DCT
2:24-cv-00178
Malikie Innovations Ltd v. ASUSTeK Computer Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Malikie Innovations Ltd. and Key Patent Innovations Ltd. (Ireland)
- Defendant: ASUSTeK Computer Inc. (Taiwan)
- Plaintiff’s Counsel: Reichman Jorgensen Lehman & Feldberg LLP
- Case Identification: 2:24-cv-00178, E.D. Tex., 08/30/2024
- Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendant, a foreign corporation, conducts substantial business in the district, including selling accused products through online channels and nationwide retailers with a physical presence in the district, such as Walmart and Best Buy.
- Core Dispute: Plaintiff alleges that Defendant’s laptops, Chromebooks, and related peripherals infringe four patents, originally developed by Blackberry, concerning rechargeable battery safety, touchscreen gesture interfaces, video compression, and configurable power/data cables.
- Technical Context: The asserted patents relate to foundational technologies in modern portable computing, addressing device power efficiency, user interface usability, and the implementation of data transfer and charging standards.
- Key Procedural History: Plaintiff is the successor-in-interest to a patent portfolio created by Blackberry Ltd. The complaint alleges that Defendant has been on notice of the ’847 Patent and the ’147 Patent family since at least August 26, 2016. Notice for the remaining two patents is alleged to have begun with the filing of the instant complaint. These allegations of pre-suit knowledge may form the basis for claims of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2006-03-17 | ’147 Patent Priority Date |
| 2007-10-19 | ’847 Patent Priority Date |
| 2008-01-10 | ’581 Patent Priority Date |
| 2010-04-30 | ’066 Patent Priority Date |
| 2011-06-07 | ’581 Patent Issue Date |
| 2012-12-18 | ’847 Patent Issue Date |
| 2015-11-03 | ’147 Patent Issue Date |
| 2016-03-22 | ’066 Patent Issue Date |
| 2016-08-26 | Alleged pre-suit notice of ’847 and ’147 Patents to Defendant |
| 2024-03-07 | Accused Asus Chromebook Flip CX5 noted as available in E.D. Tex. |
| 2024-08-30 | Amended Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,956,581 - “Rechargeable battery pack,” issued June 7, 2011
The Invention Explained
- Problem Addressed: The patent’s background describes how traditional rechargeable battery packs include thermal protectors directly in the main current path to prevent overheating. While critical for safety, these components contribute to the battery's Equivalent Series Resistance (ESR), which reduces the total usable energy and shortens the operational time of an electronic device (’581 Patent, col. 2:48-64).
- The Patented Solution: The invention proposes a battery pack architecture where the thermal protection circuit is removed from the primary power-delivery path. Instead, the thermal circuit monitors temperature and, upon detecting an overtemperature condition, independently controls an electronic switch to interrupt the main current flow. This design separates the thermal safety function from the main power path, allowing for a lower ESR without compromising safety (’581 Patent, Fig. 3; col. 3:1-11).
- Technical Importance: By lowering ESR, this approach aimed to improve battery efficiency and extend the "talk time" of portable electronics, a significant design consideration for the power-dense mobile devices of the era (’581 Patent, col. 2:50-52).
Key Claims at a Glance
- The complaint asserts independent method claim 10 (Compl. ¶37).
- The essential elements of claim 10 include:
- Employing a power cell to supply current.
- Employing an electronic switch to conduct or prevent substantially all current from the power cell.
- Employing a thermal protection circuit to monitor for an overtemperature condition and cause the electronic switch to assume a non-conducting state.
- Providing a negligible current from the power cell to the thermal protection circuit.
U.S. Patent No. 8,334,847 - “System having user interface using object selection and gestures,” issued December 18, 2012
The Invention Explained
- Problem Addressed: The patent notes that as virtual interfaces on touchscreens become populated with numerous controls, the display can become crowded. This makes it difficult for a user to accurately select a specific displayed object due to the close proximity of other selectable items (’847 Patent, col. 1:36-41).
