Volteon LLC v. TCL Technology Group Corp

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Volteon LLC (Texas)
  • Defendant: TCL Technology Group Corp. (China)
  • Plaintiff’s Counsel: RUBINO LAW LLC; TRUELOVE LAW FIRM, PLLC
• Case Identification: 2:23-cv-00138, E.D. Tex., 03/29/2023
• 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 infringe four U.S. patents related to handheld devices incorporating multiple cameras for image capture, processing, and transmission.
• Technical Context: The technology at issue involves the integration of multiple camera systems and associated image processing and transmission hardware into portable, battery-powered devices, a foundational technology in the modern smartphone market.
• Key Procedural History: The complaint does not mention any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history related to the patents-in-suit.

Case Timeline

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

U.S. Patent No. 10,958,819 - "Electric Shaver with Imaging Capability"

• Patent Identification: U.S. Patent No. 10,958,819, "Electric Shaver with Imaging Capability," issued March 23, 2021.

The Invention Explained

• Problem Addressed: The patent's background section describes the difficulty of achieving an effective shave due to poor visibility of the skin surface, particularly in locations without a mirror or in dark environments (’819 Patent, col. 2:3-12).
• The Patented Solution: The invention proposes integrating digital camera functionality into a portable handheld device to capture and display a real-time image of the "shaving area" on either an integrated or a separate display unit, allowing the user to have a better view of the activity without relying on a mirror ('819 Patent, Abstract; col. 2:41-51).
• Technical Importance: This approach aimed to provide real-time visual feedback for personal grooming activities by embedding imaging capabilities directly into the handheld tool being used ('819 Patent, col. 2:36-39).

Key Claims at a Glance

• The complaint asserts independent claim 15 (Compl. ¶18).
• The essential elements of claim 15 include:
  • A handheld device for capturing/displaying images and for "identifying and marking of an element that is part of a human body," for use with a licensed cellular network.
  • A first camera and a second camera, each with an optical lens.
  • An image processor coupled to the cameras.
  • A display for showing captured images and the "marking of the identified element."
  • A cellular antenna and transmitter for sending the captured images to the network.
  • A rechargeable battery.
  • A single handheld casing housing the components, with the two optical lenses attached to two opposed exterior surfaces.
  • The device is identified as being "part of a cellular telephone handset."

U.S. Patent No. 10,986,259 - "Electric Shaver with Imaging Capability"

• Patent Identification: U.S. Patent No. 10,986,259, "Electric Shaver with Imaging Capability," issued April 20, 2021.

The Invention Explained

• Problem Addressed: Like the ’819 Patent from the same family, this patent addresses the need for better visualization of a skin surface during personal care activities like shaving (’259 Patent, col. 2:3-12).
• The Patented Solution: The invention describes a handheld device with two video cameras that capture distinct video streams. These streams are then included in a third video stream transmitted over a Wireless Local Area Network (WLAN), enabling remote viewing of the device's operational area ('259 Patent, Abstract; col. 2:41-51).
• Technical Importance: The technology provided a framework for streaming video from a multi-camera handheld tool over a local wireless network, expanding the options for real-time visual feedback beyond a physically tethered or integrated display ('259 Patent, col. 3:9-19).

Key Claims at a Glance

• The complaint asserts independent claim 1 (Compl. ¶18).
• The essential elements of claim 1 include:
  • A device for capturing and transmitting images and "for identifying an element in at least one of the images."
  • A first video camera outputting a first video stream and a second video camera outputting a second, distinct video stream.
  • A WLAN antenna and a WLAN transmitter.
  • The WLAN transmitter sends a "third video stream that includes the first and second video streams to the WLAN."
  • An image processor configured to process the first video data.
  • A rechargeable battery.
  • A single handheld casing housing the components, with the two optical lenses mounted on two opposed exterior surfaces.

U.S. Patent No. 10,695,922 - "Electric Shaver with Imaging Capability"

• Patent Identification: U.S. Patent No. 10,695,922, "Electric Shaver with Imaging Capability," issued June 30, 2020 (Compl. ¶10).
• Technology Synopsis: This patent describes a handheld device with two digital cameras that capture distinct images. A key feature is a "multiplexer" that combines the digital signals from both cameras to produce a "multiplexed signal," which is then transmitted via a WLAN transmitter (Compl. ¶29). This architecture specifies a particular method for handling data from multiple image sources for wireless transmission.
• Asserted Claims: Independent claim 1 is asserted (Compl. ¶28).
• Accused Features: The complaint alleges that the accused TCL 30 5G smartphone contains a multiplexer that combines signals from its two cameras to produce a multiplexed signal for transmission (Compl. ¶29).

U.S. Patent No. 10,999,484 - "Electric Shaver with Imaging Capability"

• Patent Identification: U.S. Patent No. 10,999,484, "Electric Shaver with Imaging Capability," issued May 4, 2021 (Compl. ¶11).
• Technology Synopsis: This patent claims a method performed by a handheld device. The method includes the steps of capturing two distinct images from two cameras, processing the signals, "identifying...the element in at least one of the captured images using pattern recognition," producing a multiplexed signal from the two image signals, and transmitting that multiplexed signal (Compl. ¶39).
• Asserted Claims: Independent claim 1 is asserted (Compl. ¶38).
• Accused Features: The complaint alleges that the accused TCL 30 5G smartphone performs all steps of the claimed method, including identifying an element via pattern recognition and producing and transmitting a multiplexed signal (Compl. ¶39).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are smartphones manufactured and sold by Defendant, including but not to the TCL Stylus 5G, TCL 30 5G, and TCL 20 Pro 5G. The TCL 30 5G is used as the representative example in the infringement allegations (Compl. ¶14, ¶17-19).

