DCT
2:22-cv-00419
Waverly Licensing LLC v. Delta Electronics Americas Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Waverly Licensing LLC (Texas)
- Defendant: Delta Electronics (Americas) Ltd. d/b/a Innergie (California)
- Plaintiff’s Counsel: Garteiser Honea, PLLC
- Case Identification: 2:22-cv-00419, E.D. Tex., 10/25/2022
- Venue Allegations: Venue is alleged to be proper based on Defendant maintaining a regular and established business presence in the Eastern District of Texas.
- Core Dispute: Plaintiff alleges that Defendant’s USB power adapters, and the method of using them, infringe a patent related to pre-authorization and charging of battery-operated devices.
- Technical Context: The technology addresses the charging of portable electronics, particularly methods for a device to verify a charger's identity or capabilities before accepting power, a key function in a market with a wide variety of third-party charging accessories.
- Key Procedural History: The asserted patent claims priority to a 2009 provisional application and is part of a patent family with an extensive prosecution history. The complaint notes the patent has been cited in 355 subsequent patents issued to various technology companies.
Case Timeline
| Date | Event |
|---|---|
| 2009-12-25 | U.S. Patent No. 10,938,246 Earliest Priority Date |
| 2021-03-02 | U.S. Patent No. 10,938,246 Issued |
| 2022-10-25 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,938,246 - Method and Apparatus for Charging a Battery-Operated Device
- Issued: March 2, 2021 (the '246 Patent)
The Invention Explained
- Problem Addressed: The patent describes a networked environment of "master" charging devices and "slave" battery-operated devices, where it is necessary to manage which devices are authorized to provide and receive power ('246 Patent, col. 4:5-22). This implies a technical problem of ensuring that a battery-operated device is charged only by a compatible, authorized charger to prevent damage or inefficient performance.
- The Patented Solution: The invention is a battery-operated device that implements a gatekeeping function before charging. The device is configured to first receive a "charger identification" from a charger, check it against a stored "list of charger identifications," and only upon a successful match, proceed to receive energy and charge its battery ('246 Patent, Abstract; Fig. 1). This ensures that only pre-authorized chargers can supply power to the device.
- Technical Importance: An authentication step prior to high-power charging is relevant for device safety and battery longevity, particularly in an open ecosystem like USB-C where accessories from numerous manufacturers must interoperate safely ('246 Patent, col. 4:15-22).
Key Claims at a Glance
- The complaint asserts independent claim 1 ('246 Patent, Compl. ¶28).
- Claim 1 requires a method performed by a battery-operated device, comprising the following essential steps:
- Receiving a charger identification from a charger.
- Determining whether that charger identification is in a stored list of authorized charger identifications.
- In response to a positive determination, receiving energy from the charger.
- Generating power from the received energy using a converter.
- Charging the battery with the generated power.
- Using the battery to power the device's electronic circuitry.
- The complaint does not explicitly reserve the right to assert other claims, but pleadings of this nature typically preserve this option.
III. The Accused Instrumentality
Product Identification
- The complaint identifies the "Innergie 45H" as the lead accused instrumentality, representing a class of "battery chargers and adapters" made and sold by the Defendant (Compl. ¶19). The infringement allegation is directed at the method of charging a compatible device (e.g., a Macbook) using the Defendant's charger (Compl. ¶28(i)).
Functionality and Market Context
- The Innergie 45H is a 45-watt power adapter with dual USB-C and USB-A ports, marketed as a "One For All Power Adapter" (Compl. p. 5). A screenshot from Defendant's website shows the product's marketing image and key features (Compl. p. 5).
- The adapter's technical functionality is alleged to be compliant with the USB Power Delivery (PD) 3.0 standard, including the Programmable Power Supply (PPS) protocol (Compl. ¶22). A marketing graphic from the complaint shows the adapter can supply various voltage levels, including 5V, 9V, 15V, and 20V, consistent with the USB PD standard (Compl. p. 7).
- The complaint alleges that the accused method involves communication between the charger (Source) and a device (Sink) according to the USB PD standard. This communication includes the exchange of messages to negotiate a common specification revision and power profile before energy transfer begins (Compl. ¶23, pp. 12-14). A technical specifications table in the complaint lists the specific output voltages and currents, such as "20V DC/ 2.25A" and "PPS 5V-11V/3A" (Compl. p. 8).
