DCT

2:19-cv-00048

Fundamental Innovation Systems Intl LLC v. Apple Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:19-cv-00048, E.D. Tex., 02/11/2019
  • Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas based on Defendant operating regular and established places of business, specifically Apple Stores in Plano and Frisco, and committing acts of infringement within the district, including product sales.
  • Core Dispute: Plaintiff alleges that Defendant’s mobile devices (e.g., iPhones, iPads) and charging adapters infringe five patents related to methods for enabling charging via a Universal Serial Bus (USB) port at currents exceeding standard USB specification limits.
  • Technical Context: The technology addresses methods for using a single USB port for both data transfer and high-current charging by using an electrical signal on the USB data lines to identify a power source as a dedicated charger, thereby bypassing standard USB power limitations.
  • Key Procedural History: The complaint notes that Plaintiff has previously litigated several of the patents-in-suit against Samsung, LG, and Huawei in the same judicial district, resulting in claim construction orders from the court and eventual license agreements with all three companies. It also alleges that Plaintiff provided Apple with notice of infringement beginning in December 2015, which was followed by correspondence, the provision of claim charts, and multiple inter partes review (IPR) petitions filed against the patents, which were largely denied institution by the Patent Trial and Appeal Board (PTAB). Two days prior to this complaint's filing, Apple filed a declaratory judgment action for non-infringement in the Northern District of California.

Case Timeline

Date Event
2001-03-01 Earliest Priority Date for all Patents-in-Suit
2005-08-30 U.S. Patent No. 6,936,936 Issues
2007-07-03 U.S. Patent No. 7,239,111 Issues
2010-11-16 U.S. Patent No. 7,834,586 Issues
2012-07-31 U.S. Patent No. 8,232,766 Issues
2014-01-07 U.S. Patent No. 8,624,550 Issues
2015-12-14 Plaintiff sends first notice letter to Apple
2016-02-01 Plaintiff files suit against Samsung (approximate date)
2016-12-01 Plaintiff files suits against LG and Huawei (approximate date)
2017-08-21 Plaintiff sends second notice letter to Apple
2017-08-31 Plaintiff provides exemplary claim charts to Apple
2018-01-31 Court issues claim construction order in Samsung case
2018-04-02 Court issues claim construction order in LG and Huawei cases
2018-04-05 Apple sends letter to Plaintiff regarding IPR filings
2018-06-13 Plaintiff notifies Apple of PTAB decisions denying IPR institution
2018-07-01 Plaintiff enters license agreement with Samsung (approximate date)
2018-09-01 Plaintiff enters license agreement with Huawei (approximate date)
2018-10-01 Plaintiff enters license agreement with LG (approximate date)
2019-02-05 Apple files declaratory judgment action in N.D. Cal. (approximate date)
2019-02-11 Complaint Filed

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

U.S. Patent No. 6,936,936 - "Multifunctional Charger System and Method," issued August 30, 2005

The Invention Explained

  • Problem Addressed: The patent’s background section describes the technical challenge of using a standard USB interface for efficiently charging a mobile device. Standard USB protocols require a host-initiated "enumeration" process and impose strict limits on power draw, making it impractical to use simple power sources like AC wall outlets or DC car sockets for fast charging through a USB port (’936 Patent, col. 1:47-63).
  • The Patented Solution: The invention is a power adapter that provides an "identification signal" to a mobile device through the data lines (D+ and D-) of the device's USB connector. This signal informs the mobile device that it is connected to a dedicated power source rather than a standard USB host. Upon detecting this signal, the mobile device can bypass the enumeration process and draw a higher level of current to charge its battery more rapidly (’936 Patent, Abstract; col. 2:1-14; FIG. 3).
  • Technical Importance: This technology helped enable the convergence of data and power ports on mobile devices, facilitating faster and more convenient charging from a wide array of power sources beyond host computers (Compl. ¶14).

Key Claims at a Glance

  • The complaint asserts independent claims 1, 13, 25, 51, 63, and 84, among other dependent claims (Compl. ¶36).
  • The essential elements of asserted independent claim 1 include:
    • A Universal Serial Bus ("USB") adapter for providing power to a mobile device.
    • A "plug unit" for coupling to a power socket.
    • A "power converter" to regulate energy from the socket and output power.
    • A "primary USB connector" to connect to the mobile device.
    • An "identification subsystem" to provide an "identification signal" on the USB data lines, where the signal comprises a "logic high signal on the D+ data line" and a "logic high signal on the D- data line".

