DCT
2:22-cv-00241
Lonestar Biometrics LLC v. TCL Technology Group Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Lonestar Biometrics LLC. (Texas)
- Defendant: TCL Technology Group Corp. (China)
- Plaintiff’s Counsel: Rubino IP; Truelove Law Firm, PLLC
- Case Identification: 2:22-cv-00241, E.D. Tex., 06/28/2022
- Venue Allegations: Plaintiff alleges venue is proper because Defendant is not a resident of the United States and may therefore be sued in any judicial district.
- Core Dispute: Plaintiff alleges that Defendant’s smartphones equipped with under-display optical fingerprint scanners infringe three patents related to methods and apparatuses for scanning and capturing images through a display screen.
- Technical Context: The technology at issue is under-display optical fingerprint scanning, a method for biometric user authentication that integrates a scanner beneath a smartphone's display panel.
- Key Procedural History: The complaint does not note any prior litigation or post-grant proceedings involving the patents-in-suit. The patents-in-suit share a common specification and claim priority to the same 2011 application.
Case Timeline
| Date | Event |
|---|---|
| 2011-08-20 | Earliest Priority Date for all Patents-in-Suit |
| 2016-01-05 | U.S. Patent No. 9,232,088 Issued |
| 2016-01-19 | U.S. Patent No. 9,241,082 Issued |
| 2017-01-31 | U.S. Patent No. 9,560,293 Issued |
| 2022-06-28 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,232,088 - "Scanning in a Defined Region on a Display Screen"
The Invention Explained
- Problem Addressed: The patent addresses the desire to add document scanning capabilities to electronic devices like smartphones and tablets without requiring a separate, standalone scanner, noting that built-in webcams are "not ideal for capturing images of documents" (’088 Patent, col. 2:7-12).
- The Patented Solution: The invention proposes integrating an image scanning module directly into a Liquid Crystal Display (LCD) device. A key aspect of the solution is the ability to define a specific "scanning region" on the display that is smaller than the total viewing area. An application causes the device to display this region, and a user places an object (like a receipt or a finger) over it. An embedded array of sensors then scans only the portion of the object within that defined region (’088 Patent, Abstract; col. 8:12-19; Fig. 5A).
- Technical Importance: This approach allows for the integration of scanning functionality into a device's primary display, conserving space and hardware, which is a significant design consideration for portable electronics (’088 Patent, col. 2:13-16).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (’088 Patent, col. 10:13-31; Compl. ¶17).
- Essential elements of Claim 1 include:
- A computing device comprising a display device with a viewing area.
- The display device is caused to display a "scanning region" for a user to place an object onto it.
- The scanning region is "defined visibly to the user and smaller than the viewing area in size."
- A portion of the object within the scanning region is scanned by an "array of sensors embedded in the display device."
- A "circuit module" reads out sensing signals from the sensors to produce an image of the object portion.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 9,241,082 - "Method and Apparatus for Scanning Through a Display Screen"
The Invention Explained
- Problem Addressed: The patent identifies a need for technology that can scan objects on a portable device, including features not visible under normal lighting (e.g., security features on currency) and capturing multiple fingerprints at once for stronger authentication, which a typical single-point fingerprint sensor cannot do (’082 Patent, col. 2:11-24).
- The Patented Solution: The invention describes a display device, such as an LCD, that can be controlled to have a "moment of see-through." This is accomplished by controlling the display's liquid crystals to fully open, allowing light reflected from an object placed on the screen to pass through to an underlying sensing module. The solution also contemplates using a set of different lighting sources, including primary colored lights (RGB) and "special" lights (e.g., infrared or ultraviolet), to illuminate the object and capture various features (’082 Patent, Abstract; col. 6:20-43).
- Technical Importance: This method enables a standard display to function as a multi-modal scanner capable of capturing not only standard color images but also specialized data for security, counterfeit detection, or biometric applications (’082 Patent, col. 12:40-54).
Key Claims at a Glance
- The complaint asserts at least independent claim 20 (’082 Patent, col. 16:20-31; Compl. ¶28).
- Essential elements of Claim 20 include:
- A display device comprising a display unit driven to display a scanning region.
- A sensing module integrated with the display unit.
