Omnitek Partners LLC v. Citizen Watch Co Of America Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Omnitek Partners, LLC (New York)
  • Defendant: Citizen Watch Company of America, Inc. (California)
  • Plaintiff’s Counsel: Ramey LLP; David J. Hoffman
• Case Identification: Omnitek Partners, LLC v. Citizen Watch Company of America, Inc., 1:24-cv-00987, S.D.N.Y., 02/09/2024
• Venue Allegations: Plaintiff alleges venue is proper because Defendant has a regular and established place of business in the district, and has committed acts of infringement by selling or offering to sell the accused products within the district.
• Core Dispute: Plaintiff alleges that Defendant’s Eco Drive watches, which use a solar panel to power a rechargeable battery, infringe a patent related to conformable power supplies integrated into a device's structure.
• Technical Context: The technology concerns methods of integrating power sources, such as batteries or energy-generating films, directly into the physical structure of a device to save space and improve durability.
• Key Procedural History: The complaint states that the Plaintiff is a non-practicing entity. It also alleges willful infringement based on knowledge of the patent from at least the filing date of the lawsuit, while reserving the right to amend if pre-suit knowledge is discovered.

Case Timeline

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

U.S. Patent No. 7,118,825 - "Conformal Power Supplies"

The Invention Explained

• Problem Addressed: The patent's background section describes the challenge of powering devices in demanding applications, such as smart projectiles, where conventional batteries occupy a large volume and require significant protection from high-g forces and vibration, adding to complexity and cost (’825 Patent, col. 2:13-30).
• The Patented Solution: The invention proposes a "conformable power source" that is integrated directly into the structure of a device, potentially serving as a load-bearing member (’825 Patent, col. 2:48-51, 62-65). This integration aims to save space, reduce weight, and better protect the power source and related components from physical stress (’825 Patent, col. 2:52-58). The abstract describes a device with a structure for housing a power-consuming element and a power supply integrated into that structure.
• Technical Importance: This approach allows for the distribution of power sources throughout a device's structure, placing power generation closer to the components that need it and eliminating or minimizing internal wiring (’825 Patent, col. 3:16-23).

Key Claims at a Glance

• The complaint asserts claims 1-8 (Compl. ¶13). Independent claim 1 is central to the allegations.
• Independent Claim 1:
  • A device comprising:
  • a structure for housing or supporting at least one power consuming element; and
  • a power supply formed in or on the structure, the power supply being electrically connected to the at least one power consuming element for supplying power to the same, wherein the power supply is a film of power generating material covering at least a portion of the structure.
• The complaint does not explicitly reserve the right to assert dependent claims, but the assertion of claims 1-8 implies their inclusion.

III. The Accused Instrumentality

Product Identification

• The "Accused Instrumentialuties" are identified as "Citizen's Eco Drive Radio Controlled watch" (Compl. ¶14).

Functionality and Market Context

• The complaint alleges that the accused watches contain a "conforming power supply connected to a power consuming element" (Compl. ¶14). Specifically, the complaint identifies this functionality as "a solar panel that conforms to the structure of the watch and supplies power to a built-in rechargeable battery" (Compl. ¶14). The complaint does not provide further details on the specific models accused or their market context beyond identifying the product line. No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint references a claim chart in "Exhibit B" but does not attach it (Compl. ¶15). The following summary is based on the narrative allegations in the complaint body.

’825 Patent Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: A central question will be whether the term "film of power generating material", as used in the patent, can be construed to read on the "solar panel" used in a consumer watch. The patent specification heavily emphasizes applications in projectiles and other harsh environments, raising the question of whether the claim scope is implicitly limited to such contexts.
  • Technical Questions: The analysis may focus on whether the accused watch's solar panel is "formed in or on the structure" in the integrated, and potentially load-bearing, manner described throughout the patent's preferred embodiments (’825 Patent, col. 2:62-65), or if it is merely a conventional component placed within the watch housing.

V. Key Claim Terms for Construction

• The Term: "a film of power generating material"
• Context and Importance: This term's definition is critical. If a "solar panel" as implemented in the accused watch does not fall within the scope of this term, the infringement case may fail. Practitioners may focus on this term because the patent’s specification provides extensive context regarding specific types of materials (e.g., thermophotovoltaics, metal fuel cells) and applications (e.g., projectiles) that may be used to argue for a narrower construction than what the plain words might suggest.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claim language itself is not expressly limited to a particular environment or material type. The patent does mention "solar cells (photovoltaics)" as a potential power source, which is the technology underlying solar panels (’825 Patent, col. 9:35-37).
  • Evidence for a Narrower Interpretation: The specification's "Summary of the Invention" and detailed descriptions are replete with references to projectiles and the need to withstand extreme forces, such as "gun firing loads of even in excess of 100,000 g" (’825 Patent, col. 3:1-3). An argument could be made that a person of ordinary skill in the art would understand the term "film of power generating material" in this context to refer to a material structurally integrated as a load-bearing element, which may not describe a solar panel in a watch.

VI. Other Allegations

• Indirect Infringement: The complaint makes general allegations of induced infringement, stating that Defendant "actively encouraged or instructed others (e.g., its customers...)" on how to use the products in an infringing manner (Compl. ¶16). A claim of contributory infringement is also made, asserting there are "no substantial noninfringing uses" for the products (Compl. ¶17).
• Willful Infringement: Willfulness is alleged based on knowledge of the ’825 patent "from at least the filing date of the lawsuit" (Compl. ¶16, 17). Plaintiff expressly reserves the right to amend the complaint to allege pre-suit knowledge if it is revealed during discovery (Compl. p. 5, fns. 1-2).

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

1. A core issue will be one of claim construction and scope: Can the term "film of power generating material", which is described in the patent primarily in the context of load-bearing, structurally integrated power sources for harsh-environment applications like projectiles, be construed broadly enough to cover a conventional solar panel in a consumer watch?
2. A key evidentiary question will be one of technical implementation: Does the complaint provide sufficient evidence that the accused watch's solar panel is "formed in or on the structure" in the specific, integrated manner envisioned by the patent, or is it a discrete component that is simply housed within the watch, creating a potential mismatch with the patent's teachings?