- The Patented Solution: The invention describes a user interface system that differentiates between a user's intent to select an on-screen object and their intent to perform a gesture (e.g., a swipe). The system measures the "motion magnitude" of a touch on the screen; if the movement is below a set threshold, the system interprets it as a selection of a proximate object, but if it exceeds the threshold, it is identified as a gesture that executes a different function (’847 Patent, Abstract; col. 4:10-18). The interface may be arranged in multiple layers, and the system can conduct a hierarchical search through these layers to identify the selected object (’847 Patent, col. 2:62-67).
- Technical Importance: This technology provided a method for creating more reliable and less ambiguous user interactions on dense touch-sensitive displays, a key challenge for the usability of early smartphones and other touch-based devices (’847 Patent, col. 1:11-17).
Key Claims at a Glance
- The complaint asserts independent method claim 14 (Compl. ¶45).
- The essential elements of claim 14 include:
- Detecting a touch in a container area having selectable objects on overlapping first and second layers of a multilayer display.
- Comparing the magnitude of the touch's movement to a threshold value.
- Executing a function associated with the movement if the magnitude exceeds the threshold (a "gesture").
- Detecting if the touch is in an active area of a selectable object if the magnitude is below the threshold (a "selection").
- Executing a function associated with the selection of that object.
Multi-Patent Capsule: U.S. Patent No. 9,179,147 - “Soft decision and iterative video coding for MPEG and H.264,” issued November 3, 2015
Technology Synopsis
This patent discloses a method for improving video compression efficiency by using "soft decision" quantization and iterative encoding. This allows for joint optimization of different functional elements within a hybrid video encoder, such as motion prediction and quantization, to achieve a better rate-distortion performance than if each element were optimized in isolation (’147 Patent, Abstract; Compl. ¶51).
Asserted Claims
The complaint asserts at least independent claim 10 (Compl. ¶53).
Accused Features
The complaint accuses electronic devices, such as the ASUS Vivobook Pro 16X OLED Laptop with an NVIDIA GPU, that allegedly encode video by obtaining an optimal sequence of quantized coefficients for a block of transform residuals (Compl. ¶53).
Multi-Patent Capsule: U.S. Patent No. 9,292,066 - “Configuring cable lines to provide data and power,” issued March 22, 2016
Technology Synopsis
This patent describes a system where an upstream device (e.g., a laptop or charger) and a downstream device can negotiate to reconfigure the lines in a USB-type cable. The method allows traditional data lines (D+/D-) to be dynamically repurposed to supply electrical power, potentially at different voltages or in addition to the standard power line, to meet the specific needs of the downstream device (’066 Patent, Abstract; Compl. ¶59).
Asserted Claims
The complaint asserts at least independent claim 1 (Compl. ¶61).
Accused Features
The complaint accuses Asus devices, chargers, docks, and cables that implement the USB-C standard, which allegedly enables them to supply and/or receive power over cable lines in an infringing manner (Compl. ¶61, ¶63).
III. The Accused Instrumentality
Product Identification
The complaint identifies a range of ASUSTeK Computer Inc. ("Asus") products, including laptops, Chromebooks, and related peripherals (Compl. ¶37, ¶45, ¶53, ¶61). Specific examples cited include the "Asus Chromebook Flip CX5," the "Asus Vivobook 14 M413DA" containing a C31N1911 rechargeable battery pack, and the "ASUS Vivobook Pro 16X OLED Laptop with a NVIDIA® GeForce® RTX™ 4060 GPU" (Compl. ¶31, ¶37, ¶53).
