DCT
1:22-cv-08429
Voltstar Tech Inc v. B&H Photo Video
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Voltstar Technologies, Inc. (Illinois)
- Defendant: B&H Photo-Video Inc RPC (New York)
- Plaintiff’s Counsel: Sriplaw, PLLC.
- Case Identification: 1:22-cv-08429, S.D.N.Y., 10/03/2022
- Venue Allegations: Venue is asserted based on Defendant having committed alleged acts of infringement and maintaining a regular and established place of business within the Southern District of New York.
- Core Dispute: Plaintiff alleges that Defendant’s sale of various third-party branded USB wall chargers infringes a patent related to the compact physical design and construction of such devices.
- Technical Context: The technology concerns AC-to-DC power converters, commonly known as "wall chargers," used for portable electronic devices, where compact size and non-interference with adjacent wall outlets are significant market features.
- Key Procedural History: The patent-in-suit, RE48,794, is a reissue of U.S. Patent No. 9,024,581. The complaint notes that during the reissue process, Claim 1 was amended to add a specific width limitation, narrowing its scope from the original patent. This amendment will likely be a central focus of the case.
Case Timeline
| Date | Event |
|---|---|
| 2008-05-21 | Earliest Priority Date (U.S. Appl. No. 12/124,515) |
| 2015-05-05 | Original U.S. Patent No. 9,024,581 Issues |
| 2021-10-26 | U.S. Reissue Patent No. RE48,794 E Issues |
| 2022-10-03 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
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 electronic device chargers, which were often bulky, obstructing adjacent power outlets. Furthermore, their manufacturing was described as costly and complex, involving processes like insert molding for the electrical blades and hand-soldering for internal connections, which required significant package space and could lead to production errors. (RE48,794 E Patent, col. 1:42-48, 1:61-2:11).
- The Patented Solution: The invention claims to solve these problems through a charger with a specific compact form factor and an improved internal assembly method. The design uses separate, slidably mounted electrical blades that connect to the internal printed circuit board (PCB) via solder-less spring contacts, rather than being insert-molded or soldered. This construction is intended to simplify assembly, reduce manufacturing costs, and enable a smaller overall package size that avoids blocking adjacent outlets. (RE48,794 E Patent, Abstract; col. 2:45-53).
- Technical Importance: This approach addresses the persistent market demand for smaller, more convenient, and less obtrusive power accessories for the growing ecosystem of portable electronic devices. (RE48,794 E Patent, col. 1:12-18).
Key Claims at a Glance
- The complaint asserts independent Claim 1. (Compl. ¶119).
- Essential elements of Claim 1 include:
- A charger plug with a housing and a DC connector.
- First and second separate blade members secured within the housing with prong portions extending from a front wall.
- A specific size limitation: a longitudinal length of less than 2.0 inches and a width of the housing outer profile of less than 1.75 inches.
- A functional limitation: the outer profile having "no interference with an adjacent receptacle of the power source located on all sides of the first receptacle when a like charger plug is mounted in all available orientations."
- The complaint does not explicitly reserve the right to assert dependent claims but makes a general allegation of infringement of "at least one claim." (Compl. ¶118).
III. The Accused Instrumentality
Product Identification
- The complaint accuses eleven different models of USB wall chargers, including the "iessentials 4 Piece Charging Kit," "Chargeworx 2.4 AMP Dual USB Wall Charger," and "Peak Design Wall Power Adapter." (Compl. ¶¶ 18, 27, 81).
Functionality and Market Context
- The accused products are described as AC-to-DC power converters that connect to a standard wall outlet to provide DC power for charging electronic devices like mobile phones via a USB port. (Compl. ¶19, ¶28).
- The complaint alleges that a key feature of these products is their "reduced plug-size," which ensures they do not block or interfere with the use of adjacent outlets when plugged in. (Compl. ¶20, ¶29). An image of the accused "iessentials Wall Charger" is provided to illustrate its compact form factor. (Compl. p. 7). The complaint also provides an image of the "Chargeworx Dual USB Wall Charger" as another example of an infringing product. (Compl. p. 10).
- The infringement allegations for all eleven products are based on these same functional and dimensional characteristics, with the complaint providing specific measured lengths and widths for each accused charger. (e.g., Compl. ¶24, ¶33).
IV. Analysis of Infringement Allegations
The complaint does not include its referenced claim chart exhibits. The following table synthesizes the narrative infringement theory for Claim 1 as applied across the accused products.
