DCT

2:14-cv-03009

Kinglite Holdings Inc v. Micro Star Intl Co Ltd

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:14-cv-03009, C.D. Cal., 04/18/2014
  • Venue Allegations: Venue is alleged based on Defendants conducting business and selling the accused products within the Central District of California through a network of distributors.
  • Core Dispute: Plaintiff alleges that Defendant’s computer products, including motherboards, laptops, and servers, infringe thirteen patents related to computer Basic Input/Output System (BIOS) and Unified Extensible Firmware Interface (UEFI) technology.
  • Technical Context: The technology concerns firmware that manages a computer's boot-up process, a fundamental component of all modern personal computers and servers.
  • Key Procedural History: The complaint alleges that the inventions of eight of the asserted patents are contained within every version of the UEFI specification, an industry standard. This suggests an infringement theory based on compliance with an industry standard. Subsequent to the filing of this complaint, Inter Partes Review (IPR) proceedings were initiated against several of the asserted patents. For example, in IPR2015-01133, all claims of U.S. Patent No. 5,732,268 were cancelled. Similarly, in IPR2015-01081, all claims of U.S. Patent No. 5,987,604 were cancelled. These post-filing events raise significant questions regarding the continued viability of infringement claims for those specific patents.

Case Timeline

Date Event
1994-08-11 Priority Date: U.S. Patent No. 5,836,013
1996-02-26 Priority Date: U.S. Patent No. 5,732,268
1997-10-07 Priority Date: U.S. Patent No. 5,987,604
1998-03-24 Issue Date: U.S. Patent No. 5,732,268
1998-06-24 Priority Date: U.S. Patent No. 6,263,412
1998-11-10 Issue Date: U.S. Patent No. 5,836,013
1999-06-18 Priority Date: U.S. Patent Nos. 6,373,498; 6,401,202; 6,519,659
1999-11-16 Issue Date: U.S. Patent No. 5,987,604
1999-12-10 Priority Date: U.S. Patent Nos. 6,791,572; 6,487,656
2000-08-10 Priority Date: U.S. Patent No. 6,633,976
2000-10-03 Priority Date: U.S. Patent No. 6,892,304
2001-07-17 Issue Date: U.S. Patent No. 6,263,412
2001-07-27 Priority Date: U.S. Patent No. 6,523,123
2002-04-16 Issue Date: U.S. Patent No. 6,373,498
2002-06-04 Issue Date: U.S. Patent No. 6,401,202
2002-11-26 Issue Date: U.S. Patent No. 6,487,656
2003-02-11 Issue Date: U.S. Patent No. 6,519,659
2003-02-18 Issue Date: U.S. Patent No. 6,523,123
2003-10-14 Issue Date: U.S. Patent No. 6,633,976
2004-05-11 Priority Date: U.S. Patent No. 8,095,783
2004-09-14 Issue Date: U.S. Patent No. 6,791,572
2005-05-10 Issue Date: U.S. Patent No. 6,892,304
2012-01-10 Issue Date: U.S. Patent No. 8,095,783
2014-04-18 Complaint Filing Date

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

U.S. Patent No. 5,732,268 - Extended Bios Adapted To Establish Remote Communication For Diagnostics And Repair

The Invention Explained

  • Problem Addressed: The patent addresses the problem of repairing a computer that fails to boot, which traditionally required an expensive and time-consuming on-site visit from a maintenance person because existing remote management tools required a functioning operating system. (Compl. ¶2; ’268 Patent, col. 3:3-14).
  • The Patented Solution: The patent describes an "extended BIOS" (E-BIOS) that includes special code to detect a boot failure. Upon detecting such a failure, the E-BIOS automatically initiates a communication link with a remote diagnostic computer, for example over a modem or a LAN. This allows the remote computer to download a "slave kernel" into the failed computer's memory, giving a remote technician control to diagnose and repair the system without being physically present. (’268 Patent, Abstract; col. 4:3-10; Fig. 2).
  • Technical Importance: This technology offered a method for remotely servicing computers that were otherwise unreachable, promising significant cost and time savings for IT administration in business and enterprise environments. (’268 Patent, col. 3:22-31).

Key Claims at a Glance

  • The complaint asserts the ’268 Patent generally but does not identify specific claims. (Compl. ¶¶20-22).
  • Independent claim 1 (cancelled post-filing) describes a basic input output system (BIOS) with two key portions:
    • a first code portion adapted for execution by a CPU to perform power on self test (POST) and initiate boot operations; and
    • a second code portion adapted for execution by the CPU to establish communication with a remote computer, where code execution is directed from the first to the second portion upon a failure to complete boot operations.
  • The complaint reserves the right to assert other claims, though an Inter Partes Review proceeding subsequent to filing cancelled all claims of the patent except for claims 8 and 12, which are dependent on other cancelled claims, rendering the patent unenforceable. (Compl. ¶2).

