DCT
6:22-cv-01144
Waverly Licensing LLC v. Power Integrations Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Waverly Licensing LLC (Texas)
- Defendant: Power Integrations, Inc. (Delaware)
- Plaintiff’s Counsel: Garteiser Honea, PLLC
- Case Identification: 6:22-cv-01144, W.D. Tex., 10/31/2022
- Venue Allegations: Venue is asserted based on Defendant maintaining a regular and established business presence in the Western District of Texas, including an office in Austin and local employees.
- Core Dispute: Plaintiff alleges that Defendant’s USB Power Delivery integrated circuits and the chargers that incorporate them infringe a patent related to a method for charging a device only after authenticating the charger's identity against a list of authorized chargers.
- Technical Context: The technology concerns advanced power management in charging systems, where communication between a charger and a device enables negotiation and authorization before power transfer, a concept central to modern standards like USB Power Delivery (USB-PD).
- Key Procedural History: The patent-in-suit is the result of a long chain of continuation applications tracing back to a 2009 provisional application, suggesting a lengthy prosecution history. The complaint does not mention any prior litigation or post-grant proceedings involving the patent family.
Case Timeline
| Date | Event |
|---|---|
| 2009-12-25 | Earliest Priority Date for U.S. Patent No. 10,938,246 |
| 2021-03-02 | Issue Date for U.S. Patent No. 10,938,246 |
| 2021-06-09 | Date of Accused Product Design Example Report (DER-837) |
| 2022-10-31 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,938,246 - "Method and Apparatus for Charging a Battery-Operated Device"
- Patent Identification: U.S. Patent No. 10,938,246, "Method and Apparatus for Charging a Battery-Operated Device," issued March 2, 2021.
The Invention Explained
- Problem Addressed: The patent addresses the need for a more sophisticated method of wireless power transfer than simple proximity-based charging, proposing a system where devices can be selectively authorized before receiving power, particularly in a networked environment with multiple potential chargers and devices. (’246 Patent, col. 4:5-24).
- The Patented Solution: The invention describes a battery-operated device that first receives an "identification" from a prospective charger. It then checks this identification against an internal "list of charger identifications" to determine if the charger is "authorized." Only after this verification does the device accept energy from the charger to power its circuitry and charge its battery. (’246 Patent, Abstract; col. 13:6-15). This creates a gatekeeping function to control which power sources a device will accept a charge from.
- Technical Importance: This approach introduced a layer of authentication and control over the charging process, moving beyond simple power negotiation to enable selective and secure power transfer. (’246 Patent, col. 13:6-15).
Key Claims at a Glance
- The complaint asserts independent claim 1. (Compl. ¶25).
- The essential elements of Claim 1 are:
- A method performed by a battery-operated device, comprising:
- receiving a charger identification from a charger;
- determining whether the charger identification is in a list of charger identifications belonging to the plurality of authorized chargers;
- in response to a positive determination:
- receiving energy from the charger;
- generating power from that energy using a converter;
- charging the battery with that power; and
- using the battery to power the electronic circuitry.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are Defendant’s battery chargers and adapters, particularly those incorporating the "InnoSwitch3-PD" family of integrated circuits (ICs), such as the "National Products RAM Tough-Case Power Delivery Bundle for Samsung Tab Active3." (Compl. ¶19).
Functionality and Market Context
- The accused InnoSwitch3-PD ICs are described as off-line flyback switcher ICs with an integrated USB Type-C and USB Power Delivery (USB-PD) controller. (Compl. p. 6). The complaint presents a Design Example Report (DER-837) for a 45W power supply built with an InnoSwitch3-PD IC, detailing its ability to support various fixed and programmable power profiles under the USB-PD 3.0 standard. (Compl. p. 8).
- The complaint alleges that these products function by engaging in the USB-PD communication protocol, where the charger (Source) sends a "Source_Capabilities Message" to the device to be charged (Sink). (Compl. ¶¶19-20). The device then evaluates these capabilities before negotiating and accepting power. The complaint includes a marketing screenshot highlighting the InnoSwitch3-PD IC's support for "USB PD 3.0 + PPS & QC4 protocols." (Compl. p. 7). This communication is framed as the infringing act of receiving and verifying a "charger identification." (Compl. ¶25(v)).