- At least one light source to illuminate a portion of an object placed in the scanning region.
- The display unit is "driven to have a moment of see-through."
- At least one source is turned on to cause the sensing module to generate an image.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 9,560,293 - "Method and Apparatus for Image Capture Through a Display Screen"
- Technology Synopsis: This patent details a specific optical assembly for an under-display scanner. The invention proposes using a wedge-shaped light guide with a "parabolic curvature" on one end that acts as an "edge-type micro-optical light guide reflector." This structure is designed to collect light reflected from an object on the display and focus it onto an image sensor disposed at the other end of the light guide (’293 Patent, Abstract).
- Asserted Claims: The complaint asserts at least independent claim 1 (’293 Patent, col. 15:47-16:2; Compl. ¶40).
- Accused Features: The complaint alleges that the optical assembly within the TCL 20 Pro's fingerprint scanner, which includes a light guide and reflector, infringes this patent ('Compl. ¶41).
III. The Accused Instrumentality
Product Identification
- The TCL 20 Pro smartphone and other TCL mobile/handheld devices with similar functionality (Compl. ¶13, 16).
Functionality and Market Context
- The core accused functionality is the optical fingerprint scanner embedded underneath the display screen (Compl. ¶13). A specification sheet snippet included in the complaint identifies this feature as "Fingerprint (under display, optical)" (Compl. ¶17, p. 4). The complaint alleges that this system operates by displaying a scanning region on the screen, using a light source to illuminate a user's finger placed on that region, and capturing an image of the fingerprint with a sensor located under the display (Compl. ¶18, 31). Plaintiff identifies Defendant as a "leading manufacturer and seller of smart phones" (Compl. ¶2). The complaint includes a diagram from the TCL 20 Pro user manual showing an on-screen icon labeled "Fingerprint sensor," illustrating the visible scanning region (Compl. p. 6).
IV. Analysis of Infringement Allegations
’088 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a display device having a viewing area for displaying content... | The TCL 20 Pro is a computing device that includes a display device with a viewing area for displaying content. A diagram from the user manual shows the device's "Touch screen" (Compl. p. 6). | ¶18 | col. 10:13-14 |
| the display device caused to display a scanning region for a user to place a scanning object onto the display device... | The device displays a "Fingerprint sensor" icon on the screen, which constitutes a scanning region where a user is prompted to place their finger (the scanning object). | ¶18 | col. 10:15-18 |
| wherein the scanning region is defined visibly to the user and smaller than the viewing area in size... | The on-screen fingerprint icon is visible to the user and occupies a small portion of the larger display screen, as shown in the user manual diagram (Compl. p. 6). | ¶18 | col. 10:19-21 |
| a portion of the scanning object falling into the scanning region is scanned by an array of sensors embedded in the display device... | The product specifications identify the sensor as being "under display, optical," which the complaint alleges constitutes an array of sensors embedded in the device that scans the user's finger. | ¶17, 18 | col. 10:22-25 |
| a circuit module, coupled to the sensors, reading out sensing signals from the sensors to produce an image of the portion of the scanning object... | The device contains a circuit module coupled to the optical sensors that reads out the signals to produce a fingerprint image. | ¶19 | col. 10:26-31 |
’082 Patent Infringement Allegations
| Claim Element (from Independent Claim 20) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a display unit driven to display thereon at least a scanning region; | The TCL 20 Pro display unit is driven to show a fingerprint icon, which serves as the scanning region. | ¶29 | col. 16:21-22 |
| a sensing module integrated with the display unit; | The product specifications state the fingerprint scanner is "under display, optical," which is alleged to be a sensing module integrated with the display unit. | ¶30 | col. 16:23-24 |
| at least a light source to illuminate a portion of an object being placed in the scanning region... | The accused device uses a light source to illuminate the user's finger. The complaint provides a third-party article explaining that optical scanners "incorporate arrays of LEDs or even your phone's display as a flash to light up the picture" (Compl. p. 11). | ¶31 | col. 16:25-27 |
| wherein the display unit is driven to have a moment of see-through... | The complaint alleges the display unit is driven to have a "moment of see-through" to allow the sensor to capture an image of the object. | ¶31 | col. 16:28-29 |
| and at least a source is turned on to cause the sensing module to generate an image of the portion of the object. | The light source is turned on during scanning to illuminate the finger, which causes the sensing module to generate an image. | ¶31 | col. 16:29-31 |
Identified Points of Contention
- Scope Questions: A potential dispute for the ’088 Patent may center on the term "embedded in the display device." The defense could argue this requires sensors to be physically interleaved within the display layers (e.g., between the panel and backlight as shown in Fig. 2A), whereas the accused product's sensor is likely located entirely underneath the display stack.
