DCT

6:21-cv-01169

Maxell Ltd v. Lenovo Group Ltd

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 6:21-cv-01169, W.D. Tex., 11/12/2021
  • Venue Allegations: Plaintiff alleges venue is proper in the Western District of Texas because Defendant Lenovo maintains a "regular and established place of business" in the district, including at least 53 employees, reimbursed home offices, authorized service providers, and authorized dealers.
  • Core Dispute: Plaintiff alleges that Defendant’s Motorola-branded smartphones infringe eight patents related to technologies in audio decoding, mobile device power management, camera functionality, and location services.
  • Technical Context: The patents-in-suit cover fundamental technologies for improving the performance, flexibility, and battery life of mobile electronic devices, which are critical features in the competitive smartphone market.
  • Key Procedural History: The complaint alleges a history of pre-suit correspondence beginning on May 17, 2018, in which Plaintiff identified patents it believed were infringed by Defendant's products. The complaint also notes that two of the asserted patents, U.S. Patent Nos. 8,098,695 and 6,928,292, were previously asserted against ZTE, resulting in a $43 million jury verdict in favor of Maxell.

Case Timeline

Date Event
1998-11-04 ’695 Patent Priority Date
2000-01-11 ’177 Patent Priority Date
2001-03-19 ’292 Patent Priority Date
2001-07-24 ’673 Patent Priority Date
2002-02-27 ’821 Patent Priority Date
2002-04-03 ’417 Patent Priority Date
2005-08-09 ’292 Patent Issue Date
2005-11-24 ’645 Patent Priority Date
2006-07-04 ’673 Patent Issue Date
2007-04-03 ’821 Patent Issue Date
2007-11-28 ’212 Patent Priority Date
2009-08-18 ’417 Patent Issue Date
2011-05-31 ’645 Patent Issue Date
2011-11-15 ’177 Patent Issue Date
2012-01-17 ’695 Patent Issue Date
2014-10-30 Lenovo acquires Motorola Mobility's smartphone business from Google
2016-08-16 ’212 Patent Issue Date
2018-05-17 Maxell sends first letter to Lenovo alleging infringement
2021-06-03 Maxell sends second letter to Lenovo alleging infringement
2021-11-12 Complaint Filing Date

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

U.S. Patent No. 8,098,695 - "Multiplexed audio data decoding apparatus and receiver apparatus," issued January 17, 2012

The Invention Explained

  • Problem Addressed: The patent describes that, at the time of the invention, audio decoders required substantial built-in memory to store the decompression code for every supported audio format, which made the hardware large, costly, and inflexible to update with new formats (’695 Patent, col. 1:56-2:17; Compl. ¶49).
  • The Patented Solution: The invention proposes a decoder apparatus that detects a change in the audio format (e.g., a change in compression or encoding method) and, in response, "pull[s] the necessary code" from a memory source outside of its own built-in memory (’695 Patent, col. 2:24-3:25; Compl. ¶51). This external code, which could come from another memory location on the device or from an external source like the Internet, is then transferred to the audio decoder's memory to process the new format (’695 Patent, col. 6:31-7:65, 10:37-42).
  • Technical Importance: This approach provided a method for audio processing hardware to be more flexible and adaptable to new and revised audio formats without requiring extensive built-in memory.

Key Claims at a Glance

  • The complaint asserts independent claims 1 and 4 (Compl. ¶55).
  • Essential elements of independent claim 1 include:
    • An audio decoder apparatus comprising a demultiplexer, a memory, a digital signal processor, and a controller.
    • The controller detects whether a "first method of compression and encoding" in an audio data sequence changes to a "second method of compression and encoding."
    • When a change is detected, the controller "downloads a second decoding program code," different from a first code, from outside the memory.
    • The downloaded second decoding program code is used to decode the audio data sequence.
  • The complaint reserves the right to pursue additional infringing devices (Compl. ¶55).