IV. Analysis of Infringement Allegations
Claim Chart Summary
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a method of charging a battery-operated device ... comprising: receiving a charger identification from a charger; | The accused product, as a charger, provides messages according to USB PD standards, such as a "Source_Capabilities message," which the complaint alleges constitutes a "charger identification." | ¶25(iv) | col. 13:16-24 |
| determining whether the charger identification is in a list of charger identifications belonging to the plurality of authorized chargers; | The smartphone or other device receiving the charge determines if the "specification revision value and capabilities" from the charger's message are among the "specification revision values and source capabilities supported by the smartphone." | ¶25(v) | col. 13:6-15 |
| in response to determining that the charger identification is in the list of charger identifications: receive the energy from the charger; | Upon determining the charger's capabilities are supported (i.e., the identification is on the "list"), the device receives energy from the accused charger product. | ¶25(vii) | col. 1:56-65 |
| generate, using the converter, the power from the energy received from the charger; | The accused system includes a converter that generates power from the received energy for charging the battery. The complaint shows a block diagram of the accused IC which includes a primary switch and control circuitry. (Compl. p. 6). | ¶25(viii) | col. 1:51-56 |
| charge the battery using the power received from the converter; and | The generated power is used to charge the battery of the smartphone or other device. | ¶25(ix) | col. 1:63-65 |
| use the battery to power the electronic circuitry. | The battery of the smartphone or other device is used to power its own electronic circuitry, such as the display and processor. | ¶25(ix) | col. 1:51-53 |
Identified Points of Contention
- Scope Questions: A central dispute may arise over whether the standard technical negotiation of the USB-PD protocol equates to the patent's more security-oriented authorization framework. The court will have to determine if a "Source_Capabilities Message" in the USB-PD standard, which communicates technical abilities like voltage/current levels, constitutes a "charger identification" as contemplated by the patent, which appears to focus on authenticating the identity of the charger itself.
- Technical Questions: The complaint's theory hinges on equating a device's supported power profiles with the patent’s "list of charger identifications." A key technical question is whether this is a valid analogy. The defense may argue that checking for compatible power profiles is a standard interoperability function, distinct from checking a charger’s identity against a pre-defined list of "authorized" entities as the patent's language suggests.
V. Key Claim Terms for Construction
The Term: "charger identification"
Context and Importance: This term's construction is fundamental. The plaintiff's case depends on this term being broad enough to read on the "Source_Capabilities Message" exchanged during a standard USB-PD handshake. Practitioners may focus on this term because its interpretation will likely determine whether a standard technical protocol falls within the scope of a claimed authorization method.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification uses general phrases like "identifying information" without strictly defining it, which could support an interpretation that includes any information uniquely identifying a charger's characteristics, such as its power capabilities. (e.g., ’246 Patent, col. 4:10-14).
- Evidence for a Narrower Interpretation: The context of the patent, particularly the section on preventing "non-authorized masters" from charging a device, suggests that "identification" is tied to an authentication or security function, not merely a declaration of technical specifications. (’246 Patent, col. 13:6-15). This could support a narrower construction limited to identifiers like a MAC ID or serial number, rather than a list of supported voltages.
The Term: "list of charger identifications"
Context and Importance: The existence of a "list" is a required element of the claim. The plaintiff must prove that the accused method uses a "list." The dispute will be over what data structure or process qualifies as a "list."
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not define the structure of the "list," leaving open the possibility that it could be any logical grouping of data, including a set of rules or supported profiles programmed into a device's firmware. The abstract simply refers to "a list." (’246 Patent, Abstract).
- Evidence for a Narrower Interpretation: The repeated phrasing "list of charger identifications belonging to the plurality of authorized chargers" suggests a discrete, pre-populated data set of specific, authorized entities, rather than a functional check for technical compatibility. (’246 Patent, Claim 1). This implies a list of who is allowed to charge, not just how a charge can occur.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement, stating that Defendant advertises the accused products for infringing uses and provides documentation (e.g., Design Example Reports) that instructs customers on how to implement the allegedly infringing USB-PD functionality. (Compl. ¶¶30, 33).
- Willful Infringement: Willfulness is alleged on two grounds: first, that infringement "will now be willful through the filing and service of this Complaint," establishing post-suit knowledge (Compl. ¶29); and second, that Defendant has been "willfully blind" by having a practice of not performing patent clearance reviews before launching products. (Compl. ¶34).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the patent's language of an authentication system—requiring a "charger identification" and a "list of authorized chargers"—be construed to cover the standard, technical capability-negotiation handshake of the universal USB Power Delivery protocol? The outcome may depend on whether the court views the patent as protecting a specific security model or a broader concept of charger-device communication.
- A key evidentiary question will be one of technical mapping: what evidence can Plaintiff produce to demonstrate that a device's internal logic for checking compatible USB-PD power profiles functions as the claimed "list of charger identifications"? The case may turn on whether the routine operation of a widely adopted industry standard can be proven to be the same as the specific, multi-step method recited in the patent's claims.