- Technical Questions: A significant technical question arises for the ’082 Patent concerning the "moment of see-through" limitation. The patent's specification heavily describes this mechanism in the context of controlling "liquid crystals" in an LCD display (’082 Patent, col. 5:25-28). Modern phones with under-display sensors typically use OLED screens, which operate differently (individual pixels turn off rather than a liquid crystal layer becoming transparent). The complaint's reliance on a generic third-party article about optical scanners, rather than specific evidence about the TCL 20 Pro's display technology, raises the question of whether the accused device actually performs this claimed function.
V. Key Claim Terms for Construction
The Term: "moment of see-through" (from '082 Patent, Claim 20)
- Context and Importance: This term is critical because the underlying technology of the accused device's screen (likely OLED) may operate differently from the LCD technology detailed in the patent. The case may turn on whether "see-through" is a broad functional description or is limited to the specific mechanism of transparent liquid crystals. Practitioners may focus on this term because it represents a potential mismatch between the patent's specific teachings and the accused technology.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent's abstract states that scanners are built in display devices "that can be controlled to have a moment of see-through" without specifying the display type, which may support a broader, functional interpretation (’082 Patent, Abstract).
- Evidence for a Narrower Interpretation: The detailed description repeatedly ties the concept to LCDs, stating that "when the liquid crystals are all fully opened, a full amount of the light from the backlighting section 104 goes through the LCD panel 102" (’082 Patent, col. 5:25-28). This language may support limiting the term to the specific physical process of making an LCD panel transparent.
The Term: "an array of sensors embedded in the display device" (from '088 Patent, Claim 1)
- Context and Importance: The definition of "embedded" is central to infringement. The dispute will likely be whether a sensor module placed under a self-contained display panel meets this limitation, or if it requires a more intimate integration within the panel's layers.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes a scanning module being located "behind or within an LCD unit," suggesting that placement underneath the primary display unit could fall within the claim's scope (’088 Patent, col. 7:30-34).
- Evidence for a Narrower Interpretation: Figure 2A of the patent depicts the "scanning mechanism 204" located in a space between the "LCD panel 202" and the "backlighting unit 208," which could be interpreted as requiring the sensors to be situated within the constituent layers of the overall display assembly, not merely placed below it (’088 Patent, Fig. 2A).
VI. Other Allegations
Indirect Infringement
- The complaint alleges induced infringement for all three patents. The basis for inducement is the allegation that TCL provides products like the TCL 20 Pro to end-users with the knowledge and intent that the users will directly infringe by using the accused fingerprint scanning feature (Compl. ¶22, 34, 45). The complaint suggests that user manuals and other instructions direct users on how to operate the infringing functionality.
Willful Infringement
- Willfulness is alleged based on Defendant's knowledge of the patents "at least as of the date of this Complaint" (Compl. ¶21, 33, 44). The complaint does not allege any pre-suit knowledge of the patents or the alleged infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
- A key question will be one of technological equivalence: can the "moment of see-through" functionality, described in the ’082 patent in the context of LCDs with liquid crystals, be proven to read on the operation of the accused device's likely OLED display, where pixels are turned off to allow an underlying sensor to capture an image? The distinction between these two mechanisms will be a central point of contention.
- A second core issue will be one of definitional scope: does the term "embedded in the display device" from the ’088 patent require the image sensors to be physically integrated among the display's internal layers, as some patent figures suggest, or is placement underneath the complete display stack sufficient to meet the claim limitation?
- A final evidentiary question will be one of specificity: does the complaint's infringement theory for the ’293 patent, which claims a highly specific optical structure including an "edge-type micro-optical light guide reflector" with "parabolic curvature," find sufficient support in the evidence presented, or does it rely on conclusory allegations that will require substantial factual development?