U.S. Patent No. 7,577,417 - "Mobile Terminal," issued August 18, 2009

The Invention Explained

  • Problem Addressed: The patent states that conventional mobile devices automatically increased their processor clock frequency to a high-speed mode based on internal conditions, which increased current consumption and depleted the battery, without allowing for user intervention (’417 Patent, col. 1:21-34; Compl. ¶72).
  • The Patented Solution: The patent teaches a power management system featuring a clock controller that modulates the processor's clock frequency. The controller sets a "first frequency" when the terminal is in an "open condition" and a "second frequency lower than the first" when in a "closed condition" to save power. Crucially, it allows the frequency to be raised to a level "higher than the second frequency when a specific processing is executed even if the mobile terminal is in the closed condition," and then returns it to the lower frequency upon completion (’417 Patent, col. 4:32-40, claim 1; Compl. ¶¶74-75).
  • Technical Importance: This solution provided a more dynamic and efficient method for managing processor speed and power consumption in mobile devices, particularly those with distinct "open" and "closed" operational states.

Key Claims at a Glance

  • The complaint asserts independent claims 1 and 3 (Compl. ¶76).
  • Essential elements of independent claim 1 include:
    • A mobile terminal capable of being changed from an open condition to a closed condition, comprising a processor and a clock controller.
    • The clock controller controls the clock signal frequency to become a first frequency in the open condition.
    • The clock controller controls the frequency to become a second frequency, lower than the first, in the closed condition.
    • The clock controller controls the frequency to become a frequency higher than the second frequency when a specific processing is executed, even if the terminal is in the closed condition.
    • The clock controller controls the frequency to become the second frequency after the specific processing is completed.
  • The complaint reserves the right to pursue additional infringing devices (Compl. ¶76).

U.S. Patent No. 7,072,673 - "Radio Handset and Position Location System," issued July 4, 2006

  • Patent Identification: U.S. Patent No. 7,072,673, "Radio Handset and Position Location System," issued July 4, 2006 (Compl. ¶88).
  • Technology Synopsis: The patent addresses inaccuracies in mobile device location determination that arise when signals from multiple base stations have indistinguishable offset delays (’673 Patent, col. 1:34-2:21; Compl. ¶90). The proposed solution is a system that identifies when multiple base stations have the same offset and excludes the signal from at least one of those stations from the position calculation to improve accuracy (’673 Patent, col. 3:21-30; Compl. ¶92).
  • Asserted Claims: At least claims 5, 6, 7, and 9 (Compl. ¶94).
  • Accused Features: The complaint alleges that the accused smartphones’ location services, which use mobile networks (in addition to GPS, Wi-Fi, etc.) to estimate location, infringe by implementing a method to select which radio station signals to use for position calculation (Compl. ¶¶95-96).

U.S. Patent No. 7,199,821 - "Imaging Apparatus and Method for Controlling White Balance," issued April 3, 2007

  • Patent Identification: U.S. Patent No. 7,199,821, "Imaging Apparatus and Method for Controlling White Balance," issued April 3, 2007 (Compl. ¶110).
  • Technology Synopsis: The patent addresses problems in automatic white balance correction in cameras, where conventional techniques could be inaccurate if an image contained large colored portions or failed to account for factors like object distance, zoom, and brightness (Compl. ¶113). The invention discloses an imaging apparatus that corrects white balance based on detected object distance, zoom value, and brightness (’821 Patent, Abstract; Compl. ¶114).
  • Asserted Claims: At least claim 7 (Compl. ¶115).
  • Accused Features: The accused smartphones allegedly infringe by implementing camera functionalities like "Portrait mode," which adjusts for object distance and blurs the background, thereby performing white balance corrections based on distance, zoom, and brightness values (Compl. ¶¶116-117).

U.S. Patent No. 6,928,292 - "Mobile Handset with Position Calculation Function," issued August 9, 2005

  • Patent Identification: U.S. Patent No. 6,928,292, "Mobile Handset with Position Calculation Function," issued August 9, 2005 (Compl. ¶127).
  • Technology Synopsis: The patent describes that GPS signals are often weak or unavailable indoors, while cellular-based positioning can be inaccurate in other areas. The invention proposes a mobile handset that generates two separate location estimates—one from GPS and one from cellular signals—and then merges them into a final location based on the determined reliability of each source (’292 Patent, Abstract; Compl. ¶¶128-130).
  • Asserted Claims: At least claim 2 (Compl. ¶132).
  • Accused Features: The accused smartphones are alleged to infringe by having the capability to calculate location using a combination of GPS and cellular network signals, and to assess the reliability of the received data to provide an accurate position (Compl. ¶133).

