DCT

5:23-cv-00108

Maxell, Ltd. v. TCL Electronics Holdings LTD., (F/K/A TCL Multimedia Technology HOLDINGS, LTD.)

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 5:23-cv-00108, E.D. Tex., 10/30/2023
  • Venue Allegations: Plaintiff alleges venue is proper because Defendants conduct business in the district, have committed acts of infringement in the district, and are foreign entities. It is further alleged that Defendant TTE Technology, Inc. has a regular and established place of business in the district.
  • Core Dispute: Plaintiff alleges that Defendant’s smart televisions infringe six patents related to internal hardware design, user interface functionality for displaying content from external devices, casting between devices, and dynamic notification management.
  • Technical Context: The patents address technical challenges in modern smart televisions, including maintaining structural integrity in thin designs and managing content from a wide array of connected sources and applications.
  • Key Procedural History: The complaint details an extensive pre-suit history of licensing negotiations between the parties, beginning in 2015. This history includes multiple letters and the provision of claim charts by Maxell to TCL, identifying several of the patents-in-suit and accused products. These allegations form the basis for claims of willful infringement.

Case Timeline

Date Event
2007-09-26 Priority Date for ’780 and ’020 Patents
2007-09-28 Priority Date for ’366 Patent
2011-04-12 ’366 Patent Issued
2012-12-07 Priority Date for ’341 Patent
2015-09-14 Complaint alleges TCL was first made aware of '366 Patent
2016-01-29 Complaint alleges TCL was sent a claim chart for '366 Patent
2016-03-25 Priority Date for ’206 Patent
2016-06-28 Priority Date for ’558 Patent
2018-07-03 ’558 Patent Issued
2019-02-26 ’020 Patent Issued
2019-06-11 ’206 Patent Issued
2019-08-06 ’341 Patent Issued
2019-11-08 Complaint alleges TCL was notified of '341 and '020 Patents
2020-05-12 ’780 Patent Issued
2020-05-21 Complaint alleges TCL was sent a claim chart for '780 Patent
2021-07-20 Complaint alleges TCL received follow-up notice letter
2023-10-30 Complaint Filed

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

U.S. Patent No. 7,924,366 - “Image Display Apparatus,” Issued April 12, 2011

The Invention Explained

  • Problem Addressed: As televisions became larger and thinner, maintaining mechanical strength while accommodating internal components like power and driver circuit boards became a significant design challenge. Conventional reinforcement structures, such as "X" shaped supports, were described as unsuitable for practical use in thin-sized displays (Compl. ¶65; ’366 Patent, col. 2:15-21).
  • The Patented Solution: The invention proposes a structural solution involving a "projection portion" on the mounting surface of the power source board. This projection is configured to be taller than adjacent circuit elements and is not connected to any opposing member, such as the television's rear cover. This design serves two purposes: it creates a standoff to prevent the rear cover from flexing inward and contacting sensitive circuit elements, and it can facilitate cooling by allowing air to flow around the components (Compl. ¶66; ’366 Patent, col. 2:34-43, Abstract).
  • Technical Importance: This approach provided a method for achieving a thin-sized display apparatus with sufficient mechanical strength to protect internal components from external pressure (Compl. ¶66).

Key Claims at a Glance

  • The complaint asserts independent claim 5 (as well as dependent claims 6 and 9) (Compl. ¶67).
  • Essential elements of independent claim 5 include:
    • A display panel, a signal board, and a power source board disposed in a horizontal direction.
    • A projection portion provided on the mounting surface of the power source board where a circuit element is mounted.
    • The projection portion is configured to be higher than the circuit element.
    • The projection portion is not connected with a member facing the mounting surface of the power source board.

