DCT
2:22-cv-00472
Scramoge Technology Ltd v. Bayerische Motoren Werke AG
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Scramoge Technology Ltd. (Ireland)
- Defendant: Bayerische Motoren Werke AG (Germany)
- Plaintiff’s Counsel: BC Law Group, P.C.
- Case Identification: 2:22-cv-00472, E.D. Tex., 12/14/2022
- Venue Allegations: Venue is asserted on the basis that the defendant, BMW, is a foreign corporation, against whom suit may be brought in any judicial district.
- Core Dispute: Plaintiff alleges that Defendant’s in-vehicle wireless charging systems infringe four patents related to the efficiency, structure, and control of wireless power transmitters.
- Technical Context: The technology concerns inductive wireless charging pads integrated into automobiles, a feature of growing importance for consumer convenience in the automotive market.
- Key Procedural History: A significant post-filing event concerns U.S. Patent No. 10,193,392. An Inter Partes Review (IPR) Certificate, issued on December 1, 2023, indicates that all claims of the '392 Patent, including the asserted claim 1, have been cancelled. This development suggests that the infringement count related to this patent may be rendered moot.
Case Timeline
| Date | Event |
|---|---|
| 2008-11-14 | '537 Patent Priority Date |
| 2010-11-02 | '537 Patent Issue Date |
| 2014-01-08 | '392 Patent Priority Date |
| 2014-04-03 | '685 Patent Priority Date |
| 2015-12-03 | '400 Patent Priority Date |
| 2019-01-29 | '392 Patent Issue Date |
| 2019-03-26 | '400 Patent Issue Date |
| 2020-01-28 | '685 Patent Issue Date |
| 2022-12-14 | Complaint Filing Date |
| 2023-12-01 | '392 Patent IPR Certificate Cancelling Claims 1-8 Issued |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,546,685 - "Wireless power transmitting apparatus," issued January 28, 2020
The Invention Explained
- Problem Addressed: In multi-coil wireless charging systems, there is a need to increase the efficiency of power transmission and improve the durability of the apparatus, which can be compromised by the arrangement and support of the transmitting coils ('685 Patent, col. 1:41-47).
- The Patented Solution: The invention proposes a soft magnetic substrate with an integrated, precisely shaped structure to hold multiple transmitting coils. This structure includes a surrounding wall, and importantly, internal protrusions with "stepped" portions that support a central transmitting coil, which enhances magnetic flux directionality and provides robust physical support ('685 Patent, col. 2:3-20; Fig. 11).
- Technical Importance: This design offers a method for manufacturing more durable and potentially more efficient multi-coil charging pads by integrating the physical support structure directly into the magnetic substrate that guides the charging field ('685 Patent, col. 5:30-38).
Key Claims at a Glance
- The complaint asserts independent claim 1 and reserves the right to assert other claims (Compl. ¶9-10).
- Independent Claim 1: An apparatus comprising:
- a first transmitting coil;
- a second transmitting coil;
- a third transmitting coil on the first and second transmitting coils;
- a substrate to accommodate the coils, which itself comprises:
- a wall to surround parts of the first and second coils;
- a first protrusion inside the first coil;
- a second protrusion inside the second coil;
- wherein the third coil is disposed between the first and second protrusions;
- wherein the first protrusion has a "first stepped portion" to support the third coil; and
- wherein the second protrusion has a "second stepped portion" to support the third coil.
U.S. Patent No. 10,193,392 - "Wireless power transfer device and wireless power transfer system," issued January 29, 2019
The Invention Explained
- Problem Addressed: Wireless power transmitters generate spurious waves, or harmonics, which can cause electromagnetic interference with surrounding electronics and reduce power transfer efficiency ('392 Patent, col. 1:50-54).
- The Patented Solution: The invention describes a transmitter that uses a full bridge inverter controlled by a Pulse Width Modulation (PWM) signal. The solution is to determine and use a specific duty ratio for the PWM signal at which the ratio of the magnitude of a key harmonic component to the magnitude of the fundamental frequency is at a minimum, thereby reducing harmonic distortion ('392 Patent, col. 2:50-63; Fig. 17). An Inter Partes Review Certificate issued December 1, 2023, indicates all claims (1-8) of this patent have been cancelled ('392 Patent, IPR Certificate, p. 2).
- Technical Importance: This control method provides a way to actively minimize unwanted electronic noise generated during wireless charging, which is critical for systems embedded in complex electronic environments like automobiles ('392 Patent, col. 1:11-15).
Key Claims at a Glance
- The complaint asserts independent claim 1 and reserves the right to assert other claims (Compl. ¶16-17).
