Regents Of University Of Minnesota v. LSI Corp

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Regents of the University of Minnesota (Minnesota)
  • Defendant: LSI Corporation (Delaware) and Avago Technologies U.S. Inc. (Delaware)
  • Plaintiff’s Counsel: K&L Gates LLP
• Case Identification: 0:16-cv-02891, D. Minn., 11/11/2016
• Venue Allegations: Venue is alleged to be proper based on Defendants being subject to personal jurisdiction in the district, where they allegedly conduct business directly and through distributors, and have committed acts of infringement.
• Core Dispute: Plaintiff alleges that Defendants’ hard disk drive controller chips infringe a patent related to a method for encoding data to reduce read errors and increase storage density.
• Technical Context: The lawsuit concerns read-channel technology in hard disk drives (HDDs), specifically modulation codes that manage the sequence of magnetic transitions to improve data recovery reliability at high storage densities.
• Key Procedural History: The complaint alleges that Plaintiff, through the inventor, engaged in licensing discussions with Defendant LSI in 2011 and 2013, which did not result in a license. The complaint also alleges that key executives at LSI were aware of the patent and its underlying academic research. Post-filing, U.S. Patent No. 5,859,601 was the subject of an Inter Partes Review (IPR2017-01068), which resulted in the cancellation of asserted claim 13 and a finding that asserted claim 14 is patentable.

Case Timeline

Date	Event
1996-04-05	’601 Patent Priority Date
1999-01-12	’601 Patent Issue Date
2007-06-01	Start of employment for Dr. Yang, alleged to have developed MTR tech for LSI
2011-10-01	Plaintiff's inventor allegedly discussed the invention with LSI VP Dr. Lee
2013-04-01	Plaintiff's representative allegedly contacted LSI's counsel for licensing
2016-11-11	Complaint Filing Date

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

U.S. Patent No. 5,859,601 - “Method and Apparatus for Implementing Maximum Transition Run Codes”

• Patent Identification: U.S. Patent No. 5,859,601, “Method and Apparatus for Implementing Maximum Transition Run Codes,” issued January 12, 1999.

The Invention Explained

• Problem Addressed: In high-density magnetic storage, sequence detectors can struggle to distinguish between certain recorded patterns, particularly those involving long strings of magnetic transitions, which increases the bit error rate (BER) and limits data reliability (’601 Patent, col. 2:19-24; Compl. ¶43).
• The Patented Solution: The invention proposes a coding scheme called "Maximum Transition Run" (MTR) code. This method encodes data to eliminate sequences with long runs of consecutive transitions (the "j" constraint) while ensuring enough transitions occur for timing recovery (the "k" constraint) (’601 Patent, Abstract; col. 2:40-47). By removing these specific error-prone patterns, the MTR code claims to improve the BER or, alternatively, allow for an increase in data storage density for the same level of reliability (’601 Patent, col. 2:47-54).
• Technical Importance: The approach sought to provide the error-reduction benefits of some existing codes (like RLL (1,k)) but at a higher code rate, meaning less overhead and a more efficient use of the storage medium (’601 Patent, col. 3:10-24).

Key Claims at a Glance

• The complaint asserts independent claim 13 and dependent claim 14 (’601 Patent, col. 10:46-61; Compl. ¶¶160-161).
• Independent Claim 13: A method for encoding m-bit datawords into n-bit codewords, comprising:
  • receiving binary datawords;
  • producing sequences of n-bit codewords;
  • imposing a pair of constrains (j;k) on the encoded waveform;
  • generating no more than j consecutive transitions of said sequence in the recorded waveform such that j ≥ 2; and
  • generating no more than k consecutive sample periods of said sequences without a transition in the recorded waveform.
• The complaint reserves the right to assert additional claims (’601 Patent, col. 10:46-61; Compl. ¶¶94, 98).

III. The Accused Instrumentality

Product Identification

• The accused instrumentalities are Defendants’ "MTR-enabled Products," which include read channel and system-on-a-chip (SOC) HDD chips sold under the TrueStore tradename, such as the RC5101 Spyder, RC5110 Spyder, and RC5200 Spyder series, as well as associated simulators (Compl. ¶75).

Functionality and Market Context

• These chips are core components in hard disk drives that manage the process of encoding user data into magnetic patterns on a disk and decoding those patterns back into data during a read operation (Compl. ¶¶16, 34-40). The complaint alleges that these products include an "MTR code option" which, when enabled, performs the patented encoding method to improve the drive's performance and data density (Compl. ¶¶93, 105). The complaint positions these products as critical for HDD manufacturers like Seagate and HGST to meet growing demands for storage capacity (Compl. ¶¶20, 42).

IV. Analysis of Infringement Allegations

’601 Patent Infringement Allegations

Claim Element (from Independent Claim 13)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
[a] method for encoding m-bit binary datawords into n-bit binary codewords in a recorded waveform, where m and n are preselected positive integers such that n is greater than m	The MTR-enabled Products allegedly encode data using m/n rates where n>m, such as 17/18, 19/20, 20/21, and others.	¶¶99, 102	col. 10:46-49
receiving binary datawords; and producing sequences of n-bit codewords	The accused products, as encoder chips, inherently receive datawords and produce corresponding codewords to be written to the HDD.	¶99	col. 10:50-51
imposing a pair of constrains (j;k) on the encoded waveform	The accused products allegedly impose (j;k) constraints when the "MTR code option" is enabled via firmware.	¶¶99, 105	col. 10:52-53
generating no more than j consecutive transitions of said sequence in the recorded waveform such that j ≥ 2	The accused products are allegedly programmed to use a j value of 2 or greater, thereby limiting the number of consecutive transitions. The complaint points to a presentation by an LSI executive describing "RLL: transition aware" technology as evidence of this capability.	¶¶99, 100, 85-87	col. 10:54-56
and generating no more than k consecutive sample periods of said sequences without a transition in the recorded waveform.	The accused products are allegedly programmed to use a k value of "about 25" to limit the number of consecutive periods without a transition, ensuring timing recovery.	¶¶99, 101	col. 10:57-59