Functionality and Market Context
The complaint alleges that the accused Asus products incorporate technologies that practice the patented inventions. For the ’581 Patent, the Vivobook 14 is alleged to contain a battery pack with a Texas Instruments manager that provides independent overvoltage/overcurrent and overtemperature protection circuits (Compl. ¶37). For the ’847 Patent, accused products are alleged to feature touchscreens and software that enable gesture recognition based on the magnitude of motion (Compl. ¶45, ¶47). The complaint references an exhibit to show an example of an accused Asus Chromebook on sale in the district (Compl. ¶31; Exhibit 5). The products are positioned in the mainstream consumer electronics market and sold through extensive distribution channels in the U.S. (Compl. ¶29, ¶30).
IV. Analysis of Infringement Allegations
’581 Patent Infringement Allegations
| Claim Element (from Independent Claim 10) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| employing a power cell to supply current; | The accused Asus Vivobook contains a rechargeable battery pack with a Li-ion power cell. | ¶37 | col. 2:50-51 |
| employing an electronic switch to conduct substantially all of the current passing through the power cell... and to prevent substantially all of the current...; | The battery pack contains electronic switching devices that control the flow of current from the power cell. | ¶37 | col. 2:52-56 |
| employing a thermal protection circuit to monitor for an overtemperature condition and to cause the electronic switch to assume the non-conducting condition...; | The battery pack manager allegedly includes an overtemperature protection circuit that independently causes the switching devices to enter a non-conducting condition. | ¶37 | col. 3:1-11 |
| and providing a negligible current from the power cell to the thermal protection circuit. | The thermal protection circuit is allegedly not in the main power path, and thus receives only a negligible current from the power cell. | ¶37 | col. 3:55-65 |
Identified Points of Contention (’581 Patent)
- Technical Question: The allegation hinges on the accused Texas Instruments battery pack manager containing two protection circuits that independently control the main switch. A central question will be whether the overtemperature circuit directly causes the switch to open, as depicted in the patent’s embodiments, or if it merely sends a signal to a single, central control logic that makes the final decision, which may present a mismatch with the claim language.
- Scope Question: The term "negligible current" may require construction. The dispute may turn on quantitative evidence of how much current flows to the thermal protection circuit in the accused device and whether that amount is properly characterized as "negligible" in the context of the patent.
’847 Patent Infringement Allegations
| Claim Element (from Independent Claim 14) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| detecting a touch or a contact on a display in a container area having selectable objects... on a first layer... and a second... overlapping the first layer; | The accused Asus products have a touchscreen display with an interface that presents selectable controls in what is alleged to be a multilayer display arrangement. | ¶45, ¶47 | col. 2:62-67 |
| comparing a magnitude of the movement of the touch or the contact to a threshold value; | The software on the accused products allegedly analyzes the magnitude of a user's touch movement and compares it to a threshold. | ¶45, ¶47 | col. 4:13-15 |
| executing a function associated with the movement when the comparison indicates that the magnitude... extends beyond the threshold value; | When the motion magnitude exceeds the threshold, the system allegedly identifies the input as a gesture and executes a corresponding function. | ¶45, ¶47 | col. 4:51-54 |
| detecting whether the touch or the contact is in an active area of one of the selectable objects when the... magnitude... is below the threshold value; | When the motion magnitude is below the threshold, the system allegedly identifies the input as a selection of a proximate on-screen object. | ¶45, ¶47 | col. 4:10-18 |
| and executing a function associated with a selection of the one of the selectable objects...; | Upon identifying the input as a selection, the system executes the function associated with the selected object. The complaint references an exhibit from Asus's advertising to support this functionality (Exhibit 7). | ¶45, ¶47 | col. 4:10-18 |
Identified Points of Contention (’847 Patent)
- Technical Question: Infringement appears to depend on whether the accused software uses "motion magnitude" as the specific dispositive factor for distinguishing a selection from a gesture. The analysis may explore whether the accused products use a more complex algorithm incorporating other factors (e.g., time, pressure, acceleration), potentially creating a technical mismatch with the claim.
- Scope Question: A dispute may arise over whether the terms "container" and "multilayer display arrangement", which are described in the patent in a FLASH® player context, can be construed to read on the user interface architecture of the modern operating systems (e.g., Android, Chrome OS) running on the accused products.
