WFR IP LLC v. Shokz Technology Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: WFR IP, LLC (Texas)
  • Defendant: Shokz Technology Inc. (Texas)
  • Plaintiff’s Counsel: Ramey LLP
• Case Identification: 7:25-cv-00485, W.D. Tex., 10/23/2025
• Venue Allegations: Venue is based on Defendant having a "regular and established place of business" in the Western District of Texas and having committed alleged acts of infringement in the district.
• Core Dispute: Plaintiff alleges that Defendant’s wireless earpiece products infringe a patent related to the ergonomic design of wearable audio devices that displaces electronic components away from the user's ear.
• Technical Context: The technology concerns the physical construction of wireless headsets, a highly competitive market where user comfort, weight distribution, and stability during movement are significant design factors.
• Key Procedural History: The complaint identifies Plaintiff as a non-practicing entity that has entered into prior settlement licenses related to its patent portfolio. Notably, the sole patent-in-suit, U.S. Patent No. 7,505,793, was subject to an inter partes re-examination that concluded in 2014. The resulting certificate canceled several claims, including independent claim 1. The complaint specifically asserts infringement of claim 6, which is dependent on claim 1, raising a threshold question about the viability of the infringement allegation as pleaded.

Case Timeline

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

U.S. Patent No. 7,505,793 - "Wireless Earpiece Assembly"

• Issued: March 17, 2009

The Invention Explained

• Problem Addressed: The patent describes a problem with contemporary wireless earpieces where housing all the necessary components (power source, transceiver, microphone, etc.) in a single casing creates a "large bulky casing" that rests on or behind the user's ear, causing discomfort during extended wear (’793 Patent, col. 1:52-65, col. 2:16-23).
• The Patented Solution: The invention proposes to solve this by physically separating the bulk of the electronic components from the ear-contacting portion of the device. The solution uses a "casing support" to connect the ear support to a separate "casing" that holds the bulky components, displacing this weight "away from the user's ear to a location above the user's neckline" (’793 Patent, col. 2:34-39). This design, illustrated in Figure 1, aims to enhance long-term user comfort by isolating the user's ear from the bulk and weight of the device's electronics (’793 Patent, col. 3:20-29).
• Technical Importance: This approach addresses a key ergonomic challenge in the design of wearable electronics by redistributing weight to improve comfort and stability without sacrificing the wireless functionality (’793 Patent, col. 2:16-23).

Key Claims at a Glance

The complaint asserts infringement of "one or more claims of the ’793 Patent, including claim 6" (Compl. ¶9). Claim 6 is a dependent claim. Its parent claims are detailed below.

• Independent Claim 1 (Canceled): This claim, which was canceled during re-examination, formed the basis for the asserted dependent claim. Its essential elements were:
  • An ear support having a portion for positioning a speaker at a user's ear.
  • A casing that couples to the ear support and is of a "bulk for housing a plurality of components."
  • A "casing support" that provides the coupling and displaces the casing's bulk "to a location between the user's ear and a neckline of the user," where the bulk of the casing exceeds that of both the ear support and the casing support.
• Dependent Claim 5 (Not Canceled, but depends on Canceled Claim 1): Adds the limitation that the casing support has a "stable conformation for supporting said casing in a lateral direction toward a mouth of the user."
• Dependent Claim 6 (Asserted, but depends on Canceled Claim 1): Adds the further limitation that the casing support is "wiring of between about 8 gauge and about 20 gauge."

III. The Accused Instrumentality

Product Identification

The complaint identifies the accused products as "Defendant's Accused Products" generally (Compl. ¶9) and later refers to them as "wireless earpiece and wearable piece assemblies" (Compl. ¶11). A footnote specifically references the "openrunpro2" product available on Defendant's website, suggesting it is a representative accused device (Compl. ¶12, n.3).

Functionality and Market Context

The complaint describes the accused products as "wireless earpiece" assemblies (Compl. ¶11). Publicly available information regarding the Shokz OpenRun Pro 2 indicates it is a set of bone-conduction headphones. This type of device typically features transducers that rest near the user's ears and are connected by a band that wraps around the back of the head, with electronic components and batteries housed in modules located behind the ears. The complaint alleges these products are sold and offered for sale throughout Texas (Compl. ¶2).

