DCT

5:23-cv-00152

Maxell Ltd v. LG Electronics Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 5:23-cv-00152, E.D. Tex., 12/29/2023
  • Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendant LGEUS maintains regular and established places of business within the District, and Defendant LGE is a foreign entity. The complaint also notes that four of the asserted patents were previously litigated in this District, suggesting judicial familiarity with the technology.
  • Core Dispute: Plaintiff alleges that Defendant’s smartphones, laptops, and tablets infringe nine patents related to digital camera functionality, mobile device power management, wireless video transmission, and media file management.
  • Technical Context: The patents-in-suit cover core technologies widely implemented in modern consumer electronics, addressing challenges in image processing, power efficiency for wireless communication, and user interface design for media organization.
  • Key Procedural History: The complaint alleges that Defendant has been on notice of infringement since at least July 19, 2021, following communications from Plaintiff. It also states that U.S. Patent Nos. 6,856,760, 8,339,493, and 8,736,729 have previously survived validity challenges in inter partes review (IPR) proceedings before the Patent Trial and Appeal Board.

Case Timeline

Date Event
1998-11-10 U.S. Patent No. 6,973,334 Priority Date
1999-07-05 U.S. Patent No. 6,856,760 Priority Date
2000-01-11 U.S. Patent No. 8,339,493 & 8,736,729 Priority Date
2002-02-27 U.S. Patent No. 7,199,821 Priority Date
2002-03-05 U.S. Patent No. 7,421,188 Priority Date
2004-12-02 U.S. Patent No. 9,818,449 & 10,199,072 Priority Date
2005-02-15 U.S. Patent No. 6,856,760 Issued
2005-12-06 U.S. Patent No. 6,973,334 Issued
2007-04-03 U.S. Patent No. 7,199,821 Issued
2007-11-28 U.S. Patent No. 10,244,284 Priority Date
2008-09-02 U.S. Patent No. 7,421,188 Issued
2012-12-25 U.S. Patent No. 8,339,493 Issued
2014-05-27 U.S. Patent No. 8,736,729 Issued
2017-11-14 U.S. Patent No. 9,818,449 Issued
2019-02-05 U.S. Patent No. 10,199,072 Issued
2019-03-26 U.S. Patent No. 10,244,284 Issued
2021-07-19 Alleged Date of First Notice to Defendant
2023-12-29 Complaint Filing Date

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

U.S. Patent No. 6,856,760 - "Recording Medium"

  • Issued: February 15, 2005

The Invention Explained

  • Problem Addressed: The patent describes a need for a recording apparatus and medium that can handle both moving pictures and high-resolution still pictures, noting that conventional video players were not equipped to manage still pictures encoded in different formats or with different resolutions (Compl. ¶21; ’760 Patent, col. 1:12-23).
  • The Patented Solution: The invention provides a recording medium that stores moving pictures encoded by a first method (e.g., MPEG) and still pictures encoded by two methods: a second method for high-resolution images (e.g., JPEG) and the same first method used for moving pictures. This allows a device to store both a high-quality still image and a lower-quality, more compatible version that can be reproduced by standard video players ('760 Patent, Abstract; col. 2:42-55).
  • Technical Importance: This approach enabled devices to handle high-resolution photography while maintaining backward compatibility with existing video playback ecosystems that were not designed for various still image formats (Compl. ¶21).

Key Claims at a Glance

  • The complaint asserts dependent claims 4, 6, 7, and 9, which all depend on independent claim 1.
  • Independent Claim 1: A recording medium comprising:
    • moving pictures recorded thereon which are encoded by a first encoding method,
    • still pictures recorded thereon which are encoded by a second encoding method,
    • and still pictures recorded thereon which are encoded by said first encoding method from single frame signals obtained from said still pictures.
  • The complaint reserves the right to assert additional claims (Compl. ¶22).

U.S. Patent No. 6,973,334 - "Cellular Telephone"

  • Issued: December 6, 2005

The Invention Explained

  • Problem Addressed: The patent addresses the challenge of power consumption in CDMA cellular telephones. Transmitters consume significant battery power, and conventional methods for controlling transmission power were not always efficient across the full range of required power levels (’334 Patent, col. 1:10-20, col. 2:9-12).
  • The Patented Solution: The invention discloses a method for dynamically controlling a power amplifier’s bias condition in correlation with the gain of a variable amplitude amplifier. By reducing the bias at lower output power levels, the system minimizes current consumption and thereby extends battery life (Compl. ¶35; '334 Patent, col. 2:42-51, Fig. 1).
  • Technical Importance: This dynamic power control method offered a way to improve the energy efficiency of mobile transmitters, a critical factor for extending the operational time of battery-powered devices (Compl. ¶35).

