Memory Tech LLC v. Kingston Technology Corp

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Memory Technologies, LLC (Nevada)
  • Defendant: Kingston Technology Corp (California) & Kingston Technology Co, Inc. (Delaware)
  • Plaintiff’s Counsel: LEE & HAYES, PLLC; HANKIN PATENT LAW, APC
• Case Identification: 8:18-cv-00171, C.D. Cal., 01/31/2018
• Venue Allegations: Plaintiff alleges venue is proper in the Central District of California because Defendants are headquartered, maintain a regular and established place of business, and have committed acts of infringement within the district.
• Core Dispute: Plaintiff alleges that Defendant’s SD card and eMMC flash memory products infringe eight patents related to memory addressing, power consumption management, data transfer protocols, write protection, and boot processes.
• Technical Context: The technologies at issue relate to fundamental operations of flash memory, a ubiquitous storage medium for consumer and industrial electronics, governed by standards from organizations like JEDEC and the SD Association.
• Key Procedural History: The complaint alleges a multi-year history of licensing negotiations, beginning with Plaintiff’s initial contact with Defendant’s CEO on October 23, 2013. Plaintiff alleges it repeatedly informed Defendant over several years that a license was required for products complying with the eMMC and SD Standards and that it offered a license on reasonable and non-discriminatory (RAND) terms. These allegations form the basis for the claim of willful infringement.

Case Timeline

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

U.S. Reissue Patent No. RE45,486 - "Method for Addressing a Memory Card, a System Using a Memory Card, and a Memory Card"

• Patent Identification: U.S. Reissue Patent No. RE45,486, "Method for Addressing a Memory Card, a System Using a Memory Card, and a Memory Card," issued April 21, 2015.

The Invention Explained

• Problem Addressed: The patent addresses the issue of memory card standards setting upper capacity limits (e.g., 4 gigabytes) that memory technology developments had surpassed, rendering existing addressing schemes incapable of handling larger-capacity cards (RE486 Patent, col. 2:18-36).
• The Patented Solution: The invention discloses a dual-mode addressing system. An "addressing data" indicator stored on the card signals whether the card uses a "basic addressing method" for lower capacities or an "expanded addressing method" for higher capacities. This expanded method enables addressing a larger number of memory locations, for example by changing the unit of addressing from a byte to a block or by reinterpreting parameters used to calculate total card size (RE486 Patent, Abstract; col. 6:15-32).
• Technical Importance: The technology provided a framework for increasing memory card capacity beyond the constraints of legacy standards while maintaining a degree of backward compatibility (RE486 Patent, col. 3:36-44).

Key Claims at a Glance

• The complaint asserts independent claim 6, among other claims (Compl. ¶39).
• Claim 6 requires, in part:
  • A memory card with several memory locations, which stores at least one parameter used to calculate the number of memory locations.
  • The memory card is configured to store "an addressing data that is indicative of at least one addressing method supported."
  • This "addressing data" indicates either a "basic addressing method" or an "expanded addressing method."
  • The "expanded addressing method" enables addressing of data in a larger number of memory locations than the basic method.
• The complaint asserts claims 6, 9-11, 22, 23, 26, and 27, and seeks relief for infringement of the Asserted Patents generally, which may be construed as reserving the right to assert additional claims (Compl. ¶39; Compl. p. 41).

U.S. Reissue Patent No. RE45,542 - "Method and a System for Determining the Power Consumption in Connection with an Electronic Device, and an Electronic Device"

• Patent Identification: U.S. Reissue Patent No. RE45,542, "Method and a System for Determining the Power Consumption in Connection with an Electronic Device, and an Electronic Device," issued June 2, 2015.

The Invention Explained

• Problem Addressed: The patent describes the inefficiency in designing host devices to power a wide variety of peripheral devices. A host's power supply is often designed for the most power-hungry peripheral it might encounter, making it unnecessarily bulky and inefficient when used with less demanding peripherals (RE542 Patent, col. 2:1-12).
• The Patented Solution: The invention proposes a peripheral device, such as a memory card, that stores both a "default value" and a "limiting value" for its power consumption. At startup, the device operates at the default value. The host device can then communicate with the peripheral to set its maximum power consumption to a specific value within the range defined by the default and limiting values, allowing for dynamic and efficient power management (RE542 Patent, Abstract; col. 3:1-15).
• Technical Importance: This approach allows host devices to flexibly manage power delivery to peripherals, enabling support for a broad range of accessories without being over-engineered for worst-case power demands, a key consideration for portable electronics (RE542 Patent, col. 3:41-52).

Key Claims at a Glance

• The complaint asserts independent claim 28, among others (Compl. ¶54).
• Claim 28 requires, in part:
  • A peripheral device comprising a memory storing a "default value" and a "limiting value" for power consumption.
  • A connector for supplying power from an electronic device.
  • The maximum power consumption is "set at a startup stage to the default value."
  • The "limiting value" is higher than the default value and is defined for the power consumption of the device.
• The complaint generally reserves the right to assert additional claims.

