DCT

2:24-cv-00702

Wacom Co Ltd v. Shenzhen Qianfenyi Intelligent Technology Co Ltd

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:24-cv-00702, E.D. Tex., 10/27/2025
  • 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 active stylus products infringe seven U.S. patents related to stylus communication protocols, tilt and pressure detection, internal voltage management, and manufacturing methods.
  • Technical Context: The lawsuit concerns active styluses, which are battery-powered input devices that electronically communicate with touch-sensitive screens to enable digital writing and drawing.
  • Key Procedural History: Both parties are participants in the Universal Stylus Initiative (USI), a standards organization governing interoperability for active styluses. The complaint details a history of licensing negotiations beginning in November 2020 and alleges that Defendant refused to negotiate a license on Reasonable and Non-Discriminatory (RAND) terms in good faith, constituting a breach of the USI’s intellectual property rights policy. This Second Amended Complaint follows an original complaint filed on August 28, 2024.

Case Timeline

Date Event
2010-02-05 Earliest Priority Date for U.S. Patent 10,108,277
2011-10-28 Earliest Priority Date for U.S. Patents 9,280,220 and 9,933,866
2014-05-12 Earliest Priority Date for U.S. Patent 10,437,356
2015-02-25 Earliest Priority Date for U.S. Patent 9,977,519
2015-10-16 Earliest Priority Date for U.S. Patent 9,690,399
2016-03-08 U.S. Patent 9,280,220 Issued
2017-03-24 Earliest Priority Date for U.S. Patent 10,768,720
2017-06-27 U.S. Patent 9,690,399 Issued
2018-04-03 U.S. Patent 9,933,866 Issued
2018-05-22 U.S. Patent 9,977,519 Issued
2018-10-23 U.S. Patent 10,108,277 Issued
2019-10-08 U.S. Patent 10,437,356 Issued
2020-09-08 U.S. Patent 10,768,720 Issued
2020-11 Wacom holds video conference with Maxeye, offers license
2023-12-04 Wacom sends letter to Maxeye notifying it of infringement
2024-08-28 Wacom files original complaint
2025-04-22 Certificate of Correction issued for U.S. Patent 10,768,720
2025-06-18 Maxeye alleges counterclaims for breach of contract
2025-10-27 Wacom files Second Amended Complaint

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

U.S. Patent No. 9,280,220 - “Pulse- or frame-based communication using active stylus,” issued March 8, 2016

The Invention Explained

  • Problem Addressed: The patent addresses the need for an active stylus to transmit its own sensor data, such as pressure or button states, back to a host device through the device's existing touch sensor infrastructure (Compl. ¶31; ’220 Patent, col. 1:49-57).
  • The Patented Solution: The invention describes a stylus that can receive an initial signal from a touch-sensor device and, in response, generate and transmit a second signal back to the device. This second signal is created by "modulating a carrier signal" with data from the stylus's internal sensors. The host device can then demodulate this signal to extract the sensor data, enabling bidirectional communication (Compl. ¶35; ’220 Patent, Abstract). The specification describes this communication as potentially occurring on a pulse-by-pulse or frame-by-frame basis (’220 Patent, col. 11:4-6).
  • Technical Importance: This technology allows an active stylus to function as more than a simple pointing device by enabling it to transmit rich, dynamic data to a host device without requiring a separate communication channel like Bluetooth.

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (Compl. ¶29).
  • Claim 1 requires:
    • A stylus with one or more sensors and one or more electrodes.
    • Logic operable to receive sensor data from the sensors.
    • Logic operable to receive a first signal generated by the device.
    • Logic operable to generate a second signal by modulating a carrier signal based on the sensor data.
    • Logic operable to transmit this second signal to the device in response to the first signal, where the sensor data can be obtained by demodulating the second signal.

U.S. Patent No. 9,977,519 - “Active pen with bidirectional communication,” issued May 22, 2018

The Invention Explained

  • Problem Addressed: The patent addresses the challenge of managing communications between a touch-input device and multiple active pens simultaneously, ensuring that data from different pens can be received without collision or interference (’519 Patent, col. 1:25-40).
  • The Patented Solution: The patent discloses a time-division multiplexing protocol. An input device broadcasts a "current beacon signal" that initiates a "beacon period" containing multiple timeslots. This beacon signal includes an "upstream packet" that assigns a specific pen ID, timeslot, and frequency to a particular active pen. The pen's transceiver receives this beacon and then transmits its own data, such as button status, back to the device during its assigned timeslot and using its assigned frequency (Compl. ¶¶46-48; ’519 Patent, col. 2:5-12). Figure 3 of the patent illustrates this structure of beacon signals followed by downstream packets from multiple pens in designated timeslots.
  • Technical Importance: This system provides a structured framework for multiple active pens to communicate with a single host device, enabling multi-user collaboration or the use of multiple tools by a single user on one screen.

