DCT

1:25-cv-01826

Malikie Innovations Ltd v. Canon Inc

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:25-cv-01826, W.D. Tex., 11/12/2025
  • Venue Allegations: Venue is alleged based on Defendant Canon U.S.A., Inc. maintaining a place of business in the district and both defendants purposefully directing infringing products into the district through established distribution channels. For Canon Inc., a foreign corporation, venue is asserted as proper in any judicial district.
  • Core Dispute: Plaintiff alleges that Defendant’s cameras, printers, and related software applications infringe six patents, originally developed by BlackBerry, related to wireless data encoding, media synchronization, secure device pairing, and image handling.
  • Technical Context: The patents-in-suit address technologies integral to modern wirelessly connected consumer electronics, governing how devices efficiently transmit data, securely connect to peripherals, and manage digital media.
  • Key Procedural History: The complaint details over eighteen months of pre-suit licensing negotiations, beginning March 1, 2024. During this period, Plaintiff allegedly provided notice of infringement, claim charts, and offers to license certain patents, including alleged Standard Essential Patents (SEPs) for the IEEE 802.11 (Wi-Fi) standard, on Fair, Reasonable, and Non-Discriminatory (FRAND) terms. The complaint notes that these discussions, which included rebuttals and sur-rebuttals from both parties, did not result in a license agreement.

Case Timeline

Date Event
2004-04-30 Earliest Priority Date for ’870 Patent
2004-10-12 Earliest Priority Date for ’934 Patent
2005-04-04 Earliest Priority Date for ’323 Patent
2007-05-29 Earliest Priority Date for ’698 Patent
2010-06-29 ’934 Patent Issued
2011-11-29 ’698 Patent Issued
2012-02-29 Earliest Priority Date for ’730 Patent
2015-09-22 ’323 Patent Issued
2015-12-22 ’434 Patent Issued
2018-06-19 ’730 Patent Issued
2019-11-19 ’870 Patent Issued
2024-03-01 Plaintiff sends initial letter to Defendant offering patent license
2024-05-28 Plaintiff identifies ’434, ’870, and ’698 Patents to Defendant
2025-11-12 Complaint Filed

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

U.S. Patent No. 7,747,934 - “Method for selecting low density parity check (LDPC) code used for encoding of variable length data,” issued June 29, 2010.

The Invention Explained

  • Problem Addressed: In wireless communications, using Low-Density Parity-Check (LDPC) codes for error correction presents a challenge when data packets have variable sizes and are sent via different transmission mechanisms. The patent describes the difficulty of selecting the most appropriate LDPC code from a plurality of options to achieve good "coding gain" while minimizing the number of encoded packets and symbols (’934 Patent, col. 1:66-2:9; Compl. ¶38).
  • The Patented Solution: The invention proposes a method for selecting an optimal LDPC code from a group of available codes. The method involves calculating a number of "shortening bits" and "puncturing bits" for each potential code based on the data packet size, and then determining which code best meets a given "performance criterion" (e.g., preserving coding gain, reducing complexity) (’934 Patent, Abstract, col. 11:11-13; Compl. ¶¶39, 41).
  • Technical Importance: This approach provides a systematic way to optimize error correction for variable-length data, improving the efficiency and performance of wireless communication systems (Compl. ¶39).

Key Claims at a Glance

  • The complaint asserts claims 1, 2, 3, 4, and 10 (Compl. ¶45). Claim 1 is the sole independent claim asserted.
  • Essential elements of independent claim 1 include:
    • providing a plurality of LDPC codes of different codeword lengths and code rates;
    • calculating a number of shortening N_shortened bits for each of the plurality of LDPC codes;
    • calculating a number of puncturing N_punctured bits for each of the plurality of LDPC codes;
    • providing a performance criterion;
    • determining, in a computer processor, a selected LDPC code from the plurality of shortened LDPC codes and the plurality of punctured LDPC codes meeting the performance criterion; and
    • encoding data using the selected LDPC code.
  • The complaint asserts dependent claims that further define the performance criterion (Compl. ¶¶39-42).