U.S. Patent No. 10,650,780 - “Display Apparatus,” Issued May 12, 2020

The Invention Explained

  • Problem Addressed: Display devices like televisions must handle image information from various sources with different interface standards (e.g., USB, wireless LAN), which creates interoperability and source-switching challenges for providing a seamless user experience (Compl. ¶77).
  • The Patented Solution: The patent describes a display apparatus with both USB and wireless LAN interface circuitry. To display a slideshow, the apparatus transmits a specific signal ("first signal" via USB or "second signal" via wireless LAN) to an external digital camera, "causing" the camera to output compressed image information. The apparatus then receives this information and conducts a slideshow at "predetermined time intervals," thereby enabling interoperability between the disparate interface types for a single function ('780 Patent, Abstract; Compl. ¶79).
  • Technical Importance: The invention claims to provide an improved hardware device that solves interoperability issues between different interface standards, allowing for a unified user interface for functions like displaying slideshows from external devices (Compl. ¶81).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶82).
  • Essential elements of independent claim 1 include:
    • A display apparatus with a display screen, USB interface circuitry, and wireless LAN interface circuitry.
    • A central processor configured to, in response to a user operation for a slide show:
    • Transmit a "first signal" via USB to a digital camera, causing it to output compressed first image information.
    • Receive the first image information via USB and conduct a slide show at predetermined time intervals.
    • Transmit a "second signal" wirelessly to the digital camera, causing it to output compressed second image information.
    • Receive the second image information wirelessly and conduct a slide show at predetermined time intervals.

U.S. Patent No. 10,375,341 - “Video Display Apparatus And Terminal Apparatus,” Issued August 6, 2019

Technology Synopsis

The patent addresses casting video content to a display from two different wireless devices. It describes a system for managing the handoff between a first device connected directly (e.g., Miracast) and a second device connected via a network router. When the second device initiates casting, the system terminates the first stream and sends a notification to the first device (Compl. ¶¶98-99).

Asserted Claims

At least claim 3 (Compl. ¶100).

Accused Features

The accused TCL televisions allegedly feature a mirroring function (e.g., Miracast) for direct connection with a first smartphone, and also connect to a router to receive content from a second smartphone. The complaint alleges these products manage the termination of the first stream when the second stream begins (Compl. ¶¶102-104).

U.S. Patent No. 10,015,558 - “Method and Device for Adjusting Television Notification Display Duration and Television,” Issued July 3, 2018

Technology Synopsis

The invention is directed to dynamically adjusting the display duration of notifications on a television. Unlike fixed-duration notifications, this method adjusts the display time for subsequent notifications based on the notification's type and the user's interaction (or lack thereof) with a current notification (Compl. ¶¶118-120).

Asserted Claims

At least claim 1 (Compl. ¶121).

Accused Features

The accused TCL televisions allegedly display various types of notifications (e.g., advertisements, software updates) with which a user can interact (e.g., selecting "Install Now" or "Install Later"). The complaint alleges that these user instructions serve to adjust the display duration for subsequent, independently received notifications of the same type (Compl. ¶¶123, 128).

U.S. Patent No. 10,219,020 - “Portable Terminal, Information Processing Apparatus, Content Display System and Content Display Method,” Issued February 26, 2019

Technology Synopsis

The technology relates to "casting" or relaying internet video from a mobile terminal to a separate display apparatus, such as a smart TV. To ensure a seamless and uninterrupted transition, the invention proposes sending not just the content identifier (e.g., URL), but also specific state information, such as login credentials, cookie information, or the video's current playback position (e.g., scroll bar location) (Compl. ¶¶141-142).

Asserted Claims

At least claim 1 (Compl. ¶144).

Accused Features

The accused TCL televisions can terminate a broadcast TV display to show video content cast from a mobile terminal's application (e.g., Netflix). The TV receives an "identifier" from the mobile terminal to acquire the content from the internet and can be controlled (e.g., pause/play) by the mobile terminal (Compl. ¶¶145-148).

U.S. Patent No. 10,321,206 - “Method for Switching an Audio/Video Application, Apparatus And Smart TV,” Issued June 11, 2019

Technology Synopsis

This patent describes a method to accelerate switching between audio/video (AV) applications on a smart TV that share a hardware AV decoder. When switching from a first to a second application, a resource-light "intermediate interface" (e.g., a loading screen) is displayed, which triggers the first application (now in the background) to release the AV decoder, making it available for the second application more quickly (Compl. ¶160).

Asserted Claims

At least claims 1-5, 8-13, and 16-17 (Compl. ¶161).

Accused Features

The accused TCL televisions allegedly display an intermediate interface, such as a loading screen, when switching between AV applications like Hulu and Netflix. This interface is alleged to be resource-light and not utilize the AV decoder, thereby triggering the release of the decoder from the first application so it can be used by the target application (Compl. ¶¶163-164).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are numerous models of TCL smart televisions, including those in the 8-Series, 6-Series, 5-Series, 4-Series, Q-Class, and others (Compl. ¶¶67, 88, 108, 130, 150, 167). The complaint uses the TCL model 50S535 and 43S450R as representative examples for many of the allegations.

