DCT
2:24-cv-00186
Truesight Communications LLC v. Transcend Information Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Truesight Communications LLC (Texas)
- Defendant: Transcend Information Inc. (Taiwan)
- Plaintiff’s Counsel: Fabricant LLP; Rubino IP; McKool Smith, P.C.
- Case Identification: 2:24-cv-00186, E.D. Tex., 03/15/2024
- Venue Allegations: Venue is alleged to be proper because the 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 memory storage devices infringe a patent related to methods for quickly and securely transferring media files to a secure digital (SD) card from a kiosk.
- Technical Context: The technology concerns the digital distribution of media content, such as movies or music, via standalone kiosks directly onto portable storage media like SD cards for later consumption.
- Key Procedural History: The complaint does not mention any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history related to the patent-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2009-10-21 | U.S. Patent 8,977,783 Priority Date (Provisional App.) |
| 2015-03-10 | U.S. Patent 8,977,783 Issued |
| 2024-03-15 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,977,783 - High-Speed Secure Content Transfer to SD Card from Kiosk, issued March 10, 2015
The Invention Explained
- Problem Addressed: The patent addresses the demand for acquiring digital media content in "quick, convenient ways," such as through kiosk systems that download content to a customer's portable storage device (’783 Patent, col. 1:19-25). The implicit challenge is to perform this transfer both quickly, to avoid customer frustration, and securely, to protect the rights of content holders.
- The Patented Solution: The invention proposes a method and system for transferring files from a kiosk to an SD card that prioritizes speed and security by sequencing the writing operations. The core idea is to first write all the large, playable content to an unsecure area of the SD card. Only after this is complete, and the transaction is presumably finalized, is the critical security information (e.g., an encrypted content key) written to a separate, protected area of the card (’783 Patent, Abstract; col. 2:15-22). This process, illustrated in a flowchart in Figure 3, avoids slow, alternating writes between secure and unsecure memory areas, thereby increasing overall transfer speed (’783 Patent, col. 10:59-65).
- Technical Importance: This approach allows for the rapid transfer of large media files, such as full-length movies, while ensuring that the content remains unplayable until the final, secure data is written, which mitigates the risk of incomplete or unauthorized copying (’783 Patent, col. 2:20-22; col. 10:1-9).
Key Claims at a Glance
- The complaint specifically asserts infringement of at least independent claim 7 (Compl. ¶15).
- The essential elements of independent claim 7, a method claim, include:
- Identifying a media file for download to an SD card.
- Pre-allocating space on the SD card for a playable content portion, which is encrypted by a content key that is itself encrypted by a user key.
- Writing all directory blocks of the playable content portion together.
- Thereafter, writing all data blocks of the playable content portion sequentially.
- Writing all data destined for an unsecure area of the SD card prior to writing any data (except a user key) to a secure area of the card.
- The complaint alleges infringement of "one or more claims" and reserves the right to assert additional claims (Compl. ¶14).
III. The Accused Instrumentality
Product Identification
The complaint accuses "Transcend memory modules and storage devices," and specifically identifies the "Transcend microSDHC Class 10" product line (Compl. ¶14-15).
