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., et al. (China, Cayman Islands, Hong Kong)
- Plaintiff’s Counsel: Rubino IP; TRUELOVE LAW FIRM, PLLC
- Case Identification: 2:22-cv-00241, E.D. Tex., 01/30/2024
- Venue Allegations: Plaintiff alleges venue is proper because Defendants are not U.S. residents and may be sued in any judicial district, and further because Defendants have allegedly committed acts of infringement and conduct business within the Eastern District of Texas.
- Core Dispute: Plaintiff alleges that Defendant’s smartphones equipped with under-display optical fingerprint scanners infringe three patents related to methods and apparatuses for capturing images through a display screen.
- Technical Context: The technology at issue involves integrating optical sensors within or behind a mobile device's display to enable biometric authentication, a key security and convenience feature in the modern smartphone market.
- Key Procedural History: The complaint notes that the original complaint in this action was filed on June 28, 2022, a date Plaintiff uses to establish Defendants' alleged knowledge of the patents-in-suit for its willfulness allegations.
Case Timeline
| Date | Event |
|---|---|
| 2011-08-20 | Priority Date for '088, '082, '293 Patents |
| 2016-01-05 | U.S. Patent 9,232,088 Issues |
| 2016-01-19 | U.S. Patent 9,241,082 Issues |
| 2017-01-31 | U.S. Patent 9,560,293 Issues |
| 2022-06-28 | Original Complaint Filed |
| 2024-01-30 | First Amended 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," issued January 5, 2016
The Invention Explained
- Problem Addressed: The patent's background describes that while many mobile devices have cameras, they are "not ideal for capturing images of documents" in high quality, and it would be a "desirable feature" if a device's Liquid Crystal Display (LCD) could be equipped with scanning capabilities ('088 Patent, col. 1:44-49; col. 2:7-16).
- The Patented Solution: The invention integrates an image sensing module into an LCD device. By controlling the liquid crystals in the display to become fully transparent, reflected light from an object placed on the screen (e.g., a document or fingerprint) can pass through to an underlying sensor. The technology allows for scanning to occur within a specific, defined region on the display ('088 Patent, Abstract; col. 2:27-43).
- Technical Importance: This approach proposes embedding scanning functions directly into a display assembly, which could eliminate the need for a separate scanning device and add functionality to ubiquitous consumer electronics ('088 Patent, col. 2:13-16).
Key Claims at a Glance
- The complaint asserts independent claim 1 and 13, focusing its allegations on claim 1 (Compl. ¶26).
- Independent Claim 1 requires:
- A computing device with a display device that has a viewing area.
- The display device is caused to display a "scanning region" for a user to place an object on.
- The scanning region is "defined visibly to the user" and is smaller than the total viewing area.
- A portion of the object is scanned by an "array of sensors embedded in the display device."
- A "circuit module" reads out signals from the sensors to produce an image.
U.S. Patent No. 9,241,082 - "Method and Apparatus for Scanning Through a Display Screen," issued January 19, 2016
The Invention Explained
- Problem Addressed: The patent identifies a need for technology that can scan objects on a portable device, noting that this capability should not increase the device's size. It also highlights a need to scan for marks "that are not visible under normal lighting," such as security features on a currency bill ('082 Patent, col. 2:11-24).
- The Patented Solution: The invention describes a display unit that can be driven to have a "moment of see-through." In this state, a light source illuminates an object placed on the screen, and an integrated sensing module generates an image of it. The specification details how different colored light sources, including a "special light" such as ultraviolet or infrared, can be used to reveal features not visible under normal illumination ('082 Patent, Abstract; col. 3:1-24).
- Technical Importance: This technology aims to transform a standard display into a multi-spectral imager, enabling applications beyond simple document capture, such as biometric analysis or the verification of security features on official documents ('082 Patent, col. 3:5-9).
Key Claims at a Glance
- The complaint asserts independent claim 20 (Compl. ¶37).
- Independent Claim 20 requires:
- A display device with a display unit driven to display a "scanning region."
- A "sensing module integrated with the display unit."
- "at least a light source" to illuminate an object placed in the scanning region.
- The display unit is "driven to have a moment of see-through."
- A source is turned on to cause the sensing module to generate an image.
U.S. Patent No. 9,560,293 - "Method and Apparatus for Image Capture Through a Display Screen," issued January 31, 2017
- Patent Identification: U.S. Patent No. 9,560,293, "Method and Apparatus for Image Capture Through a Display Screen," issued January 31, 2017 (Compl. ¶18).
