DCT
2:22-cv-01532
Waverly Licensing LLC v. National Products Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Waverly Licensing LLC (Washington)
- Defendant: National Products Inc. (Washington)
- Plaintiff’s Counsel: Mann Law Group PLLC
- Case Identification: 2:22-cv-01532, W.D. Wash., 10/27/2022
- Venue Allegations: Plaintiff alleges venue is proper because Defendant maintains a regular and established business presence in the district, including physical locations and employees.
- Core Dispute: Plaintiff alleges that Defendant’s vehicle mounting and charging products for electronic devices infringe a patent related to methods for authenticating and charging battery-operated devices.
- Technical Context: The technology concerns the protocol-level "handshake" between a portable device and a charger to ensure the charger is authorized before power transfer begins, a key safety and compatibility feature in modern charging standards like USB Power Delivery.
- Key Procedural History: The patent-in-suit claims priority back to a 2009 provisional application, which may be relevant for assessing prior art. The complaint notes that the patent family has been cited by 355 other issued patents, an indicator of potential technical relevance.
Case Timeline
| Date | Event |
|---|---|
| 2009-12-25 | Priority Date for ’246 Patent |
| 2021-03-02 | Issue Date for U.S. Patent 10,938,246 |
| 2022-10-27 | 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, issued March 2, 2021 (the "’246 Patent").
The Invention Explained
- Problem Addressed: The patent describes a need for a battery-operated device to be able to verify that a charger is authorized before accepting power from it (U.S. Patent No. 10,938,246, Abstract; col. 4:15-18). This addresses the risk of using unauthorized or incompatible chargers, which could potentially damage the device or its battery.
- The Patented Solution: The invention is a method and device that acts as a gatekeeper for charging. Before accepting energy, the battery-operated device receives an "identification" from the charger and checks it against an internal "list of charger identifications" for authorized chargers (’246 Patent, Abstract). Only if the charger's identification is found on the authorized list does the device proceed to receive energy, convert it to usable power, and charge its battery (’246 Patent, col. 34:51-67).
- Technical Importance: This authentication step provides a mechanism to prevent damage from non-compliant or counterfeit chargers, enhancing device safety and reliability (’246 Patent, col. 4:15-18).
Key Claims at a Glance
- The complaint asserts independent claim 1.
- The essential elements of Claim 1 are:
- A battery-operated device comprising a battery, electronic circuitry, and a converter.
- The device is configured to perform a sequence of steps:
- First, "receive a charger identification from a charger".
- Second, "determine whether the charger identification is in a list of charger identifications belonging to the plurality of authorized chargers".
- Third, "in response to" a positive determination, the device then (i) "receives the energy from the charger", (ii) "generates" power using the converter, (iii) "charges the battery", and (iv) "uses the battery to power the electronic circuitry".
III. The Accused Instrumentality
Product Identification
The "Accused Instrumentalities" are identified as Defendant's "battery chargers and adapters," with the "National Products RAM Tough-Case Power Delivery Bundle for Samsung Tab Active3" cited as a representative example (Compl. ¶19). A product photo from the Defendant's website is included in the complaint to identify the bundle (Compl. p. 6).
Functionality and Market Context
The complaint alleges the accused products provide a method for charging battery-operated devices in compliance with the USB Power Delivery (PD) 3.0 standard (Compl. ¶21). The core accused functionality involves a negotiation process where the device receives messages from the charger indicating its "charging capabilities and specification revision value" before generating power to charge the battery (Compl. ¶22). Plaintiff alleges Defendant generates substantial financial revenues from these products (Compl. ¶26).
IV. Analysis of Infringement Allegations
The complaint alleges that the Accused Instrumentalities directly infringe at least Claim 1 of the ’246 Patent. The infringement theory centers on the argument that the negotiation protocol defined by the USB PD 3.0 standard performs the steps recited in the claim. The complaint includes excerpts from the USB PD 3.0 specification which describe a source port sending a "Source_Capabilities Message" to a sink port, which the sink port then evaluates (Compl. p. 11-12).