U.S. Patent No. 9,420,212 - "Display Apparatus and Video Processing Apparatus," issued August 16, 2016

  • Patent Identification: U.S. Patent No. 9,420,212, "Display Apparatus and Video Processing Apparatus," issued August 16, 2016 (Compl. ¶148).
  • Technology Synopsis: The patent addresses the need for a device to simultaneously handle two different wireless communications, such as receiving high-quality video from one source while also connecting to the internet via another (’212 Patent, col. 1:38-48; Compl. ¶150). The invention describes an apparatus with two different radio communication units and a control unit that can assign a higher transmission rate to the video-receiving unit than to the network-connecting unit (’212 Patent, col. 1:50-63; Compl. ¶152).
  • Asserted Claims: At least claim 1 (Compl. ¶154).
  • Accused Features: The accused smartphones allegedly infringe by being able to perform functions like Bluetooth tethering (connecting to a network) while simultaneously receiving video over a cellular network, requiring the device to manage two simultaneous radio connections with different data rate requirements (Compl. ¶¶155-156).

U.S. Patent No. 7,952,645 - "Video Processing Apparatus and Mobile Terminal Apparatus," issued May 31, 2011

  • Patent Identification: U.S. Patent No. 7,952,645, "Video Processing Apparatus and Mobile Terminal Apparatus," issued May 31, 2011 (Compl. ¶167).
  • Technology Synopsis: The patent addresses problems with visual display processing on mobile devices, which have limited processing power and battery life and are often used outdoors. The invention proposes an energy-efficient method of processing a video signal by using a controller to distinguish between pattern portions (e.g., wallpaper or letterbox bars) and content portions, and focusing the visual processing only on the important content area (’645 Patent, Abstract; Compl. ¶¶169, 174).
  • Asserted Claims: At least claims 1-3 (Compl. ¶175).
  • Accused Features: The accused smartphones allegedly infringe by implementing features like "Portrait Mode" and document scanning, which detect pattern portions (e.g., the blurred background) and content portions (the subject or document) and apply color corrections differently to each (Compl. ¶¶176-177).

U.S. Patent No. 8,059,177 - "Electric Camera," issued November 15, 2011

  • Patent Identification: U.S. Patent No. 8,059,177, "Electric Camera," issued November 15, 2011 (Compl. ¶187).
  • Technology Synopsis: The patent addresses the problem that conventional digital cameras could not effectively capture both high-quality still images and high-quality moving images with the same sensor and circuitry (’177 Patent, col. 2:67-3:2; Compl. ¶190). The invention solves this by changing the effective set of pixels used by the image sensor based on the camera mode (e.g., still vs. moving) and the amount of detected image instability (’177 Patent, Abstract; Compl. ¶191).
  • Asserted Claims: At least claim 1 (Compl. ¶192).
  • Accused Features: The accused smartphones allegedly infringe by using their cameras (which have CMOS sensors with an array of pixels) to capture images in both static (photo) and moving (video) modes, allegedly implementing different driver modes to process the pixel signals for each mode (Compl. ¶¶193-194).

III. The Accused Instrumentality

  • Product Identification: The accused products are numerous models of Motorola-branded smartphones sold by Lenovo, including, without limitation, models from the Moto E, Moto Edge, Moto G, Moto One, Moto Razr, and Moto Z families (Compl. ¶¶55, 76, 94, 115, 132, 154, 175, 192).
  • Functionality and Market Context: The complaint alleges that these smartphones incorporate core functionalities that infringe the patents-in-suit. For the ’695 Patent, the "Moto Audio" feature is accused of automatically identifying media types (e.g., Music, Movie, Game) and adjusting the sound, which allegedly involves switching between different audio decoders (Compl. ¶57). An image provided in the complaint describes this feature as automatically identifying media and adjusting sound for the experience (Compl. p. 20). For the ’417 Patent, the smartphones’ processors (e.g., Qualcomm Snapdragon SoCs) are alleged to implement infringing power management by operating at varying clock frequencies depending on the workload and whether the phone is in an active or low-power state (Compl. ¶¶77-78). The complaint provides tables showing the variable CPU clock ranges for several accused phone models (Compl. p. 31-33). The phones are also alleged to perform a "specific processing" (capturing a picture) from a locked or "closed condition" (Compl. ¶79).