- Technology Synopsis: This patent describes an apparatus for capturing an image through a display screen. The invention focuses on a specific optical assembly within an image sensing module, which includes a "first light guide" with one end "shaped in parabolic curvature" that acts as an "edge-type micro-optical light guide reflector" to collect and focus light onto an image sensor disposed at the other end of the guide ('293 Patent, Abstract; col. 3:12-24).
- Asserted Claims: The complaint asserts independent claim 1 (Compl. ¶49).
- Accused Features: Plaintiff alleges that the optical fingerprint scanner in the TCL 20 Pro infringes by including an image sensing module with an optical assembly and image sensor that allegedly practices the claimed light guide with a parabolic, reflective end (Compl. ¶50).
III. The Accused Instrumentality
Product Identification
- The complaint names the TCL 20 Pro smartphone as an exemplary accused product, along with other TCL mobile and handheld devices incorporating similar technology (Compl. ¶22, ¶25).
Functionality and Market Context
- The accused functionality is the "optical fingerprint scanners embedded underneath the display screens" (Compl. ¶22, ¶25). The complaint cites a third-party specification sheet identifying the sensor as "Fingerprint (under display, optical)" (Compl. ¶26, p. 8). A user manual diagram included in the complaint shows a specific "Fingerprint sensor" icon on the device's touch screen, indicating a defined area for user interaction (Compl. p. 10). The complaint alleges TCL is one of the "world's largest manufacturers" of smartphones, suggesting significant commercial activity (Compl. ¶9).
IV. Analysis of Infringement Allegations
'9,232,088 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a computing device comprising: a display device having a viewing area for displaying content, the display device caused to display a scanning region for a user to place a scanning object onto the display device in accordance with the scanning region, | The TCL 20 Pro is alleged to be a computing device with a display that shows a scanning region for the user to place their finger. A user manual diagram shows a dedicated "Fingerprint sensor" area on the screen (p. 10). | ¶27 | col. 18:56-62 |
| wherein the scanning region is defined visibly to the user and smaller than the viewing area in size, | The complaint alleges the scanning region is visibly defined and smaller than the full display. The visual evidence of the fingerprint icon on the screen supports this allegation (p. 10). | ¶27 | col. 18:63-65 |
| a portion of the scanning object falling into the scanning region is scanned by an array of sensors embedded in the display device; and | The complaint alleges a portion of the user's finger is scanned by sensors embedded in the display, citing a third-party source identifying the sensor as "under display, optical" (p. 8). | ¶27 | col. 18:65 - 19:2 |
| 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, wherein the image captures details on the portion of the scanning object. | The complaint alleges the TCL 20 Pro contains a circuit module that processes signals from the sensors to produce a fingerprint image. | ¶28 | col. 19:3-7 |
- Identified Points of Contention:
- Scope Questions: A primary question may be how to construe the term "embedded in the display device." The parties may dispute whether this requires the sensors to be interspersed within the display's layers or if it is broad enough to cover a sensor module located underneath the entire display panel assembly.
- Technical Questions: What evidence demonstrates that the accused sensor is an "array of sensors" as claimed? The infringement case will depend on evidence from the device itself to confirm its internal structure and operation align with the claim limitations.
'9,241,082 Infringement Allegations
| Claim Element (from Independent Claim 20) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A display device comprising; a display unit driven to display thereon at least a scanning region; | The TCL 20 Pro is alleged to be a display device with a display unit that presents a scanning region. This is shown in a user manual diagram depicting the "Fingerprint sensor" location on the screen (p. 13). | ¶38 | col. 16:51-52 |
| a sensing module integrated with the display unit; and | The complaint alleges the device has a sensing module integrated with the display, supported by a specification sheet listing an "under display, optical" fingerprint sensor (p. 14). | ¶39 | col. 16:53-54 |
| at least a light source to illuminate a portion of an object being placed in the scanning region and against the display unit, | The complaint alleges the device uses a light source to illuminate the finger. It supports this with a third-party diagram explaining that optical scanners may use the "phone's display as a flash to light up the picture" (p. 15). | ¶40 | col. 16:55-57 |
| wherein the display unit is driven to have a moment of see-through, and at least a source is turned on to cause the sensing module to generate an image of the portion of the object. | The complaint alleges that the display is driven to have a "moment of see-through" and a light source is activated to generate an image, based on general principles of under-display optical scanner operation. | ¶40 | col. 16:58-62 |
- Identified Points of Contention:
- Scope Questions: The meaning of "integrated with the display unit" may be a central point of dispute. A court will need to determine if a sensor placed beneath a display panel meets this limitation. Additionally, the scope of "moment of see-through," a term described in the patent in the context of LCDs, will be critical when applied to the accused OLED/AMOLED display technology, which functions differently.
