Heritage IP LLC v. Holtek Semiconductor USA Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Heritage IP LLC (Texas)
  • Defendant: Holtek Semiconductor (USA), Inc. (California)
  • Plaintiff’s Counsel: Banie & Ishimoto LLP
• Case Identification: 8:22-cv-02158, C.D. Cal., 11/30/2022
• Venue Allegations: Venue is asserted based on the defendant maintaining a regular and established office within the Central District of California.
• Core Dispute: Plaintiff alleges that Defendant’s microcontroller product infringes a patent related to a programmable apparatus for managing low-voltage resets in electronic chips that utilize multiple power supplies.
• Technical Context: The technology addresses the need for reliable operation and data integrity in complex integrated circuits, which often must interface with components operating at different voltage levels.
• Key Procedural History: The complaint notes that Plaintiff, Heritage IP LLC, is the owner of the patent-in-suit by assignment. The patent was originally assigned to Cypress Semiconductor Corp. No other procedural history, such as prior litigation or administrative proceedings, is mentioned in the complaint.

Case Timeline

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

• Patent Identification: U.S. Patent No. 7,221,200, "Programmable Low Voltage Reset Apparatus for Multi-VDD Chips," issued May 22, 2007. (Compl. ¶14).

The Invention Explained

• Problem Addressed: The patent’s background section describes a deficiency in prior art reset circuits, stating they "cannot support devices having multiple power supply levels (multiple VDDs)" (’200 Patent, col. 1:45-48; Compl. ¶16). When a chip uses several different voltages, a reset circuit must be activated if "one or more of the Vdds is lost" to prevent malfunction or data corruption (’200 Patent, col. 1:48-51).
• The Patented Solution: The invention is a programmable apparatus that allows a device to monitor multiple power supplies and trigger a reset based on user-defined conditions. It comprises a "low voltage signal generator" to detect when a power supply voltage drops, a "reset selector" to choose which supply to monitor, and a "programmable reference voltage generator" to vary the voltage threshold for the reset (’200 Patent, Abstract). The detailed description explains that this selector can be implemented with a multiplexer that is controlled by firmware, giving the user flexibility after the device has powered up (’200 Patent, col. 3:61-64; Fig. 2).
• Technical Importance: This programmable approach enables a single device, such as a microcontroller, to reliably interface with various other components on a circuit board that may operate under different power supply standards (’200 Patent, col. 1:55-59).

Key Claims at a Glance

• The complaint asserts infringement of "at least one or more claims" but does not specify them in the body of the complaint or the prayer for relief (Compl. ¶¶ 21, 25). Claim 1 is the broadest independent apparatus claim.
• The essential elements of independent Claim 1 are:
  • a programmable reference voltage generator for generating a programmable reference voltage according to a power supply voltage;
  • a low voltage signal generator coupled to the programmable reference voltage generator, the low voltage signal generator for generating a low voltage signal when the power supply voltage decreases below the programmable reference voltage; and
  • a reset selector coupled to the low voltage signal generator for selectively passing the low voltage signal as a reset signal in response to a reset selector control signal.
• The complaint does not explicitly reserve the right to assert dependent claims, but the general allegation of infringing "one or more claims" suggests this possibility (Compl. ¶21).

III. The Accused Instrumentality

Product Identification

• The complaint identifies the "Holtek BS86DH12C" as an Accused Product (Compl. ¶2).

Functionality and Market Context

• The complaint alleges that the Accused Product is a device that Defendant "develops, designs, manufactures, distributes, markets, offers to sell and/or sells" (Compl. ¶9). The pleading does not provide any specific technical details regarding the internal circuitry or operation of the Holtek BS86DH12C product. No allegations are made regarding the product's specific market position or commercial importance. No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint alleges that the accused Holtek BS86DH12C product infringes at least one claim of the ’200 Patent, referencing an "Exhibit B" which purportedly contains a claim chart (Compl. ¶21). However, this exhibit was not available for analysis. The complaint itself provides only conclusory allegations and does not contain a narrative mapping specific features of the accused product to the elements of any asserted claim.

