DCT

2:15-cv-09612

Kinglite Holdings Inc v. Micro Star Intl Co Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:15-cv-09612, C.D. Cal., 12/14/2015
  • Venue Allegations: Plaintiff alleges venue is proper because Defendants conduct business in the district through a network of distributors and retail outlets.
  • Core Dispute: Plaintiff alleges that Defendant’s motherboards, which are equipped with American Megatrends, Inc. (AMI) UEFI BIOS, infringe sixteen patents related to computer boot-up processes, firmware functionality, and remote system management.
  • Technical Context: The technology at issue concerns the Basic Input/Output System (BIOS) and its successor, the Unified Extensible Firmware Interface (UEFI), which are fundamental firmware interfaces that initialize a computer's hardware during the boot process before the primary operating system loads.
  • Key Procedural History: The complaint alleges that Defendants had knowledge of the patents-in-suit due to "ongoing litigation between the parties." Public records associated with the patents indicate that numerous asserted claims across multiple patents-in-suit have been cancelled in Inter Partes Review (IPR) proceedings. For example, all asserted claims of U.S. Patents 5,978,912; 5,987,604; 6,519,659; and 6,487,656 appear to have been cancelled. Conversely, asserted claim 8 of U.S. Patent 6,892,304 was challenged in an IPR and found patentable. The status of these claims will be a central factor in the litigation.

Case Timeline

Date Event
1994-08-11 Priority Date: U.S. Patent 5,836,013
1996-02-26 Priority Date: U.S. Patent 5,732,268
1997-03-20 Priority Date: U.S. Patent 5,978,912
1997-10-07 Priority Date: U.S. Patent 5,987,604
1998-03-24 Issue Date: U.S. Patent 5,732,268
1998-06-23 Priority Date: U.S. Patent 6,222,562
1998-06-24 Priority Date: U.S. Patent 6,263,412
1998-09-02 Priority Date: U.S. Patent 6,502,184
1998-09-30 Priority Date: U.S. Patent 6,308,265
1998-11-10 Issue Date: U.S. Patent 5,836,013
1999-06-18 Priority Date: U.S. Patents 6,401,202 & 6,519,659
1999-11-02 Issue Date: U.S. Patent 5,978,912
1999-11-16 Issue Date: U.S. Patent 5,987,604
1999-12-10 Priority Date: U.S. Patents 6,791,572 & 6,487,656
2000-08-10 Priority Date: U.S. Patent 6,633,976
2000-10-03 Priority Date: U.S. Patent 6,892,304
2001-04-24 Issue Date: U.S. Patent 6,222,562
2001-07-17 Issue Date: U.S. Patent 6,263,412
2001-10-23 Issue Date: U.S. Patent 6,308,265
2002-06-04 Issue Date: U.S. Patent 6,401,202
2002-11-26 Issue Date: U.S. Patent 6,487,656
2002-12-31 Issue Date: U.S. Patent 6,502,184
2003-02-11 Issue Date: U.S. Patent 6,519,659
2003-10-14 Issue Date: U.S. Patent 6,633,976
2003-07-28 Priority Date: U.S. Patent 7,185,189
2004-05-11 Priority Date: U.S. Patent 8,095,783
2004-09-14 Issue Date: U.S. Patent 6,791,572
2005-05-10 Issue Date: U.S. Patent 6,892,304
2007-02-27 Issue Date: U.S. Patent 7,185,189
2012-01-10 Issue Date: U.S. Patent 8,095,783
2015-08-04 Date of Accused AMI UEFI T.ON BIOS
2015-08-XX Accused Products Introduced
2015-12-14 Complaint Filing Date

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

U.S. Patent No. 6,791,572 - “Generating Media Output During Bios Boot-Up,” issued September 14, 2004

The Invention Explained

  • Problem Addressed: During the computer boot-up process, the display screen typically shows only basic textual information about system tests and statistics, which provides little useful information to most users and represents an underutilized period of user attention (’572 Patent, col. 1:59-67).
  • The Patented Solution: The invention provides a method to display richer graphical media, such as images and text, during the BIOS boot-up sequence before the operating system loads (’572 Patent, Abstract). It achieves this by using an interface module within the BIOS that retrieves device parameters, uses a template to generate a graphic attribute, and then generates and displays an image based on that attribute, allowing for the presentation of advertisements, logos, or enhanced diagnostic information (’572 Patent, col. 2:1-9).
  • Technical Importance: This technology enabled hardware manufacturers and others to utilize the otherwise technically-focused boot sequence for branding, user engagement, or displaying value-added information, independent of the main operating system.