Key Claims at a Glance

  • The complaint asserts at least independent claim 20 (Compl. ¶41).
  • Claim 20 requires:
    • An active pen with an ID register and a button.
    • A transceiver configured to receive a "current beacon signal" from an input device, where the signal contains an "upstream packet" specifying the pen's ID, a timeslot, and a frequency.
    • The beacon signal initiates a beacon period comprising a plurality of timeslots.
    • The transceiver is also configured to transmit a "downstream packet" containing the button's status back to the device during the specified timeslot and using the specified frequency.

Multi-Patent Capsule: U.S. Patent No. 10,108,277, "Pointer, Position Detection Apparatus and Position Detection Method," issued October 23, 2018

  • Technology Synopsis: This patent addresses the detection of a pointer's angle or tilt. The invention utilizes a pen with at least two electrodes in its tip, with the second electrode being positioned "off an axis" of the pen. These electrodes generate distinguishable signals that form capacitive relationships with the sensor surface, allowing the host device to calculate angle information based on the detected signals (’277 Patent, Abstract; Certificate of Correction).
  • Asserted Claims: At least independent claim 1 (Compl. ¶54).
  • Accused Features: The complaint alleges that the accused styluses, which support a tilt function, contain a first electrode and a second electrode arranged off the stylus axis to generate distinguishable signals for obtaining angle information (Compl. ¶¶57-60).

Multi-Patent Capsule: U.S. Patent No. 10,437,356, "Timing Synchronization of Active Stylus and Touch Sensor," issued October 8, 2019

  • Technology Synopsis: The patent describes a method for establishing timing synchronization between a stylus and a touch sensor. The stylus receives synchronization signals, converts them into digital sequences, and correlates these sequences against a predefined wide-band code. This correlation process generates a common timing reference that governs subsequent communication between the stylus and the device (’356 Patent, Abstract).
  • Asserted Claims: At least independent claim 1 (Compl. ¶66).
  • Accused Features: The accused styluses are alleged to contain circuitry that receives beacon synchronization signals, converts them into digital sequences, and uses a code matching process to establish a common timing reference for transmitting data back to the host device (Compl. ¶¶69-70).

Multi-Patent Capsule: U.S. Patent No. 9,690,399, "Signal Decoding and Modulation Processing System for Capacitive Stylus," issued June 27, 2017

  • Technology Synopsis: This patent details a signal processing system within a capacitive stylus for bidirectional communication. The system includes a "decoding module" to decode an incoming signal from a touch panel (e.g., a Direct Sequence Spread Spectrum signal) and a "modulating module" that generates an outgoing signal (e.g., a Differential Binary Phase Shift Keying signal) in response (’399 Patent, Abstract).
  • Asserted Claims: At least independent claim 1 (Compl. ¶76).
  • Accused Features: The complaint alleges the accused styluses include a circuit board with a microcontroller, a decoding module for uplink communication, and a modulating module that uses DBPSK for downlink communication (Compl. ¶¶78-81).

Multi-Patent Capsule: U.S. Patent No. 9,933,866, "Active Stylus with High Voltage," issued April 3, 2018

  • Technology Synopsis: The invention relates to improving the signal robustness of an active stylus by using high-voltage signals. It describes a stylus containing a component that converts a low internal voltage (e.g., 1-3 volts from a battery) to a high voltage, which is then used to transmit signals from the stylus tip. This creates a larger potential difference, making the signal easier for the touch sensor to detect (’866 Patent, Abstract).
  • Asserted Claims: At least independent claim 1 (Compl. ¶87).
  • Accused Features: The accused styluses are alleged to use a low-voltage AAAA battery and contain a component that converts this to a high voltage (greater than 20V) for transmission from the tip electrodes (Compl. ¶90).