• Identified Points of Contention: Based on the technology and the claim language, the infringement analysis may raise several key questions:
  • Scope Questions: The complaint’s theory appears to depend on the accused microcontroller containing a programmable reset circuit. A potential point of contention is whether the term "reset selector" as claimed, which the patent describes as a firmware-controlled multiplexer, can be interpreted to read on the specific circuitry used in the Holtek BS86DH12C (Compl. ¶17; ’200 Patent, col. 3:7-12).
  • Technical Questions: A central evidentiary question will be whether the accused product contains a "programmable reference voltage generator." The complaint does not provide evidence showing that the accused product's reset threshold is "programmable" in the manner required by the claim, for example, by using a selectable resistor ladder as described in the patent (’200 Patent, col. 4:35-42).

V. Key Claim Terms for Construction

• The Term: "programmable reference voltage generator"

  • Context and Importance: This term appears in independent claim 1 and is fundamental to the invention's purported novelty. The dispute may turn on whether the accused device's method for setting a reset voltage threshold meets the "programmable" limitation as construed from the patent.
  • Intrinsic Evidence for a Broader Interpretation: A party may argue that the claim language itself is not limiting and that any generator whose reference voltage can be varied by firmware or software after power-up meets the definition (’200 Patent, col. 6:58-61).
  • Intrinsic Evidence for a Narrower Interpretation: The specification discloses a specific embodiment where programmability is achieved via a "resistor ladder" with multiple "tapping points" selected by a "register" controlled by a user (’200 Patent, col. 2:19-20; col. 4:35-42). A party may argue this disclosure limits the term to such a structure or its close equivalents.

• The Term: "reset selector"

  • Context and Importance: This element from claim 1 defines the mechanism for choosing which low voltage signal to act upon. Practitioners may focus on this term because the ability to selectively monitor different power supplies is a core concept of the patent.
  • Intrinsic Evidence for a Broader Interpretation: A plaintiff may argue that the term should be given its plain and ordinary meaning, covering any logical circuit that can enable or disable a reset path based on a "reset selector control signal" (’200 Patent, col. 6:1-4).
  • Intrinsic Evidence for a Narrower Interpretation: The specification describes implementing the selector using a "multiplexer 20" whose control input is driven by a "flip-flop 30," which is in turn set via firmware (’200 Patent, col. 2:60-63; col. 3:7-12). A defendant may argue that this detailed implementation should inform a narrower construction of the term.

VI. Other Allegations

• Indirect Infringement: The complaint alleges both induced and contributory infringement. The inducement allegation is based on Defendant providing the Accused Products along with "instructions to enable and facilitate infringement" to its end-user customers (Compl. ¶25). The contributory infringement allegation asserts that the Accused Product and its software components are "specially designed to infringe," embody a material part of the invention, and are not staple articles with substantial non-infringing uses (Compl. ¶26).
• Willful Infringement: The complaint alleges that Defendant has had "actual knowledge of the ’200 Patent" since at least the date the complaint was filed and that its infringement "was and continues to be willful and deliberate" (Compl. ¶¶ 22, 27). The pleading does not specify a factual basis for any pre-suit knowledge.

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

• A primary issue will be one of evidence. The complaint lacks a detailed, public-facing infringement theory. A key question is what evidence Plaintiff will be able to obtain and present to demonstrate that the internal, undocumented circuitry of the accused Holtek microcontroller performs the specific functions required by each limitation of an asserted claim.
• The case will also likely involve a critical question of claim construction. The outcome may turn on whether the term "programmable reference voltage generator" is given a broad construction covering any firmware-adjustable reset threshold, or a narrower one confined to the specific resistor-ladder embodiment detailed in the patent’s specification.