- Independent Claim 1 (Cancelled): A transmitter comprising:
- a control part for generating first to fourth AC power control signals; and
- a power conversion part for generating an AC power (with positive and negative polarity output voltages) in response to the signals;
- wherein the power conversion part includes first through fourth switching elements connected between various nodes and ground;
- wherein the positive polarity output voltage is generated when the first and fourth switching elements are turned on;
- wherein the negative polarity output voltage is generated when the second and third switching elements are turned on;
- wherein a duty ratio of the positive voltage is determined by a "falling time of the fourth AC power control signal"; and
- wherein a duty ratio of the negative voltage is determined by a "falling time of the third AC power control signal."
Multi-Patent Capsule: U.S. Patent No. 7,825,537 - "Inductive power transfer system and method," issued November 2, 2010
- Technology Synopsis: This patent describes a method for optimizing wireless power transfer. It teaches a system that actively monitors a parameter indicating the efficiency of power transfer and, in a feedback loop, automatically adjusts a characteristic of the driving electric current (such as its frequency) to maximize that efficiency ('537 Patent, Abstract).
- Asserted Claims: Independent claim 1 is asserted (Compl. ¶24).
- Accused Features: The complaint alleges that BMW's wireless chargers embody this adaptive control, infringing through direct use, inducement of customers, and contributory infringement (Compl. ¶23, ¶25-26).
Multi-Patent Capsule: U.S. Patent No. 10,243,400 - "Wireless power transmitter," issued March 26, 2019
- Technology Synopsis: This patent focuses on the physical coil arrangement in a multi-coil transmitter to eliminate "dead spots" and improve efficiency. It discloses a structure with a first transmission coil on one side of a Printed Circuit Board (PCB) and second and third coils on the opposite side, arranged to overlap with the first coil ('400 Patent, Abstract; Fig. 7). The control system then selects the single best-aligned coil for power transmission.
- Asserted Claims: Independent claim 1 is asserted (Compl. ¶34).
- Accused Features: The complaint accuses the multi-coil arrangement within the BMW wireless charging trays of infringement (Compl. ¶33).
III. The Accused Instrumentality
Product Identification
- The complaint identifies certain BMW automobiles equipped with a wireless charger, specifically naming the "BMW wireless charging tray (Model Nos. WCH-184a, WCH-189, and WCH-189a)" included in vehicles such as the BMW 5, 6, X5, X7, and M3 series (collectively, the "Accused Products") (Compl. ¶9, ¶16, ¶23, ¶33).
Functionality and Market Context
- The Accused Products are in-vehicle systems designed to provide inductive wireless charging for mobile devices like smartphones (Compl. ¶9). The complaint alleges these systems operate "according to the Qi standard" (Compl. ¶25). This functionality is presented as a convenience feature within BMW's premium vehicles, integrating mobile device support directly into the car's interior.
IV. Analysis of Infringement Allegations
The complaint references, but does not include, claim chart exhibits. The following summary is based on the narrative allegations. The complaint does not provide sufficient detail for a full technical analysis of infringement for any specific element, making discovery a critical next step.
'685 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a substrate to accommodate the first transmitting coil, the second transmitting coil, and the third transmitting coil | The BMW wireless charging tray includes a substrate that accommodates its transmitting coils. | ¶9 | col. 2:6-10 |
| wherein the substrate comprises: a wall to surround a part of an outer circumference of the first transmitting coil and a part of an outer circumference of the second transmitting coil | The substrate within the accused charging tray is alleged to have a wall structure that surrounds portions of its coils. | ¶9, ¶10 | col. 7:29-34 |
| a first protrusion inside an inner circumference of the first transmitting coil; and a second protrusion inside an inner circumference of the second transmitting coil | The substrate within the accused charging tray is alleged to have protrusions inside its coils. | ¶9, ¶10 | col. 8:1-5 |
| wherein the first protrusion comprises a first stepped portion to support the third transmitting coil, and wherein the second protrusion comprises a second stepped portion to support the third transmitting coil | The internal protrusions within the accused charging tray's substrate are alleged to have stepped portions that support another coil. | ¶9, ¶10 | col. 9:48-52 |
'392 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a control part for generating first to fourth AC power control signals | The accused charging tray contains a control part that generates control signals for its power conversion circuitry. | ¶16, ¶17 | col. 12:1-4 |
| a power conversion part for generating an AC power...wherein the power conversion part includes: a first switching element...a second switching element...a third switching element...a fourth switching element | The accused charging tray contains a power conversion part with switching elements alleged to be configured as claimed. | ¶16, ¶17 | col. 12:16-36 |
| wherein a duty ratio of the positive polarity output voltage is determined by a falling time of the fourth AC power control signal, and wherein a duty ratio of the negative polarity output voltage is determined by a falling time of the third AC power control signal | The control logic of the accused charging tray is alleged to determine the output voltage duty ratio based on the falling times of its internal control signals. | ¶16, ¶17 | col. 20:25-42 |
Identified Points of Contention
- Structural Questions ('685 Patent): A central question will be whether the physical construction of the accused BMW charging tray includes protrusions with the specific "stepped portion" geometry required by claim 1, or if it uses a different support structure. The complaint's conclusory allegations will require factual support from technical teardowns or discovery.
