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 and B & H Foto Electronics Corp. (New York)
- Plaintiff’s Counsel: Sriplaw, PLLC.
- Case Identification: 1:22-cv-08429, S.D.N.Y., 01/10/2023
- Venue Allegations: Venue is alleged to be proper as Defendants have committed acts of infringement and maintain a regular and established place of business in the Southern District of New York.
- Core Dispute: Plaintiff alleges that Defendants’ sale of various USB wall chargers infringes a patent related to the specific dimensional and functional characteristics of compact power adapters.
- Technical Context: The technology concerns the design of small-form-factor AC-to-DC power converters, where physical size and non-interference with adjacent wall outlets are significant market features.
- Key Procedural History: The patent-in-suit, RE48,794 E, is a reissue of U.S. Patent No. 9,024,581. The complaint notes that during the reissue process, asserted Claim 1 was amended, narrowing a length limitation from "equal to or less than 2.0 inches" to strictly "less than 2.0 inches" and adding a new width limitation of "less than 1.75 inches." This amendment history may be central to claim construction and infringement analyses.
Case Timeline
| Date | Event |
|---|---|
| 2008-05-21 | Priority Date for U.S. Patent No. RE48,794 E |
| 2015-05-05 | Issue Date for original U.S. Patent No. 9,024,581 |
| 2021-10-26 | Issue Date for Reissue U.S. Patent No. RE48,794 E |
| 2023-01-10 | First Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Reissue Patent No. RE48,794 E - "Charger Plug with Improved Package"
The Invention Explained
- Problem Addressed: The patent’s background section describes issues with prior art power chargers, such as their bulkiness causing them to block adjacent wall outlets, and manufacturing complexities related to insert molding and soldering of internal components, which increase cost and production time (’794 Patent, col. 1:41-60).
- The Patented Solution: The invention claims to solve these problems by disclosing a charger with a specific, compact form factor defined by dimensional limits to avoid outlet interference. The specification also describes an improved internal assembly method using spring contacts to connect the AC blades to the circuit board, which purportedly simplifies manufacturing and reduces package size (’794 Patent, col. 2:45-53).
- Technical Importance: The described approach addresses a persistent consumer desire for smaller, more convenient power accessories that can be used in crowded power strips or wall outlets without obstructing other plugs (’794 Patent, col. 1:41-48).
Key Claims at a Glance
- The complaint asserts independent Claim 1 (Compl. ¶113).
- The essential elements of Claim 1 are:
- A charger plug for converting 120V input power to DC output power.
- A housing containing first and second separate blade members.
- A DC connector for a power cord.
- The housing being sized with a longitudinal length of less than 2.0 inches and a width of the housing outer profile of less than 1.75 inches.
- The housing's outer profile having no interference with an adjacent receptacle of the power source on all sides.
- The complaint does not explicitly reserve the right to assert dependent claims but states infringement of "at least one claim" (Compl. ¶112).
III. The Accused Instrumentality
Product Identification
- The complaint accuses ten distinct products: Chargeworx 2.4 AMP Dual USB Wall Charger, Chargeworx Dual USB Wall Charger, Bytech Micro Wall Charger, Bytech Universal Wall Charger, PDG-120 B 20W GaN USB-C Charger, PDG-130 B 30W GaN USB-C Charger, Peak Design Wall Power Adapter, Xuma 2.1 AMPS USB Charger, UltimatePower Mini 30W GaN USB-C PD Wall Charger, and iLuv 20W USB-C Wall Charger (Compl. ¶¶21, 30, 39, 48, 57, 66, 75, 84, 93, 102).
Functionality and Market Context
- The accused products are described as wall chargers that connect to an AC power source to provide DC power for charging electronic devices like mobile phones (Compl. ¶22).
- The complaint alleges that these products employ a "reduced plug-size" design which does not block or interfere with the use of adjacent outlets (Compl. ¶23). A representative photo shows the "Chargeworx 2.4 AMP Dual USB Wall Charger," a rectangular black adapter with two USB ports and two AC prongs (Compl. p. 7, ¶21). The complaint also includes images of other accused products, such as the "PDG-120 B 20W GaN USB-C Charger," illustrating a similar form factor with a USB-C port (Compl. p. 14, ¶57).
IV. Analysis of Infringement Allegations
The complaint alleges infringement of Claim 1 against all accused products, providing specific measurements for each. The allegations for the "Chargeworx 2.4 AMP Dual USB Wall Charger" are representative.