Functionality and Market Context

The complaint describes the TCL 30 5G as a handheld cellular telephone handset. Its relevant technical features include a first camera and a second camera, an image processor, a display, a rechargeable battery, a cellular antenna and transmitter, and a WLAN antenna and transmitter, all housed within a single casing (Compl. ¶19, ¶19 [Count II]). The complaint characterizes Defendant as a "leading manufacturer and seller of smart phones" (Compl. ¶2).
No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

Infringement Allegations: U.S. Patent No. 10,958,819

• Identified Points of Contention:
  • Scope Questions: All asserted patents are titled "Electric Shaver with Imaging Capability" and the specifications extensively discuss shaving. This raises the question of whether a court will construe the term "handheld device" to be limited to personal grooming devices, or if it will be given its plain and ordinary meaning, which would cover smartphones.
  • Technical Questions: Claim 15 requires the device to be for "identifying and marking of an element that is part of a human body." The complaint alleges the TCL 30 5G's image processor performs this function but does not specify which software feature is responsible or how the "marking" is performed (Compl. ¶19). A central question will be whether standard smartphone camera functions like face detection or portrait mode meet this specific claim limitation, especially in light of specification examples that focus on identifying individual hairs ('819 Patent, col. 21:40-47).

Infringement Allegations: U.S. Patent No. 10,986,259

• Identified Points of Contention:
  • Scope Questions: As with the ’819 Patent, a key dispute may arise over whether the term "device" should be narrowed by the specification's focus on electric shavers.
  • Technical Questions: The claim requires the transmission of a "third video stream that includes the first and second video streams." The complaint makes a conclusory allegation that the accused device does this (Compl. ¶19 [Count II]). This raises the question of whether the accused device's hardware and software architecture actually combines two live camera feeds into a single, new stream for transmission, or if it merely switches between transmitting one stream or the other. The technical evidence of how the accused device's video pipeline operates will be critical.

V. Key Claim Terms for Construction

• The Term: "handheld device" ('819 Patent, claim 15) / "device" ('259 Patent, claim 1)

• Context and Importance: The construction of this term is fundamental to the entire case. Defendant may argue that the consistent and overwhelming focus of the patent specifications on "electric shavers" and the problem of shaving should limit the scope of this term to personal grooming tools, thereby excluding general-purpose smartphones. Plaintiff may argue for the term's plain and ordinary meaning, covering any device held in the hand.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The claims themselves use the general terms "handheld device" and "device," and claim 15 of the '819 Patent explicitly states the device is "part of a cellular telephone handset," which may support application to smartphones ('819 Patent, col. 30:1-2).
  • Evidence for a Narrower Interpretation: The title of all four patents is "Electric Shaver with Imaging Capability." The abstract, background, and summary of the invention sections in each patent repeatedly frame the problem and solution in the specific context of shaving and hair removal ('819 Patent, Abstract; col. 1:11-13; col. 2:3-12).

• The Term: "identifying... an element" ('819 Patent, claim 15; '259 Patent, claim 1)

• Context and Importance: This term is critical for determining infringement because the complaint does not specify how the accused smartphones perform this function. Practitioners may focus on this term because its meaning will dictate whether standard camera software features infringe, or if a more specialized capability is required.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The claim language itself does not specify the "element" to be identified or the method used, potentially allowing it to cover general features like faces or bodies detected by standard algorithms.
  • Evidence for a Narrower Interpretation: The specification provides specific examples of what "element" the processor identifies, such as "individual hairs as well as hairy areas" ('819 Patent, col. 3:50-51) and "individual hair that needs to be shaved" ('819 Patent, col. 22:60-61). This suggests the function is more specific than general object or face detection.

VI. Other Allegations

• Indirect Infringement: The complaint alleges induced infringement for all four patents, stating that Defendant knowingly and intentionally induces its customers and end-users to directly infringe by providing the accused smartphones for use in an infringing manner (e.g., Compl. ¶20, ¶22). The allegations of knowledge are based on a date "at least as of the date of this Complaint" (e.g., Compl. ¶21).
• Willful Infringement: While not pleaded as a separate count, the complaint alleges knowing inducement that continues post-filing of the complaint (e.g., Compl. ¶21). The prayer for relief also seeks a declaration that the case is "exceptional" and an award of attorneys' fees under 35 U.S.C. § 285, which is often associated with findings of willful infringement (Compl. p. 14).

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

• A core issue will be one of definitional scope: can claim terms like "handheld device," which arise from patents titled "Electric Shaver with Imaging Capability" and focused on personal grooming, be construed broadly enough to read on general-purpose smartphones? The outcome of claim construction on this point may be dispositive.
• A key evidentiary question will be one of functional specificity: does the standard software in the accused smartphones (e.g., face detection, portrait mode) perform the specific function of "identifying and marking of an element that is part of a human body" as required by the claims, or does the patent specification limit this function to a more granular analysis, such as identifying individual hairs, that the accused products do not perform?
• A central technical question will be one of operational reality: do the accused smartphones combine data from two separate cameras into a "multiplexed signal" or a "third video stream that includes the first and second video streams" for transmission, or do they simply switch between single camera feeds, creating a potential mismatch with the claimed data handling architecture?