Key Claims at a Glance

  • The complaint asserts independent claims 23 and 51 (’572 Patent, Compl. ¶15).
  • Claim 23 (System): A system for displaying information, comprising:
    • a processor.
    • a memory coupled to the processor containing program code.
    • The program code, when executed, causes the processor to: retrieve a first value for a first device parameter and detect a second value for a second device parameter during a boot period; retrieve a template for a graphic object; generate a graphic attribute from the template; display the first and second values; and generate an image from the graphic object according to the attribute.
  • The complaint reserves the right to assert additional claims (Compl. p. 20).

U.S. Patent No. 6,892,304 - “System And Method For Securely Utilizing Basic Input And Output System (Bios) Services,” issued May 10, 2005

The Invention Explained

  • Problem Addressed: The BIOS is vulnerable to security attacks, such as capturing and replaying service requests, which could corrupt the BIOS and disable the computer system (’304 Patent, col. 2:5-11).
  • The Patented Solution: The invention proposes a secure method for using BIOS services by employing a cryptographic key pair. An access driver generates a service request that includes a signature created with a private key, and an interface verifies this signature using a public key to ensure the integrity of the request before it is executed (’304 Patent, Abstract).
  • Technical Importance: This method introduced a layer of cryptographic security to the firmware level, protecting the foundational boot process from certain types of malicious attacks that could occur before higher-level operating system security measures are loaded.

Key Claims at a Glance

  • The complaint asserts claims 8 and 12, with claim 8 being independent (’304 Patent, Compl. ¶23, ¶26).
  • Claim 8 (System): A system for securely utilizing BIOS services, comprising:
    • an access driver to generate a service request to utilize BIOS services.
    • the service request including a service request signature created using a private key in a cryptographic key pair.
    • an interface to verify the service request signature using a public key in the cryptographic key pair to ensure the integrity of the service request.
  • The complaint reserves the right to assert additional claims (Compl. p. 20).

U.S. Patent No. 5,732,268 - “Extended Bios Adapted To Establish Remote Communication For Diagnostics And Repair,” issued March 24, 1998

  • Technology Synopsis: The patent describes an "Extended BIOS" (E-BIOS) designed to solve the problem of a computer failing to boot (’268 Patent, col. 3:4-14). If a boot failure is detected, a secondary portion of the BIOS code automatically establishes a communication link with a remote computer for diagnostics and repair, allowing a technician to remotely address the failure without a physical visit (’268 Patent, Abstract).
  • Asserted Claims: Claim 6 (independent) (Compl. ¶32).
  • Accused Features: The complaint alleges that the Accused Products' UEFI BIOS infringes by having a first code portion for POST and boot operations and a second code portion to communicate with a separate computer upon a failure to complete boot operations (Compl. ¶32).

U.S. Patent No. 6,487,656 - “System And Method For Providing Functionalities To System Bios,” issued November 26, 2002

  • Technology Synopsis: The patent addresses the need to add functionalities to a system BIOS without significantly revising its core code (’656 Patent, col. 1:11-16). The solution involves an interface module that receives a request from the BIOS, receives associated device information, translates that information, and transfers it to a corresponding functional module, effectively creating an extensible BIOS architecture (’656 Patent, Abstract).
  • Asserted Claims: Claim 19 (independent) (Compl. ¶41).
  • Accused Features: The accused feature is the processor's alleged interface with a module connected to the BIOS, which is used to receive a BIOS service request, receive and translate device information, and transfer that information to a separate module (Compl. ¶41).