RE48,794 E Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A charger plug capable of connecting with a two or three receptacle power source...being electrically connectable to a rechargeable electronic device via a power cord...the charger plug including a housing... | The accused products are wall chargers that connect to a wall outlet and provide DC power to charge devices like mobile phones through a USB port. (e.g., iessentials Wall Charger). | ¶19 | col. 13:18-24 |
| first and second separate blade members secured within the housing so as to have prong portions...positioned in order to extend in a first direction from a front wall of the housing... | The accused products possess two metal prongs that extend from the front face of the charger housing for insertion into a wall outlet. The complaint's visual evidence shows this standard configuration. | p. 7 (Image) | col. 13:26-30 |
| the charger plug including a DC connector having an aperture adapted to removably receive a corresponding power cord plug end... | The accused products are alleged to have a USB port (a DC connector) for connecting a power cord to charge an electronic device. | ¶21 | col. 13:31-34 |
| i) being sized so that the charger plug housing comprises a longitudinal length extending between the front wall and the rear end and the longitudinal length is less than 2.0 inches, a width of the housing outer profile being less than 1.75 inches... | The complaint alleges specific measurements for each accused product that fall within these claimed dimensions. For example, the iessentials Wall Charger is alleged to have a length of approximately 1.755 inches and a width of approximately 1.403 inches. | ¶24 | col. 13:47-14:2 |
| ii) the outer profile having no interference with an adjacent receptacle of the power source located on all sides of the first receptacle when a like charger plug is mounted in all available orientations... | The complaint alleges that due to their "reduced plug-size," the accused products, when plugged into a wall outlet, do not block or interfere with the use of adjacent outlets. | ¶20 | col. 14:3-9 |
- Identified Points of Contention:
- Evidentiary Question: The complaint's allegations focus heavily on the external dimensions and non-interference function of the accused chargers. The patent, however, also describes a specific internal construction involving "separate blade members" and solder-less "spring contacts" (col. 2:45-53). A central question will be whether the plaintiff can produce evidence that the internal construction of the accused products meets these limitations, as external similarity alone may be insufficient.
- Scope Questions: The term "no interference" is a negative functional limitation. A dispute may arise over the precise definition of "interference." Does it mean any physical contact is prohibited, or does it mean that a standard adjacent plug must remain fully usable? The patent's use of "little or no interference" in the background section could suggest the term is not absolute. (RE48,794 E Patent, col. 1:46-47).
V. Key Claim Terms for Construction
The Term: "a width of the housing outer profile being less than 1.75 inches"
Context and Importance: This dimensional limitation was added during the reissue proceeding, narrowing the claim from its original version. (Compl. ¶13, fn. 1). Its construction is therefore critical. The infringement analysis for every accused product relies on a specific measurement of its "width." Practitioners may focus on this term because the patent's prosecution history could reveal a very specific definition or purpose for this limitation that was used to overcome prior art.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Claim 1 itself defines the term with a precise numerical value, which parties might argue requires no further construction beyond its plain and ordinary meaning as a standard physical measurement.
- Evidence for a Narrower Interpretation: The specification's figures, such as FIG. 1 and FIG. 15, show a specific, generally rectangular-ovoid shape. A defendant may argue that the term "width" must be interpreted in the context of the depicted embodiments, potentially excluding chargers with irregular or different cross-sectional profiles.
The Term: "no interference with an adjacent receptacle"
Context and Importance: This functional language defines a key purpose of the invention. The outcome of the infringement analysis depends on whether the accused products' compact size achieves this claimed result.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A plaintiff may argue this term should be interpreted broadly to mean that the charger does not prevent the practical use of an adjacent outlet by a standard plug, a core objective stated in the patent.
- Evidence for a Narrower Interpretation: The claim states "no interference...on all sides...in all available orientations." (RE48,794 E Patent, col. 14:3-9). A defendant may argue this requires an absolute lack of physical contact with the faceplate area surrounding any adjacent receptacle, a standard that may be difficult to meet and prove. The patent's own background describes the goal as providing "little or no interference," which could be used to argue against an absolute, zero-contact interpretation. (RE48,794 E Patent, col. 1:46-47).
VI. Other Allegations
- Indirect Infringement: The prayer for relief requests a judgment of induced infringement. (Compl., Prayer for Relief ¶A). However, the complaint’s factual allegations focus exclusively on direct infringement by Defendant through its own acts of making, using, offering for sale, and selling the accused products. The complaint does not provide specific factual detail to support a claim of inducement, such as allegations that Defendant instructs its customers to use the products in an infringing manner.
- Willful Infringement: The complaint alleges that Defendant "knew or should have known" that its products infringe because the dimensional and orientation requirements of Claim 1 are "clear." (Compl. ¶26, ¶35). This serves as the basis for the request for a finding of willful infringement and enhanced damages. (Compl., Prayer for Relief ¶C).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this case may depend on the court's determination of the following open questions:
- A primary issue will be one of evidentiary proof: The complaint's allegations are based almost entirely on the external dimensions and functionality of the accused chargers. Can the plaintiff demonstrate through discovery that the internal construction of these products also reads on the patent's claims, particularly the limitations concerning how the separate electrical blades are mounted and connected to the circuitry?
- A key legal question will be one of claim scope post-reissue: The infringement allegation hinges on a dimensional limitation ("width of the housing outer profile being less than 1.75 inches") that was added during a reissue proceeding. The case will likely turn on the interpretation of this narrowed term in light of the patent's specification and the prosecution history of the reissue, which may have created a specific and limited definition to distinguish the invention from the prior art.