DCT
2:24-cv-00823
IngenioSpec LLC v. LG Electronics Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: IngenioSpec, LLC (California)
- Defendant: LG Electronics Inc. (Republic of Korea) and LG Electronics U.S.A., Inc. (Delaware)
- Plaintiff’s Counsel: Russ August & Kabat
- Case Identification: IngenioSpec, LLC v. LG Electronics Inc., et al., 2:24-cv-00823, E.D. Tex., 10/07/2024
- Venue Allegations: Plaintiff alleges venue is proper because Defendant LG Electronics U.S.A., Inc. maintains regular and established places of business within the Eastern District of Texas, and Defendant LG Electronics Inc. is a foreign resident that may be sued in any judicial district.
- Core Dispute: Plaintiff alleges that Defendant’s wireless earbud products infringe five patents related to wearable electronic devices, hearing enhancement systems, and audio systems.
- Technical Context: The patents relate to the design, functionality, and charging mechanisms of head-worn personal audio devices, a market segment dominated by wireless earbuds and headsets.
- Key Procedural History: The complaint notes that Plaintiff has licensed a portion of its patented technology to more than a dozen corporations, which may suggest a history of established licensing rates or prior assertions of its portfolio.
Case Timeline
| Date | Event |
|---|---|
| 2003-04-15 | Priority Date for ’789, ’827, and ’2901 Patents |
| 2004-07-28 | Priority Date for ’518 and ’4901 Patents |
| 2013-11-12 | U.S. Patent No. 8,582,789 Issues |
| 2023-05-23 | U.S. Patent No. 11,657,827 Issues |
| 2023-11-28 | U.S. Patent No. 11,829,518 Issues |
| 2023-12-26 | U.S. Patent No. 11,852,901 Issues |
| 2024-07-23 | U.S. Patent No. 12,044,901 Issues |
| 2024-10-07 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,829,518 - Head-Worn Device with Connection Region
Issued November 28, 2023
The Invention Explained
- Problem Addressed: The patent does not explicitly state a problem in a background section, but the claims and abstract focus on the physical and electrical integration of features into a head-worn device, such as eyewear. (U.S. Patent No. 11,829,518, Abstract).
- The Patented Solution: The invention describes a head-worn device, such as an eyewear frame, that incorporates speakers, a rechargeable battery, a microphone, and wireless communication circuitry. (U.S. Patent No. 11,829,518, Abstract). A key aspect is a "connection region" with conductive pads designed to removably couple with an external counterpart connector, facilitating functions like charging. (U.S. Patent No. 11,829,518, col. 45:20-46:48). The device also includes a touch-sensitive input surface for user control. (U.S. Patent No. 11,829,518, Abstract).
- Technical Importance: This approach describes integrating multiple electronic functions (audio, communication, power, user interface) into a single compact, wearable form factor, a central design challenge in the market for personal electronics. (Compl. ¶¶3-5).
Key Claims at a Glance
- The complaint asserts independent claim 1. (Compl. ¶24).
- Claim 1 Elements:
- A head-worn wireless electronic apparatus at least configured for producing audio outputs for a user comprising:
- a speaker in the head-worn wireless electronic apparatus;
- an electrical connector at the head-worn wireless electronic apparatus, wherein the electrical connector includes at least two conductive pads... configured to removably couple to corresponding conductive contacts of a counterpart connector external to and separate from the head-worn wireless electronic apparatus...;
- a rechargeable battery in the head-worn wireless electronic apparatus;
- a microphone in the head-worn wireless electronic apparatus; and
- a touch-sensitive input surface on the head-worn wireless electronic apparatus... configured to generate at least an electrical signal for an operation... based on receiving at least a touch input.
- The complaint does not explicitly reserve the right to assert dependent claims for this patent.
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's background section discusses the inconvenience of using portable music devices, particularly in cold weather, which requires removing the device from a pocket, connecting a headset, and navigating controls. (U.S. Patent No. 12,044,901, col. 3:12-21). This implies a need for more seamlessly integrated and easily chargeable wearable electronics.
- The Patented Solution: The invention proposes a system comprising a head-worn personal electronic apparatus (e.g., wireless earbuds or glasses) with an embedded rechargeable battery and at least one exposed conductive element for charging. (U.S. Patent No. 12,044,901, Abstract; col. 45:4-13). The system includes a separate charging apparatus (e.g., a case) with a corresponding connector. When the head-worn device is placed in the charger, the conductive elements make an electrical connection to recharge the battery. (U.S. Patent No. 12,044,901, Abstract).
- Technical Importance: The invention addresses the critical need for a convenient and reliable method for recharging battery-powered wearable devices, which is fundamental to their usability and commercial adoption. (Compl. ¶5).
Key Claims at a Glance
- The complaint asserts independent claim 1. (Compl. ¶33).