U.S. Patent No. 6,401,202 - “Multitasking During Bios Boot-Up,” issued June 4, 2002

  • Technology Synopsis: The patent addresses the inefficient use of time during the BIOS boot-up sequence, where the display typically shows only static or uninteresting test information (’202 Patent, col. 1:49-56). The invention enables multitasking by performing a primary task (e.g., standard BIOS initialization) and interrupting it at predetermined times to perform a secondary task (e.g., displaying an animation or other graphical content), making the boot process more engaging (’202 Patent, Abstract).
  • Asserted Claims: Claim 31 (independent) (Compl. ¶50).
  • Accused Features: The infringement allegation targets the processor's ability to enable interrupt signals, perform a first task in response, and then perform a second task before the next interrupt signal, all during the boot process (Compl. ¶50).

U.S. Patent No. 6,519,659 - “Method And System For Transferring An Application Program From System Firmware To A Storage Device,” issued February 11, 2003

  • Technology Synopsis: This patent addresses the problem of delivering software (like device drivers or applications) that is stored in system firmware (like ROM) onto a mass storage device (like a hard drive) without needing a functioning operating system or directory service (’659 Patent, col. 1:10-18). The invention provides a method for the processor, prior to booting an OS, to execute instructions from firmware that write the contents of a storage element (e.g., an application stored in ROM) to the storage device (’659 Patent, Abstract).
  • Asserted Claims: Claim 1 (independent) (Compl. ¶59).
  • Accused Features: The accused functionality is the processor executing stored instructions that cause it to write the contents of a storage element to a storage device, independent of an operating system application (Compl. ¶59).

U.S. Patent No. 5,836,013 - “Method And Apparatus For Compressing System Read Only Memory In A Computing System,” issued November 10, 1998

  • Technology Synopsis: The invention addresses the increasing demand for space in a computer's system ROM, which is a scarce and costly resource (’013 Patent, col. 1:11-15). The solution is a platform-independent method for compressing the system ROM (containing BIOS, setup programs, etc.) and decompressing it into memory during the power-on self-test (POST) process, thereby reducing the required physical ROM size (’013 Patent, Abstract).
  • Asserted Claims: Claim 23 (independent) (Compl. ¶61).
  • Accused Features: The accused functionality involves the processor executing a decompression program that copies a compressed system ROM file to RAM and then decompresses the data from RAM to a memory location (Compl. ¶61).

U.S. Patent No. 8,095,783 - “Media Boot Loader,” issued January 10, 2012

  • Technology Synopsis: The patent aims to expedite the boot process by detecting bootable media independent of its partitioning scheme (’783 Patent, Abstract). The invention is a boot loader that reads data from a predetermined location on the media, determines the file system type from that data, and then loads the corresponding boot loader code from the BIOS, eliminating the need for a traditional Master Boot Record (MBR) (’783 Patent, Abstract).
  • Asserted Claims: Claims 11 and 20 (independent) (Compl. ¶70).
  • Accused Features: The complaint alleges infringement via the AMI compatibility support module ("CSM"), which allows the processor to boot in either Legacy or UEFI mode (Compl. ¶70).

U.S. Patent No. 5,987,604 - “Method and Apparatus For Providing Execution Of System Management Mode Services In Virtual Mode,” issued November 16, 1999

  • Technology Synopsis: The patent addresses performance limitations of System Management Mode (SMM), which is used for functions like power management but typically executes slowly because it operates in a limited memory area (’604 Patent, col. 1:21-34). The invention provides a method to execute SMM services in a virtual mode by configuring the processor to operate in protected mode while in SMM and invoking a paging feature, allowing SMM code to run more efficiently above the 1 Megabyte boundary (’604 Patent, Abstract).
  • Asserted Claims: Claims 1 and 11 (independent) (Compl. ¶79).
  • Accused Features: The accused products are alleged to infringe by allowing the processor to operate in protected mode while in system management mode, particularly when a paging feature is activated (Compl. ¶79, ¶82).

U.S. Patent No. 6,263,412 - “Method And Apparatus For RAM Emulation Using A Processor Register Set,” issued July 17, 2001

  • Technology Synopsis: The patent addresses the need for applications to write to a storage location (like RAM) before RAM is fully initialized and accessible, such as during the early power-up process (’412 Patent, col. 1:35-42). The solution is to emulate RAM by using a processor's internal register set; an access to the emulated RAM area is detected, and the access is transferred to a processor register instead (’412 Patent, Abstract).
  • Asserted Claims: Claims 1 and 9 (independent) (Compl. ¶88).
  • Accused Features: The complaint alleges that the processors in the accused products infringe by redirecting access to volatile memory (Compl. ¶88).

