DCT

2:24-cv-00819

IngenioSpec LLC v. Samsung Electronics Co Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:24-cv-00819, E.D. Tex., 10/07/2024
  • Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendant Samsung Electronics America, Inc. has a regular and established place of business in the district and has committed acts of infringement there. Venue over Samsung Electronics Co., Ltd. is alleged on the basis that it is a foreign corporation.
  • Core Dispute: Plaintiff alleges that Defendant’s wireless audio products, including the Galaxy Buds2 Pro and Galaxy S24 Ultra, infringe five patents related to the design, charging, communication methods, and hearing enhancement features of head-worn electronic devices.
  • Technical Context: The technology at issue falls within the highly competitive consumer market for wearable electronics, specifically addressing the integration of audio, communication, and power management features into compact, head-worn devices.
  • Key Procedural History: The complaint alleges that Plaintiff sent a letter to Samsung on June 20, 2024, identifying the patents and alleging infringement, which may be used to support allegations of willful infringement. The complaint also states that Plaintiff has licensed portions of its patent portfolio to more than a dozen other corporations, a fact that may become relevant to damages calculations.

Case Timeline

Date Event
2003-04-15 Earliest Priority Date for ’618, ’789, ’104 Patent Family
2004-07-28 Earliest Priority Date for ’518, ’901 Patent Family
2012-02-07 U.S. Patent No. 8,112,104 Issues
2013-11-12 U.S. Patent No. 8,582,789 Issues
2022-11-01 U.S. Patent No. 11,488,618 Issues
2023-11-28 U.S. Patent No. 11,829,518 Issues
2024-06-20 Plaintiff sends notice letter to Defendant
2024-07-23 U.S. Patent No. 12,044,901 Issues
2024-10-07 Complaint Filed

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

U.S. Patent No. 11,829,518 - "Head-Worn Device with Connection Region"

  • Patent Identification: U.S. Patent No. 11,829,518, "Head-Worn Device with Connection Region," issued November 28, 2023.

The Invention Explained

  • Problem Addressed: The patent addresses the challenge of seamlessly integrating a complete electronic system—including audio output, power, communication, and user input—into a wearable device without compromising aesthetics or ease of use (Compl. ¶3).
  • The Patented Solution: The invention describes a self-contained, head-worn wireless apparatus, exemplified as an eyewear frame, that incorporates speakers, a microphone, a rechargeable battery, and wireless circuitry ('518 Patent, Abstract). A key aspect is a "connection region" with exposed conductive pads designed to removably couple with a counterpart connector for purposes such as charging ('518 Patent, Abstract; FIG. 1).
  • Technical Importance: This approach represents a method for embedding comprehensive electronic functionality into a conventional personal accessory, which is a foundational concept for modern smart glasses and other hearable devices (Compl. ¶¶3-4).

Key Claims at a Glance

  • The complaint asserts independent claim 1 and reserves the right to assert others (Compl. ¶23).
  • Claim 1 of the '518 Patent requires:
    • A head-worn wireless electronic apparatus
    • A speaker
    • An electrical connector with at least two conductive pads on a surface
    • The connector is configured to removably couple to corresponding conductive contacts of a separate, external counterpart connector
    • A rechargeable battery
    • A microphone
    • A touch-sensitive input surface for receiving user input

U.S. Patent No. 12,044,901 - "System For Charging Embedded Battery in Wireless Head-Worn Personal Electronic Apparatus"

  • Patent Identification: U.S. Patent No. 12,044,901, "System For Charging Embedded Battery in Wireless Head-Worn Personal Electronic Apparatus," issued July 23, 2024.

The Invention Explained

  • Problem Addressed: The patent background describes the need to provide electrical components in head-worn devices, such as eyewear, without substantially compromising aesthetic design principles (’901 Patent, Abstract).
  • The Patented Solution: The invention discloses a head-worn personal electronic apparatus containing an embedded rechargeable battery and an exposed conductive element that enables interconnection for charging (’901 Patent, Abstract; Compl. ¶31). The solution focuses on integrating power and charging capabilities into the form factor of a wearable device.
  • Technical Importance: This technology facilitates the creation of self-powered, rechargeable wearable devices that remain aesthetically conventional, a key factor for consumer adoption in the wearables market (Compl. ¶3).