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 to convert 120V input power received from the power source to DC output power... | The accused product is a wall charger that connects to an AC power outlet to provide DC power for charging devices. | ¶22 | col. 13:17-24 |
| first and second separate blade members secured within the housing so as to have prong portions of the blade members positioned in order to extend in a first direction from a front wall of the housing... | The accused product has a housing with two prongs for insertion into a wall outlet. | ¶21, ¶22 | col. 13:25-29 |
| the charger plug including a DC connector having an aperture adapted to removably receive a corresponding power cord plug end for transmitting DC power to the rechargeable electronic device | The accused product has one or more USB ports (a type of DC connector) to connect a charging cable. | ¶24 | col. 13:30-34 |
| 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 the product has a longitudinal length of approximately 1.678 inches and a width of approximately 1.482 inches, both of which are within the claimed dimensional limits. | ¶27 | col. 13:46-49 |
| 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 in any of the other receptacles | The complaint alleges that due to its size and shape, the accused product "does not block or interfere with the use of adjacent outlets." | ¶23 | col. 13:50-54 |
- Identified Points of Contention:
- Scope Questions: A central dispute may arise over the proper methodology for measuring the "width of the housing outer profile." The definition and measurement protocol for this term are not specified in the patent, raising the question of whether Defendants' products meet the "less than 1.75 inches" limitation under the correct claim construction.
- Technical Questions: The claim requires "no interference with an adjacent receptacle... on all sides." This functional language raises the evidentiary question of what constitutes "interference." The analysis may depend on the type of plug used in the adjacent outlet and the specific geometry of the outlet faceplate, and whether any physical contact or proximity constitutes interference as contemplated by the patent.
V. Key Claim Terms for Construction
The Term: "width of the housing outer profile"
Context and Importance: This term, added during reissue, is a critical limitation. Infringement hinges on whether the accused products' measured width is "less than 1.75 inches." The method of measurement (e.g., widest point vs. main body) will be dispositive.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue that the lack of a specific definition in the patent defaults the term to its plain and ordinary meaning, potentially allowing for a measurement of the main housing body, excluding minor protrusions. The patent distinguishes between the "charger plug face area" and the "outer profile defined by a perimeter of the front wall and... a plug body extending rearward” (’794 Patent, col. 13:38-42), which may be argued to focus the measurement on the primary body.
- Evidence for a Narrower Interpretation: A party could argue the term encompasses the absolute widest point of the housing from any angle to give full effect to the term "outer profile." The patent’s objective to avoid all interference with adjacent outlets (’794 Patent, col. 13:50-54) may support an interpretation that the "width" must be the maximum dimension that could potentially cause obstruction.
The Term: "no interference with an adjacent receptacle"
Context and Importance: This functional limitation is not defined by dimensions alone. Its satisfaction depends on the charger's real-world interaction with a variety of standard electrical outlets. Practitioners may focus on this term because it requires factual evidence beyond simple measurement.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party advocating for infringement could argue that "no interference" means that the charger does not physically block the prong-receiving slots of an adjacent standard NEMA outlet, allowing another plug to be inserted.
- Evidence for a Narrower Interpretation: A party defending against infringement could argue that the phrase, especially with the modifier "on all sides," implies a complete absence of physical contact with the adjacent outlet's faceplate or any obstruction that would hinder the use of even oversized plugs. The patent’s goal of enabling use "when space is limited by an obstacle adjacent or in front of the power source” (’794 Patent, col. 13:55-58) could be cited to support a strict, zero-tolerance standard for "interference."
VI. Other Allegations
- Willful Infringement: The complaint alleges that Defendants "knew or should have known" that their products infringe because the "elements of Claim 1 of the ’794 Patent state clear dimension, size and orientation requirements" (Compl. ¶¶28-29, 37-38). This allegation forms the basis for a request for enhanced damages due to willful infringement, seemingly premised on a theory of objective recklessness given the patent's purported clarity (Compl. p. 25, ¶C). No specific pre-suit notification is alleged.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of measurement and definition: How must the claim term "width of the housing outer profile" be measured, and do the specific dimensions of the ten accused products fall below the 1.75-inch threshold when that definition is applied?
- A second central issue will be one of functional proof: What level of evidence is required to demonstrate that the accused products meet the absolute functional requirement of causing "no interference with an adjacent receptacle... on all sides," and can Plaintiff provide sufficient proof to satisfy this limitation for each accused product?
- Finally, a key question for willfulness will be whether the dimensional limitations in the patent are so clear on their face that the sale of products with nearly identical characteristics constitutes the kind of "egregious" conduct or objective recklessness required for enhanced damages.