Multi-Patent Capsule: U.S. Patent No. 10,768,720, "Electronic Pen," issued September 8, 2020

  • Technology Synopsis: This patent claims a method for manufacturing the internal circuit board of an electronic pen. The method involves forming distinct areas on a single flexible substrate: a "circuit placement part" for the main electronics and a "writing pressure detector placement part" for the pressure sensor, connected by a "line part." This integrated design is intended to simplify assembly and reduce electrical connection work (’720 Patent, Abstract).
  • Asserted Claims: At least method claim 19, asserted under 35 U.S.C. § 271(g) (importation of a product made by a patented process) (Compl. ¶98).
  • Accused Features: The circuit boards within the accused styluses are alleged to have been manufactured using the claimed method, as evidenced by their construction on a flexible substrate with distinct, longitudinally arranged parts for circuitry and the pressure detector (Compl. ¶¶100-104).

III. The Accused Instrumentality

Product Identification

  • The accused products are branded and non-branded active styluses manufactured, offered for sale, and sold by Defendant Maxeye, including under the brand names Maxeye, Penoval, and Metapen (Compl. ¶¶11, 14). The complaint uses the ME-USI306 stylus model as a specific exemplary infringing product (Compl. ¶29).

Functionality and Market Context

  • The accused products are USI-compliant active styluses designed for use with touch-enabled devices such as tablets and Chromebooks (Compl. ¶16). Their alleged functionality includes the ability to digitally write, draw, and sketch (Compl. ¶32). Technical features identified in the complaint include a pressure sensor with "4096 pressure sensitivity," electrodes for bidirectional communication with a touch sensor, and internal logic for signal processing (Compl. ¶¶31-33). The complaint includes a photograph of the ME-USI306 stylus's internal circuit board, showing its components (Compl. p. 10, top image). These products are marketed and sold in the United States through online retailers including Amazon and Walmart (Compl. ¶13).

IV. Analysis of Infringement Allegations

’220 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a stylus comprising: one or more sensors; The ME-USI306 stylus includes a pressure sensor for detection of writing pressure, advertised with "4096 pressure sensitivity." ¶31 col. 5:30-50
one or more electrodes configured to communicate with a device by receiving signals from and transmitting signals to a touch sensor of the device; The stylus includes at least two electrodes that communicate with a tablet by receiving uplink signals and transmitting downlink signals. ¶32 col. 5:3-9
one or more computer-readable non-transitory storage media embodying logic that is operable when executed to receive sensor data from the one or more sensors; The stylus has a circuit board with memory that receives and temporarily stores pressure sensor data for further processing. ¶33 col. 5:58-62
...logic that is operable when executed to receive a first signal generated by the device; During uplink communication, the stylus receives a signal generated by the tablet device. ¶34 col. 6:10-14
...logic that is operable when executed to generate a second signal by modulating a carrier signal based on the sensor data... The stylus generates a downlink signal for the tablet device by modulating a carrier signal with the sensor data. ¶35 col. 6:15-18
...and to transmit to the device, in response to the first signal, the second signal, the sensor data being obtainable by demodulating the second signal. The stylus transmits the modulated signal containing pressure data to the tablet, where it can be demodulated to extract the pressure information. ¶35 col. 6:18-22
  • Identified Points of Contention:
    • Technical Question: The complaint asserts that the downlink signal is generated "by modulating a carrier signal with the sensor data" (Compl. ¶35). A potential point of contention may be whether the specific signal encoding method used by the accused styluses constitutes "modulating a carrier signal" as that term is understood within the context of the ’220 patent's specification.
    • Scope Question: The claim requires transmitting the second signal "in response to the first signal." Analysis may focus on the precise timing and causal relationship between the signal received by the stylus (uplink) and the signal it transmits (downlink) to determine if the "in response to" limitation is met.

’519 Patent Infringement Allegations

Claim Element (from Independent Claim 20) Alleged Infringing Functionality Complaint Citation Patent Citation
An active pen, comprising: an identification (ID) register storing a pen identification (ID); The tablet device assigns the ME-USI306 stylus an identification number, which is stored in the stylus's register. ¶43 col. 18:2-3
a button; The ME-USI306 stylus includes a button. ¶44 col. 18:3-4
a transceiver configured to: receive, from a first input device, a current beacon signal comprising an upstream packet specifying the pen ID, a timeslot, and a frequency... The stylus's receiver is configured to receive a beacon signal from a tablet device to establish a connection, which includes the stylus ID, a timeslot, and a frequency for data transmission. ¶46 col. 2:5-9
...wherein the current beacon signal initiates a current beacon period comprising a plurality of timeslots; The beacon signal initiates a beacon period that includes multiple timeslots which the stylus can use to send data. ¶47 col. 2:9-10
and transmit, to the first input device and during the timeslot specified in the upstream packet, a downstream packet comprising a status of the button using the frequency specified in the upstream packet. The stylus's transmitter communicates with the tablet during the specified timeslot and at the specified frequency, transmitting data that includes the status of the button. The complaint provides a photograph of a disassembled stylus showing its transmitter and receiver components (Compl. p. 10, top image). ¶48 col. 2:10-12
  • Identified Points of Contention:
    • Technical Question: Claim 20 recites a very specific communication protocol where an "upstream packet" within a "beacon signal" specifies three items: pen ID, timeslot, and frequency. A key question will be whether the accused USI-compliant protocol implemented by Defendant's products contains a data structure that maps directly onto this three-part "upstream packet" as required by the claim.
    • Scope Question: Practitioners may examine whether the term "beacon signal comprising an upstream packet" requires a single, monolithic data structure, or if the required information (pen ID, timeslot, frequency) can be conveyed across multiple transmissions that collectively constitute the "beacon signal." The complaint alleges a single signal contains the packet (Compl. ¶46).

