DCT

2:17-cv-00776

SZ DJI Technology Co Ltd v. Autel Robotics USA LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:17-cv-00776, W.D. Wash., 05/19/2017
  • Venue Allegations: Plaintiff alleges venue is proper in the Western District of Washington because Defendants are subject to personal jurisdiction, maintain a place of business in the district, and have committed acts of infringement there, including through partnerships with Washington-headquartered Amazon.com and retailer Best Buy.
  • Core Dispute: Plaintiff alleges that Defendant’s X-Star line of unmanned aerial vehicles (UAVs) infringes two patents related to self-tightening rotor mechanisms and smart battery functionalities.
  • Technical Context: The lawsuit concerns foundational technologies in the highly competitive consumer and professional drone market, focusing on on mechanical reliability and user-facing power management features.
  • Key Procedural History: The complaint alleges that Defendant had pre-suit knowledge of the patents-in-suit. This allegation is based on Defendant’s alleged hiring of a former Plaintiff engineer with knowledge of the patented technology, Defendant’s monitoring of Plaintiff’s patent portfolio, and Plaintiff’s prior assertion of the '040 patent in litigation against a third party (Yuneec). A Certificate of Correction was issued for the '744 patent on May 8, 2017.

Case Timeline

Date Event
2013-05-31 U.S. Patent No. 9,284,040 Priority Date
2013-12-06 U.S. Patent No. 9,592,744 Priority Date
2014-08-01 Plaintiff alleges Defendant hired former DJI engineer Mr. Fazhan Chen
2015-11-01 Autel Robotics USA formed in Delaware
2016-01-06 Defendant announces Autel X-Star series at CES 2016
2016-03-15 U.S. Patent No. 9,284,040 Issued
2016-11-01 Defendant's partnership with Best Buy begins
2016-12-06 Plaintiff files complaint against Yuneec mentioning '040 patent
2017-03-14 U.S. Patent No. 9,592,744 Issued
2017-05-08 Certificate of Correction issued for U.S. Patent No. 9,592,744
2017-05-19 Complaint Filed

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

U.S. Patent No. 9,284,040 - "Self-tightening rotor", Issued March 15, 2016

The Invention Explained

  • Problem Addressed: The patent addresses the risk that fasteners, such as nuts and screws, used to secure a UAV's rotor to its drive shaft can loosen due to in-flight vibration and other motions, potentially compromising the vehicle's function and safety (ʼ040 Patent, col. 1:24-30).
  • The Patented Solution: The invention is a rotor assembly where the connection between the rotor hub and the drive shaft is designed to be self-tightening. It achieves this by using complementary fastening features (e.g., screw threads) where the direction of rotation required to generate propulsive force is the same direction that tightens the connection, thereby preventing the rotor from loosening during operation without requiring separate fasteners (ʼ040 Patent, col. 4:50-57). For a multi-rotor vehicle, rotors on opposite sides use threads in opposite directions (e.g., right-handed and left-handed) to ensure each tightens correctly based on its spin direction (ʼ040 Patent, col. 3:8-13).
  • Technical Importance: This design improves the safety and reliability of UAVs by actively counteracting the forces that could otherwise lead to a rotor detaching in mid-air, while also simplifying the assembly process (ʼ040 Patent, col. 2:41-44).

Key Claims at a Glance

  • The complaint asserts independent claim 1 and dependent claims 2-7, 9-10, and 14 (Compl. ¶41).
  • Independent Claim 1 requires:
    • A multi-rotor self-propelled movable object comprising a first rotor assembly and a second rotor assembly.
    • The first assembly includes a first hub, a first adapter coupled to the hub with a first fastening feature, and a first drive shaft with a second fastening feature.
    • The first assembly is configured to cause rotation in a "first direction," and the mating connection is tightened by rotation "in only the first direction."
    • The second assembly includes a second hub, a second adapter, and a second drive shaft, configured to cause rotation in a "second direction that is opposite to the first direction."
    • The second assembly's mating connection is tightened by rotation "in only the second direction."