Key Claims at a Glance

  • The complaint asserts independent claim 1 and reserves the right to assert others (Compl. ¶32).

  • The complaint summarizes Claim 1 of the '901 Patent as requiring:

    • A personal electronic apparatus configured to be worn by a user
    • A speaker
    • A touch sensitive surface
    • A rechargeable battery
    • Electronic circuitry
    • At least one conductive element partially exposed to enable interconnection
      Multi-Patent Capsule Analysis

  • Patent Identification: U.S. Patent No. 8,112,104, "Adaptable Communication Techniques For Electronic Devices," issued February 7, 2012.

  • Technology Synopsis: The patent relates to a wireless communication system comprising a wireless headset and a separate wireless communication device. The system is described as being capable of converting an incoming text message to audio for the headset user, allowing the user to record an audio reply, and converting that audio reply back into a text message for sending (Compl. ¶40).

  • Asserted Claims: Claim 1 (Compl. ¶41).

  • Accused Features: The combined operation of the Samsung Galaxy Buds2 Pro and Samsung Galaxy S24 Ultra, which allegedly perform text-to-audio and audio-to-text conversions as described (Compl. ¶40).

  • Patent Identification: U.S. Patent No. 8,582,789, "Hearing Enhancement Systems," issued November 12, 2013.

  • Technology Synopsis: The patent describes a hearing enhancement system that personalizes audio for a user. It includes an audio system that receives input signals and a wireless receiver that receives, down-converts, and modifies audio signals based on at least one hearing characteristic of the user (Compl. ¶49).

  • Asserted Claims: Claim 1 (Compl. ¶50).

  • Accused Features: The hearing enhancement or accessibility features of the Samsung Galaxy Buds2 Pro and Samsung Galaxy S24 Ultra system, which allegedly modify audio output based on a user's hearing profile (Compl. ¶49).

  • Patent Identification: U.S. Patent No. 11,488,618, "Hearing Enhancement Methods and Systems," issued November 1, 2022.

  • Technology Synopsis: This patent addresses limitations of traditional hearing aids by proposing a system that does not require an occluding earpiece (’618 Patent, col. 1:24-2:44). The invention uses a first wireless component (e.g., a phone) with a microphone to capture and up-convert audio signals, and a second wireless component (e.g., an earbud) with a speaker to receive, down-convert, and play the audio for the user (Compl. ¶58).

  • Asserted Claims: Claim 1 (Compl. ¶59).

  • Accused Features: The use of the Samsung Galaxy Buds2 Pro and Samsung Galaxy S24 Ultra together as a two-part system for hearing enhancement, where the phone may act as a remote microphone for the earbuds (Compl. ¶58).

III. The Accused Instrumentality

  • Product Identification: The complaint names the Samsung Galaxy Buds2 Pro as the primary accused product, and also names the Samsung Galaxy S24 Ultra in combination with the earbuds for certain infringement counts (Compl. ¶¶22, 31, 40, 49, 58).
  • Functionality and Market Context: The complaint describes the accused products as wireless electronic devices that provide audio output to a user (Compl. ¶22). For the '518 and '901 patents, the key accused functionality is the earbud's ability to removably couple to conductive contacts in its charging case (Compl. ¶22). For the '104, '789, and '618 patents, the accused functionality involves the system-level interaction between the earbuds and a smartphone to perform text/voice conversion and hearing enhancement (Compl. ¶¶40, 49, 58). The complaint does not provide sufficient detail for analysis of the specific software or hardware components that enable the allegedly infringing hearing enhancement or text-to-speech functionalities.

No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint references preliminary infringement claim charts attached as Exhibits 6-10 but does not include them in the filing. Therefore, a tabular analysis is not possible. The narrative infringement theories are summarized below.

'518 Patent Infringement Allegations

The complaint alleges that the Samsung Galaxy Buds2 Pro directly infringes at least claim 1 of the '518 Patent (Compl. ¶¶22-23). The theory appears to map the earbud itself to the "head-worn wireless electronic apparatus." The earbud's audio driver is mapped to the "speaker," its battery to the "rechargeable battery," its external user interface to the "touch-sensitive input surface," its microphones to the "microphone," and its charging contacts to the "electrical connector with at least two conductive pads." The charging case is alleged to be the "counterpart connector external to and separate from" the apparatus (Compl. ¶22).