U.S. Patent No. 9,218,434 - “Method for storing media captured using a portable electronic device,” issued December 22, 2015.

The Invention Explained

  • Problem Addressed: The patent identifies two problems with managing photos on portable devices: limited on-device memory requires frequent uploads to free up space, and the process of transferring photos to a computer and then uploading them to a photo-sharing website is time-consuming and inefficient (’434 Patent, col. 1:29-44; Compl. ¶52).
  • The Patented Solution: The invention describes a method using a "media manager" that performs a "synchronization operation" between the device's memory and an account on a media-sharing website. This operation synchronizes the folder structure between the device and the website and uploads the image files, with the specification noting this can include copying folder information "vice versa in order to maintain parallel folder structure" (’434 Patent, col. 5:10-19; Compl. ¶53).
  • Technical Importance: This solution aims to streamline the workflow for backing up and sharing media from portable devices, reducing the amount of user time required for these frequent tasks (’434 Patent, col. 1:53-55; Compl. ¶52).

Key Claims at a Glance

  • The complaint asserts at least claims 1 and 20 (Compl. ¶55). Claim 1 is an independent method claim.
  • Essential elements of independent claim 1 include:
    • storing an identity on a portable electronic device, the identity allowing access to an account on a media-sharing website;
    • storing a file in a device memory of the portable electronic device, the file being captured by a media capturing component;
    • performing a synchronization operation using a media manager, said media manager being in communication with said device memory and said account;
    • wherein said synchronization operation synchronizes content between said device memory and said media-sharing website such that said image file is stored in said media-sharing website using said file name.
  • The complaint does not provide sufficient detail for analysis of claim 20.

U.S. Patent No. 10,484,870 - “System and method for handling peripheral connections to mobile devices,” issued November 19, 2019 (Compl. ¶13).

  • Technology Synopsis: The patent addresses security vulnerabilities when connecting a peripheral (e.g., a laptop) to a mobile device, such as a "Trojan horse application" stealing user data (Compl. ¶62; ’870 Patent, col. 1:32-42). The solution involves a method where, if a peripheral cannot supply a required password on its own, it sends an indication to the mobile device to acquire user input (e.g., a password prompt on the mobile device screen) to approve the data connection (Compl. ¶63; ’870 Patent, col. 6:51-53).
  • Asserted Claims: At least claim 1 (Compl. ¶65).
  • Accused Features: The functionality of Canon EOS series, XF series, and Powershot series cameras that connect to other devices (Compl. ¶65).

U.S. Patent No. 10,003,730 - “Method and device for sharing a camera feature,” issued June 19, 2018 (Compl. ¶14).

  • Technology Synopsis: The patent addresses the hardware and software limitations of a single electronic device's camera features (e.g., flash, zoom, facial recognition) (Compl. ¶72; ’730 Patent, col. 1:17-29). The invention is a "camera-feature-sharing mode" where a first device establishes a wireless connection with a second device, allowing the first device to access and control a camera-related feature of the second, such as using the second device’s flash or acting as its viewfinder (Compl. ¶73; ’730 Patent, col. 10:16-25, 10:44-49).
  • Asserted Claims: At least claims 1 and 6 (Compl. ¶75).
  • Accused Features: The Canon Camera Connect Application (“CCCA”) and compatible Canon cameras (EOS, XF, and Powershot series) (Compl. ¶75).

U.S. Patent No. 9,143,323 - “Securing a link between two devices,” issued September 22, 2015 (Compl. ¶15).