IV. Analysis of Infringement Allegations

The complaint alleges that Defendant directly infringes, induces infringement, and contributorily infringes at least claim 6 of the ’793 Patent (Compl. ¶9, 11, 12). The pleading states that support for these allegations "may be found in the chart attached as Exhibit B" (Compl. ¶10). However, Exhibit B was not attached to the complaint as filed. The complaint's narrative theory is that by "making, using, testing, selling, offering for sale and/or importing" its "wireless earpiece and wearable piece assemblies," Defendant infringes the patent (Compl. ¶9, 11). No specific operational details of the accused products are mapped to the limitations of the asserted claim within the body of the complaint.

No probative visual evidence provided in complaint.

Identified Points of Contention

• Procedural Question: A threshold issue is the complaint's assertion of claim 6, which depends from claim 1. The 2014 re-examination certificate canceled claim 1, which may render an infringement allegation based on claim 6 untenable. The court may need to resolve whether this constitutes a failure to state a claim upon which relief can be granted.
• Scope Questions: Should the case proceed, a central dispute may be whether the physical structure of the accused Shokz products, which typically involves a band wrapping around the back of the head, meets the claim limitation of displacing the casing's bulk "to a location between the user's ear and a neckline" (’793 Patent, cl. 1). The patent figures depict a component hanging downward from the ear support rather than wrapping behind the head.
• Technical Questions: The complaint provides no evidence or specific allegation that the accused products meet the limitation of asserted claim 6 requiring the casing support to be "wiring of between about 8 gauge and about 20 gauge" (’793 Patent, cl. 6). Proving this specific technical characteristic will be an essential element of Plaintiff's case.

V. Key Claim Terms for Construction

• The Term: "a location between the user's ear and a neckline of the user" (from canceled claim 1)
• Context and Importance: This term defines the endpoint for the displaced "bulk" of the earpiece. Its construction is critical because the accused products appear to position components behind the ear and around the back of the head, not necessarily hanging down "between the user's ear and a neckline" as depicted in the patent's figures. Practitioners may focus on this term to determine if the accused product geometry falls within the claim's scope.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification's summary describes the invention more generally as displacing the bulk "away from the user's ear to a location above the user's neckline" (’793 Patent, col. 2:37-39), which could support an interpretation not strictly limited to the downward-hanging embodiment shown in Figure 1.
  • Evidence for a Narrower Interpretation: Figure 1, which illustrates an embodiment of the invention, shows the casing (150) hanging down below the ear and above the collar (179), suggesting a specific vertical displacement (’793 Patent, Fig. 1). The description states the casing is positioned "to a location above the users neckline or collar 179 when in use" (’793 Patent, col. 3:26-28), which could be argued to support this narrower, vertical orientation.

VI. Other Allegations

• Indirect Infringement: The complaint alleges inducement and contributory infringement on the grounds that Defendant "encouraged or instructed" its customers on how to use the accused products (Compl. ¶11, 12). For both inducement and contributory infringement, the complaint alleges Defendant had knowledge of the ’793 patent "from at least the filing date of the lawsuit," and reserves the right to prove an earlier date of knowledge (Compl. ¶11, 12).
• Willful Infringement: The complaint does not allege pre-suit knowledge and bases its claim for willful infringement on Defendant's conduct after the lawsuit was filed (Compl. p. 7, ¶f). The prayer for relief requests a finding of willfulness if discovery reveals pre-suit knowledge (Compl. p. 6, ¶e).

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

1. A dispositive procedural question: Can the complaint survive a motion to dismiss when it explicitly asserts infringement of claim 6, a claim whose validity depends entirely on claim 1, which was canceled in a prior inter partes re-examination?
2. A core issue will be one of definitional scope: Assuming the case proceeds, can the phrase "a location between the user's ear and a neckline," which is described in the patent with reference to a downward-hanging component, be construed to cover the behind-the-head architecture of the accused products?
3. A key evidentiary question will be one of technical proof: In the absence of an operative claim chart in the complaint, what evidence can Plaintiff provide to demonstrate that the accused products meet every limitation of the asserted claim, especially the highly specific requirement in claim 6 that the "casing support" consists of wiring between 8 and 20 gauge?