U.S. Patent No. 5,836,013 - Method And Apparatus For Compressing System Read Only Memory In A Computing System

The Invention Explained

  • Problem Addressed: The patent’s background describes the increasing demand for space in a computer’s system Read Only Memory (ROM), driven by the need to support multiple bus standards, I/O devices, and other advanced functions. Increasing the physical size of the ROM chip was a costly solution. (’013 Patent, col. 1:11-18).
  • The Patented Solution: The invention provides a method for compressing portions of the system ROM (such as the BIOS and setup programs) and storing them in that compressed state. A small, uncompressed portion of the BIOS contains a decompression algorithm. During the computer's Power-On Self-Test (POST), the compressed ROM is copied to conventional RAM, and the decompression program executes, decompressing the necessary components into their final memory locations (e.g., shadow RAM). The method is designed to be independent of the specific computer chipset. (’013 Patent, Abstract; col. 2:1-12).
  • Technical Importance: This technique allowed firmware developers to add more functionality into the BIOS without incurring the higher hardware costs associated with larger physical ROM chips, a critical consideration for PC manufacturers. (’013 Patent, col. 1:19-21).

Key Claims at a Glance

  • The complaint asserts the ’013 Patent generally but does not identify specific claims. (Compl. ¶¶38-40).
  • Independent claim 10 describes a computer-implemented method for decompressing a compressed system ROM file stored in ROM, comprising the steps of:
    • receiving a compressed system ROM file with compressed portions and a non-compressed portion containing a decompression program;
    • copying the compressed system ROM file from ROM to conventional memory; and
    • decompressing each compressed portion in conventional memory to a specified location using the decompression program.
  • The complaint reserves the right to assert other claims. (Compl. ¶2).

U.S. Patent No. 6,791,572 - Generating Media Output During Bios Boot-Up

  • Technology Synopsis: This patent relates to displaying media, such as graphics or images, during the BIOS boot-up process, a time when the computer screen traditionally shows only basic text-based status information. (Compl. ¶2).
  • Asserted Claims: The complaint does not identify specific claims. (Compl. ¶¶14-16).
  • Accused Features: The complaint alleges that Defendants' products, by incorporating a UEFI-compliant BIOS, practice the invention. (Compl. ¶¶6, 10).

U.S. Patent No. 6,892,304 - System And Method For Securely Utilizing Basic Input And Output System (Bios) Services

  • Technology Synopsis: This patent relates to methods for securely accessing and using BIOS services, a potential involving cryptographic verification to prevent unauthorized access or modification of low-level system functions. (Compl. ¶¶2, 9).
  • Asserted Claims: The complaint does not identify specific claims. (Compl. ¶¶17-19).
  • Accused Features: The complaint alleges that the inventions are contained in UEFI and that Defendants' UEFI-compliant products therefore infringe. (Compl. ¶¶9, 10).

U.S. Patent No. 6,487,656 - System And Method For Providing Functionalities To System Bios

  • Technology Synopsis: This patent appears to describe a modular approach for adding new functions to a system BIOS without requiring a complete rewrite of the existing BIOS code. (Compl. ¶2).
  • Asserted Claims: The complaint does not identify specific claims. (Compl. ¶¶23-25).
  • Accused Features: The complaint alleges that Defendants' products, which incorporate a BIOS compliant with UEFI, practice the invention. (Compl. ¶¶6, 10).

U.S. Patent No. 6,373,498 - Displaying Images During Boot-Up And Shut Down

  • Technology Synopsis: This patent relates to displaying graphical images during the computer's startup and shutdown sequences, replacing the standard text or simple logos typically shown. (Compl. ¶2).
  • Asserted Claims: The complaint does not identify specific claims. (Compl. ¶¶26-28).
  • Accused Features: The complaint alleges that Defendants' various computer products with UEFI-compliant BIOS infringe. (Compl. ¶¶6, 10).

U.S. Patent No. 6,523,123 - Method And Apparatus For Providing Intelligent Power Management

  • Technology Synopsis: This patent concerns advanced power management techniques implemented within the BIOS to control system power states intelligently. (Compl. ¶2).
  • Asserted Claims: The complaint does not identify specific claims. (Compl. ¶¶29-31).
  • Accused Features: The complaint alleges infringement by Defendants' computer products that contain a BIOS. (Compl. ¶6).

U.S. Patent No. 6,401,202 - Multitasking During Bios Boot-Up

  • Technology Synopsis: This patent describes methods for performing multiple tasks concurrently during the BIOS boot-up phase, a process that is traditionally single-threaded. (Compl. ¶¶2, 9).
  • Asserted Claims: The complaint does not identify specific claims. (Compl. ¶¶32-34).
  • Accused Features: The complaint alleges the invention is part of the UEFI standard and is practiced by Defendants' products. (Compl. ¶¶9, 10).

U.S. Patent No. 6,519,659 - Method And System For Transferring An Application Program From System Firmware To A Storage Device

  • Technology Synopsis: This patent relates to moving an application program from the system firmware (ROM) to a storage device like a hard drive during the boot process. (Compl. ¶¶2, 9).
  • Asserted Claims: The complaint does not identify specific claims. (Compl. ¶¶35-37).
  • Accused Features: The complaint alleges infringement by Defendants' UEFI-compliant computer products. (Compl. ¶¶9, 10).