U.S. Patent No. 7,239,111 - "Universal Serial Bus Adapter for a Mobile Device," issued July 3, 2007

The Invention Explained

  • Problem Addressed: The patent addresses the same problem as its parent '936 Patent: standard USB interfaces are not designed for high-current charging from non-computer power sources due to power limits and the requirement for a host-initiated enumeration process (’111 Patent, col. 1:50-68).
  • The Patented Solution: The patent claims a USB adapter comprising a plug unit, a power converter, a USB connector, and an "identification subsystem." The identification subsystem generates a signal indicating to a connected mobile device that the power source is not a standard "USB host or hub," thereby permitting the device to draw power without being subject to standard USB limitations (’111 Patent, Abstract; col. 2:20-34).
  • Technical Importance: This innovation contributed to the standardization of USB as a universal charging and data port for mobile electronics, improving user convenience and reducing the need for proprietary charging connectors (Compl. ¶14).

Key Claims at a Glance

  • The complaint asserts independent claims 1 and 16, among other dependent claims (Compl. ¶52).
  • The essential elements of asserted independent claim 1 include:
    • A USB adapter for providing power to a mobile device.
    • A "plug unit" to receive energy from a power socket.
    • A "power converter" to regulate the energy and generate a power output.
    • An "identification subsystem" to generate an "identification signal" indicating the power source is not a USB host or hub.
    • A "USB connector" to couple both the power output and the identification signal to the mobile device.

U.S. Patent No. 7,834,586 - "Multifunctional Charger System and Method," issued November 16, 2010

  • Technology Synopsis: This patent claims the mobile device side of the charging system. It describes a mobile device with a USB interface and a charging subsystem configured to detect an identification signal on the D+ and D- lines that is "different than USB enumeration." Upon detecting this signal, the device is enabled to charge its battery using power supplied on the USB V-bus line (’586 Patent, Claim 8).
  • Asserted Claims: Claims 8-13 (Compl. ¶67).
  • Accused Features: The complaint accuses Apple's mobile devices (e.g., iPhones, iPads) of infringement, alleging they contain a USB interface and a charging subsystem with a power management chip that detects the specific signals from Apple's chargers to initiate fast charging (Compl. ¶¶68-71). The complaint includes a photograph of what it identifies as the "PMU/Charger in Apple iPad 6" to support this allegation (Compl. p. 17).

U.S. Patent No. 8,232,766 - "Multifunctional Charger System and Method," issued July 31, 2012

  • Technology Synopsis: This patent also focuses on the mobile device. It claims a device with a USB communication path and a charging subsystem that can "draw current unrestricted by at least one predetermined USB Specification limit." This capability is enabled in response to the detection of an "abnormal USB data condition" at the communication path, such as applying high voltages to both data lines simultaneously (’766 Patent, Claim 1).
  • Asserted Claims: Claims 1-24 (Compl. ¶82).
  • Accused Features: The complaint alleges that Apple's mobile devices contain a power management chip that, upon detecting an abnormal data condition from an Apple charger, draws current exceeding standard USB specification limits (Compl. ¶¶84-85).

U.S. Patent No. 8,624,550 - "Multifunctional Charger System and Method," issued January 7, 2014

  • Technology Synopsis: This patent returns focus to the adapter. It claims a charging adapter that includes a USB VBUS and D+/D- lines and is configured to supply current on the VBUS "without regard to the current limits in the USB specification." The adapter achieves this by generating specific voltage pairs on the D+ and D- lines and does so "without conducting USB enumeration" (’550 Patent, Claim 3).
  • Asserted Claims: Claims 3-8 and 12-17 (Compl. ¶95).
  • Accused Features: Apple's 1A, 2.1A, and 2.4A charging adapters are accused of generating specific voltage pairs on their USB data lines to signal to a connected device that it can draw current above standard USB limits without performing enumeration (Compl. ¶¶96-97).

