DCT

8:10-cv-00074

Toshiba Corp v. Wistron Corp

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Key Events
Amended Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 8:10-cv-00074, C.D. Cal., 03/11/2010
  • Venue Allegations: Plaintiff alleges venue is proper in the Central District of California because the Defendants conduct business in the state and judicial district. The complaint also notes that Plaintiff's indirect subsidiary, Toshiba America Information Systems, Inc., which sells and supports notebook computers, is located within the district.
  • Core Dispute: Plaintiff alleges that Defendant’s notebook computer products, specifically the Acer Aspire 4810T, infringe four U.S. patents related to portable computer hardware design, security functions, and multimedia capabilities.
  • Technical Context: The patents-in-suit cover foundational technologies for notebook computers, including the physical integration of pointing devices, password-protected session resumption, multimedia data processing, and mechanical hinge designs for internal cabling.
  • Key Procedural History: The filing is a First Amended Complaint that includes both infringement claims by Toshiba against Wistron and claims for declaratory judgment of non-infringement and invalidity against Wistron concerning a separate portfolio of patents. The complaint mentions pre-suit negotiations between the parties regarding Wistron's patents, indicating a broader intellectual property dispute.

Case Timeline

Date Event
1989-04-28 Earliest Priority Date for U.S. Patent No. 5,430,867
1989-06-23 Earliest Priority Date for U.S. Patent No. 5,433,620
1995-01-24 Earliest Priority Date for U.S. Patent No. 6,230,209
1995-07-04 U.S. Patent No. 5,430,867 Issues
1995-07-18 U.S. Patent No. 5,433,620 Issues
2001-05-08 U.S. Patent No. 6,230,209 Issues
2003-01-22 Earliest Priority Date for U.S. Patent No. 7,156,693
2007-01-02 U.S. Patent No. 7,156,693 Issues
2010-03-11 Complaint Filing Date

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

U.S. Patent No. 7,156,693 - "Electronic Apparatus With Pointing Device on the Housing"

  • Patent Identification: U.S. Patent No. 7,156,693, "Electronic Apparatus With Pointing Device on the Housing," issued January 2, 2007. (Compl. ¶12).

The Invention Explained

  • Problem Addressed: The patent's background section describes the manufacturing challenge of incorporating input devices, such as touchpads, into a computer's housing without creating complex assembly steps or leaving the device vulnerable to damage, such as scratches, during manufacturing. (’693 Patent, col. 1:20-67).
  • The Patented Solution: The invention proposes a design where the pointing device is placed entirely inside the computer's housing. Its flat input surface is secured directly to the interior surface of the housing's outer wall. A user interacts with the device through a corresponding "operation area" on the exterior of the housing, meaning no part of the pointing device itself is exposed, which simplifies assembly and enhances durability. (’693 Patent, Abstract; col. 4:18-28).
  • Technical Importance: This design approach allows for a seamless, integrated pointing device on a laptop's palm rest without requiring a separate physical cutout or bezel, potentially lowering manufacturing costs and improving the product's aesthetic and structural integrity. (’693 Patent, col. 5:6-14).

Key Claims at a Glance

  • The complaint asserts independent claims 1 and 20, among other dependent claims. (Compl. ¶13).
  • Independent Claim 1 includes the following essential elements:
    • An electronic apparatus, comprising:
    • a housing which contains an electronic component, has an outside wall with an exterior and interior surface, and has an operation area in the exterior surface;
    • a pointing device disposed entirely inside the housing;
    • the pointing device has a flat input surface secured with an adhesive to the interior surface of the outside wall adjacent the operation area;
    • so that no portion of the flat input surface is exposed as the outside wall of said housing, the outside wall being larger than the flat input surface;
    • the flat input surface receiving input operations through the operation area.

U.S. Patent No. 5,430,867 - "Data Processing System Having a Resume Function and an Operating Method Thereof"

  • Patent Identification: U.S. Patent No. 5,430,867, "Data Processing System Having a Resume Function and an Operating Method Thereof," issued July 4, 1995. (Compl. ¶20).