U.S. Patent No. 6,633,976 - “Method Of Storing BIOS Modules And Transferring Them To Memory For Execution,” issued October 14, 2003

  • Technology Synopsis: The patent describes a method to modularize the BIOS, addressing the inflexibility of loading the BIOS as a single monolithic block of code (’976 Patent, col. 1:13-20). The invention uses a "dispatch manager" stored in nonvolatile memory that selectively loads and executes individual BIOS modules as needed to initialize the computer, allowing for more flexible and efficient firmware management (’976 Patent, Abstract).
  • Asserted Claims: Claims 1 and 14 (independent) (Compl. ¶91).
  • Accused Features: The accused products allegedly infringe by executing a portion of BIOS initialization code, copying a dispatch manager store to system memory, and executing the dispatch manager to run start-up tasks (Compl. ¶91).

U.S. Patent No. 7,185,189 - “Method Of Storing BIOS Modules And Transferring Them To Memory For Execution,” issued February 27, 2007

  • Technology Synopsis: As a continuation of the '976 patent, this patent further elaborates on a modular BIOS system. It describes storing BIOS modules in a protected area of a storage device and using a dispatch manager to transfer and execute them in system memory for computer initialization (’189 Patent, Abstract).
  • Asserted Claims: Claims 14, 27, and 39 (independent) (Compl. ¶97).
  • Accused Features: The infringement allegation is identical to that for the '976 patent: executing initialization code, copying a dispatch manager to system memory, and executing it to perform start-up tasks (Compl. ¶97).

U.S. Patent No. 6,502,184 - “Method And Apparatus For Providing A General Purpose Stack,” issued December 31, 2002

  • Technology Synopsis: This invention addresses the lack of a "stack" (a fundamental data structure) before RAM is initialized during computer boot-up, which limits the complexity of pre-boot applications (’184 Patent, col. 1:24-33). The solution is a method for using a processor's internal registers as a general-purpose stack by executing instructions that determine the occupancy of the registers and rearrange their contents in a predetermined order to simulate stack operations (’184 Patent, Abstract).
  • Asserted Claims: Claims 1, 12, and 25 (independent) (Compl. ¶103).
  • Accused Features: The accused products are alleged to have one or more internal registers that operate as a stack, controlled by a processor that arranges the register contents based on their condition (Compl. ¶103).

U.S. Patent No. 5,978,912 - “Network Enhanced BIOS Enabling Remote Management Of A Computer Without A Functioning Operating System,” issued November 2, 1999

  • Technology Synopsis: The patent targets the problem of remotely managing a computer that has suffered an operating system crash or fails to boot, leaving no means for remote access (’912 Patent, col. 1:46-52). The invention is a "network enhanced BIOS" with a multitasking kernel that can communicate over a network prior to the OS loading, allowing a remote workstation to perform diagnostics and management even without a functioning OS (’912 Patent, Abstract).
  • Asserted Claims: Claims 1, 38, and 52 (independent) (Compl. ¶112).
  • Accused Features: The accused products are alleged to have network-enhanced software that executes during boot-up, supports communication with an external communicator, and loads the OS after the network-enhanced software executes (Compl. ¶112).

U.S. Patent No. 6,308,265 - “Protection Of Boot Block Code While Allowing Write Access To The Boot Block,” issued October 23, 2001

  • Technology Synopsis: The patent addresses the conflict between needing to protect a computer's "boot block" code (critical for recovery) from being overwritten, while also needing to update other BIOS code that may reside in the same physical memory segment (’265 Patent, col. 1:8-16). The solution is a method that creates a backup copy of the boot block code in a separate region, unprotects the original boot block for updating, validates the update by comparing it to the backup, and then re-protects it (’265 Patent, Abstract).
  • Asserted Claims: Claims 1 and 9 (independent) (Compl. ¶121).
  • Accused Features: The accused products allegedly infringe by having identical copies of boot block code stored in separate segments of volatile memory that can be simultaneously updated (Compl. ¶121).