  • Technology Synopsis: The patent describes a technical problem of securely establishing a communication link between two devices without requiring intervention from an IT administrator (Compl. ¶83; ’323 Patent, col. 1:17-26). The solution involves a multi-step cryptographic process where two devices generate two initial symmetric keys (K1 and K2), hash all the packets exchanged during that process to create a hash result (H), and then combine K1, K2, and H to generate a final, secure symmetric key (K3) for the communication link (Compl. ¶84; ’323 Patent, col. 4:9-26).
  • Asserted Claims: At least claim 1 (Compl. ¶86).
  • Accused Features: Canon DX Series printers and other products with wireless connectivity, with the complaint specifically referencing instructions for enabling TLS 1.3 security on Canon printers (Compl. ¶¶86, 88).

U.S. Patent No. 8,068,698 - “System and method for resizing images prior to upload,” issued November 29, 2011 (Compl. ¶16).

  • Technology Synopsis: The patent addresses challenges of sharing images from handheld devices with limited memory and subject to network bandwidth restrictions (Compl. ¶93; ’698 Patent, col. 1:21-37). The patented solution is a method for resizing an image on the device prior to uploading it to an image repository to conserve memory and bandwidth. The method also contemplates updating the image's EXIF metadata to reflect the new, smaller pixel dimensions (Compl. ¶94; ’698 Patent, col. 6:14-16, 7:11-18).
  • Asserted Claims: At least claims 1 and 6 (Compl. ¶96).
  • Accused Features: Canon EOS R/DSLR series, EOS M series, and Powershot series cameras (Compl. ¶96).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are a broad set of Canon products, including digital cameras, printers, and associated software applications (Compl. ¶¶45, 55, 65, 75, 86, 96). Specific product lines named include Canon EOS, Powershot, and XF series cameras; imageRUNNER and imageCLASS printers; and the Canon Camera Connect Application (Compl. ¶¶55, 65, 75, 86).

Functionality and Market Context

  • The complaint targets core functionalities of these products. This includes their implementation of the IEEE 802.11 (Wi-Fi) standard, which allegedly uses LDPC coding (’934 Patent); their ability to connect to cloud services like "image.canon" for photo synchronization (’434 Patent); their methods for connecting to peripherals and other devices (’870 Patent); their remote camera control features via the CCCA (’730 Patent); their secure communication protocols (’323 Patent); and their on-device image resizing capabilities (’698 Patent). The complaint alleges these features are central to the products' functionality and market appeal (Compl. ¶¶45, 58, 68, 78, 88, 99). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint references exemplary claim charts attached as exhibits but does not provide them in the document. The infringement theories are summarized below in prose.

’934 Patent Infringement Allegations
The complaint alleges that any Canon product using specific Canon Wi-Fi modules (identified by FCC IDs) that are compliant with IEEE 802.11 standards directly infringes the ’934 Patent (Compl. ¶45). The theory appears to be that compliance with the standard necessitates the use of LDPC codes for encoding variable-sized data, and that in doing so, the devices inherently perform the claimed method of selecting an LDPC code by calculating shortening and puncturing bits to meet a performance criterion (Compl. ¶¶37-42).

’434 Patent Infringement Allegations
The complaint alleges that Canon EOS and Powershot series cameras, used in conjunction with Canon's services, directly infringe the ’434 Patent (Compl. ¶55). The infringement theory is that Canon's system performs the claimed method of updating a media-sharing website. Specifically, it alleges that Canon's software acts as the claimed "media manager" and performs a "synchronization operation" that synchronizes content, including folder structures and image files, between the camera's device memory and the media-sharing website (e.g., image.canon) (Compl. ¶¶53, 58).

  • Identified Points of Contention:
    • ’934 Patent Scope Question: A primary question may be whether practicing the IEEE 802.11 standard necessarily requires performing every step of the asserted claims. The analysis may focus on whether the standard mandates the specific "calculating" and "determining" steps of the claimed selection method, or if it merely permits various methods, only one of which is the patented invention.
    • ’434 Patent Technical Question: The dispute may center on the technical operation of Canon’s software. What evidence does the complaint provide that the accused service performs the claimed "synchronization operation," particularly the element of synchronizing "folder structure," which the specification suggests includes a "vice versa" or bi-directional component, as opposed to a simple one-way upload? (Compl. ¶53).