IV. Analysis of Infringement Allegations
'246 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| receive a charger identification from a charger | The battery-operated device (e.g., Macbook) receives messages, such as a "Source_Capabilities" message, from the Innergie 45H charger. This message contains the charger's "specification revision value and capabilities," which is alleged to be the "charger identification." | ¶28(iv), ¶28(v) | col. 35:19-20 |
| determine whether the charger identification is in a list of charger identifications... | The device determines if the received "identification" (i.e., the charger's stated capabilities and USB PD revision) is on a list of supported values. If the charger is not compliant with a supported standard, it is not considered authorized. | ¶28(v), ¶28(vi) | col. 35:21-24 |
| in response to determining that the charger identification is in the list..., receive the energy... | After successfully negotiating and selecting a common specification level based on the received identification, the device accepts energy from the charger. | ¶28(vii) | col. 35:26-27 |
| generate, using the converter, the power from the energy received from the charger | A converter within the device (e.g., circuitry for converting power from USB for battery charging) generates power from the received energy. | ¶28(viii) | col. 35:28-30 |
| charge the battery using the power received from the converter | The generated power is used to charge the battery of the connected device. | ¶28(ix) | col. 35:31-32 |
Identified Points of Contention
- Scope Questions: A primary dispute may arise over the meaning of "charger identification." The complaint equates this term with the standardized capability messages of the USB PD protocol (Compl. ¶28(v)). The question is whether this routine protocol handshake constitutes the specific act of receiving an "identification" as contemplated by the patent, which also discloses more unique identifiers like MAC IDs and serial numbers ('246 Patent, col. 35:14-17).
- Technical Questions: The analysis raises the question of whether a device's firmware checking for compliance with a public standard (e.g., USB PD 3.0) is functionally equivalent to the claimed step of "determin[ing] whether the charger identification is in a list." A court may need to decide if the patent requires a specific lookup against a stored list of unique entities, versus a more general check for protocol compatibility.
V. Key Claim Terms for Construction
The Term: "charger identification"
- Context and Importance: The viability of the infringement claim hinges on this term's scope. Its construction will determine whether the exchange of USB PD capability data meets this limitation. Practitioners may focus on this term because the Plaintiff’s theory maps it to a function inherent in a widely adopted public standard.
- Intrinsic Evidence for a Broader Interpretation: The specification provides a non-exhaustive list for "identifying information" that includes not only unique identifiers like "MAC ID" but also "capabilities, etc." ('246 Patent, col. 4:10-14). This use of "capabilities" may support an argument that a message detailing a charger's technical capabilities functions as an "identification."
- Intrinsic Evidence for a Narrower Interpretation: Dependent claim 5 recites a specific list of unique identifiers ("one of a MAC ID, an IP address, a name, a serial number, a product name, or a manufacturer name") ('246 Patent, col. 35:14-17). A party could argue this suggests the scope of "identification" in the independent claim is limited to such unique identifiers, rather than generic technical specifications shared by all chargers of a certain type.
The Term: "list of charger identifications"
- Context and Importance: This term's definition is critical to determining what the device must check against. The dispute will be whether the "list" can be the set of rules in a device's firmware for checking compliance with a standard, or if it must be a stored data structure of discrete, pre-approved charger identities.
- Intrinsic Evidence for a Broader Interpretation: The patent does not define the format of the "list." The specification refers to a "slave information database" and an "authorized master's list" without detailing its implementation, which could allow for a functional interpretation where firmware logic serves as the list ('246 Patent, col. 4:6-8, col. 4:18-20).
- Intrinsic Evidence for a Narrower Interpretation: The patent's description of checking if a master's information "match[es] with an entry on the authorized list" suggests a lookup process against stored data, not merely a check for protocol compliance ('246 Patent, col. 12:46-47). This phrasing may support an interpretation requiring a discrete data set.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement, stating that Defendant’s advertising and sale of the accused products encourages end-users to perform the infringing method of charging (Compl. ¶¶33, 36). Knowledge is alleged based on Defendant knowing or having reason to know that its products would be used in an infringing manner (Compl. ¶34).
- Willful Infringement: Willfulness is alleged based on Defendant’s continued infringement after receiving notice of the '246 Patent via the filing and service of the complaint (Compl. ¶32). The complaint also asserts a theory of willful blindness, alleging Defendant has a practice of not reviewing third-party patent rights before launching products (Compl. ¶37).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "charger identification", in the context of a system for authenticating "authorized chargers," be construed to cover the standardized, public capability data exchanged as part of the USB Power Delivery protocol?
- A key evidentiary question will be one of functional equivalence: does a device's routine check for compliance with a technical standard (USB PD) perform the same function as the patent's claimed step of "determin[ing] whether the charger identification is in a list," or is there a fundamental mismatch between generic interoperability and a specific, security-oriented authentication process?