U.S. Patent No. 6,222,562 - “Fast Processed Screen Image,” issued April 24, 2001

  • Technology Synopsis: The patent seeks to utilize the idle time during a computer execution period (like a "save-to-disk" command) to display a predetermined image (’562 Patent, col. 1:9-14). The invention is a display process that writes the contents of a block of fast memory (e.g., main RAM) to a non-visible portion of video memory, processes a predetermined image from the fast memory, and then writes the processed image to the video memory for display, optimizing the process for speed (’562 Patent, Abstract).
  • Asserted Claims: Claims 1 and 12 (independent) (Compl. ¶130).
  • Accused Features: The infringement allegation targets products that write contents of fast memory to a non-visible portion of video memory to display images (Compl. ¶130).

III. The Accused Instrumentality

  • Product Identification: The accused products are "MSI Z170A XPower Gaming Titanium Edition motherboards equipped with Intel Z170 chipset and loaded with American Megatrends, Inc. (“AMI”) UEFI T.ON BIOS (dated august 4, 2015)" (Compl. ¶6).
  • Functionality and Market Context: The complaint alleges that these motherboards are loaded with BIOS that complies with the Unified Extensible Firmware Interface ("UEFI") standards (Compl. ¶10). Plaintiff contends that this UEFI compliance means the products inherently practice the inventions of the patents-in-suit (Compl. ¶10). The allegations focus on the firmware's functions during the computer boot process, including displaying system information, providing security for BIOS services, enabling remote diagnostics, and managing modular BIOS components (Compl. ¶15, 23, 32). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

U.S. Patent No. 6,791,572 Infringement Allegations

Claim Element (from Independent Claim 23) Alleged Infringing Functionality Complaint Citation Patent Citation
a system for displaying information, comprising: a processor; and a memory coupled to the processor, the memory containing program code which, when executed by the processor, causes the processor to: The Accused Products contain a processor and memory with BIOS code that is executed on boot-up. ¶6 col. 4:45-53
retrieve, during a boot period, a first value representative of a first device parameter and detect a second value representative of a second device parameter; The Accused Products' BIOS allegedly detects and displays parameter values such as CPU speed, frequency, or temperature during the boot period. ¶15 col. 8:15-22
retrieve a template corresponding to a graphic object from a storage; The Accused Products' BIOS allegedly displays information in a "dashboard template." ¶15 col. 7:46-52
generate a graphic attribute based on one or more of said commands from the template, the graphic attribute characterizing the graphic object; The complaint does not specify how a graphic attribute is generated but implies it is part of displaying information in the dashboard template. ¶15 col. 7:53-56
display said first and second values; and The Accused Products' BIOS displays the detected parameter values (e.g., CPU speed, temperature) on the screen. ¶15 col. 8:23-24
generate an image, during a boot period, from the graphic object according to the graphic attribute. The complaint alleges the "dashboard template" itself is the image generated from the graphic object. ¶15 col. 7:60-64
  • Identified Points of Contention:
    • Scope Questions: A central question may be whether the term "template," as used in the patent, can be construed to cover the alleged "dashboard template" of the accused UEFI BIOS. The analysis will depend on whether the patent requires a specific data structure or format for the "template" that is not present in the accused products.
    • Technical Questions: What evidence does the complaint provide that the accused product performs the specific steps of retrieving a template, generating a graphic attribute, and then generating an image from that attribute? The complaint's allegation that the products "detect and display parameter values...in...a dashboard template" is conclusory and may not map directly to the multi-step process required by the claim (Compl. ¶15).