Functionality and Market Context

The accused products are smart televisions that incorporate a range of functionalities corresponding to the asserted patents. These include specific internal hardware arrangements, such as the placement of power boards and protective components (Compl. ¶¶68-69). They also possess software-driven features, such as media players that can display slideshows from external devices connected via USB and Wi-Fi/DLNA (Compl. ¶¶84-86), content casting and screen mirroring capabilities that work with mobile devices (Compl. ¶102), a system for displaying and managing on-screen notifications for advertisements and system updates (Compl. ¶¶123, 127), and an application-based interface for switching between streaming services like Netflix and Hulu (Compl. ¶162).

IV. Analysis of Infringement Allegations

7,924,366 Infringement Allegations

Claim Element (from Independent Claim 5) Alleged Infringing Functionality Complaint Citation Patent Citation
a display panel; a signal board configured to process an image signal; a power source board configured to supply power, wherein said signal board and said power source board are disposed in a horizontal direction of said display panel; The accused products contain a display panel, signal board, and power source board, with the boards disposed horizontally. An image of the TCL 50S535 power board is provided as an example. ¶68 col. 4:20-27
a projection portion configured to be provided on a mounting surface of said power source board where a circuit element of said power source board is mounted, The accused products include a projection portion, shown as a pin, on the power source board's mounting surface where circuit elements are also mounted. ¶69 col. 4:63-65
wherein said projection portion is configured to be higher above said mounting surface of said power source board than said circuit element... The projection portion is alleged to be higher than an adjacent circuit element. A photograph of the TCL 50S535 power board highlights components alleged to be the projection portion and a shorter circuit element. ¶69; p. 18 col. 5:1-3
...and not connected with a member facing to said mounting surface of said power source board. The projection portion is alleged to not be connected to the rear cover, which is the "member facing" the mounting surface. ¶69 col. 5:3-5

Identified Points of Contention:

  • Scope Questions: A central question may be whether the metallic "pin" identified in the complaint's photographs (Compl. p. 19) meets the definition of the "projection portion" as contemplated by the ’366 Patent. The defense may argue that the patent's specification and figures describe a more substantial, integrated standoff structure, and that a simple pin does not fall within the claim's scope.
  • Technical Questions: The complaint provides a photograph alleging that if the pin is removed, the rear cover contacts a circuit element when pushed (Compl. p. 20). A key factual question will be whether this demonstrates that the pin performs the claimed function of preventing contact between the "circuit element" and the "member positioned facing" it (i.e., the rear cover).

10,650,780 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A display apparatus comprising: a display screen; USB interface circuitry...; wireless LAN interface circuitry...; a central processor... The accused TCL 50S535 television has a display screen, USB ports, and a wireless LAN interface, along with a central processor. The complaint includes photographs showing these physical interfaces. ¶¶83, 84; p. 24 col. 10:25-33
in response to a first operation by a user for conducting a slide show...transmit, over a USB cable, a first signal to said digital camera for causing said digital camera to output compressed first image information... When a user connects a camera via USB and navigates the on-screen menu to select and start a slideshow, this user operation allegedly causes the TV to transmit a "first signal" to the camera, causing it to output JPEG images. ¶85; p. 27 col. 10:37-41
conduct a slide show at predetermined time intervals on said display screen, based on said first image information... The TV's media player application conducts a slideshow of the images received from the camera. The complaint provides a screenshot showing user-selectable speeds (fast/medium/slow), which correspond to the "predetermined time intervals." ¶85; p. 32 col. 10:44-47
in response to a second operation by a user for conducting a slide show...wirelessly transmit, over a network, a second signal to said digital camera for causing said digital camera to output compressed second image information... When a user connects a camera wirelessly and uses the on-screen menu to start a slideshow, this operation allegedly causes the TV to transmit a "second signal" over the wireless network to the camera, causing it to output compressed images. ¶86; p. 33 col. 10:48-53
conduct a slide show at predetermined time intervals on said display screen, based on said second image information... The TV conducts a slideshow using the wirelessly received images, again with selectable time intervals. ¶86 col. 10:57-60

Identified Points of Contention:

  • Scope Questions: The analysis may focus on whether the TV's standard file-access protocol over USB or DLNA constitutes transmitting a "first signal" or "second signal" that actively "caus[es]" the external device to "output" image information. The defense may argue that the TV is merely reading files from a connected storage device, a common function, rather than sending a specific command signal as required by the claim.
  • Technical Questions: What is the technical nature of the "signal" transmitted by the accused TVs? The complaint does not specify whether it is a standard USB Mass Storage Class read request, a Picture Transfer Protocol (PTP) command, or another type of signal. The technical reality of this signal will be central to determining whether the accused functionality matches the claimed invention.