Key Claims at a Glance

  • The complaint asserts independent claim 4 and dependent claim 6.
  • Independent Claim 4: A cellular telephone used in a CDMA system, comprising a transmitter and a controller, wherein the transmitter includes a variable amplitude amplifier and a power amplifier, and the controller controls a gain of the variable amplitude amplifier and a bias condition of the power amplifier using:
    • gain data for said variable amplitude amplifier,
    • bias data for said power amplifier,
    • a function defining a relation between said bias data and said gain data stored in a memory.
  • The complaint reserves the right to assert additional claims (Compl. ¶36).

U.S. Patent No. 7,199,821 - "Imaging Apparatus and Method for Controlling White Balance"

  • Issued: April 3, 2007
  • Technology Synopsis: The patent addresses problems with conventional white balance techniques that failed to produce high-quality pictures under all conditions, particularly when images contained large colored portions (Compl. ¶56). The patented solution is a white balance correction method that accounts for the object's brightness, distance, and the camera's zoom value to improve color accuracy in varying conditions (Compl. ¶57).
  • Asserted Claims: At least claim 6 (Compl. ¶58).
  • Accused Features: The complaint alleges that the autofocus, brightness measurement, zoom, and color correction functions in the accused products, particularly features like "Portrait mode," perform white balance corrections based on distance, brightness, and zoom level (Compl. ¶59-60).

U.S. Patent No. 10,244,284 - "Display Apparatus and Video Processing Apparatus"

  • Issued: March 26, 2019
  • Technology Synopsis: The patent addresses a need for devices to transmit digital video wirelessly while simultaneously maintaining other network connections, such as to the internet (Compl. ¶73). The solution involves a device with multiple radio communication circuits, where one circuit is used for video transfer to an external device and another is used for connecting to a network, with a controller prioritizing the video transfer connection (Compl. ¶74).
  • Asserted Claims: At least claims 18-20 (Compl. ¶75).
  • Accused Features: The accused products are alleged to use multiple radio circuits (e.g., Wi-Fi and cellular) to transmit video information (e.g., via Wi-Fi Direct) while simultaneously connecting to the internet, prioritizing the video transmission link when a user initiates such a transfer (Compl. ¶76-79).

U.S. Patent No. 8,339,493 - "Electric Camera"

  • Issued: December 25, 2012
  • Technology Synopsis: The patent addresses the difficulty conventional electric cameras had in effectively capturing both high-quality still images and moving images, due to trade-offs in pixel count and dynamic range (Compl. ¶93). The invention allows signal charges from different numbers of pixels in an image sensor's array to be used depending on whether the device is in still image, moving video, or monitoring mode (Compl. ¶93).
  • Asserted Claims: At least claims 10 and 12-14 (Compl. ¶94).
  • Accused Features: The accused products allegedly use their camera sensors and image signal processors to generate images using all pixel lines for a still image but a "mixed or culled" set of pixel lines for moving video or for previewing an image (Compl. ¶96). The complaint provides images of accused LG Gram laptops as examples (Compl. p. 34-36).

U.S. Patent No. 8,736,729 - "Electric Camera"

  • Issued: May 27, 2014
  • Technology Synopsis: Related to the ’493 patent, this patent addresses the problem of capturing both static and moving images effectively (Compl. ¶110). The solution involves changing an effective set of pixels used for image capture based on a detected amount of image instability, allowing the camera to achieve higher resolution and better dynamic range (Compl. ¶110).
  • Asserted Claims: At least claims 3 and 4 (Compl. ¶111).
  • Accused Features: The accused products allegedly use an image-instability detector, such as a gyroscope, to vary the portion of the sensor pixels used to correct for image instability, thereby achieving a different viewing angle for moving video mode compared to static image mode (Compl. ¶113-114).

U.S. Patent No. 7,421,188 - "Information Edition Device, Information Edition Method, Information Edition Program, and Information Recording Medium"

  • Issued: September 2, 2008
  • Technology Synopsis: The patent relates to a method for preventing the accidental change or deletion of a thumbnail image by a user (Compl. ¶127). The invention provides for a process that decides whether a thumbnail can be changed, prohibits the change if not permitted, and displays a warning to the user (Compl. ¶127).
  • Asserted Claims: At least claims 4, 5, and 6 (Compl. ¶128).
  • Accused Features: The accused products are alleged to implement an information editing method that prohibits the deletion of certain thumbnail images (e.g., "system albums") and generates a warning message indicating the change is not permitted (Compl. ¶129-130).

