Voltstar Tech Inc v. Roku Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Voltstar Technologies, Inc. (Illinois)
  • Defendant: Roku, Inc. (Delaware)
  • Plaintiff’s Counsel: Sriplaw PLLC
• Case Identification: Voltstar Tech Inc v. Roku Inc, 1:23-cv-09709, S.D.N.Y., 11/03/2023
• Venue Allegations: Venue is alleged to be proper based on Defendant having a regular and established place of business in the Southern District of New York.
• Core Dispute: Plaintiff alleges that Defendant’s Micro USB power adapters infringe a patent related to the dimensional and functional characteristics of compact electrical chargers.
• Technical Context: The technology concerns the design of small AC-to-DC power converters for consumer electronics, focusing on a form factor that avoids obstructing adjacent electrical outlets.
• Key Procedural History: The patent-in-suit, RE48,794 E, is a reissue of U.S. Patent No. 9,024,581. During the reissue proceedings, Claim 1 was amended to narrow the claimed dimensions of the charger housing, a fact that may be central to the infringement analysis.

Case Timeline

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 electrical chargers, noting they were often bulky, interfering with the use of adjacent outlets, or had an elongated shape that made them susceptible to being dislodged. (RE48,794 E Patent, col. 1:42-58). It also identifies the manufacturing processes of insert-molding electrical blades and hand-soldering internal connections as being costly, time-consuming, and prone to error. (RE48,794 E Patent, col. 2:1-24).
• The Patented Solution: The invention proposes a charger with a reduced package size achieved through a novel assembly method. This design uses separate, slidably mounted blades that connect to the internal printed circuit board (PCB) via solder-less spring contacts, which obviates the need for insert molding and hand soldering. (RE48,794 E Patent, Abstract; col. 3:14-23). This construction allows for a smaller, more compact housing designed specifically to avoid blocking adjacent power receptacles. (RE48,794 E Patent, col. 13:1-10).
• Technical Importance: The described approach sought to reduce manufacturing costs and improve assembly efficiency while creating a more user-friendly, compact form factor for the ubiquitous power adapters used with portable electronic devices. (RE48,794 E Patent, col. 1:13-18).

Key Claims at a Glance

• The complaint asserts infringement of at least independent Claim 1. (Compl. ¶23).
• The essential elements of Claim 1 include:
  • A charger plug for converting 120V input power to DC output power.
  • First and second separate blade members secured within a housing.
  • A DC connector with an aperture to removably receive a power cord.
  • A housing with a specific size limitation: a longitudinal length less than 2.0 inches and a width less than 1.75 inches.
  • A functional limitation wherein the housing's "outer profile" has "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 does not explicitly reserve the right to assert dependent claims.

III. The Accused Instrumentality

Product Identification

• The accused product is the "Roku Micro USB Charger," also referred to as the "Roku Micro USB Power Adaptor." (Compl. ¶14).

Functionality and Market Context

• The complaint alleges the accused product is a "reduced plug-size charger" that connects to an AC wall outlet to provide DC power to Roku devices. (Compl. ¶¶15-16).
• A key allegation is that its size and shape are such that it "does not block or interfere with the use of adjacent outlets" and allows for easy insertion and removal of its associated power cord. (Compl. ¶¶16-17).
• The complaint includes a screenshot from Defendant's website showing the product, which is described as an "A/C power adapter" that "Works with select Roku players." (Compl. p. 5).

IV. Analysis of Infringement Allegations

The complaint references a claim chart in "Exhibit 2" to illustrate infringement of Claim 1; however, this exhibit was not attached to the publicly filed document. (Compl. ¶¶18, 23). The following analysis is based on the narrative allegations within the complaint body.

RE48,794 E Infringement Allegations

Identified Points of Contention

• Scope Questions: The claim requires "no interference with an adjacent receptacle ... on all sides ... in all available orientations." This language suggests an absolute condition. A central dispute may be the proper construction of "no interference" and whether the accused product can be proven to meet this stringent functional requirement under all possible conditions with various other plugs.
• Technical Questions: The complaint's allegations focus exclusively on the external dimensions and non-interference function of the Roku charger. The patent, however, heavily details a specific internal construction (e.g., solder-less spring contacts, non-insert-molded blades) as the inventive solution to the problems of cost and size. A key question is whether the internal construction of the accused product, which is not mentioned in the complaint, is relevant to infringement. Defendant may argue that the claims, when read in light of the specification, do not cover chargers made with conventional manufacturing techniques that the patent purports to improve upon.

V. Key Claim Terms for Construction

The Term: "outer profile having no interference with an adjacent receptacle"

• Context and Importance: This functional limitation is a cornerstone of the infringement allegation. Its interpretation will be critical, as it appears to set a very high bar for infringement. Practitioners may focus on this term because its seemingly absolute nature ("no interference," "on all sides," "in all available orientations") could be a significant hurdle for the plaintiff to prove factually.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: Plaintiff may argue the term simply means the physical housing of the charger does not physically obstruct the standard openings of an adjacent receptacle, pointing to the patent's general goal of solving this problem. (RE48,794 E Patent, col. 1:45-49).
  • Evidence for a Narrower Interpretation: Defendant may argue that "no interference" requires proof that the use of the adjacent outlet is not hindered by any standard plug, a more demanding standard. The claim's specific recitation of "on all sides" and "in all available orientations" may support an interpretation that requires the charger to be compatible in a duplex outlet with another identical charger in every possible orientation. (RE48,794 E Patent, col. 14:59-63).

The Term: "secured within the housing"

• Context and Importance: The complaint does not specify how the blades of the accused product are secured. The patent specification, however, extensively teaches a specific method of securing the blades (slidably, via spring contacts) as a key improvement over prior art insert molding. (RE48,794 E Patent, col. 2:62-col. 3:1). Practitioners may focus on this term because if the accused product uses conventional insert molding, the defendant could argue for a narrow construction that excludes such methods, potentially avoiding infringement.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: Plaintiff will likely argue that "secured" should be given its plain and ordinary meaning, covering any method of fixing the blades within the housing, including insert molding.
  • Evidence for a Narrower Interpretation: Defendant may argue that the term should be interpreted in light of the specification's explicit disavowal of insert molding. The patent describes insert molding as a "relatively expensive process" and part of the problem the invention solves, which could support an argument that the claims implicitly exclude that technique. (RE48,794 E Patent, col. 1:64-col. 2:12).

VI. Other Allegations

• Willful Infringement: The complaint's prayer for relief seeks a determination of willful infringement and enhanced damages. (Compl. ¶C, p. 7). However, the body of the complaint does not allege any specific facts to support this claim, such as pre-suit knowledge of the patent or deliberate copying.

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

• A core issue will be one of claim scope and proof: Can the functional limitation "no interference with an adjacent receptacle," qualified by the phrases "on all sides" and "in all available orientations," be factually proven? The interpretation of this seemingly absolute requirement will be a central point of dispute.
• A second key question will relate to the relevance of unspoken technology: The infringement case is pled based on the charger's external form factor, but the patent's inventive story is rooted in its internal construction (solder-less spring contacts vs. insert molding). The case may turn on whether the internal manufacturing method of the accused product, currently unmentioned, can be used by the defendant to argue for a narrower claim construction that avoids infringement.