U.S. Patent No. 7,565,469 - "Multimedia Card Interface Method, Computer Program Product and Apparatus"

• Patent Identification: U.S. Patent No. 7,565,469, "Multimedia Card Interface Method, Computer Program Product and Apparatus," issued July 21, 2009 (Compl. ¶20).
• Technology Synopsis: The patent describes a method to make multi-block data transfers more efficient by changing the meaning of the "busy" signal generated by a memory card. The signal indicates "buffer busy/ready" after intermediate data blocks but changes its meaning to "programming busy/ready" after the final block, which alleviates the need for the host device to poll the card to determine when the programming operation is complete (’469 Patent, Abstract).
• Asserted Claims: Claim 19 (Compl. ¶62).
• Accused Features: The complaint accuses SD Cards and eMMC memory of using a controller that causes a change of state on the data signal line to have a first meaning ("buffer busy") after a first information portion is received and a second, different meaning ("programming busy") after a second, final information portion is received within a command execution (Compl. ¶¶63-64).

U.S. Patent No. 7,739,487 - "Method for Booting a Host Device From an MMC/SD Device..."

• Patent Identification: U.S. Patent No. 7,739,487, "Method for Booting a Host Device From an MMC/SD Device...," issued June 15, 2010 (Compl. ¶22).
• Technology Synopsis: The patent addresses the lack of an efficient booting mechanism in standard memory card interfaces. It discloses a method where a host device signals its intent to boot during power-up (e.g., by holding the command line low), prompting the memory device to immediately transmit boot data without completing the full standard initialization sequence (’487 Patent, Abstract).
• Asserted Claims: Claims 20 and 21 (Compl. ¶70).
• Accused Features: The complaint accuses eMMC memory devices of implementing a boot mode where the device controller is configured to send boot data from a predefined storage area upon receiving power and a low signal at its command terminal during power-up (Compl. ¶¶71-72).

U.S. Patent No. 7,827,370 - "Partial Permanent Write Protection of a Memory Card..."

• Patent Identification: U.S. Patent No. 7,827,370, "Partial Permanent Write Protection of a Memory Card...," issued November 2, 2010 (Compl. ¶24).
• Technology Synopsis: The patent discloses a method for making write protection of a portion of a memory card permanent. It achieves this by defining a bit in a data register that, when set, redefines a standard write-protect command to make the protection of an addressed memory group permanent and irreversible by a standard un-protect command (’370 Patent, Abstract).
• Asserted Claims: Claims 12 and 19 (Compl. ¶78).
• Accused Features: Accused eMMC products allegedly comprise a controller that can permanently write-protect a memory group. This is allegedly accomplished by setting a bit in the Extended CSD Register that redefines the 'SET_WRITE_PROT' command to apply permanent protection that cannot be unprotected by a command (Compl. ¶79).

U.S. Patent No. 8,307,180 - "Extended Utilization Area for a Memory Device"

• Patent Identification: U.S. Patent No. 8,307,180, "Extended Utilization Area for a Memory Device," issued November 6, 2012 (Compl. ¶26).
• Technology Synopsis: The patent addresses the problem that memory devices are often optimized for one type of data access (e.g., large sequential writes) at the expense of others (e.g., small random reads). The solution is to create multiple "predefined access profiles" on the device, allowing a host system to issue commands that activate the optimal profile for a given task, thereby enabling run-time performance configuration (’180 Patent, Abstract).
• Asserted Claims: Claims 17-19 and 21-22 (Compl. ¶86).
• Accused Features: Accused SD Cards and eMMC devices are alleged to use registers to store predefined access profiles ("Speed Class" profiles or "contexts"). A controller allegedly receives commands that activate these profiles to configure memory access for a particular usage, thereby optimizing performance (Compl. ¶¶87, 92).

U.S. Patent No. 9,063,850 - "Extended Utilization Area for a Memory Device"

• Patent Identification: U.S. Patent No. 9,063,850, "Extended Utilization Area for a Memory Device," issued June 23, 2015 (Compl. ¶28).
• Technology Synopsis: As a continuation of the '180 patent, this patent refines the concept of using command-activated, predefined access profiles to configure a memory device's operation for different access types, such as read or write operations (’850 Patent, Abstract).
• Asserted Claims: Claims 10 and 13 (Compl. ¶102).
• Accused Features: The accused products are alleged to have a controller that receives a first command (e.g., ACMD41) to activate an access profile and a second command (e.g., CMD20) to configure memory access in accordance with that profile for a specific usage (Compl. ¶¶103-104).

U.S. Patent No. 9,367,486 - "Extended Utilization Area for a Memory Device"

• Patent Identification: U.S. Patent No. 9,367,486, "Extended Utilization Area for a Memory Device," issued June 14, 2016 (Compl. ¶30).
• Technology Synopsis: This patent, also in the same family as the '180 patent, claims a method performed by a memory device that includes receiving commands to activate one of at least two predefined access profiles, where one profile corresponds to a random mode of access and a second corresponds to a sequential mode of access (’486 Patent, Abstract).
• Asserted Claims: Claim 8 (Compl. ¶111).
• Accused Features: Accused SD Cards and eMMC devices are alleged to perform a method of receiving commands to activate one of two or more predefined access profiles (e.g., a "Create DIR" profile for random access and a "Start Recording" profile for sequential access) to configure memory access for a specific usage (Compl. ¶¶112-113).