- Technical Questions: What evidence will be presented to show that the accused OLED display is "driven to have a moment of see-through"? The complaint relies on a general technical explanation, and the case may turn on whether discovery reveals specific operational details of the TCL 20 Pro that map onto this claim limitation.
V. Key Claim Terms for Construction
Term: "embedded in the display device" (’088 Patent, Claim 1)
- Context and Importance: The physical location of the sensor array relative to the display is a core element of the claim. The outcome of the infringement analysis for the '088 Patent may depend entirely on whether the accused sensor, typically located under the display panel, is found to be "embedded in" it.
- Intrinsic Evidence for a Broader Interpretation: The specification states the invention relates to "scanners built in LCD devices" and an "image sensing module disposed in the liquid crystal display (LCD) device" ('088 Patent, col. 2:27-28, 2:46-48). A party could argue that "in the device" encompasses any location within the complete packaged component, including underneath the display layers.
- Intrinsic Evidence for a Narrower Interpretation: The patent also discusses a scanning mechanism located in a "space...between an LCD panel...and the backlighting unit" ('088 Patent, col. 5:40-44) and a module "disposed behind the layer of liquid crystals" ('088 Patent, col. 2:59-60). A party could argue this language distinguishes between being "in" the display layers versus "behind" them, supporting a narrower construction that requires physical interspersion.
Term: "moment of see-through" (’082 Patent, Claim 20)
- Context and Importance: This term describes the fundamental operating principle of the claimed invention. Its construction is critical because the patent's specification primarily describes this concept in the context of LCD technology, while the accused products use OLED technology.
- Intrinsic Evidence for a Broader Interpretation: A party advocating for a broad definition might argue the term is functional, covering any technique where a display is temporarily made to permit light to pass from an object on the surface to a sensor for imaging, regardless of the underlying mechanism (e.g., twisting liquid crystals vs. selectively illuminating pixels).
- Intrinsic Evidence for a Narrower Interpretation: The detailed description heavily focuses on controlling LCDs, where liquid crystals are "twisted to open a pathway" for light to pass through ('082 Patent, col. 5:10-14). A party could argue the term is inextricably linked to this disclosed LCD-specific mechanism and does not cover the self-illuminating pixel operation of an OLED display.
VI. Other Allegations
- Indirect Infringement: The complaint alleges Defendants induce infringement by providing the accused smartphones to customers and end-users, along with instructions in user manuals and other publications that allegedly direct users to operate the devices in an infringing manner (i.e., by using the fingerprint scanner) (Compl. ¶29, ¶41, ¶52).
- Willful Infringement: Willfulness is alleged based on Defendants' purported knowledge of the patents-in-suit since at least the filing date of the original complaint on June 28, 2022. The complaint also pleads willful blindness in the alternative, alleging Defendants have a policy of not reviewing the patents of others (Compl. ¶30, ¶42, ¶53).
VII. Analyst’s Conclusion: Key Questions for the Case
- Technology Mismatch and Claim Scope: The patents-in-suit are heavily grounded in the context of LCD technology, describing how liquid crystals can be controlled to become transparent. The accused products, however, use OLED/AMOLED displays, which operate on a different principle of self-illuminating pixels. A central issue for the court will be one of technical scope: can claim terms like "moment of see-through," which are explained in the context of LCDs, be construed to read on the distinct functionality of an OLED-based under-display scanner?
- The Definition of "Embedded": The infringement case for the '088 patent will likely turn on the claim construction of "embedded in the display device." The key question will be whether this limitation requires the sensor to be physically interspersed with the layers of the display itself, or if it is broad enough to cover a common industry practice where the sensor module is placed underneath the complete display stack.
- Evidentiary Proof of Operation: The complaint's infringement allegations rely significantly on high-level product specifications and general diagrams of how optical scanners work. A key question for trial will be one of evidentiary sufficiency: will discovery yield specific, technical evidence demonstrating that the accused TCL products' hardware and software actually operate in the manner required by the specific claim limitations, particularly concerning the alleged "moment of see-through" and the "parabolic" light guide reflector of the '293 patent?