Visual Evidence

• A slide from a 2012 presentation by Dr. Yuan Xing Lee, then an LSI executive, shows a timeline of "Major Inflection Points" in HDD technology (Compl. p. 16, ¶85). The complaint alleges that the entry for the "Beyond 2010" period, "RLL: transition aware," refers to the patented MTR codes (Compl. ¶87).

Identified Points of Contention

• Evidentiary Questions: The complaint states that the accused products "cannot be reverse-engineered" and relies on public statements, product specifications, and academic papers by Defendants' employees to build its infringement case (Compl. ¶76). A central question will be whether this circumstantial evidence is sufficient to prove that the chips, when operated, actually perform each step of the claimed method.
• Scope Questions: The infringement theory hinges on the allegation that the term "RLL: transition aware" from a marketing presentation refers to the patented MTR coding method (Compl. ¶¶85-87). The litigation may focus on whether this term has a different meaning in the industry or if it can be directly and exclusively tied to the patent's specific (j,k) constraints.
• Technical Questions: The complaint alleges the accused products have an "MTR code option" (Compl. ¶93). A point of contention may be whether the mere existence of an option constitutes infringement, or if Plaintiff must prove that the option is routinely enabled by Defendants or their customers in the United States.

V. Key Claim Terms for Construction

The Term: "imposing a pair of constrains (j;k) on the encoded waveform"

• Context and Importance: This term recites the core action of the invention. Its construction is critical because the infringement case depends on showing that the accused products actively apply these specific dual constraints. Practitioners may focus on this term to dispute whether having a selectable "MTR code option" satisfies the active "imposing" limitation, or if the constraints must be inherent to the fundamental operation of the encoder.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent describes the invention broadly as a "coding scheme" that "eliminates certain error-prone binary data patterns" (’601 Patent, col. 2:42-45). This focus on the result (elimination of patterns) could support an interpretation where any mechanism that achieves this result, including a selectable firmware option, falls within the claim.
  • Evidence for a Narrower Interpretation: The detailed description provides specific state diagrams (e.g., Fig. 2, Fig. 3) and Boolean logic equations for implementing the code (’601 Patent, col. 4:31-40, col. 5:22-44). This could support a narrower construction where "imposing" requires an implementation that closely follows the disclosed embodiments, rather than any system that can be configured to produce a compliant output.

The Term: "transition"

• Context and Importance: The entire MTR scheme is based on counting and limiting "transitions." The meaning of this term is fundamental to determining whether the "j" constraint is met.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent frequently discusses transitions in the general context of magnetic recording, where the term has a well-understood meaning related to a change in magnetic polarity (Compl. ¶38). This may support a plain and ordinary meaning not limited to a specific implementation.
  • Evidence for a Narrower Interpretation: The patent defines a transition in the context of the Non-Return-to-Zero-Inversion (NRZI) recording format, where "a magnetic transition is represented by 1 and no transition by 0" (’601 Patent, col. 1:30-33). Parties could argue this ties the term to the specific characteristics of NRZI, potentially limiting its scope if the accused devices use a different underlying format.

VI. Other Allegations

Indirect Infringement

• The complaint alleges inducement by asserting that Defendants provide customers with documentation, user guides, register maps, and direct engineering support that instruct them on how to enable the infringing "MTR code option" in the accused products (Compl. ¶¶103-104, 108). Contributory infringement is alleged on the basis that the MTR encoder components are a material part of the invention, are not staple articles of commerce, and are especially adapted for infringing use (Compl. ¶¶112, 164).

Willful Infringement

• The complaint alleges that Defendants had pre-suit knowledge of the ’601 patent. This is based on allegations that key LSI executives (Drs. Lee, Wilson, and Yang) cited the patent or its foundational academic paper in their own work, and that the inventor, Dr. Moon, engaged in licensing discussions with LSI's Dr. Lee starting in 2011 (Compl. ¶¶135-137, 144-145). The complaint further alleges that LSI's counsel "willfully blinded himself" from gaining knowledge during a 2013 licensing discussion (Compl. ¶150).

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

1. Impact of IPR: A primary legal issue will be the effect of the post-filing IPR proceeding that cancelled independent claim 13. This may require Plaintiff to prove infringement of dependent claim 14, which adds the limitation that the "j" constraint is between 2 and 10. The case may turn on whether the evidence supports infringement of this narrower claim range.
2. Sufficiency of Circumstantial Evidence: Since the complaint concedes the accused chips cannot be reverse-engineered, a key evidentiary question will be whether Plaintiff's collection of indirect evidence—including product data sheets referencing an "MTR code option," an executive's presentation slide, and academic publications—is sufficient to prove that the accused products actually perform the patented method in the United States.
3. Knowledge and Intent: The willfulness and indirect infringement claims depend heavily on proving Defendants' knowledge and intent. The case will likely examine the detailed allegations regarding the pre-suit licensing discussions and the technical awareness of Defendants' key engineers to determine if their conduct rose to the level of willfulness or inducement.