III. The Accused Instrumentality

Product Identification

• The accused instrumentalities are Kingston-branded flash memory products, including various lines of SD Cards (SDHC/SDXC, microSDHC/microSDXC) and eMMC memory components (Compl. ¶¶ 39, 54, 62, 70, 78, 86, 102, 111).

Functionality and Market Context

• The complaint identifies the accused products as devices compliant with established industry standards, such as SD Specification Version 2.00 or higher and JEDEC eMMC standard 4.41 or higher (Compl. ¶¶ 39, 54, 62). The infringement allegations are tied directly to the functionality mandated or enabled by these standards, such as methods for calculating capacity, managing power states, handling data transfer signaling, implementing write-protection, and utilizing performance-tuning profiles (Compl. ¶¶ 40, 55, 63, 79, 87). The complaint alleges that Plaintiff has licensed the Asserted Patents to "most of the major flash memory manufacturers in the world," suggesting the patented technology is of significant commercial importance (Compl. ¶¶ 1-2).

No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

RE45,486 Patent Infringement Allegations

RE45,542 Patent Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: For the 'RE486 patent, a central question may be whether a "Card Capacity Status" bit, as allegedly used in the accused products, constitutes the claimed "addressing data that is indicative of at least one addressing method." The analysis may focus on whether reporting capacity is legally equivalent to indicating a method of addressing.
  • Technical Questions: For the 'RE542 patent, a potential point of contention could be the meaning of "set at a startup stage." The dispute may turn on whether the accused devices' default power-on state constitutes an active "setting" of power consumption as required by the claim, or is merely an inherent electrical characteristic.

V. Key Claim Terms for Construction

• The Term: "addressing data" ('RE486 Patent, Claim 6)

• Context and Importance: This term is central to the 'RE486 patent infringement theory. The claim requires a specific piece of data that signals which of two addressing methods is supported. The case will likely depend on whether the "Card Capacity Status" bit in the accused products' OCR register, which indicates standard vs. high capacity, meets this definition. Practitioners may focus on this term because the infringement allegation relies on equating a status indicator (capacity) with a method selector (addressing method).

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The claim requires the data to be "indicative of" a method, which may support an interpretation where any data from which the correct method can be inferred is sufficient (RE486 Patent, col. 8:14-16).
  • Evidence for a Narrower Interpretation: The specification consistently links the "addressing data" to the explicit choice between a "basic addressing method" and an "expanded addressing method" (RE486 Patent, col. 6:26-32). An argument could be made that the data must directly relate to the method itself, not just a resulting characteristic like capacity.

• The Term: "set at a startup stage" ('RE542 Patent, Claim 28)

• Context and Importance: This phrase imposes a temporal and functional requirement on the claim. Infringement requires that the device's power consumption level is actively "set" during the "startup stage." A key dispute may arise over whether a device's inherent power-on state, without an explicit configuration command, satisfies this limitation.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification states that "the maximum power consumption of the peripheral device is set at a startup stage to the default value" (RE542 Patent, col. 4:21-24), which could be read as describing an inherent state of the device upon initialization.
  • Evidence for a Narrower Interpretation: The patent also describes a "processor operable to set the maximum power consumption ... to a value" based on "received information," suggesting an active, configurable process rather than a fixed hardware default (RE542 Patent, col. 4:30-41). This could support an interpretation requiring an explicit action.

VI. Other Allegations

• Indirect Infringement: The complaint alleges inducement of infringement for all eight asserted patents. The allegations are based on Defendant providing the accused products to third parties, along with instructions, advertising, sales support, and technical assistance (e.g., via Defendant's website), thereby encouraging infringing use by customers (Compl. ¶¶ 49, 57, 65, 73, 81, 97, 106, 114).
• Willful Infringement: The complaint alleges willful infringement for all asserted patents. The basis for this allegation is Defendant's alleged pre-suit knowledge of the patents and their infringement, dating back to at least October 23, 2013. The complaint details a history of communications, including letters and meetings over several years, in which Plaintiff allegedly notified Defendant of the patents and the infringing nature of its products (Compl. ¶¶ 32-37, 52, 60, 68, 76, 84, 100, 109, 117).

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

• A central issue will be one of standards interpretation: do the functionalities defined by the JEDEC and SD Association standards, as implemented in the accused products, practice the specific technical requirements of the patent claims? The case will likely require a deep analysis of whether, for example, the SD standard's "Speed Class" feature is the same as the '180 patent's claimed "predefined access profiles," or if a capacity bit in an eMMC register functions as the "addressing data" claimed by the 'RE486 patent.
• A key question for damages will be willfulness: given the complaint's detailed allegations of a multi-year history of licensing discussions preceding the lawsuit, the court will need to determine if Defendant's alleged infringement was egregious and deliberate. The resolution will depend on the factual record of what Defendant knew about the patents and when, and whether it formed a good-faith belief of non-infringement or invalidity.