V. Key Claim Terms for Construction

  • The Term: "determining... a selected LDPC code... meeting the performance criterion" (’934 Patent, Claim 1)
  • Context and Importance: This term defines the core inventive step of selecting a code, rather than simply using one. Practitioners may focus on this term because the infringement case could depend on whether Canon's 802.11-compliant devices perform an active, criteria-based selection process as claimed, or if they use a static or pre-configured code selection that does not involve "determining" a code from a plurality of options based on a runtime "performance criterion."
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes multiple possible performance criteria, including keeping "coding gain as high as possible," using "as few modulated symbols as possible," and keeping "overall complexity at a reasonable level," which could support a construction not tied to any single calculation (’934 Patent, col. 12:26-34).
    • Evidence for a Narrower Interpretation: The detailed description focuses on specific calculations involving a "shortening-to-puncturing ratio" (q_normalized), which could support a narrower construction requiring such a quantitative analysis as part of the "determining" step (’934 Patent, col. 11:11-23).
  • The Term: "synchronization operation" (’434 Patent, Claim 1)
  • Context and Importance: This term is central to the infringement allegation for the ’434 patent. The definition will be critical to determining whether a cloud backup or upload feature, common in modern cameras, falls within the scope of the claims.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim language states the operation "synchronizes content... such that said image file is stored in said media-sharing website using said file name," which might be argued to cover any process that achieves this end result, including a one-way upload (Compl. ¶53).
    • Evidence for a Narrower Interpretation: The specification elaborates that synchronizing folder structure "includes copying folder information from the device 12 to the photo-sharing website and vice versa in order to maintain parallel folder structure therebetween," suggesting a bi-directional alignment that may be narrower than a simple upload (’434 Patent, col. 5:14-19; Compl. ¶53).

VI. Other Allegations

  • Indirect Infringement: The complaint alleges induced infringement for all six patents, based on Canon selling the accused products and providing user manuals and online instructions that allegedly encourage customers to use the infringing features (e.g., connecting to Wi-Fi, using the Camera Connect app, or using the image.canon cloud service) (Compl. ¶¶47, 58, 68, 78, 88, 99). Contributory infringement is also alleged for the ’934 and ’323 patents, based on Canon supplying Wi-Fi components that are alleged to be a material part of the invention and not a staple article of commerce (Compl. ¶¶48, 89).
  • Willful Infringement: The complaint alleges willful infringement for all asserted patents. The basis for this allegation is the detailed pre-suit notification and licensing negotiation history, starting on March 1, 2024, during which Plaintiff allegedly provided Canon with notice of the patents and its infringement theories. The complaint alleges that Canon's continued infringement after this notice was objectively reckless (Compl. ¶¶20, 49, 59, 69, 79, 90, 100).

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

  • A core issue will be one of infringement by standard: For the alleged standard-essential ’934 Patent, can Plaintiff prove that compliance with the IEEE 802.11 standard is sufficient to establish infringement of the specific method steps claimed, or must it provide evidence of the accused devices’ particular implementation of LDPC code selection?
  • A second key issue will be one of definitional scope: The case for several patents, including the ’434 patent, may turn on claim construction. Can the term “synchronization operation,” rooted in the patent’s description of maintaining “parallel folder structure,” be construed to cover the more common one-way cloud upload and backup functionality present in many modern devices?
  • A third central question will be one of intent and reasonableness: Given the extensive pre-suit negotiations detailed in the complaint, the analysis of willfulness will likely scrutinize the conduct of both parties. The court may examine whether Canon engaged in good-faith negotiations to resolve a legitimate dispute or acted with willful blindness to Plaintiff's asserted patent rights, particularly in the context of the FRAND licensing offers.