DCT
6:20-cv-00563
Kuster v. Western Digita
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Martin Kuster (Switzerland)
- Defendant: Western Digital Technologies, Inc. (Delaware)
- Plaintiff’s Counsel: Scott Douglass & McConnico, LLP; Kilpatrick Townsend & Stockton LLP
- Case Identification: 6:20-cv-00563, W.D. Tex., 09/08/2020
- Venue Allegations: Venue is alleged to be proper based on Defendant having a regular and established physical place of business within the district and having committed acts of infringement there.
- Core Dispute: Plaintiff alleges that Defendant’s USB chip-on-board flash drives infringe two patents related to the mechanical and electrical structure for integrating USB 3.0 contacts while maintaining backward compatibility.
- Technical Context: The technology addresses the challenge of physically incorporating the additional contacts required for the USB 3.0 standard into the compact form factor of chip-on-board (COB) flash drives.
- Key Procedural History: The complaint alleges extensive pre-suit communications, beginning with a notice letter sent to Defendant on September 21, 2018, that identified the patents-in-suit. This was followed by additional correspondence and multiple in-person meetings between counsel for both parties during 2019. The complaint also notes that Defendant previously filed a Rule 12(b)(6) motion to dismiss claims of indirect and willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2011-01-31 | Priority Date for '243 and '206 Patents |
| 2014-04-08 | U.S. Patent No. 8,693,206 Issued |
| 2014-04-22 | U.S. Patent No. 8,705,243 Issued |
| 2018-09-21 | Plaintiff allegedly sent notice letter to Defendant identifying patents |
| 2020-09-08 | First Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,705,243 - “External Storage Device”
- Patent Identification: U.S. Patent No. 8,705,243, titled “External Storage Device,” issued on April 22, 2014. (Compl. ¶6).
The Invention Explained
- Problem Addressed: The patent’s background section describes the difficulty of incorporating the new contacts for the faster USB 3.0 standard into existing chip-on-board (COB) USB stick designs, which feature a flat, rectilinear configuration, while also maintaining backward compatibility with the older USB 2.0 standard. (’243 Patent, col. 1:56-65).
- The Patented Solution: The invention proposes a "contact bar" mounted on the device’s connection surface. This contact bar assembly includes a "cover" and a "plurality of springs" that serve as one set of electrical contacts. A separate "plurality of connection fingers" are embedded on the cover to form a second set of contacts. (’243 Patent, col. 4:55-65, col. 5:7-11). This two-tiered contact structure, illustrated in figures such as Figure 35, is designed to allow a single device to interface with both USB 2.0 and 3.0 ports. (Compl. ¶12-13; ’243 Patent, Fig. 35).
- Technical Importance: This design approach provided a method to manufacture compact, durable, and backward-compatible USB 3.0 COB flash drives, facilitating the market's transition to the higher-speed standard. (Compl. ¶12).
Key Claims at a Glance
- The complaint asserts independent claim 1. (Compl. ¶24).
- The essential elements of claim 1 include:
- An external storage device comprising a substrate with opposite connection and component surfaces, a memory die stack, and a controller.
- A "contact bar mounted on the connection surface," which itself comprises "a cover and a plurality of springs."
- A "plurality of connection fingers embedded to be exposed upon the cover," located at a second distance from the substrate that is less than the first distance of the springs.
- A first interface comprising the connection fingers and a second interface comprising the springs.
- The complaint also asserts dependent claims 2, 3, 4, 9, 10, 11, 12, 13, and 18. (Compl. ¶24).
U.S. Patent No. 8,693,206 - “External Storage Device”
- Patent Identification: U.S. Patent No. 8,693,206, titled “External Storage Device,” issued on April 8, 2014. (Compl. ¶7).
The Invention Explained
- Problem Addressed: The patent addresses the same technical challenge as the ’243 Patent: integrating USB 3.0 contacts into a compact COB flash drive form factor while retaining compatibility with USB 2.0 ports. (’206 Patent, col. 1:12-65).
- The Patented Solution: The solution is structurally similar to that of the ’243 Patent, involving two sets of contacts at different distances from the substrate. However, this patent claims a "contact bar" that includes a "plurality of portions" which are electrically coupled to the substrate, rather than a "plurality of springs." (’206 Patent, col. 11:5-10). These "portions" and a separate "plurality of connection fingers" form two distinct interfaces to support multiple connection standards. (’206 Patent, col. 11:17-20).