- Functional Questions ('392 Patent): Assuming the patent were valid, the dispute would focus on the specific operational logic of the accused controller. The analysis would require evidence showing that the duty ratios of its positive and negative voltages are determined specifically by the "falling time" of the fourth and third control signals, respectively, as opposed to other control parameters like rising times or signal widths.
- Validity ('392 Patent): The primary point of contention for the '392 Patent is its validity. Given the post-filing IPR certificate cancelling all claims, a key question for the court will be whether Count II can proceed.
V. Key Claim Terms for Construction
For the '685 Patent
- The Term: "stepped portion"
- Context and Importance: This structural term is at the core of claim 1 of the '685 Patent. The infringement analysis will depend on whether the support structures within the BMW tray meet this definition. Practitioners may focus on this term because its construction will define the specific geometry required for infringement, distinguishing the invention from more generic ledges or supports.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification does not provide an explicit definition, which could support an argument for applying the term's plain and ordinary meaning, potentially encompassing any multi-level support structure.
- Evidence for a Narrower Interpretation: The figures, particularly Figure 11, show a distinct, multi-level step geometry (1010, 1020). A defendant may argue that the term should be limited to the specific embodiment shown, where the step provides both vertical and lateral support for the third transmitting coil (1030) ('685 Patent, Fig. 11; col. 9:48-52).
For the '392 Patent
- The Term: "duty ratio... is determined by a falling time"
- Context and Importance: This functional limitation is critical to defining how the patented controller operates. Infringement hinges on whether the accused controller uses this specific timing relationship. Practitioners may focus on this term because it links the output waveform directly to a single edge ("falling time") of a control signal, potentially excluding systems that determine the duty cycle based on pulse width or both rising and falling edges.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims do not state the falling time is the only factor, which might allow for an interpretation where the falling time is a determinative input, even if other factors are also considered.
- Evidence for a Narrower Interpretation: The specification repeatedly links the duty ratio (Ton) to the timing of the falling edges (Tf21, Tf22) of specific control signals, as illustrated in the timing diagrams ('392 Patent, Fig. 12-13; col. 15:5-10). This could support a narrower construction where the falling time is the primary, if not sole, determinant of the duty ratio's end point.
VI. Other Allegations
Indirect Infringement
- The complaint alleges both induced and contributory infringement for the '537 Patent (Compl. ¶25-26). The inducement claim is supported by allegations that BMW instructs its customers on how to use the Accused Products in an infringing manner through materials like user manuals and online videos (Compl. ¶25). The complaint includes a visual screenshot from a BMW instructional video showing a phone being placed on the charging tray to illustrate this point (Compl. p. 7). This screenshot depicts a user placing a phone onto the in-vehicle charger, demonstrating the intended use that Plaintiff alleges is infringing (Compl. p. 7).
Willful Infringement
- The complaint does not contain a separate count for willful infringement. However, it alleges that BMW has knowledge of the '537 Patent "at least as of the filing and service of this complaint," which provides a basis for post-suit willful infringement and enhanced damages (Compl. ¶25). The prayer for relief also requests a finding that this is an "exceptional case" under 35 U.S.C. § 285, which is consistent with an intent to pursue a willfulness claim (Compl. p. 11).
VII. Analyst’s Conclusion: Key Questions for the Case
- The Question of Mootness: The most immediate issue is the status of the '392 Patent. Given that an IPR proceeding concluded with the cancellation of all claims after the complaint was filed, a central question is whether the court will find Count II to be moot, effectively removing one of the four asserted patents from the case.
- The Question of Structural Equivalence: For the patents concerning physical structures ('685 and '400), a key issue will be one of definitional scope. Can the term "stepped portion" in the '685 Patent be construed to read on the specific support geometry used in the accused BMW charging tray? This will likely require detailed claim construction and expert testimony on the physical product.
- The Question of Functional Infringement: For the method patent ('537) and the now-cancelled '392 Patent, the dispute would turn on functional operation. Does the accused system's control logic perform the specific functions required by the claims—namely, monitoring and adjusting current to "maximize" efficiency ('537 Patent) or determining voltage duty cycles by the "falling time" of control signals ('392 Patent)—or is there a fundamental mismatch in the operational algorithm? Proving this will require significant evidence from discovery.