  • Identified Points of Contention:
    • Scope Questions: A central dispute may arise over the construction of "head-worn wireless electronic apparatus." Defendant may argue that this term, in the context of a patent whose abstract and figures exclusively depict eyewear, cannot be construed to read on an in-ear device (earbud) ('518 Patent, Abstract; FIG. 1).
    • Technical Questions: The complaint does not specify how the Galaxy Buds2 Pro meets the "touch-sensitive input surface" limitation beyond a conclusory allegation. Evidence will be required to show that the user interface on the earbud performs the functions contemplated by the patent.

'901 Patent Infringement Allegations

The infringement theory for the '901 Patent is substantially similar to that for the '518 Patent. The complaint alleges the Samsung Galaxy Buds2 Pro meets the limitations of a "personal electronic apparatus configured to be worn by a user" that includes a speaker, touch sensitive surface, rechargeable battery, and an exposed conductive element for interconnection (Compl. ¶31).

  • Identified Points of Contention:
    • Scope Questions: As with the '518 patent, the construction of "personal electronic apparatus configured to be worn by a user" will be a key issue. Defendant may argue that the patent's explicit focus on "eyewear or other head-worn...apparatus" in its abstract suggests the claim does not cover in-ear devices (’901 Patent, Abstract).

V. Key Claim Terms for Construction

  • The Term: "head-worn wireless electronic apparatus" (from '518 Patent, Claim 1)
  • Context and Importance: This term's construction is fundamental to the infringement case for the '518 and '901 patents. The dispute will likely center on whether an in-ear device (an earbud) falls within the scope of a "head-worn" apparatus as described in patents that heavily feature on-head devices (eyewear).
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim language itself does not explicitly restrict the apparatus to "eyewear" or "glasses," using the more general term "head-worn." Plaintiff may argue this term should be given its plain and ordinary meaning, which could encompass devices worn on or in the head region.
    • Evidence for a Narrower Interpretation: The '518 Patent's abstract exclusively describes an "eyewear frame" ('518 Patent, Abstract). The representative figures for both the '518 and '901 patents depict eyeglasses ('518 Patent, FIG. 1; '901 Patent, FIG. 1). Practitioners may focus on this term because Defendant will likely argue that the specification defines the invention by consistently referencing eyewear, thereby limiting the scope of "head-worn apparatus" to that embodiment.

VI. Other Allegations

  • Indirect Infringement: For all five patents, the complaint alleges induced infringement. It asserts that Samsung had knowledge of the patents at least as of a June 20, 2024 notice letter and the filing of this complaint, and that Samsung "actively encourage[s] and instruct[s] customers" to use the accused products in an infringing manner (Compl. ¶¶24, 33, 42, 51, 60). The complaint does not cite specific user manuals or marketing materials as evidence of such instruction.
  • Willful Infringement: Willfulness is alleged for all five patents, based on Samsung's alleged knowledge from the pre-suit notice letter and its continued manufacturing and sale of the accused products post-notice (Compl. ¶¶28, 37, 46, 55, 64).

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

The resolution of this case may turn on the following central questions for the court:

  • A core issue will be one of definitional scope: Can the term "head-worn...apparatus," which is described and depicted in the context of eyewear in the '518 and '901 patents, be construed to cover an in-ear device such as the accused Galaxy Buds2 Pro?
  • A key evidentiary question will be one of technical implementation: Does the software and hardware of the Samsung Galaxy Buds2 Pro and S24 Ultra system perform the specific, multi-step functions required by the claims of the hearing enhancement ('789, '618 patents) and communication ('104 patent) patents, or is there a fundamental mismatch in technical operation that the high-level allegations in the complaint do not address?
  • A third question relates to damages and licensing history: Given the Plaintiff's allegation that it has licensed its portfolio to over a dozen corporations, the nature and terms of those licenses, if discovered, may significantly influence the calculation of a reasonable royalty, should infringement be found.