U.S. Patent No. 9,818,449 - "Editing Method and Recording and Reproducing Device"

  • Issued: November 14, 2017
  • Technology Synopsis: The patent relates to a method for managing video information that is included in multiple groups (e.g., playlists or albums) (Compl. ¶142). The invention allows for video information to be deleted from a first group but remain in a second group, with its thumbnail also remaining in the second group (Compl. ¶142, ¶144).
  • Asserted Claims: At least claims 9 through 12 (Compl. ¶143).
  • Accused Features: The accused products' "Gallery" application allegedly allows a video to be included in two albums (e.g., "Camera" and "Favorites"), and when the video is deleted from the "Favorites" album, it remains in the "Camera" album and is not deleted from the device's storage (Compl. ¶144, ¶148).

U.S. Patent No. 10,199,072 - "Editing Method and Recording and Reproducing Device"

  • Issued: February 5, 2019
  • Technology Synopsis: The patent relates to an information processing method for recording, reproducing, and editing video data that exists in multiple groups or copies (Compl. ¶159). The method involves displaying thumbnails for different groups of video data and, when an item is deleted from one group, ensuring the thumbnail is removed from that group's display but the underlying video data is not deleted from the recording medium (Compl. ¶163, ¶167).
  • Asserted Claims: At least claims 11 through 15 (Compl. ¶160).
  • Accused Features: The accused products' "Gallery" application allegedly allows a user to select and reproduce video from different albums ("groups"), and when a video is deleted from one album, its thumbnail is removed from that album view but the data remains on the device's memory (Compl. ¶161-167).

III. The Accused Instrumentality

Product Identification

The complaint identifies a broad range of LG's "telecommunications technology," including numerous models of smartphones (e.g., LG V60 ThinQ 5G, LG G Family, LG Stylo Family), tablets, and laptops (e.g., LG Gram laptops) (Compl. ¶22, ¶36, ¶58, ¶75, ¶94, ¶111, ¶128, ¶143, ¶160).

Functionality and Market Context

  • The complaint focuses on specific technical functionalities of these devices. For the '760 Patent, it highlights still picture recording capabilities, including the ability to store images in multiple formats like DNG (a RAW format) and JPEG simultaneously (Compl. ¶23). For the '334 Patent, it points to the use of CDMA communication systems and internal components like Qualcomm Snapdragon chips that employ power control technologies such as envelope tracking (Compl. ¶37, ¶44). The "Portrait mode" feature of the devices' cameras is accused of infringing the ’821 Patent by using photo depth information to perform white balance corrections (Compl. ¶60). The complaint includes an excerpt from LG's website illustrating the "Portrait" camera mode (Compl. p. 23).
  • The complaint alleges these products are designed, manufactured, distributed, and sold by Defendants in the United States and Texas, but provides no specific details on market share or commercial positioning (Compl. ¶13).

IV. Analysis of Infringement Allegations

U.S. Patent No. 6,856,760 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a recording medium on which moving pictures are recorded which are encoded by a first encoding method The accused products record and store moving pictures on internal memory. ¶24 col. 1:12-23
still pictures are recorded which are encoded by a second encoding method The accused products have still picture recording capabilities and store pictures in various formats and encoding standards, such as DNG (e.g., a RAW format). ¶23 col. 2:42-55
and still pictures are recorded which are encoded by said first encoding method from single frame signals obtained from said still pictures. The accused products can store a recorded image as two files, one using a different encoding format from the other (e.g., a RAW DNG file and a JPEG file), with JPEG being an encoding method also used for moving pictures. ¶23 col. 2:42-55
  • Identified Points of Contention:
    • Scope Questions: A central question may be whether storing two separate files (e.g., one DNG and one JPEG) from a single capture event meets the claim limitation "still pictures...encoded by said first encoding method from single frame signals obtained from said still pictures." The court may need to construe whether this requires a single data object encoded in multiple ways or if creating distinct files suffices.
    • Technical Questions: The analysis may turn on whether the JPEG format used by the accused products for still images is technically the "first encoding method" used for moving pictures, as claimed. While both may use similar compression techniques, the specific standards and implementations could differ.