The Invention Explained

  • Problem Addressed: The patent identifies a security vulnerability in computers with a "resume" function. When such a computer is powered on by an unauthorized user, the system restores the prior work session, potentially exposing confidential data or allowing the data to be altered or destroyed. (’867 Patent, col. 1:37-49).
  • The Patented Solution: The invention describes a system that integrates a password check into the power-on sequence when the resume function is active. If the correct password ("identification data") is provided, the system restores the saved session from backup memory. If an incorrect password is entered, the system inhibits the resume process, thereby protecting the user's data from unauthorized access. (’867 Patent, Abstract; Fig. 3).
  • Technical Importance: This technology provided a critical security layer for the "suspend-to-RAM" or "hibernate" features that became essential for portable computing, securing user data against physical theft or unauthorized access. (’867 Patent, col. 2:40-49).

Key Claims at a Glance

  • The complaint asserts claims 21-25, which depend from independent claim 15. The complaint may contain a typographical error, and for illustrative purposes, the broader independent claim 1 is analyzed here. (Compl. ¶21).
  • Independent Claim 1 includes the following essential elements:
    • A data processing system having a resume function and a security managing function, comprising:
    • switch means for switching power on and off;
    • switch detection means for detecting the power switch status;
    • memory means for storing the data processing state before power-off;
    • holding means for holding identification data (e.g., a password);
    • input means for a user to input identification data;
    • discriminating means for determining if the user-inputted data matches the stored data;
    • executing means for resuming the prior session in response to a positive match; and
    • means for inhibiting resumption of data processing in response to a non-coincidence.

U.S. Patent No. 6,230,209 - "Multimedia Computer System"

  • Patent Identification: U.S. Patent No. 6,230,209, "Multimedia Computer System," issued May 8, 2001. (Compl. ¶28).
  • Technology Synopsis: The patent addresses the efficient reproduction of full-motion video from media like DVD-ROMs. The described solution uses the computer's main CPU to decode sub-picture data (e.g., subtitles), while a dedicated hardware decoder processes the main video stream, which simplifies the required hardware and reduces system cost. (’209 Patent, Abstract; col. 4:9-29).
  • Asserted Claims: Claims 1-14 are asserted, including independent claims 1, 5, 10, 12, and 15. (Compl. ¶29).
  • Accused Features: The multimedia playback functionality of the Acer Aspire 4810T notebook computer. (Compl. ¶29).

U.S. Patent No. 5,433,620 - "Portable Apparatus Having Cable Electrically Connecting Display Unit and Base Unit"

  • Patent Identification: U.S. Patent No. 5,433,620, "Portable Apparatus Having Cable Electrically Connecting Display Unit and Base Unit," issued July 18, 1995. (Compl. ¶36).
  • Technology Synopsis: The patent concerns the mechanical design of a portable computer, specifically the challenge of routing a flexible cable between the main base unit and the hinged display unit. The patented solution involves a specific hinge structure that defines a "guide path" for the cable, protecting it from wear and simplifying the manufacturing process. (’620 Patent, Abstract; col. 2:1-12).
  • Asserted Claims: Independent claims 1 and 6 are asserted. (Compl. ¶37).
  • Accused Features: The physical construction of the Acer Aspire 4810T notebook computer, particularly its hinge mechanism and the routing of its internal display cable. (Compl. ¶37).

III. The Accused Instrumentality

Product Identification

  • The complaint identifies the accused instrumentality as "notebook computer products, including but not limited to at least one notebook computer product commercially available in the United States known as the Acer Aspire 4810T." (Compl. ¶13).

Functionality and Market Context

  • The complaint does not provide specific technical descriptions of the Acer Aspire 4810T's design or operation beyond the general allegation that it infringes the asserted patents. It alleges the product is commercially available in the United States but offers no details on its market positioning or commercial significance. (Compl. ¶13).
  • No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint follows a notice pleading format and does not provide a detailed, element-by-element mapping of the asserted claims to the functionality of the accused Acer Aspire 4810T notebook computer. Therefore, a claim chart summary cannot be constructed based on the provided document.

Identified Points of Contention: ’693 Patent

  • Scope Questions: A central issue may be the construction of "disposed entirely inside the housing." The analysis will question whether this requires a hermetically sealed enclosure or simply means that no part of the pointing device's functional surface or body breaks the plane of the housing's exterior. The requirement of being "secured with an adhesive" also raises the question of whether this precludes the use of any additional mechanical fasteners.
  • Technical Questions: An evidentiary question will be how the Acer Aspire 4810T's touchpad is actually assembled. The dispute may turn on factual evidence regarding the precise location of the touchpad relative to the housing and the specific materials and methods—adhesive, clips, screws, or a combination—used to secure it.