U.S. Patent No. 8,095,783 - Media Boot Loader

  • Technology Synopsis: This patent concerns a boot loader, which is the code responsible for loading the main operating system from a storage medium. (Compl. ¶¶2, 9).
  • Asserted Claims: The complaint does not identify specific claims. (Compl. ¶¶41-43).
  • Accused Features: The complaint alleges the invention is embedded in the UEFI standard and is therefore practiced by Defendants' products. (Compl. ¶¶9, 10).

U.S. Patent No. 5,987,604 - Method And Apparatus For Providing Execution Of System Management Mode Services In Virtual Mode

  • Technology Synopsis: This patent relates to executing System Management Mode (SMM) services, a special CPU mode for low-level system tasks, within a virtualized environment. (Compl. ¶¶2, 9).
  • Asserted Claims: The complaint does not identify specific claims. (Compl. ¶¶44-46).
  • Accused Features: The complaint alleges infringement based on Defendants' products' compliance with the UEFI standard. (Compl. ¶¶9, 10).

U.S. Patent No. 6,263,412 - Method And Apparatus For RAM Emulation Using A Processor Register Set

  • Technology Synopsis: This patent describes a technique for emulating Random Access Memory (RAM) using the processor's internal registers, which can be useful in pre-boot environments before main system memory is fully initialized. (Compl. ¶¶2, 9).
  • Asserted Claims: The complaint does not identify specific claims. (Compl. ¶¶47-49).
  • Accused Features: The complaint alleges infringement based on the inclusion of the patented technology in the UEFI standard, which Defendants' products implement. (Compl. ¶¶9, 10).

U.S. Patent No. 6,633,976 - Method Of Storing BIOS Modules And Transferring Them to Memory For Execution

  • Technology Synopsis: This patent relates to the modular storage of BIOS components and the process of transferring them into system memory for execution during the boot sequence. (Compl. ¶¶2, 9).
  • Asserted Claims: The complaint does not identify specific claims. (Compl. ¶¶50-52).
  • Accused Features: The complaint alleges that Defendants' products infringe by incorporating a BIOS that complies with the UEFI standard, which allegedly contains the invention. (Compl. ¶¶9, 10).

III. The Accused Instrumentality

  • Product Identification: The accused instrumentalities are a broad category of computer products manufactured, imported, and sold by the Defendants, including "motherboards, graphics cards, laptops, all-in-one computers, servers, industrial computers, and multimedia devices". (Compl. ¶6).
  • Functionality and Market Context: The central accused functionality is the incorporation of a BIOS that complies with the Unified Extensible Firmware Interface (UEFI) specification. (Compl. ¶10). The complaint alleges that UEFI is a modernized successor to the traditional BIOS and was developed by an alliance of technology companies. (Compl. ¶¶7-8). The complaint further alleges that the inventions of eight of the asserted patents are "contained in each version of UEFI," thereby forming the basis of a standards-based infringement theory. (Compl. ¶9). Defendant MSI Taiwan is identified as "one of the world's largest motherboard and graphics card manufacturers". (Compl. ¶3).

IV. Analysis of Infringement Allegations

The complaint does not provide sufficient detail for analysis of infringement, as it does not identify any specific asserted claims or map any claim elements to the functionality of the Accused Products. The allegations are made at the count level only, with each count conclusorily stating that Defendants' products "constitute direct infringement of the claims of the [asserted] Patent". (Compl. ¶¶15, 18, 21, 24, 27, 30, 33, 36, 39, 42, 45, 48, 51). No probative visual evidence provided in complaint.

V. Key Claim Terms for Construction

The complaint does not provide a basis for identifying key claim terms for construction, as it does not assert specific claims or detail any infringement theories that would highlight disputed claim language.

VI. Other Allegations

  • Indirect Infringement: The complaint does not allege indirect infringement (inducement or contributory infringement); each count explicitly alleges "direct infringement". (e.g., Compl. ¶15).
  • Willful Infringement: The complaint does not allege willful infringement. There are no factual allegations related to pre-suit or post-suit knowledge of the patents, and enhanced damages are not explicitly requested in the prayer for relief. (Compl. p. 8).

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

  • A primary question will be one of evidentiary basis: What factual support exists for the broad allegation that compliance with the UEFI specification inherently results in infringement of the claims of thirteen different patents, and can Plaintiff demonstrate that the accused products actually practice the specific limitations of any valid and asserted claims?
  • A second key issue will be patent viability: Given that post-filing IPR proceedings have resulted in the cancellation of all claims of patents like the ’268 and ’604 patents, a threshold question for a significant portion of the case is whether any enforceable patent rights remain to be litigated for those patents-in-suit.
  • A third issue may be one of pleading sufficiency: Does the complaint, which asserts infringement of over a dozen patents against a wide array of products without identifying a single claim or infringing feature, meet the plausibility standard required to state a claim for relief under modern federal pleading rules?