Omnitek Partners LLC v. Garmin USA Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Omnitek Partners, LLC (New York)
  • Defendant: Garmin USA, Inc. (Oregon)
  • Plaintiff’s Counsel: Ramey LLP
• Case Identification: 4:24-cv-00477, S.D. Tex., 02/09/2024
• Venue Allegations: Plaintiff alleges venue is proper in the Southern District of Texas because Defendant has regular and established places of business in the district, sells products in the district, and has committed acts of infringement there.
• Core Dispute: Plaintiff alleges that Defendant’s Fenix 7S Solar Edition watch, which incorporates a solar panel, infringes a patent related to power supplies that are integrated into the structure of a device.
• Technical Context: The technology concerns methods for integrating power sources directly into the structural components of electronic devices to save space and improve durability.
• Key Procedural History: The complaint states that Plaintiff is a non-practicing entity. It alleges Defendant’s knowledge of the patent-in-suit as of the filing date of the complaint, forming a basis for post-suit willful infringement, while reserving the right to prove an earlier date of knowledge.

Case Timeline

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

U.S. Patent No. 7,118,825 - "Conformal Power Supplies" (Issued Oct. 10, 2006)

The Invention Explained

• Problem Addressed: The patent describes a problem in device design where conventional batteries occupy a significant portion of a device's internal volume, particularly in systems like projectiles that are subject to extreme forces and require robust protective housing for the power source (’825 Patent, col. 2:12-34). This allocation of space for the battery and its protective components limits the space available for other functional elements (’825 Patent, col. 2:31-34).
• The Patented Solution: The invention proposes integrating the power source directly into the structure of the device, making it a "load-bearing member" (’825 Patent, col. 2:62-65). By making the battery part of the device's physical frame or casing, the invention aims to save the space otherwise needed to house a separate battery, while potentially increasing the device's structural damping and rigidity (’825 Patent, col. 5:1-6; col. 6:57-65). For example, the patent discloses structural elements filled with a battery chemical that can carry significant loads (’825 Patent, col. 5:27-35).
• Technical Importance: This approach allows for greater miniaturization and enhanced durability of electronic devices, especially those intended for harsh environments or requiring a compact form factor (’825 Patent, col. 2:50-59).

Key Claims at a Glance

• The complaint asserts claims 1-8 (Compl. ¶13). Claim 1 is the sole independent claim.
• Independent Claim 1 Elements:
  • A device comprising:
  • a structure for housing or supporting at least one power consuming element; and
  • a power supply formed in or on the structure, the power supply being electrically connected to the at least one power consuming element for supplying power to the same,
  • wherein the power supply is a film of power generating material covering at least a portion of the structure.
• The complaint does not explicitly reserve the right to assert dependent claims, but the general assertion of claims 1-8 implies their potential inclusion.

III. The Accused Instrumentality

Product Identification

• The accused instrumentality is the "Garmin's Fenix 7S Solar Edition watch" (Compl. ¶14).

Functionality and Market Context

• The complaint identifies the relevant functionality as the watch’s inclusion of "a solar panel that conforms to the structure of the watch and supplies power to a built-in rechargeable battery" (Compl. ¶14). The solar panel acts as a "conforming power supply" connected to a "power consuming element" (the battery) (Compl. ¶14). The complaint does not provide further technical detail on the product's market context or commercial importance. No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint references a claim chart in an external exhibit that was not provided with the filing (Compl. ¶15). The following chart summarizes the infringement theory based on the narrative allegations in the complaint body.

’825 Patent Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: A central question may be whether the term "structure", as used in a patent focused on load-bearing components in high-g environments like projectiles, can be interpreted to read on the housing of a consumer-grade watch.
  • Technical Questions: The analysis may turn on whether the accused solar panel is "formed in or on the structure" in the integrated, load-bearing manner described in the patent's specification, or if it is merely a surface-mounted component. Evidence will be needed to determine if the solar panel functions as a "load bearing member" as described in the patent (’825 Patent, col. 2:62-63) or if it simply "covers" the structure as required by the claim.

V. Key Claim Terms for Construction

The Term: "formed in or on the structure"

• Context and Importance: This term is critical because it defines the required relationship between the power supply and the device body. The outcome of the infringement analysis may depend on whether a surface-mounted solar panel on a watch is considered "formed in or on" the structure in the manner contemplated by the patent.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: Plaintiff may argue that the plain language "on the structure" does not require load-bearing integration and is satisfied by the solar panel's placement on the watch face. The claim itself requires only that the "film of power generating material" be "covering at least a portion of the structure" (’825 Patent, col. 11:41-42), which may support a broader reading.
  • Evidence for a Narrower Interpretation: Defendant may argue that the specification consistently describes the invention as being "integrated into the structure... as a load-bearing member" (’825 Patent, col. 2:62-63) and provides examples of batteries machined into a projectile shell (col. 6:52-56). This context suggests "formed in or on" requires a level of structural integration beyond simple surface mounting.

The Term: "structure for housing or supporting"

• Context and Importance: The definition of "structure" will establish the foundation for the infringement read. Practitioners may focus on whether this term is limited to the specific "projectile shell or device casing" examples in the patent or if it can encompass any device body.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claim language itself is general, referring simply to a "device" with a "structure" (’825 Patent, col. 11:32-33). The patent also mentions a wide range of potential devices, including disposable cameras, CD players, and cell phones, not just projectiles (’825 Patent, col. 12:57-62).
  • Evidence for a Narrower Interpretation: The Background and Summary sections heavily emphasize projectiles and the challenges of high-g environments (’825 Patent, col. 1:19-41; col. 2:17-24). This context could be used to argue that the term "structure" should be construed as one capable of withstanding such forces, thereby narrowing its scope.

VI. Other Allegations

• Indirect Infringement: The complaint alleges induced infringement, asserting that Garmin "actively encouraged or instructed" its customers on how to use the accused watches in an infringing manner (Compl. ¶16). It also alleges contributory infringement, claiming there are "no substantial noninfringing uses" for the accused products (Compl. ¶17).
• Willful Infringement: The complaint alleges willfulness based on Defendant having knowledge of the ’825 patent "from at least the filing date of the lawsuit" (Compl. ¶16, 17). Plaintiff expressly reserves the right to amend the complaint to allege pre-suit knowledge if it is discovered (Compl. ¶16, fn. 1).

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

The resolution of this dispute will likely depend on the court's answers to two central questions:

1. A core issue will be one of definitional scope: Can the claims of the ’825 patent, which are described in the specification primarily in the context of load-bearing, structurally integrated power sources for high-impact applications like military projectiles, be construed to cover a consumer-grade watch with a surface-mounted solar panel? The construction of "formed in or on the structure" will be dispositive.

2. A key evidentiary question will be one of technical implementation: Does the Garmin watch's solar panel function merely as an attached component, or is it integrated into the watch's body in a manner that satisfies the patent's description of a conformal, structurally integrated power source? The factual evidence regarding the panel's physical integration and role—or lack thereof—as a structural element will be critical to the infringement analysis.