U.S. Patent No. 6,892,304 Infringement Allegations

Claim Element (from Independent Claim 8) Alleged Infringing Functionality Complaint Citation Patent Citation
A system for securely utilizing BIOS services, comprising: an access driver to generate a service request to utilize BIOS services, the service request including a service request signature created using a private key in a cryptographic key pair; The Accused Products are alleged to use cryptographic key pairs to encrypt a service request signature digitally. ¶23 col. 22:45-51
and an interface to verify the service request signature using a public key in the cryptographic key pair to ensure the integrity of the service request. The Accused Products are alleged to use cryptographic key pairs to encrypt a service request signature digitally, which implies a corresponding verification process. ¶23 col. 22:52-56
  • Identified Points of Contention:
    • Scope Questions: The dispute may turn on the definitions of "service request signature" and "cryptographic key pair." The court will need to determine if the security mechanisms within the UEFI standard, if any, meet the specific definitions and functional requirements outlined in the '304 Patent's specification.
    • Technical Questions: The complaint's allegation is highly conclusory. A key evidentiary question will be whether the Plaintiff can demonstrate that the AMI UEFI BIOS in the Accused Products actually performs the claimed steps of creating a digital signature for a BIOS service request with a private key and verifying it with a public key.

V. Key Claim Terms for Construction

  • Term from '572 Patent: "template"

    • Context and Importance: This term is central to the infringement theory of the '572 Patent. Whether the accused "dashboard template" meets this limitation will be a primary point of dispute. Practitioners may focus on this term because its construction could either broadly cover any graphical layout for displaying data or be limited to a specific data structure defined in the patent.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The patent states that a template "includes a plurality of commands" and is used to "generate a graphic attribute" (’572 Patent, col. 7:47-49). This could be argued to encompass any file or data structure that defines the layout of graphical elements.
      • Evidence for a Narrower Interpretation: Figure 6A of the patent shows a specific structure for a template, including a "begin code," a series of commands ("CMD1, CMD2..."), and an "end code" (’572 Patent, Fig. 6A). A defendant might argue that "template" should be limited to this disclosed structure.

  • Term from '304 Patent: "service request signature created using a private key in a cryptographic key pair"

    • Context and Importance: This entire phrase is the core of the asserted invention's security mechanism. The infringement case for the '304 Patent hinges on whether the accused UEFI BIOS performs this specific cryptographic function.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The patent defines a "digital signature" generally as a quantity "generated using a digital message and a private key" and notes that algorithms like DSA or RSA can be used (’304 Patent, col. 19:49-62). This could support a reading that covers any modern digital signature implementation applied to BIOS services.
      • Evidence for a Narrower Interpretation: The detailed description outlines a specific process involving generating a hash value for a service message and encrypting that hash value with a private key (’304 Patent, col. 21:16-24). A defendant could argue the claim should be limited to this specific "hash-then-encrypt" implementation, potentially excluding other forms of digital authentication used in the UEFI standard.

VI. Other Allegations

  • Indirect Infringement: For each asserted patent, the complaint alleges both induced and contributory infringement. Inducement is based on allegations that Defendants sell the Accused Products and provide instructions (e.g., user manuals) that lead end-users to directly infringe (Compl. ¶19, 28). Contributory infringement is based on providing the instrumentality for direct infringement (Compl. ¶20, 29).
  • Willful Infringement: The complaint does not use the word "willful," but it seeks damages under 35 U.S.C. § 284, which provides the statutory basis for enhancement (Compl. p. 20). The factual basis for knowledge is the allegation that Defendants were aware of the patents and their infringement as a result of "ongoing litigation between the parties," suggesting pre-suit knowledge (Compl. ¶18, 27).

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

  • A primary issue will be one of claim viability: a significant number of the asserted claims across multiple patents appear to have been cancelled during Inter Partes Review proceedings. The court’s initial focus will likely be on determining which, if any, of the sixteen asserted patents remain viable, potentially narrowing the scope of the case dramatically.
  • A second core question is one of infringement by standard: can Plaintiff prove that mere compliance with the UEFI standard, as broadly alleged, is sufficient to demonstrate infringement of the specific limitations of the surviving patent claims? Or will the court require detailed, feature-by-feature evidence showing the Accused Products' specific operations map to each claim element?
  • A key evidentiary question for any surviving claims will be one of technical substantiation: can the complaint’s conclusory allegations (e.g., that the products use "cryptographic key pairs" or a "dispatch manager") be supported by concrete technical evidence, or is there a fundamental mismatch between the patented methods and the actual operation of the accused AMI UEFI BIOS?