U.S. Patent No. 9,592,744 - "Battery and unmanned aerial vehicle with the battery", Issued March 14, 2017

The Invention Explained

  • Problem Addressed: High-current batteries used in UAVs can create dangerous electrical sparks when connected to the vehicle, potentially damaging sensitive electronics. Furthermore, these batteries often lack an accurate, user-accessible method for checking the remaining charge, creating a safety risk during flight (ʼ744 Patent, col. 1:33-54).
  • The Patented Solution: The patent describes a "smart battery" assembly with a multifunction protection board. It uses an electronic switch (e.g., a MOSFET) to control the power output, which eliminates arcing and sparks during connection (ʼ744 Patent, col. 2:1-5). It also features an input device (e.g., a button) that can receive at least two different types of input from a user: a first type to power the vehicle on/off, and a second type to activate an onboard indicator that displays the remaining charge level, even when the battery is not connected to the UAV (ʼ744 Patent, Abstract; col. 2:30-34).
  • Technical Importance: This technology significantly enhances both the safety and usability of UAVs by preventing electrical damage and providing operators with critical, on-demand information about remaining power, which is essential for mission planning and safe operation (ʼ744 Patent, col. 2:40-54).

Key Claims at a Glance

  • The complaint asserts independent claim 1 and dependent claims 5, 8-10, 12-17, and 19-21 (Compl. ¶47).
  • Independent Claim 1 requires:
    • A power supply control assembly with a power supply, an input device, and a power supply circuit.
    • The input device is "configured to receive at least two types of input from a user."
    • The power supply circuit includes an electronic switch, a power measurement device, and an indication device.
    • The indication device is configured to display the charge level "in response to receipt of a second type of input," and can do so "(1) without requiring the power supply to be connected to the aerial vehicle, and (2) without requiring the power supply to provide power to a propulsion unit."

III. The Accused Instrumentality

Product Identification

  • The Autel X-Star and Autel X-Star Premium UAVs (collectively, "X-Stars") (Compl. ¶23).

Functionality and Market Context

  • The X-Stars are multi-rotor UAVs marketed as direct competitors to Plaintiff's DJI Phantom models (Compl. ¶¶25, 32).
  • The complaint alleges the X-Stars' propellers are color-coded (red and silver/black caps) to correspond with specific motors and that the threads for each color "go in different directions" (Compl. ¶26). Figure 7 of the complaint, an excerpt from the accused product's instructions, shows icons indicating opposite rotational directions for fastening the different propeller types (Compl. Fig. 7).
  • The complaint also alleges the X-Stars use a battery assembly with an input device that accepts two types of user input: a first type to power the UAV on and a second type to display the battery's charge level on an indicator, even when the battery is disconnected from the vehicle (Compl. ¶27). Figure 10 of the complaint depicts the accused battery's user interface, with separate instructions for "To check Battery Level" (press the power button) and "To turn on" (press and hold the power button) (Compl. Fig. 10).

IV. Analysis of Infringement Allegations

9,284,040 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a first rotor assembly comprising... a first drive shaft... configured to cause rotation of the first hub in a first direction, and the mating connection... is able to be tightened by the rotation of the first drive shaft in only the first direction The X-Star drones have propellers with silver or black caps that are installed on unpainted motors and rotated in a specific direction to fasten them, which is the same direction as their operational spin (Compl. ¶¶25-26). ¶¶25, 26 col. 4:50-57
a second rotor assembly comprising... a second drive shaft... configured to cause rotation of the second hub in a second direction that is opposite to the first direction, and the mating connection... is able to be tightened by the rotation of the second drive shaft in only the second direction The X-Star drones have propellers with red caps that are installed on red-painted motors and rotated in the opposite direction of the silver/black-capped propellers to fasten them, with threads that "go in different directions" (Compl. ¶26). ¶26 col. 3:8-13
a first adapter coupled to the first hub and comprising a first fastening feature The complaint alleges each rotor assembly hub is coupled to an "adapter that includes a fastening feature" and that the hub is coupled "through an adapter" to the drive shaft (Compl. ¶25). ¶25 col. 4:60-65
  • Identified Points of Contention:
    • Scope Questions: A central question may be how the physical components of the X-Star propeller assembly map to the claim terms "hub" and "adapter". The complaint alleges a distinct adapter (Compl. ¶25), but the defense may argue the accused device has a more integrated design that does not meet the "hub coupled to an adapter" limitation.
    • Technical Questions: The court will need to determine if the X-Stars' threaded connection functions "in only the first direction" to tighten, as required by the claim. Evidence will be needed to show that rotation in the operational direction tightens the connection and that this is the sole direction for tightening.