Infringement Claim Chart: Claim 1 of the ’246 Patent
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a battery-operated device comprising: a battery; an electronic circuitry configured to be powered by the battery; and a converter configured to receive energy... | The accused method involves a battery-operated device (e.g., a smartphone) with a battery, electronic circuitry, and a converter for charging. | ¶27(i) | col. 34:52-56 |
| receive a charger identification from a charger; | The device receives a charger identification from the accused product. | ¶27(iv) | col. 34:57-58 |
| determine whether the charger identification is in a list of charger identifications belonging to the plurality of authorized chargers; | The device determines if the charger's identification—alleged to be its "specification revision value and capabilities" indicated in a "Source_Capabilities" message—is on a list of supported specifications. | ¶27(v) | col. 34:59-62 |
| in response to determining that the charger identification is in the list of charger identifications: receive the energy from the charger; | In response to a successful determination, the device receives energy from the accused product. | ¶27(vii) | col. 34:63-64 |
| generate, using the converter, the power from the energy received from the charger; | The device's converter generates power from the energy received from the accused product. | ¶27(viii) | col. 34:65 |
| charge the battery using the power received from the converter; and use the battery to power the electronic circuitry. | The device charges its battery with the generated power and uses the battery to power its circuitry. | ¶27(ix) | col. 34:66-67 |
Identified Points of Contention
- Scope Questions: The central dispute may concern the scope of the terms "charger identification" and "list of charger identifications." A question for the court will be whether the USB PD standard's protocol—which involves exchanging messages about technical capabilities and specification versions (Compl. ¶22)—constitutes receiving a specific "identification" and checking it against a "list," as those terms are used in the patent. The patent provides examples of identifiers like MAC IDs and serial numbers, which may suggest a more specific meaning than a general capabilities message (’246 Patent, col. 10:10-14).
- Technical Questions: A key technical question is whether the accused products' compliance with the public USB PD standard is functionally equivalent to the specific authorization method claimed. The complaint alleges that if a charger provides an unsupported specification, communication fails, implying a check occurs (Compl. ¶27(vi)). The court may need to determine if this standard compatibility check is the same as the claimed step of "determining whether the charger identification is in a list."
V. Key Claim Terms for Construction
Term: "charger identification"
- Context and Importance: The definition of this term is critical. The infringement theory depends on construing the "specification revision value and capabilities" messages of the USB PD standard (Compl. ¶27(v)) as a "charger identification." Practitioners may focus on this term because its scope will determine whether a standardized compatibility handshake falls within the claim.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not explicitly define the term, leaving it open to interpretation. Plaintiff may argue that any data set from a charger used to authorize it, including its stated capabilities, serves as an "identification" for the purpose of the invention.
- Evidence for a Narrower Interpretation: The specification provides specific examples of identifying information, such as "MAC ID, network Internet protocol (IP) address, name, serial number, product name and manufacturer, capabilities, etc." (’246 Patent, col. 4:10-14). A defendant may argue these examples limit the term to unique identifiers of a specific charger, not general statements of its technical standards or capabilities.
Term: "list of charger identifications"
- Context and Importance: This term is tied to "charger identification". The case may turn on whether a set of firmware rules (e.g., "accept chargers compliant with USB PD 2.0 or higher") constitutes a "list," or if the term requires a stored data structure of discrete identifiers.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent specification does not define "list," which could support an interpretation that includes an implicit list defined by a set of logical rules for compatibility.
- Evidence for a Narrower Interpretation: Dependent claim 3, which is not asserted but provides context, adds a "memory" for storing the "list of charger identifications" (’246 Patent, col. 35:3-6). This could support an argument that the "list" is a tangible data set stored in memory, not merely an operational rule.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement to infringe, asserting that Defendant knew of the patent (at least upon service of the complaint) and took active steps, such as advertising, that encouraged infringing uses by others (Compl. ¶32, ¶35).
- Willful Infringement: Willfulness is alleged based on Defendant’s continued infringement after receiving notice of the patent via this lawsuit (Compl. ¶31). The complaint also pleads willful blindness, alleging Defendant has a practice of not reviewing the patent rights of others before launching products (Compl. ¶36).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: Can the patent’s language of receiving a "charger identification" and checking it against a "list" be construed to cover the standardized, capability-based negotiation protocol of the public USB PD standard? Or is the patent limited to a system where a device checks a unique charger ID against a stored list of specific, pre-authorized units?
- A key evidentiary question will be one of functional operation: Does the accused product’s adherence to the USB PD standard perform the specific, two-step "determine-then-act" logical sequence required by Claim 1, or does it represent a different, more integrated process of compatibility negotiation that falls outside the claim's literal scope?