Orange Electronic Co. Ltd. v. Autel Intelligent Technology Corp., Ltd.

  • Court: State of Texas, Marshall Division,  District Court,
  • Case number: 2:21cv-240
  • Filed: June 30, 2021
  • Judge: Judge Rodney Gilstrap
  • Case type: Patent (830)
  • Cause: 28:1338 Patent Infringement

Parties Involved

  • Plaintiffs: Orange Electronic Co. Ltd
    • Counsel for Plaintiff: John Frank Rabena | Carl Joseph Pellegrini | Fadi N Kiblawi | William H Mandir | Young Sun Kwon | J Thad Heartfield
    • Expert Witnesses for Plaintiff: Joseph C. McAlexander, P.E. | Bruce Blacker

 

  • Defendant: Autel Intelligent Technology Corp., Ltd.
    • Counsel for Defendant: Bryan Christopher Nese | Christopher J Fahy | Clark Bakewell | Fan Liang | Geoffrey Patton Culbertson | Gregory Bays | Hao Tan | James A Fussell , III | Pei Chen | Peter James Curtin | Shen Wang | Gary M Hnath
    • Expert Witnesses for Defendant: Shukri J. Souri | Philip Kline

Verdict Information 

  • Verdict Date: June 8, 2023
  • Total damages awarded to Plaintiff: $6,616,397.00 (later overturned)

About the Patent Infringement Case

Cause

Orange Electronic Co. Ltd (Orange), a Taiwanese electronics company known for inventing a tire pressure detecting apparatus, which included an identification rewriteable tire pressure detector and a setting apparatus, filed a patent infringement lawsuit against Autel Intelligent Technology Corp., Ltd., a Chinese electronics company.

On October 4, 2011, the United States Patent and Trademark Office issued U.S. Patent No. 8,031,064 (‘064 Patent) titled “Tire Pressure Detecting Apparatus and Tire Pressure Detector Identification Copying Method for the Same” to Hung-Chih Yu, who assigned the ‘064 Patent to Orange on September 17, 2008. The ‘064 Patent underwent three re-examinations, with the final re-examination certificate issued on May 15, 2020.

Orange alleged that Autel had manufactured, used, distributed, supplied, or sold tire pressure monitoring system (TPMS) products without authorization, infringing claims 23 and 26-29 of the ‘064 Patent. The allegedly does patent infringement on products included MaxiTPMS TS501 and MaxiTPMS TS601. Additionally, TS401, TS408, TS508, and TS608 were among the products in question. Moreover, MS906TS and ITS 600 were identified as potentially infringing items. Additionally, 1-Sensor (Press-in) M, 1-Sensor (Press-in) R, 1-Sensor (Screw-in) M, and 1-Sensor (Screw-in) R were among the items cited. Moreover, 315MHz MX-Sensor M, 433MHz MX-Sensor M, 315MHz MX-Sensor R, and 433MHz MX-Sensor R were included in the list of potentially infringing products.

Injury

Orange claimed that these products infringed the limitations in claims 23 and 26-29 of the ‘064 Patent. They asserted that Autel was aware of the ‘064 Patent and its infringement but continued its activities nonetheless. Regarding injury, Orange claimed that Autel’s infringement caused ongoing damage that could not be adequately remedied by statutory relief and requested the court to issue an injunction.

Damages

Orange claimed that Autel’s patent infringement caused ongoing damage and requested the court to issue an injunction. Orange sought a judgment in its favor, an account of all damages caused by Autel’s alleged infringement, monetary compensation, pre and post-judgment interest, and enhanced damages under Section 284 of Title 35 of the United States Code for Autel’s willful infringement.

Jury Verdict

On June 8, 2023, a Texas jury awarded Orange $6,616,397, finding Autel guilty of willfully patent Infringement claims 26 and 27 of the ‘064 Patent. However, after a post-trial motion filed by Autel, the court overturned the jury’s decision on May 2, 2024, concluding that there was insufficient evidence to support the finding of patent infringement.

Post-trial Motion

The court ruled in favor of Autel, directing Orange to refrain from claiming any amount and ordering Autel to recover its costs from Orange. The final judgment in this patent infringement suit overturned the Texas jury’s findings, holding that Autel had not infringed claims 26 and 27 of the ‘064 patent.

After the trial, Autel filed a Rule 50(b) Post-Trial Motion related to infringement. The Court granted the Motion. It stated that there was no legally sufficient evidentiary basis for a reasonable jury to find the defendant guilty of patent infringement.

In accordance with Rule 58 of the Federal Rules of Civil Procedure, the Court granted the final judgment. This judgment was in favor of the defendant. It occurred on May 2, 2024. The final judgment in this patent infringement suit overturned the Texas jury’s findings. The Court held that Autel had not infringed claims 26 and 27 of the ‘064 patent. Orange was ordered not to claim any amount from Autel. Instead, Autel was directed to recover its costs from Orange and file the proposed Bill of Costs.

Court Documents: Available upon Request