Identified Points of Contention: ’867 Patent

  • Scope Questions: Several claim terms, such as "discriminating means" and "means for inhibiting a resumption," are drafted in means-plus-function format under 35 U.S.C. § 112, ¶ 6. The scope of these terms is not their literal function but is limited to the specific structures (e.g., software algorithms) described in the patent's specification and their legal equivalents. The case will likely involve a dispute over what those structures are and what accused software routines could be considered equivalent.
  • Technical Questions: The infringement analysis will require a detailed technical examination of the accused product's BIOS and power management firmware. A key question is whether the software logic for handling a failed password attempt during resume is structurally equivalent to the "endless loop" described in the patent's specification that prevents the restoration of data from backup RAM. (’867 Patent, col. 6:11-20).

V. Key Claim Terms for Construction

"disposed entirely inside the housing" (’693 Patent, Claim 1)

  • Context and Importance: This term is critical because it defines the core structural arrangement of the invention. Infringement will depend on whether the accused device’s pointing device is situated fully within the housing's interior volume, with no part of it considered external.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification emphasizes that the invention avoids the need for an "opening" in the housing and protects the device, suggesting that "entirely inside" should be construed to mean that no part of the device is exposed to the external environment, even if it is immediately adjacent to the inner wall. (’693 Patent, col. 1:57-67).
    • Evidence for a Narrower Interpretation: The figures and description show the flat input sheet (18) laid directly on the inner surface (10b) of the housing's outer wall (10c). This could support a narrower construction requiring the device to be fully contained within the housing's material boundary, without touching or forming part of the boundary itself. (’693 Patent, Fig. 3; col. 4:18-23).

"means for inhibiting a resumption of the data processing" (’867 Patent, Claim 1)

  • Context and Importance: As a means-plus-function limitation, the construction of this term will define the scope of patent protection for the security feature. Practitioners may focus on this term because the infringement analysis is not a literal comparison of function but a comparison of the accused product's structure to the specific structure disclosed in the patent.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation (Plaintiff's likely view): A party might argue that the corresponding structure is the general algorithm of checking a password and, upon failure, withholding the session-restore command and re-prompting the user. Any software that performs these steps would be argued to be an equivalent.
    • Evidence for a Narrower Interpretation (Defendant's likely view): The specification discloses a specific corresponding structure: a software flow where a password mismatch causes the program to "return to step S28 to urge the operator to reinput the password," creating an "endless loop" that prevents the execution of the step that restores content from the backup RAM (step S25). (’867 Patent, col. 6:11-20; Fig. 3). This specific looping algorithm could be construed as the required structure, limiting the claim's scope.

VI. Other Allegations

Indirect Infringement

  • For each asserted patent, the complaint alleges both induced and contributory infringement. Inducement is based on allegations that Defendants provide user manuals and other materials that instruct end-users on how to use the infringing features. (Compl. ¶¶14, 22, 30, 38). Contributory infringement is based on allegations that Defendants sell the accused products, which constitute material parts of the patented inventions, are not staple articles of commerce, and are known to be especially adapted for an infringing use. (Compl. ¶¶15, 23, 31, 39).

Willful Infringement

  • The complaint alleges on "information and belief" that the infringement of all four patents was and continues to be willful and deliberate. (Compl. ¶¶18, 26, 34, 42). The complaint does not provide a specific factual basis for this allegation, such as evidence of pre-suit knowledge of the patents.

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

  • A core issue will be one of claim scope, particularly concerning the means-plus-function limitations in the ’867 patent. The case will likely require a detailed analysis of the patent’s specification to define the specific software algorithm corresponding to functions like "inhibiting a resumption," which will in turn determine whether the accused product’s power management software falls within the scope of the claims.
  • A second central issue will be one of factual correspondence between the accused product's physical construction and the claims of the hardware-focused patents. For the ’693 patent, the dispute may turn on evidence of the precise assembly method of the Acer notebook's touchpad and whether it meets the "entirely inside" and "secured with an adhesive" limitations as construed by the court.
  • A key evidentiary question will concern the operation of the accused software. For the ’209 multimedia patent, the analysis will likely depend on whether the accused system uses its CPU to decode sub-picture data in the manner claimed, raising a question of technical implementation that may require source code review and expert testimony to resolve.