III. The Accused Instrumentality

  • Product Identification: The complaint identifies two categories of accused products: (1) Apple's USB charging adapters, specifically the 1A, 2.1A, and 2.4A models; and (2) a broad range of Apple's mobile electronic devices, including various models of the iPhone, iPad, iPod Touch, Apple Watch, and MacBook computers (Compl. ¶16).
  • Functionality and Market Context:
    • The complaint alleges that the accused products operate as a system. The Apple charging adapters are alleged to generate specific DC voltage pairs on the D+ and D- data lines of their USB ports. These voltages act as an identification signal indicating the adapter's power capacity (e.g., 2.7V on D+ and 2.0V on D- for a 2.1A charger) and that the source is a dedicated charger, not a standard USB host (Compl. ¶¶18, 40-41). A table sourced from a third-party Cypress Semiconductor document is provided as evidence of these voltage schemes (Compl. p. 11).
    • The accused mobile devices allegedly detect this identification signal through their USB interface. In response, a power management chip within the device's charging sub-system enables the device to draw current from the adapter at a level corresponding to the signal (e.g., 2.1A), which is higher than the limit imposed by the standard USB specification without enumeration (Compl. ¶¶17, 84). These products constitute the core of Apple's mobile device ecosystem and are of high commercial importance.

IV. Analysis of Infringement Allegations

’936 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a plug unit for coupling to a power socket and for receiving energy from the power socket The accused charging adapters include a plug unit that can be plugged into an electrical socket to receive energy. The complaint includes a photo of an Apple 5W USB Power Adapter (Compl. p. 10). ¶37 col. 7:3-7
a power converter electrically coupled to the plug unit, the power converter being operable to regulate the received energy from the power socket and to output a power requirement to the mobile device The adapters include a power converter that converts 100-240V AC input to a 5V DC output for the mobile device. ¶38 col. 7:16-21
a primary USB connector electrically coupled to the power converter for connecting to the mobile device and for delivering the power requirement to the mobile device The adapters include a USB connector that is electrically connected to the power converter and delivers power to a mobile device via a USB cable. ¶39 col. 6:8-14
an identification subsystem electrically coupled to the primary USB connector for providing an identification signal at one or more data lines of the primary USB connector The adapters include an identification subsystem with resistors connected to the D+ and D- lines of the USB connector, which generates an identification signal. ¶40 col. 8:14-18
wherein the identification signal comprises a ... logic high signal on the D+ data line and a logic high signal on the D- data line The adapters are alleged to generate voltage pairs on the D+ and D- lines (e.g., 2.0V and 2.7V) that constitute logic high signals. ¶41 col. 11:65-col. 12:2

’111 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a plug unit configured to receive energy from a power socket The accused charging adapters include a plug unit for connecting to an electrical wall socket. ¶53 col. 2:23-25
a power converter coupled to the plug unit, the power converter being configured to regulate the received energy from the power socket to generate a power output The adapters contain a power converter that transforms AC voltage from a socket into a regulated 5V DC power output. ¶54 col. 2:25-28
an identification subsystem configured to generate an identification signal, wherein the identification signal is configured to indicate ... the power socket is not a USB host or hub The adapters use resistors on the D+ and D- lines to generate specific voltage pairs. These voltages indicate to the mobile device that the power source is a dedicated charger, not a standard USB host. ¶¶55-56 col. 2:28-32
a USB connector coupled to the power converter and the identification subsystem, the USB connector being configured to couple the power output and identification signal to the mobile device The adapters have a USB connector that is coupled to both the power converter and the identification subsystem to deliver both power and the identifying signal to a mobile device via a USB cable. ¶57 col. 2:32-34

Identified Points of Contention

  • Scope Questions: A central dispute may arise over the meaning of "logic high signal" in the ’936 Patent. The complaint alleges that different voltage levels (e.g., 2.0V and 2.7V) both satisfy this limitation. A defense may argue that "logic high" implies a single binary state and cannot encompass multiple distinct voltage levels used to signal different current capacities.
  • Technical Questions: For the patents claiming the mobile device (’586 and ’766), a key technical question will be whether the device's power management chip performs the specific function of detecting an "abnormal USB data condition." The analysis will likely focus on whether a standard power management integrated circuit (PMIC) inherently meets this limitation when presented with the charger's signal, or if a more specific detection mechanism is required by the claims.