Functionality and Market Context
The complaint alleges that the accused products themselves perform a method of transferring media files from a kiosk to an SD card (Compl. ¶16). The alleged functionality mirrors the steps of claim 7, including identifying a media file, pre-allocating space, encrypting content, writing directory and data blocks in a specific sequence, and writing to unsecure and secure areas of the card in a specific order (Compl. ¶16). The complaint characterizes Transcend as a "leading manufacturer and seller of memory storage devices in the world" (Compl. ¶2). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
’783 Patent Infringement Allegations
| Claim Element (from Independent Claim 7) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method of quickly and securely transferring media files from a kiosk to a secure digital (SD) card... identifying a media file for download to the SD card; | The Transcend microSDHC Class 10 performs a method of quickly and securely transferring media files from a kiosk to a secure digital (SD) card. [It] performs the step of identifying a media filed for download to the SD card. | ¶16 | col. 8:27-29 |
| pre-allocating space on the SD card for a playable content portion of the media file, wherein the playable content portion of the media file is encrypted by a content key that is encrypted by a user key; | The Transcend microSDHC Class 10 performs the step of pre-allocating space on the SD card for a playable content portion of the media file, wherein the playable content portion of the media file is encrypted by a content key that is encrypted by a user key. | ¶16 | col. 13:61-67 |
| writing all directory blocks of the playable content portion of the media file together and, thereafter in time, writing all data blocks sequentially of the playable content portion of the media file; and | The Transcend microSDHC Class 10 performs the step of writing all directory blocks of the playable content portion of the media file together and, thereafter in time, writing all data blocks sequentially of the playable content portion of the media file. | ¶16 | col. 14:1-5 |
| writing all data that is to be written to an unsecure area of the SD card, including the encrypted playable content, prior in time to writing any data to a secure area of the SD card, except for the user key. | The Transcend microSDHC Class 10 performs the step of writing all data that is to be written to an unsecure area of the SD card, including the encrypted playable content, prior in time to writing any data to a secure area of the SD card, except for the user key. | ¶16 | col. 14:6-11 |
Identified Points of Contention
- Actor Question: A primary question may be whether the accused product, a memory card, can be said to "perform" the active method steps of Claim 7 (e.g., "identifying a media file," "pre-allocating space"). The patent specification appears to attribute these functions to a "kiosk" system rather than the SD card itself (’783 Patent, col. 4:1-4). The complaint's allegation that the memory card itself is the actor performing these steps suggests a potential dispute over direct infringement.
- Technical Question: What evidence does the complaint provide that the accused memory cards, when in use, implement the specific, sequential writing process required by the claim (e.g., "writing all directory blocks ... together" before writing sequential data blocks)? Proving this specific operational detail, which the patent links to performance optimization, may be a central evidentiary issue.
V. Key Claim Terms for Construction
The Term: "from a kiosk"
- Context and Importance: This term, appearing in the preamble of method claim 7, may be found to be a limitation on the claim's scope. Its construction is critical because the accused products are general-purpose memory cards, not necessarily sold or used exclusively with kiosks. Practitioners may focus on this term to determine whether infringement can occur only when the accused card is used with a device meeting the patent's definition of a "kiosk."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The complaint does not provide a basis for a broad interpretation. Parties seeking one might argue the term is merely introductory and intended to describe a primary but not exclusive environment.
- Evidence for a Narrower Interpretation: The patent's title, abstract, and detailed description consistently frame the invention in the context of a "kiosk." The specification provides a detailed description of a kiosk system comprising multiple functional modules, such as a "customer interface module," "transaction module," and "media file processing module" (’783 Patent, Fig. 1; col. 4:1-4). This could support an argument that the method is limited to operation within such a structured system.
The Term: "writing all directory blocks ... together"
- Context and Importance: This term defines a specific, non-obvious sequence of operations within the claimed method. The infringement analysis will depend on whether the accused products, in operation, follow this precise sequence.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue "together" means logically grouped or written in a single phase, without requiring strict physical contiguity on the memory medium itself.
- Evidence for a Narrower Interpretation: The patent explains that this step is performed to avoid "context switching from creating the directory blocks to writing data blocks" which "may slow down the write process" (’783 Patent, col. 9:50-54). This stated technical purpose could support a narrower construction requiring that the directory blocks are written consecutively in a single, uninterrupted operation before data block writing begins.
VI. Other Allegations
Indirect Infringement
The complaint alleges inducement of infringement, stating that Defendant provides customers with "instructions on how to operate the infringing technology" through its "website, product literature and packaging, and other publications" (Compl. ¶19).
Willful Infringement
Willfulness is alleged based on two theories: first, that Defendant had knowledge of its infringement at least as of the filing of the complaint (Compl. ¶18); and second, in the alternative, that Defendant was willfully blind to the patent-in-suit prior to the lawsuit due to an alleged "policy of not reviewing the patents of others" (Compl. ¶18).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of infringement and actorhood: Can the plaintiff prove that the accused memory card—a typically passive storage medium—is the entity that directly "performs" the active processing and writing steps of the claimed method, which the patent appears to attribute to a host "kiosk" system?
- A key evidentiary question will be one of technical implementation: Assuming the actor question is resolved, what evidence will demonstrate that the accused memory cards, during operation, adhere to the highly specific, multi-step writing sequence mandated by Claim 7, particularly the requirement to write all directory blocks "together" before writing data blocks?