9,592,744 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
an input device configured to receive at least two types of input from a user of the aerial vehicle The complaint alleges the X-Star battery has a single input device (a button) that distinguishes between a short press (a first type of input) to check the battery level and a long press (a second type of input) to supply power to the UAV (Compl. ¶27, Fig. 10). ¶27 col. 5:5-13
an indication device... configured to display a level of charge of the power supply in response to receipt of a second type of input... without requiring the power supply to be connected to the aerial vehicle The complaint alleges that a short press of the button on the X-Star battery causes an indicator to display the charge level, and that this can be done "when the battery is not connected to the UAV or providing power to the UAV" (Compl. ¶27). ¶27 col. 2:30-34
an electronic switch in electrical communication with the power supply for controlling discharge of power The complaint alleges the battery's power supply circuit is controlled by an "electronic switch," which is triggered by the first type of input (a long press) (Compl. ¶27). Figure 9 shows the circuit board of the battery (Compl. Fig. 9). ¶27 col. 2:1-5
  • Identified Points of Contention:
    • Scope Questions: The primary dispute may center on the claim term "two types of input". The question for the court will be whether a short press and a long press of a single physical button constitute two distinct "types" of input as contemplated by the patent, or if they are merely two different modulations of a single input type.
    • Technical Questions: Does the accused product's battery check function operate entirely "without requiring the power supply to provide power to a propulsion unit," as claimed? The analysis will require evidence on the internal circuitry of the accused battery.

V. Key Claim Terms for Construction

For the '040 Patent:

  • The Term: "adapter"
  • Context and Importance: Claim 1 requires a three-part structure: a "hub", an "adapter" coupled to the hub, and a drive shaft. Whether the accused X-Star propeller mechanism infringes will depend on whether its components can be separately identified as mapping to these three distinct claim elements. Practitioners may focus on this term because if the accused device is found to have a two-part system (e.g., an integrated hub/adapter), it may not infringe.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification states that suitable adapters "can include, for example, rings, tubes, inserts, protrusions, connectors, and the like," suggesting the term is not limited to a single form (ʼ040 Patent, col. 8:36-39).
    • Evidence for a Narrower Interpretation: The primary embodiment shown in Figure 3 depicts the "adapter" (213) as a physically distinct insert that fits into the "rotor blades" (220), which could be interpreted as the "hub". This suggests a multi-component, non-unitary structure that might be argued as required by the claim (ʼ040 Patent, Fig. 3, col. 11:39-49).

For the '744 Patent:

  • The Term: "two types of input"
  • Context and Importance: The infringement theory relies on a short press and a long press of one button constituting "two types of input." The viability of the infringement claim hinges on this construction. Practitioners may focus on this term because it is the core of the dispute regarding the smart battery's functionality.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent describes a plurality of "operational modes," including activating a charge display and turning the power on/off (ʼ744 Patent, col. 5:5-13). Plaintiff may argue that any user action that reliably selects between these distinct modes, regardless of the physical actuator, constitutes a different "type" of input.
    • Evidence for a Narrower Interpretation: The patent does not explicitly define "types." Defendant may argue that the plain and ordinary meaning implies physically distinct inputs (e.g., two buttons, or a button and a switch), and that varying the duration of a single input does not change its "type." The claim language itself distinguishes between a "first type" and a "second type."

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement for both patents, stating Defendant provides user guides, video tutorials, and customer support that instruct customers on how to perform the infringing acts, such as installing the self-tightening propellers and using the dual-function battery button (Compl. ¶¶ 42, 48-49). Contributory infringement is also alleged based on the sale of the drones containing these components (Compl. ¶¶ 43, 49).
  • Willful Infringement: The complaint makes detailed allegations to support willfulness. It alleges pre-suit knowledge based on: (1) Defendant's hiring of a former DJI engineer, Mr. Fazhan Chen, who allegedly had knowledge of DJI's patented technologies (Compl. ¶¶ 33, 36); (2) Defendant’s alleged monitoring of DJI's patent portfolio (Compl. ¶36); and (3) public knowledge of a prior lawsuit where DJI asserted the '040 patent against a competitor, Yuneec (Compl. ¶37). The complaint further alleges that despite this knowledge, Defendant continued its infringing conduct (Compl. ¶39).

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

  • A key issue will be one of claim construction and scope: can the phrase "two types of input" in the ’744 patent be construed to cover a short press and a long press of a single button, or does the term require physically distinct user inputs? The outcome of this question may be dispositive for infringement of that patent.
  • A second central issue will be one of technical mapping: does the physical construction of the accused X-Star propeller assembly contain discrete components that satisfy the "hub", "adapter", and "drive shaft" limitations of the ’040 patent’s claims, or does its integrated design fall outside that scope?
  • A major factual question for discovery will be the extent of pre-suit knowledge and willfulness. The allegations concerning the hired ex-DJI engineer and awareness of prior litigation involving the same patent family create a significant dispute over whether any infringement was willful, which could expose Defendant to enhanced damages.