- Claim 1 Elements:
- A system, comprising: a head-worn personal electronic apparatus, including at least:
- a head-worn structure configured to be worn by a user;
- a speaker at least partially contained within the head-worn structure...;
- a touch sensitive surface at least partially contained within the head-worn structure...;
- a rechargeable battery contained within the head-worn structure;
- electronic circuitry contained within the head-worn structure...;
- at least one conductive element at least partially included within the head-worn structure, the at least one conductive element being at least partially exposed to enable interconnection therewith...; and
- a charging apparatus having at least a charging connector...
- The complaint does not explicitly reserve the right to assert dependent claims for this patent.
U.S. Patent No. 11,852,901 - Wireless Headset Supporting Messages and Hearing Enhancement
Issued December 26, 2023
- Technology Synopsis: This patent describes a wireless headset system that provides hearing enhancement and integrates with a mobile phone. (’2901 Patent, Abstract). The system can modify audio signals based on a user's hearing characteristics and manage incoming messages, such as by converting text messages to voice for hands-free operation. (’2901 Patent, Abstract; col. 3:5-13).
- Asserted Claims: Independent claim 10 is asserted. (Compl. ¶51).
- Accused Features: The complaint alleges that the LG TONE Free T80 is a "wireless wearable device" that infringes. (Compl. ¶50).
U.S. Patent No. 8,582,789 - Hearing Enhancement Systems
Issued November 12, 2013
- Technology Synopsis: The patent describes a hearing enhancement system that uses a directional speaker to transmit ultrasonic signals toward a user's ear. These ultrasonic signals are transformed into audible sound through interaction with the air. (’789 Patent, Abstract). This method allows for hearing enhancement without occluding the ear canal and can modify the audio signals based on a user's specific hearing profile. (’789 Patent, col. 2:40-48).
- Asserted Claims: Independent claim 1 is asserted. (Compl. ¶42).
- Accused Features: The complaint accuses the LG TONE Free T80 of being a hearing enhancement system that receives, down-converts, and modifies wireless signals based on a user's hearing characteristic. (Compl. ¶41).
U.S. Patent No. 11,657,827 - Hearing Enhancement Methods and Systems
Issued May 23, 2023
- Technology Synopsis: This patent is part of the same family as the ’789 patent and similarly discloses a hearing enhancement system using a directional speaker and a microphone to capture, transform, and transmit audio. (’827 Patent, Abstract). The system is designed to avoid the "annoying occlusion effects" of traditional in-ear hearing aids and can be used with other audio sources like phones or home entertainment systems. (’827 Patent, Abstract; col. 1:30-49).
- Asserted Claims: Independent claim 21 is asserted. (Compl. ¶60).
- Accused Features: The complaint alleges the LG TONE Free T80 is a "wearable hearing device" that infringes the patent. (Compl. ¶59).
III. The Accused Instrumentality
Product Identification
The complaint identifies the LG TONE Free T80 as a representative accused product. (Compl. ¶¶23, 32, 41, 50, 59).
Functionality and Market Context
The complaint alleges the LG TONE Free T80 is a wireless electronic device, specifically a type of wireless earbud, designed to be worn by a user to produce audio. (Compl. ¶¶23, 32). Its accused functionalities include having a speaker, a touch-sensitive surface for user control, an internal rechargeable battery, and external conductive elements for charging via a counterpart connector (e.g., a charging case). (Compl. ¶32). The complaint further alleges it operates as a hearing enhancement system capable of receiving wireless signals and modifying them based on a user's hearing characteristics. (Compl. ¶41).
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint references preliminary infringement claim charts attached as exhibits but does not include them in the filing. (Compl. ¶¶24, 33). The analysis below is based on the narrative infringement allegations provided in the body of the complaint.
11,829,518 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A head-worn wireless electronic apparatus | The LG TONE Free T80 is a wireless electronic device configured to be worn by a user. | ¶23 | col. 45:20-22 |
| a speaker in the head-worn wireless electronic apparatus | The LG TONE Free T80 is configured to produce audio output for a user. | ¶23 | col. 45:23-24 |
| an electrical connector... configured to removably couple to conductive contacts of a counterpart connector | The LG TONE Free T80 is configured to removably couple to conductive contacts of a counterpart connector external to the device itself. | ¶23 | col. 45:25-33 |
| a rechargeable battery in the head-worn wireless electronic apparatus | The LG TONE Free T80 contains a rechargeable battery. | ¶32 | col. 45:34-36 |
| a microphone in the head-worn wireless electronic apparatus | The LG TONE Free T80 contains a microphone. | ¶50 | col. 45:37-38 |
| a touch-sensitive input surface on the head-worn wireless electronic apparatus | The LG TONE Free T80 has a touch-sensitive surface for user control. | ¶32 | col. 45:39-45 |
12,044,901 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A system, comprising: a head-worn personal electronic apparatus, including at least: a head-worn structure configured to be worn by a user | The LG TONE Free T80 is a personal electronic apparatus configured to be worn by a user. | ¶32 | col. 45:4-8 |
| a speaker at least partially contained within the head-worn structure | The LG TONE Free T80 includes a speaker. | ¶32 | col. 45:9-10 |
| a touch sensitive surface at least partially contained within the head-worn structure | The LG TONE Free T80 includes a touch sensitive surface. | ¶32 | col. 45:11-12 |
| a rechargeable battery contained within the head-worn structure | The LG TONE Free T80 includes a rechargeable battery. | ¶32 | col. 45:13-14 |
| electronic circuitry contained within the head-worn structure | The LG TONE Free T80 includes electronic circuitry. | ¶32 | col. 45:15-16 |
| at least one conductive element... at least partially exposed to enable interconnection therewith | The LG TONE Free T80 includes at least one conductive element partially exposed to enable interconnection. | ¶32 | col. 45:17-21 |
| and a charging apparatus having at least a charging connector... | The system includes a charging case with a connector for the LG TONE Free T80. | ¶23 | col. 45:22-30 |
Identified Points of Contention
- Scope Questions: A primary question may be whether the term "head-worn device" as used in the ’518 Patent, which describes the invention in the context of an "eyewear frame" in its abstract, can be construed to read on the accused wireless earbuds. (U.S. Patent No. 11,829,518, Abstract). Similarly, for the '4901 Patent, the dispute may focus on whether the term "head-worn personal electronic apparatus", described in the context of both glasses and earbuds, fairly covers the accused product.