V. Key Claim Terms for Construction

  • The Term: "identification subsystem" (’936 Patent, Claim 1; ’111 Patent, Claim 1)

    • Context and Importance: The structure and function of this subsystem are at the core of the infringement allegations against the accused adapters. Its construction will determine whether a simple circuit of passive resistors, as is common in chargers, falls within the claim scope, or if a more complex, active component is required. Practitioners may focus on this term to distinguish the invention from prior art or to argue for a scope that either covers or excludes the accused products' simple voltage-divider design.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification suggests the subsystem can be a simple, hard-wired connection: "In one embodiment, the identification subsystem 108 comprises a hard-wired connection of a single voltage level to both data lines" (’936 Patent, col. 8:19-22). This supports an interpretation that includes passive components like resistors.
      • Evidence for a Narrower Interpretation: The specification also discloses a more complex alternative embodiment: "In another embodiment, the identification subsystem 108 comprises a USB controller that is operable to communicate an identification signal to the mobile device" (’936 Patent, col. 8:23-26). A party could argue this disclosure, along with other statements, suggests the term implies a more active or intelligent component than just resistors.

  • The Term: "abnormal USB data condition" (’766 Patent, Claim 1)

    • Context and Importance: This term is critical to the infringement theory against the accused mobile devices. The dispute will center on what types of signals on a USB data line qualify as "abnormal." The definition will determine whether the voltages allegedly produced by Apple's chargers meet this limitation.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The complaint argues that driving both D+ and D- lines to a high voltage is abnormal "because normal USB data conditions involve differential signaling" (Compl. ¶85). The patent's description of a typical USB host holding its data lines at zero volts when idle could support an interpretation where any non-standard, non-differential signal is "abnormal" (’936 Patent, col. 9:40-42).
      • Evidence for a Narrower Interpretation: The primary embodiment for identifying the adapter involves detecting a specific condition: whether the voltages on both D+ and D- lines are greater than 2 volts (’936 Patent, FIG. 3, step 220). A party could argue that the term "abnormal USB data condition" should be limited to this specific type of condition disclosed in the specification, rather than any and all deviations from the USB standard.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges both induced and contributory infringement for all five patents.
    • Inducement is alleged based on Apple's user guides and online instructions, which direct customers to connect the accused devices to the accused adapters, thereby allegedly causing end-users to directly infringe the patented system claims (Compl. ¶30). The complaint provides a screenshot of instructions to "Connect iPhone to a power outlet using the included cable and USB power adapter" as an example of such inducement (Compl. p. 8).
    • Contributory infringement is alleged on the basis that Apple sells the accused adapters and devices, which are material components of the patented inventions, knowing they are especially adapted for infringing use and are not staple articles of commerce (Compl. ¶29, ¶44).
  • Willful Infringement: The complaint alleges that Apple's infringement has been willful since at least August 21, 2017 (Compl. ¶47). The basis for this allegation is extensive pre-suit knowledge, including a notice letter sent in December 2015, subsequent communications, and the provision of "exemplary claim charts demonstrating infringement" in August 2017 (Compl. ¶19). Continued sales after this alleged notice form the basis of the willfulness claim.

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

  • A core issue will be one of definitional scope: can the term "logic high signal," as used in the ’936 Patent, be construed to cover the set of multiple, distinct voltage levels that Apple's chargers allegedly use to communicate different current-carrying capabilities to a connected device, or is the term limited to a single, binary state?
  • A key evidentiary question will be one of technical operation: does discovery confirm that Apple's accused charging systems function as alleged in the complaint, which relies on a third-party technical document, and does the accused mobile device's power management unit perform the specific function of detecting an "abnormal USB data condition" as required by the claims?
  • Given the detailed allegations of pre-suit notice, including the delivery of claim charts, a central question for damages will be one of willfulness: did Apple's continued sale of the accused products after receiving specific infringement allegations constitute egregious conduct warranting enhancement of damages, or will its actions be viewed as supported by a good-faith belief in non-infringement or invalidity of the asserted patents?