- Technical Importance: This invention also provided a method for producing dual-standard COB flash drives, which the complaint alleges was important for enabling the market to adopt the USB 3.0 standard. (Compl. ¶12).
Key Claims at a Glance
- The complaint asserts independent claim 11. (Compl. ¶37).
- The essential elements of claim 11 include:
- An external storage device with a substrate, memory die stack, and controller.
- A "contact bar mounted on the connection surface," which includes a "plurality of portions that are electrically coupled with the substrate" and located at a first distance.
- A "plurality of connection fingers electrically coupled with the substrate," located at a second distance from the substrate that is less than the first distance.
- A first interface comprising the connection fingers and a second interface comprising the "plurality of portions of the contact bar."
- The complaint also asserts claims 1, 2, 4, 9, 10, 12, 13, 18, and 19. (Compl. ¶37).
III. The Accused Instrumentality
Product Identification
The "Accused Devices" are identified as a line of Western Digital's SanDisk-branded USB chip-on-board (COB) flash drives compatible with USB 3.0 and subsequent standards. (Compl. ¶17). Specific product families named include iXpand, Ultra Flair, Ultra Loop, Ultra Fit, and others. (Compl. pp. 7-9).
Functionality and Market Context
The Accused Devices are portable data storage devices that connect to computers via a USB interface. (Compl. ¶10). The complaint alleges they are manufactured using COB technology and incorporate the patented inventions to achieve compatibility with both USB 2.0 and USB 3.0 standards. (Compl. ¶17). The complaint includes an image of product packaging for the SanDisk Ultra Fit USB 3.1 drive, which identifies Defendant as the "seller of record and licensee in the Americas of SanDisk® products." (Compl. p. 10, ¶18).
IV. Analysis of Infringement Allegations
The complaint references but does not attach claim chart exhibits; the following analysis is based on the narrative infringement allegations. (Compl. ¶25, ¶38).
’243 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a substrate that includes a connection surface and a component surface... | The accused products are alleged to be external storage devices that include a substrate with the claimed surfaces. | ¶26 | col. 4:30-35 |
| at least one memory die stack mounted on one of the connection surface and the component surface... | The accused COB drives allegedly include at least one memory die stack mounted on the substrate. | ¶26 | col. 4:30-31 |
| a controller configured to access the at least one memory die stack... | The accused COB drives allegedly include a controller mounted on the substrate to access the memory. | ¶26 | col. 4:30-31 |
| a contact bar mounted on the connection surface of the substrate, the contact bar comprising a cover and a plurality of springs... | The accused devices allegedly contain a contact bar with a cover and spring-like contacts mounted on the connection surface. | ¶26 | col. 5:7-21 |
| a plurality of connection fingers embedded to be exposed upon the cover of the contact bar, wherein the plurality of connection fingers are located at a second distance relative to the connection surface of the substrate, the second distance being less than the first distance... | The accused devices allegedly have a set of connection fingers exposed on the contact bar at a different, lesser distance from the substrate than the springs. The complaint includes a depiction of such an external storage device from the patent. (Compl. ¶13, Fig. 35). | ¶26 | col. 4:55-65 |
| wherein a first interface comprises the plurality of connection fingers, and a second interface comprises the plurality of springs. | The accused devices allegedly have two distinct interfaces, one formed by the fingers and the other by the springs, to enable compatibility with different USB standards. | ¶26 | col. 6:5-9 |
Identified Points of Contention:
- Scope Questions: A primary point of dispute may be whether the contact structures within the accused products meet the claim limitation of "a plurality of springs." The definition of "spring" will be critical, specifically whether it is limited to the disclosed embodiments or can be read more broadly to cover any resilient contact element.
- Technical Questions: A factual question will be whether the accused devices, upon inspection, actually contain two distinct sets of contacts at two measurably different distances from the substrate, as required by the relative distance limitations in the claim.