IV. Analysis of Infringement Allegations

8,098,695 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
An audio decoder apparatus for decoding a multiplexed audio data sequence... comprising: a demultiplexer..., a memory..., a digital signal processor..., and a controller... The accused smartphones are audio decoder apparatuses containing processors, memory, and controllers to decode various audio formats (Compl. ¶56). ¶56 col. 6:31-49
said controller detects whether a first method of compression and encoding in said audio data sequence changes to a second method of compression and encoding different from said first method The '695 Accused Products allegedly switch between functions, such as from playing a music file to playing a ringtone for an incoming call, which involves a change in the audio format and thus the method of compression and encoding (Compl. ¶59). The "Moto Audio" feature is also alleged to automatically identify the type of media (e.g., Music, Movie, Game, or Podcast) being played, which corresponds to detecting a change in the audio format (Compl. ¶57). ¶57, ¶59 col. 6:50-55
said controller downloads a second decoding program code... from outside of said memory to said memory When a different decoding algorithm is required (e.g., switching from music to a call), the processor allegedly retrieves a different decoding algorithm for decoding from a memory location (Compl. ¶56). ¶56 col. 6:56-61
said digital signal processor begins to decode said audio data sequence by using said second decoding program code The processor and/or CPU allegedly uses the newly retrieved decoding algorithm to decode the corresponding audio data sequence (e.g., the audio for the phone call) (Compl. ¶56). An illustrative screenshot shows a user interface switching from a music player to an incoming call screen (Compl. p. 22). ¶56, ¶59 col. 6:62-65
  • Identified Points of Contention:
    • Scope Questions: A central question may be whether the term "downloads a... decoding program code... from outside of said memory" can be construed to cover a modern smartphone's operating system loading a pre-installed codec or software module into a processor's active memory. The patent specification contemplates downloading from the Internet as one embodiment (’695 Patent, col. 10:37-42), which may raise questions about the scope of "download."
    • Technical Questions: The complaint alleges that selecting a "sound profile" for "Music, Movie, Game, or Podcast" constitutes detecting and responding to a change in compression method (Compl. ¶57). A factual dispute may arise as to whether these profiles merely apply different equalization settings (a post-processing step) or if they actually load and use different underlying decoding program codes as required by the claim.

7,577,417 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A mobile terminal capable of being changed from an open condition to a closed condition... The accused smartphones are mobile terminals capable of being in a screen-on ("open") state and a screen-off/locked ("closed") state (Compl. ¶77). ¶77 col. 3:2-6
a clock controller... controls the frequency... to become a first frequency when the mobile terminal is in the open condition, and controls the frequency... to become a second frequency lower than the first frequency when the mobile terminal is in the closed condition. The accused products include clock circuitry that controls the processor to operate at varying frequencies, with higher frequencies used during active use ("open condition") and lower frequencies used during idle/standby ("closed condition") to conserve power (Compl. ¶¶77-78). The complaint provides processor specification tables for various models showing a range of clock speeds, such as 300 - 2304 MHz for the Motorola One 5G (Compl. p. 31). ¶77, ¶78 col. 3:7-13
said clock controller controls the frequency... to become a frequency higher than the second frequency when a specific processing is executed even if the mobile terminal is in the closed condition The accused products allow users to activate the camera and capture a picture from the locked screen ("closed condition"), which constitutes a "specific processing" that requires the processor frequency to increase from its low-power idle state (Compl. ¶79). The complaint includes a screenshot from a user guide showing how to "Flick your phone to open Camera" from "any screen, even your lock screen" (Compl. p. 34). ¶78, ¶79 col. 4:32-40
and controls the frequency... to become the second frequency after the execution of the specific processing is completed. After the specific processing (e.g., taking a picture) is completed, the clock circuitry allegedly returns the processor to the lower, second frequency of the closed condition (Compl. ¶77). ¶77 col. 4:32-40
  • Identified Points of Contention:
    • Scope Questions: The construction of "closed condition" will be critical. The term may be argued to be limited to the physical state of a clamshell or folder-type phone as depicted in the patent's era, or it could be construed more broadly to read on the modern smartphone's screen-off/locked state.
    • Technical Questions: A factual question may be whether activating the camera from the lock screen, as alleged, actually causes the clock frequency to rise "higher than the second frequency" and then specifically return "to become the second frequency." The complaint provides evidence of variable clock speeds generally but does not provide specific data measuring the frequency change during this particular user action.

