DCT
1:22-cv-06602
inMusic Brands Inc v. Sony Corp Of America
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: inMusic Brands, Inc. (Florida)
- Defendant: Sony Corporation of America (New York)
- Plaintiff’s Counsel: Hinckley, Allen & Snyder LLP
- Case Identification: 1:22-cv-06602, S.D.N.Y., 08/03/2022
- Venue Allegations: Venue is alleged to be proper in the Southern District of New York because Defendant's principal place of business is located within the district.
- Core Dispute: Plaintiff alleges that Defendant’s analog-to-digital converter (ADC) turntables, which allow for the digitization of vinyl records via a USB connection, infringe a patent related to integrating standard computer output protocols into a phonographic turntable.
- Technical Context: The technology addresses the market need to bridge analog vinyl records with modern digital music ecosystems by building the necessary conversion hardware directly into the turntable, thereby simplifying the user experience.
- Key Procedural History: The complaint alleges that Defendant had pre-suit knowledge of the patent-in-suit as of June 30, 2021, based on a notice letter from Plaintiff. Subsequent to the filing of this complaint, an Inter Partes Review (IPR) proceeding, IPR2023-00294, was initiated. The provided IPR certificate, issued November 12, 2024, indicates that all asserted claims of the patent-in-suit have been cancelled.
Case Timeline
| Date | Event |
|---|---|
| 2004-06-08 | '498 Patent Priority Date (Application Filing) |
| 2009-07-28 | '498 Patent Issue Date |
| 2021-06-30 | Alleged date Sony received notice of the '498 Patent |
| 2022-08-03 | Complaint Filing Date |
| 2022-12-01 | IPR2023-00294 Filed |
| 2024-11-12 | IPR Certificate Issued canceling claims 1-6 |
II. Technology and Patent(s)-in-Suit Analysis
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 section notes that as digital music gained popularity, standard analog turntables became less common. To digitize vinyl, users often had to connect a turntable to a computer through a separate, external audio conversion device, which could be cumbersome. The patent also notes that prior turntables with digital outputs used non-standard protocols, not common computer interfaces like USB or Firewire (’498 Patent, col. 1:14-40).
- The Patented Solution: The invention is a turntable that "eliminates the need for external audio conversion devices" by incorporating an analog-to-digital converter (ADC) and a controller for a "standard computer digital communication protocol" directly inside the turntable's housing (’498 Patent, col. 1:47-56). This allows the turntable to feature a standard output jack, such as USB or Firewire, for a simple, direct connection to a computer for recording and processing (’498 Patent, Fig. 1; col. 2:23-30).
- Technical Importance: This integration simplified the process for consumers and professionals (like DJs) to archive vinyl recordings into a digital format, leveraging the ubiquitous connectivity of personal computers (’498 Patent, col. 1:57-60).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 2-6 (Compl. ¶17).
- 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 audio signal from the phono cartridge;
- a controller responsive to the ADC for generating an output digital audio signal;
- the ADC and controller are included within the turntable; and
- the output digital audio signal is output from the turntable and uses a standard computer protocol.
- The complaint reserves the right to assert dependent claims 2-6, which add limitations for using a USB protocol (claim 2), a Firewire protocol (claim 3), and including an output jack (claim 4) (Compl. ¶¶ 19-23).
III. The Accused Instrumentality
Product Identification
- The complaint names the Sony PS-HX500 and PS-LX310BT turntables as the "Accused Products" (Compl. ¶11). The analysis in the complaint focuses on the PS-HX500 as an exemplary product (Compl. ¶24).
Functionality and Market Context
- The Accused Products are described as "ADC turntables" designed to digitize vinyl recordings (Compl. ¶11). The complaint alleges they possess an "internal A/D converter" and provide the ability to "hook up the PS-HX500 turntable to your PC via USB" to "digitally archive the music" (Compl. ¶24.4). A marketing screenshot highlights a "USB output (Windows® and Mac® compatible)" (Compl. ¶24.5), and a product photograph shows a physical USB port on the rear of the device (Compl. ¶25). This functionality is positioned as a way to "Breathe new life into analog masterpieces with Hi-Res audio" (Compl. ¶24.4).