’206 Patent Infringement Allegations
| Claim Element (from Independent Claim 11) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a substrate that includes a connection surface and a component surface... | The accused products are alleged to be external storage devices that include a substrate with the claimed surfaces. | ¶39 | col. 4:30-35 |
| at least one memory die stack mounted on one of the connection surface and the component surface of the substrate; | The accused COB drives allegedly include at least one memory die stack mounted on the substrate. | ¶39 | col. 4:30-31 |
| a controller configured to access the at least one memory die stack... | The accused COB drives allegedly include a controller mounted on the substrate to access the memory. | ¶39 | col. 4:30-31 |
| a contact bar mounted on the connection surface...the contact bar including a plurality of portions that are electrically coupled with the substrate and located at a first distance... | The accused devices allegedly contain a contact bar with multiple contact "portions" that are electrically coupled to the substrate. | ¶39 | col. 5:7-9 |
| a plurality of connection fingers electrically coupled with the substrate, the plurality of connection fingers located at a second distance...the second distance being less than the first distance... | The accused devices allegedly have a separate set of connection fingers located at a different, lesser distance from the substrate than the contact bar "portions." | ¶39 | col. 4:55-58 |
| wherein a first interface comprises the plurality of connection fingers, and a second interface comprises the plurality of portions of the contact bar. | The accused devices are alleged to have two separate interfaces formed by the fingers and the contact bar portions, respectively. | ¶39 | col. 11:17-20 |
Identified Points of Contention:
- Scope Questions: The central issue for this patent will likely be the interpretation of "a plurality of portions." The court may need to determine how this term's scope compares to the "plurality of springs" in the ’243 Patent and whether the accused devices' structures fall within that scope.
- Technical Questions: As with the ’243 Patent, the infringement analysis will raise the factual question of whether the accused devices physically embody the claimed two-interface structure with the required relative spatial arrangement.
V. Key Claim Terms for Construction
The Term: "a plurality of springs" (’243 Patent, Claim 1)
- Context and Importance: This term is a key structural limitation that distinguishes the ’243 Patent from the related ’206 Patent. The infringement case for the ’243 Patent may turn on whether the accused products' contact mechanism can be defined as "springs." Practitioners may focus on this term because a narrow construction could provide a direct path to a non-infringement defense.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification does not provide an explicit definition, which may support an argument that the term should be given its ordinary meaning of a resilient element that exerts a force when compressed or bent.
- Evidence for a Narrower Interpretation: The specification describes and depicts a specific embodiment of "contact springs 52," which are shown as distinct, U-shaped components with hooks (56) and coupling projections (60). (’243 Patent, col. 5:55-65; Fig. 14). A party could argue the term should be limited to structures with these disclosed characteristics.
The Term: "a plurality of portions" (’206 Patent, Claim 11)
- Context and Importance: This term appears in place of "springs" and its construction relative to that term will be critical. If "portions" is construed more broadly than "springs," it may cover a wider range of accused structures. Practitioners may focus on this term to understand the potential overlap and differences in scope between the two asserted patents.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: "Portion" is a general term. The specification describes the "portions" as "a plurality of extensions 38" which are part of the contact bar's printed circuit board. (’206 Patent, col. 5:50-52; Fig. 4). This suggests the "portions" are integral parts of the bar, not necessarily separate components like the "springs" of the ’243 Patent.
- Evidence for a Narrower Interpretation: A party could argue that "portions" is not limitless and must be read in the context of the claim as a whole, requiring them to be distinct from the "connection fingers" and capable of forming a "second interface" at a "first distance." This might require them to be more than just arbitrary sections of the contact bar.
VI. Other Allegations
- Indirect Infringement: The complaint alleges active inducement of infringement for both patents. The basis for this allegation is Defendant's alleged knowledge of the patents since September 2018, combined with subsequent actions such as extensive marketing of the accused products' infringing features (e.g., speed, compatibility) and entering into contracts with distributors and retailers to sell the devices. (Compl. ¶27, ¶40).
- Willful Infringement: Willfulness is alleged based on Defendant’s purported pre-suit knowledge of the patents and infringement, stemming from a notice letter, follow-up correspondence, and in-person meetings. (Compl. ¶22-23, ¶28). The complaint further alleges that Defendant "investigated but chose not to cease infringement" and that its continued sales in the face of this knowledge constitute egregious and willful misconduct. (Compl. ¶28, ¶41).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of claim scope differentiation: how will the court construe the key structural terms "plurality of springs" (’243 Patent) and "plurality of portions" (’206 Patent)? The viability of the infringement case may depend on whether the internal contact structure of the accused devices falls within the scope of one, both, or neither of these potentially distinct definitions.
- A key evidentiary question will be one of structural proof: what technical evidence, likely derived from product teardowns, will be presented to establish that the accused SanDisk drives contain the specific internal architecture required by the claims, particularly the two distinct sets of contacts located at different, measurable distances from the device substrate?
- Given the detailed allegations of extensive pre-suit notice and communications, a critical question for damages will be one of culpability: can the plaintiff prove by a preponderance of the evidence that the defendant's alleged infringement was willful, which would expose the defendant to the risk of enhanced damages?