V. Key Claim Terms for Construction

For the ’366 Patent:

  • The Term: "projection portion"
  • Context and Importance: The entirety of the infringement allegation for the ’366 patent rests on a pin located on the accused TV's power board (Compl. p. 19) qualifying as a "projection portion." The construction of this term will determine whether a simple, discrete component like a pin falls within the scope of a claim that, in its preferred embodiment, depicts a more integrated structural feature.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The plain language of claim 5 does not specify the shape, material, or method of manufacture for the "projection portion," only its location and function relative to other components.
    • Evidence for a Narrower Interpretation: The patent's specification describes the projection portion in the context of a "thin plate-like frame" and reinforcement created through processes like bending a flange ('366 Patent, col. 2:34-43; col. 3:1-12). Figures in the patent appear to show a more substantial, integrated standoff rather than a simple inserted pin, which could be used to argue for a narrower construction.

For the ’780 Patent:

  • The Term: "a first signal ... for causing said digital camera to output compressed first image information"
  • Context and Importance: Practitioners may focus on this term because the infringement theory requires the accused TV to do more than passively read files from a connected device. The term "causing... to output" suggests an active command. The case may turn on whether a standard file read request (a "pull" of data) satisfies this limitation, or if a more specific "push" command from the TV to the camera is required.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent does not appear to limit the "signal" to a specific protocol. An argument could be made that any request from the TV that results in the camera providing data constitutes a signal that "causes" the output.
    • Evidence for a Narrower Interpretation: The patent consistently frames the interaction as the display apparatus initiating a request that prompts a specific output from the camera for the purpose of a slideshow ('780 Patent, Abstract). The defense could argue this language implies a more specialized command-and-response protocol than a generic file system read operation.

VI. Other Allegations

Indirect Infringement

The complaint alleges both induced and contributory infringement for all asserted patents. Inducement is predicated on TCL allegedly instructing customers on how to use the infringing features through user guides and websites (e.g., Compl. ¶¶89, 109). Contributory infringement is based on allegations that TCL provides key components (e.g., the USB/WLAN circuitry for the ’780 Patent, the mirroring functionality for the ’341 Patent) that are a material part of the inventions and not staple articles of commerce suitable for substantial non-infringing use (e.g., Compl. ¶¶90-91, 110-111).

Willful Infringement

Willfulness is alleged for all asserted patents. The claims are based on TCL’s alleged pre-suit knowledge stemming from a multi-year negotiation history. The complaint alleges TCL was notified of the ’366 patent as early as 2015 and received a claim chart in 2016. It alleges similar notice for the other patents in 2019, 2020, and 2021, long before the complaint was filed (Compl. ¶¶71-72, 92-93, 112-113, 134-135, 154-155, 171-172).

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

  • A core issue will be one of definitional scope: does the term "projection portion" in the ’366 patent, described in the context of structural frame reinforcements, read on a simple metallic pin on a circuit board? Similarly, does a standard data request from a TV to a connected device constitute a "signal for causing" that device to "output" information as required by the ’780 patent, or is something more specific required?
  • A key evidentiary question will be one of functional operation: for the patents related to user interaction (e.g., ’020 and ’558), what is the precise technical mechanism at work? Does the accused casting function in the TCL TVs transfer the specific "state information" (like scroll bar position) claimed in the ’020 patent, or merely a content identifier? Does user interaction with one TV notification actually cause a change in the display duration of a subsequent, independently received notification as required by the ’558 patent?
  • The extensive pre-suit history detailed in the complaint raises a significant question regarding willful infringement: given the alleged years of correspondence, including the provision of claim charts, the court will have to evaluate what TCL knew about the patents and when it knew it, which will be central to any potential damages enhancement.