V. Key Claim Terms for Construction
Term: "independently cause" (from '581 Patent, claim 10)
- Context and Importance: This term is central to the claimed invention, which separates the thermal protection circuit from the main power path while ensuring it can still cut off power. The scope of "independently cause" will be critical. A narrow construction might require direct, unmediated control over the switch, while a broader construction could encompass signaling a shared controller.
- Intrinsic Evidence for a Broader Interpretation: The specification states that the overvoltage/overcurrent circuitry and the thermal protection circuitry "can each independently cause the electronic switch... to assume an 'OFF'... condition," which does not explicitly forbid the use of an intermediary controller (’581 Patent, col. 3:1-6).
- Intrinsic Evidence for a Narrower Interpretation: The embodiment in Figure 6 depicts the thermal protector (115) triggering a separate transistor (125) that in turn robs the drive to the main switches (105, 110), a mechanism that operates distinctly from the main control IC chip (100). This could support a narrower reading requiring a control path that is separate from the primary overvoltage control logic.
Term: "motion magnitude" (from '847 Patent, claim 14)
- Context and Importance: The claim requires differentiating a gesture from a selection based specifically on this metric. The case may turn on whether the accused devices' gesture recognition relies on this particular parameter.
- Intrinsic Evidence for a Broader Interpretation: The patent provides a general description, stating the magnitude "may be determined by the difference between the coordinates on the touchscreen display at which the manipulation begins and the coordinates at which the manipulation ends," which could be read to cover any distance-based measurement (’847 Patent, col. 4:15-18).
- Intrinsic Evidence for a Narrower Interpretation: The specification discusses this determination in the context of "an ActionScript® routine associated with the container" in a "FLASH® environment" (’847 Patent, col. 4:18-24). This link to a specific software environment could be used to argue for a narrower construction that does not extend to the more complex gesture recognition algorithms potentially used in modern operating systems.
VI. Other Allegations
Indirect Infringement
The complaint alleges both induced and contributory infringement for all four asserted patents. Inducement is primarily based on allegations that Asus encourages and instructs customers, through advertising and user manuals, to use the accused products in an infringing manner (e.g., Compl. ¶39, ¶47, ¶55, ¶63). Contributory infringement is based on allegations that Asus supplies material components of the inventions (e.g., specific battery packs, software) that are not staple articles of commerce and are incapable of substantial non-infringing use (e.g., Compl. ¶40, ¶48, ¶56, ¶64).
Willful Infringement
The complaint alleges willful infringement for all asserted patents. For the ’847 and ’147 Patents, the willfulness claim is based on alleged pre-suit knowledge of the patents and their infringement since August 26, 2016 (Compl. ¶44, ¶52). For the ’581 and ’066 Patents, willfulness is based on knowledge gained from the present lawsuit, constituting an allegation of post-suit willfulness (Compl. ¶36, ¶60).
VII. Analyst’s Conclusion: Key Questions for the Case
- A primary issue will be one of technical operation: For the ’581 patent, the case may turn on whether the accused battery manager contains a thermal circuit that "independently causes" the main power switch to open, or if it merely reports data to a central controller. For the ’847 patent, a key question is whether the accused software distinguishes user input based specifically on "motion magnitude", or if it uses a more complex, multi-factor algorithm that falls outside the claim’s scope.
- A second core issue will be definitional scope tied to technological evolution: Can claim terms like "container" and "multilayer display arrangement" from the ’847 patent, which are described in the context of a FLASH-based environment, be construed broadly enough to cover the modern graphical user interface frameworks implemented in the accused Asus products?
- An evidentiary focus will likely be on willfulness: For the ’847 and ’147 patents, the allegation of pre-suit notice dating to 2016 raises the stakes. The court will examine the evidence supporting this notice and whether Defendant's subsequent conduct meets the standard for egregious behavior that could warrant enhanced damages.