- Technical Questions: The complaint alleges infringement of claims directed to "hearing enhancement" functionality. (’789 Patent, Claim 1; ’827 Patent, Claim 21). A key technical question will be what evidence the complaint and subsequent disclosures provide that the LG TONE Free T80's standard audio features perform the specific functions required for "hearing enhancement," such as modifying signals "based on a at least one hearing characteristic of the user." (Compl. ¶41).
V. Key Claim Terms for Construction
For the ’518 Patent
- The Term: "head-worn device"
- Context and Importance: This term's construction is central because the patent's abstract and many figures describe the invention as an "eyewear frame," while the accused product is a wireless earbud. (U.S. Patent No. 11,829,518, Abstract; FIG. 1). The outcome of the case may depend on whether the claim term is interpreted broadly enough to cover devices worn in the ear, not just on the head in the manner of glasses.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims themselves use the broader term "head-worn... apparatus" without limiting it to eyewear. (U.S. Patent No. 11,829,518, col. 45:20-22). The specification also mentions a "headset" as an alternative embodiment. (U.S. Patent No. 11,829,518, Abstract).
- Evidence for a Narrower Interpretation: The abstract and the detailed description repeatedly use "eyewear frame" and "glasses" as the primary embodiment, which may suggest the invention's scope is centered on that form factor. (U.S. Patent No. 11,829,518, Abstract; col. 3:50-55).
For the ’4901 Patent
- The Term: "touch sensitive surface"
- Context and Importance: This term appears in both asserted lead patents. Practitioners may focus on this term because its construction will determine what level of functionality is required to infringe. The dispute could center on whether a simple tap-to-play/pause surface meets the limitation, or if more complex functionality (like the "sliding action" mentioned in dependent claims of the '518 patent) is implicitly required by the context of the specification.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The independent claim requires only that the surface be "configured to provide an input... to perform a function," a broad definition that could cover any touch-based control. (U.S. Patent No. 11,829,518, Abstract).
- Evidence for a Narrower Interpretation: The detailed description of the '518 patent, from which the '4901 patent descends, discusses a switch that changes operational states by "sliding a finger across a touch sensitive input surface," which might be used to argue for a narrower construction requiring gesture recognition beyond a simple tap. (U.S. Patent No. 11,829,518, col. 4:20-24).
VI. Other Allegations
Indirect Infringement
The complaint alleges induced infringement for all five patents. (Compl. ¶¶25, 34, 43, 52, 61). The allegations are based on Defendants’ knowledge of the patents "Through at least the filing and service of this Complaint" and on actively encouraging and instructing customers and other companies to use the accused products in an infringing manner. (Compl. ¶25).
Willful Infringement
The complaint alleges willful infringement for all five patents, asserting that Defendants continued their infringing activities with knowledge of the patents. (Compl. ¶¶29, 38, 47, 56, 65). This claim for enhanced damages appears to be based on alleged post-suit knowledge.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "head-worn device", which is heavily exemplified as "eyewear" in the specification of the '518 patent, be construed broadly enough to cover the accused wireless earbud products? The answer will likely dictate the applicability of at least one of the asserted patents.
- A second central question will be one of technical function: what evidence will be presented to demonstrate that the accused LG TONE Free T80 products perform the specific "hearing enhancement" functions claimed in the ’789 and ’827 patents, such as modifying audio signals based on a user's unique hearing profile, as opposed to providing general audio amplification or equalization features?
- An evidentiary question will be one of knowledge and intent: given that the allegations of knowledge for both inducement and willfulness are pegged to the filing of the complaint, the dispute may focus on whether Plaintiff can establish any pre-suit knowledge by Defendant to support these claims.