorization, stating that a slave device "prevents non-authorized masters...from trying to charge it" by checking the master's information against a stored list (’246 Patent, col. 4:15-20). This may support a narrower construction limited to identifiers used in a formal security or authorization scheme.

• The Term: "a list of charger identifications"

  • Context and Importance: The presence of "a list" is an explicit claim limitation. The infringement case will hinge on whether the accused products can be shown to maintain and consult a data structure that meets this requirement.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent does not define the structure of the "list." An argument could be made that any stored set of authorization criteria, even a single entry in firmware, constitutes a "list." The specification’s reference to a "slave information database" could be cited to support a broad interpretation of a data store (’246 Patent, col. 4:7-8).
    • Evidence for a Narrower Interpretation: The use of "a list" in conjunction with "a plurality of authorized chargers" in claim 1 suggests a collection of multiple distinct entries (’246 Patent, cl. 1). A defendant may argue that a system designed for a simple one-to-one pairing or a universal standard does not consult "a list" in the manner required by the claim.

VI. Other Allegations

• Willful Infringement: The complaint does not contain specific allegations of willful infringement or facts supporting pre-suit knowledge of the patent. However, the prayer for relief requests that the case be declared "exceptional within the meaning of 35 U.S.C. § 285" and seeks an award of attorneys' fees (Compl., p. 4, ¶E.i).

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

• A key evidentiary question will be one of technical proof: given the lack of detail in the complaint, can the Plaintiff obtain and present evidence sufficient to demonstrate that Defendant's products perform the specific, two-part authorization process required by the claims—first receiving an "identification" and second, checking it against "a list"—before enabling the charging function?
• The case will also likely turn on a core issue of claim construction: can the term "charger identification," as described in a patent focused on secure, selective charging, be construed broadly enough to read on the standard communication or handshake protocols that may be used in Defendant's products, or is it limited to a more formal, security-based credential?