U.S. Patent No. 6,973,334 Infringement Allegations

Claim Element (from Independent Claim 4) Alleged Infringing Functionality Complaint Citation Patent Citation
A cellular telephone used in a CDMA system The accused products are cellular telephones used in CDMA systems (e.g., WCDMA). ¶37 col. 2:42-43
a transmitter including a variable amplitude amplifier and a power amplifier The accused products include an RF transmitter, and the complaint alleges the use of components such as an envelope tracker to adjust the gain of a variable amplitude amplifier and the bias of a power amplifier. ¶37, ¶44 col. 2:46-48
a controller... for controlling a gain of said variable amplitude amplifier and a bias condition of said power amplifier The accused products utilize components like a Qualcomm Snapdragon chip that operates at multiple power levels and adjusts the gain and bias of its amplifiers. ¶44 col. 2:48-51
using...a function defining a relation between said bias data and said gain data stored in a memory The complaint alleges that the accused products store in memory and use a function where the bias condition increases as output intensity increases, consistent with envelope tracking technology. ¶44 col. 2:51-54
  • Identified Points of Contention:
    • Scope Questions: The construction of "a function defining a relation" will be critical. The question will be whether the inherent operational physics of an envelope tracker satisfies this limitation, or if the claim requires a specific, stored table or algorithm that explicitly maps gain values to bias values.
    • Technical Questions: The complaint relies on general technical descriptions of Qualcomm's Snapdragon platform to allege infringement (Compl. ¶44). A factual question for the court will be whether LG's specific implementation of that platform in the accused products actually performs the control steps as required by the claim.

V. Key Claim Terms for Construction

'760 Patent

  • The Term: "still pictures...encoded by said first encoding method from single frame signals obtained from said still pictures" (Claim 1)
  • Context and Importance: This term is central to the infringement theory. Its construction will determine whether the accused products' functionality of saving both a RAW (e.g., DNG) file and a JPEG file from the same capture event meets the claim. The dispute may focus on whether "encoded...from" requires creating a new, differently-encoded data stream derived from the primary still picture data, or if simultaneous generation of two file types from sensor data qualifies.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent's objective is to allow reproduction on various devices ('760 Patent, col. 2:25-32). An interpretation that includes generating a widely compatible file (like JPEG) alongside a high-quality one (like DNG) would align with this purpose.
    • Evidence for a Narrower Interpretation: The phrase "obtained from said still pictures" could suggest a sequential process where one type of still picture file is created first, and the other is derived from it, which may not be how the accused products operate. The abstract distinguishes between "still pictures encoded by a second encoding method" and "second pictures corresponding to the still pictures," which might imply two distinct types of data objects.

'334 Patent

  • The Term: "a function defining a relation between said bias data and said gain data stored in a memory" (Claim 4)
  • Context and Importance: Practitioners may focus on this term because the entire infringement case for this patent hinges on mapping the complex, integrated power control of a modern chipset to this specific claimed structure. LG may argue its system does not use a "function" in the claimed sense, while Maxell will argue that the operational principles of envelope tracking inherently embody such a function.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes the function as controlling the bias "according to" the gain, suggesting a causal relationship rather than a rigid mathematical formula ('334 Patent, Abstract). This could support reading the claim onto any system where bias is intentionally modulated based on required gain.
    • Evidence for a Narrower Interpretation: Figure 4 of the patent depicts a table with discrete, predetermined values for gain (G1, G2...) and bias (B1, B2...). This could support an argument that the claimed "function" requires a lookup table or a similar stored data structure that explicitly defines the relationship, rather than a dynamic, hardware-driven response.

VI. Other Allegations

  • Indirect Infringement: For each asserted patent, the complaint alleges induced infringement, stating that Defendant's user manuals and online support documents instruct customers on how to use the accused features (e.g., taking photos, using Portrait Mode, sharing videos via Wi-Fi Direct) (Compl. ¶26, ¶46, ¶63, ¶83). Contributory infringement is also alleged, based on the provision of material components such as camera hardware, image signal processors, and RF components that are allegedly not staple articles of commerce (Compl. ¶28, ¶48, ¶65, ¶85).
  • Willful Infringement: The complaint alleges willful infringement for all asserted patents. The basis for this allegation is Defendant's alleged knowledge of the patents and infringement since at least July 19, 2021, based on correspondence from Plaintiff that purportedly identified the patents, exemplary claims, and accused products (Compl. ¶29-30, ¶49-50, ¶66-67, ¶86-87).

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

  • A core issue will be one of claim scope versus modern technology: can claim terms drafted for the technologies of the late 1990s and early 2000s (e.g., "a function stored in memory," "encoded...from single frame signals") be construed to read on the highly integrated, multi-functional, and software-defined operations of contemporary smartphone and laptop systems?
  • A key evidentiary question will be one of technical proof: does the complaint's reliance on general marketing materials and high-level technical descriptions of third-party components (e.g., Qualcomm chipsets) provide sufficient factual basis to plausibly demonstrate that the accused LG products actually perform the specific steps required by each asserted claim?
  • A central procedural question will be the impact of prior adjudications: given that several of the asserted patents have survived IPR challenges and were previously litigated in the same judicial district, the case may turn on how the court applies estoppel principles and prior claim constructions, potentially narrowing the dispute to the specific infringement analysis of LG's products.