IV. Analysis of Infringement Allegations
’498 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a rotatable platter; | The accused PS-HX500 is a turntable that includes a rotatable platter. A product video screenshot depicts this component. | ¶24.1 | col. 2:62 |
| a tonearm for receiving a phono cartridge for generating an analog audio signal representative of an audio recording; | The PS-HX500 includes a tonearm with a cartridge for playing a record and generating an analog signal. The provided video screenshot shows the tonearm. | ¶24.1 | col. 2:63-65 |
| an analog to digital converter for receiving an analog audio signal from the phono cartridge; | The complaint cites marketing material stating the PS-HX500 has an "internal A/D converter" that "supports native conversion from analog to...digital." | ¶24.2, ¶24.4 | col. 2:66-67 |
| a controller responsive to said analog to digital converter for generating an output digital audio signal of music or speech...; | The complaint alleges the existence of a controller responsive to the ADC for generating the output signal. | ¶24.3 | col. 3:1-4 |
| wherein said analog to digital converter and said controller are included within said turntable; | The complaint alleges the ADC and controller are internal, citing product materials that describe an "internal A/D converter." | ¶24.4 | col. 3:5-6 |
| wherein said output digital audio signal is output from said turntable and uses standard computer protocol. | The complaint cites marketing materials describing a "USB output" and provides a photograph of the rear of the PS-HX500 showing a USB port. | ¶24.5, ¶25 | col. 3:7-9 |
- Identified Points of Contention:
- Scope Questions: A central question may be the proper construction of "controller responsive to said analog to digital converter." The complaint alleges this element is met but provides little specific evidence mapping the accused device's internal architecture to this claimed structure (Compl. ¶24.3). A dispute could arise over whether a standard, off-the-shelf USB audio chipset qualifies as the claimed "controller" or if the claim requires a more specific or distinct component.
- Technical Questions: The complaint alleges infringement of dependent claim 3, which requires the use of a "firewire (IEEE-1394) protocol" (Compl. ¶25). However, the evidence presented in the complaint, including product marketing and photographs, only appears to support the presence of a USB port and protocol. This raises a factual question regarding whether the Accused Products actually support Firewire.
V. Key Claim Terms for Construction
- The Term: "standard computer protocol"
- Context and Importance: This term is critical for defining the patent's scope, as the specification explicitly distinguishes the invention from prior art digital outputs (like SPDIF) by its use of a "standard" protocol (’498 Patent, col. 1:35-40). The definition will determine what types of digital connections fall within the claim.
- Evidence for a Broader Interpretation: The specification provides USB and Firewire as examples but also uses the phrase "or other standard computer digital communication protocol," which may suggest the term is not limited to the two disclosed embodiments (’498 Patent, col. 1:55-56).
- Evidence for a Narrower Interpretation: Parties may argue that the term should be limited to the only two protocols fully described and illustrated in the specification, namely USB and Firewire, as shown in Figures 1 and 2 respectively (’498 Patent, col. 2:18-49).
- The Term: "controller responsive to said analog to digital converter"
- Context and Importance: The relationship between the "controller" and the "analog to digital converter" is a key functional element of the claim. Practitioners may focus on this term because the nature of this interaction could distinguish a generic USB audio interface from the specific architecture claimed by the patent.
- Evidence for a Broader Interpretation: A plaintiff could argue the term covers any integrated circuit that receives a digital audio stream from an ADC and formats it for output over a standard protocol like USB, a common and well-understood configuration.
- Evidence for a Narrower Interpretation: A defendant could argue that the claim language and the block diagrams, which show the "USB controller" (20) and "ADC" (18) as separate functional blocks, require a distinct component that actively "generates" the output signal in response to the ADC, rather than a single, highly integrated chip performing multiple functions (’498 Patent, Fig. 1).
VI. Other Allegations
- Indirect Infringement: The complaint does not include a separate count for indirect infringement. However, the prayer for relief requests an injunction against "inducing others to infringe, or contributing to the infringement" (Compl. p. 7, ¶C). The complaint does not provide sufficient detail for analysis of the specific facts that would be alleged to support knowledge and intent for an indirect infringement claim.
- Willful Infringement: Willfulness is alleged based on pre-suit knowledge. The complaint asserts that Sony knew of the ’498 patent "no later than June 30, 2021" after receiving a notice letter from inMusic, and that Sony's continued sales after this date constitute "willful and intentional infringement" (Compl. ¶¶ 13, 27).
VII. Analyst’s Conclusion: Key Questions for the Case
- A dispositive issue for this case is the effect of post-filing claim cancellation. The subsequent cancellation of all asserted claims (1-6) in IPR2023-00294, which occurred after the complaint was filed, fundamentally removes the legal basis of the lawsuit. The central question is therefore procedural: whether the case is rendered moot or otherwise subject to dismissal based on the patent no longer having any valid asserted claims.
- Had the claims survived, a key question would have been one of technical scope: would the term "controller responsive to said analog to digital converter" be construed broadly enough to read on the integrated USB audio chipsets commonly used in modern consumer electronics, or would the court require evidence of a more specific architecture that maps more directly to the patent's block diagrams?
- A final question would have been evidentiary: could Plaintiff provide sufficient evidence that Sony's products practice every element of the claims, particularly regarding the "controller" limitation and the allegation of infringement under the Firewire protocol, for which no direct evidence was presented in the complaint?