V. Key Claim Terms for Construction

For the ’695 Patent

  • The Term: "downloads a ... decoding program code ... from outside of said memory"
  • Context and Importance: This term is the core of the inventive concept, distinguishing the claimed invention from prior art that relied on large, fixed, built-in memory. The infringement analysis will turn on whether the accused smartphones' method of loading different audio codecs into active processing memory meets this limitation.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes the transfer of code from an "external ROM" to an "internal RAM" (’695 Patent, Fig. 1, col. 6:31-7:65), which may support an interpretation where "download" includes transferring code between different memory components within the same device.
    • Evidence for a Narrower Interpretation: An embodiment describes that the "new code may come from an external source, such as the Internet" (’695 Patent, col. 10:37-42; Compl. ¶51). This could support an argument that "download" requires fetching the code from a source physically separate from the device itself.

For the ’417 Patent

  • The Term: "closed condition"
  • Context and Importance: The patent was filed in 2002, an era of clamshell and slide phones where "closed" had a clear physical meaning. Applying this term to a modern slate-style smartphone, which is typically in a screen-off "sleep" or "locked" state, will be a central issue of claim construction.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent's focus is on power management and transitioning between a high-power, interactive state ("open") and a low-power, non-interactive state ("closed"). Practitioners may argue that this functional distinction, rather than a specific physical form factor, is what the claim term means, and that a modern phone's locked state is functionally a "closed condition."
    • Evidence for a Narrower Interpretation: The patent consistently uses the language of a physical state change (e.g., "mobile terminal capable of being changed from an open condition to a closed condition") and may be argued to be limited to devices with physically distinct open and closed configurations, like the folder phones of its time.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement of infringement across all asserted patents, based on Defendant's user guides, websites, and other instructional materials that allegedly instruct customers on how to use the infringing functionalities, such as "Moto Audio," taking photos from the lock screen, and using location services (Compl. ¶¶61-62, 81, 100, 119-120, 138, 159-160, 179-180, 197). Contributory infringement is also alleged, based on the sale of smartphones containing components (e.g., specific processors, decoders, camera sensors) that are allegedly a material part of the patented inventions and not staple articles of commerce (Compl. ¶¶64-65, 82-83, 103-104, 121-122, 141-142, 161-162, 181-182, 199-200).
  • Willful Infringement: Willfulness is alleged for all asserted patents. The claims are based on alleged pre-suit knowledge stemming from correspondence Plaintiff sent to Defendant beginning on May 17, 2018. This correspondence allegedly identified specific patents, exemplary claims, and accused products, thereby giving Defendant notice of its alleged infringement (Compl. ¶¶66-67, 84-85, 106-107, 123-124, 144-145, 163-164, 183-184, 201-202). The complaint alleges that Defendant continued its infringing activities despite an objectively high likelihood of infringement.

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

  • A core issue will be one of definitional scope: can claim terms rooted in the context of early 2000s mobile technology, such as the "closed condition" of a flip phone or "downloading" code, be construed to cover the fundamentally different architecture of a modern, slate-style, always-on smartphone?
  • A second key question will be one of functional operation: does the accused software, such as the "Moto Audio" sound profiles or the camera's "Portrait Mode," perform the specific, multi-step technical functions required by the respective claims, or is there a fundamental mismatch between what the claims require and what the accused products actually do?
  • A central evidentiary question will concern willfulness: given the complaint's detailed allegations of pre-suit notice, including prior litigation success on some of the same patents, the development of facts around what Defendant knew and when it knew it will be critical to the determination of whether any infringement was willful.