V. Key Claim Terms for Construction

For the ’220 Patent:

  • The Term: "modulating a carrier signal"
  • Context and Importance: This term is the core of the invention's technical mechanism for encoding data. The infringement analysis for claim 1 hinges on whether the accused stylus's method of generating its downlink signal falls within the scope of this term.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes the invention in general terms as "wirelessly transmitting signals to a device through a touch sensor of the device" (’220 Patent, col. 1:49-51), suggesting the term could encompass any method of embedding sensor data into a transmitted signal.
    • Evidence for a Narrower Interpretation: The detailed description provides specific examples of modulation, including on-off keying and amplitude shift keying on a pulse-by-pulse basis (’220 Patent, col. 11:4-46). A party could argue these examples limit the term's scope to similar, explicitly described modulation schemes.

For the ’519 Patent:

  • The Term: "upstream packet"
  • Context and Importance: The definition of this term is critical because claim 20 requires it to specify three distinct pieces of information (pen ID, timeslot, and frequency). Infringement depends on whether the beacon signal received by the accused stylus contains a data structure that meets this definition.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes the packet's function as providing configuration data to the pen but does not strictly define its format, stating it "may specify one or more timeslots and one or more frequencies" (’519 Patent, col. 9:30-32). This permissive language may support a broader reading.
    • Evidence for a Narrower Interpretation: Claim 20 itself is arguably the strongest evidence for a narrow interpretation, as it explicitly requires the packet to specify "the pen ID, a timeslot, and a frequency." A party may argue that this conjunctive list requires all three elements to be present in the packet for infringement to occur. Figure 4 of the patent illustrates a "Beacon Signal with upstream packet," suggesting a discrete data entity.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges both induced and contributory infringement for all asserted patents. Inducement is based on Defendant allegedly encouraging and instructing customers to use the accused styluses in an infringing manner through websites, user manuals, and product advertisements (e.g., Compl. ¶¶37, 50, 62). Contributory infringement is based on the allegation that the accused styluses are material components of the infringing system, are not staple articles of commerce, and are not suitable for substantial non-infringing use (e.g., Compl. ¶¶38, 51, 63).
  • Willful Infringement: Willfulness is alleged for all asserted patents. The complaint alleges Defendant had knowledge of the '220, '519, '277, and '356 patents at least as early as December 2023 via a notice letter from Wacom (e.g., Compl. ¶¶36, 49). For the '399, '866, and '720 patents, knowledge is alleged at least as early as the filing date of the original complaint (e.g., Compl. ¶¶82, 92, 105). The complaint further alleges knowledge predating November 2020 (Compl. ¶27).

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

  • A core issue will be one of contractual context: This dispute is heavily framed by the parties' mutual membership in the USI standards organization. The case will likely turn on the enforceability of the USI IPR Policy as a contract and whether Defendant’s alleged refusal to take a license on RAND terms constitutes a breach, which could influence the availability of remedies such as injunctive relief.
  • A key evidentiary question will be one of protocol correspondence: Can Plaintiff demonstrate with technical evidence that the accused USI-compliant styluses implement the highly specific communication protocols recited in the claims, such as the three-part "upstream packet" of the ’519 patent or the "modulation" of a carrier signal in the ’220 patent, or will Defendant be able to establish a fundamental mismatch in technical operation?
  • A central question of process infringement will arise for the '720 patent: Since infringement is alleged under 35 U.S.C. § 271(g), the analysis will depend on whether Plaintiff can prove that the accused styluses sold in the U.S. were manufactured in China using the specific method steps for creating and assembling a flexible circuit board as claimed in the patent.