North Star Innovations Inc v. HTC Corp

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: North Star Innovations Inc. (Delaware)
  • Defendant: HTC Corporation (Taiwan); HTC America, Inc. (Washington)
  • Plaintiff’s Counsel: Farnan LLP
• Case Identification: 1:16-cv-00729, D. Del., 08/19/2016
• Venue Allegations: Venue is alleged to be proper in the District of Delaware based on Defendants’ transaction of business in the district, including making, using, and selling products.
• Core Dispute: Plaintiff alleges that Defendant’s HTC One M9 Smartphone infringes a patent related to methods for observing the internal mode of a synchronous memory device.
• Technical Context: The technology concerns methods for testing and debugging synchronous dynamic random access memory (SDRAM) by outputting the contents of an internal control register, which is critical for verifying the functionality of complex integrated circuits.
• Key Procedural History: The complaint notes that Plaintiff North Star Innovations Inc. is a subsidiary of Wi-LAN Technologies Inc. No other procedural events, such as prior litigation or administrative proceedings involving the patent-in-suit, are mentioned in the complaint.

Case Timeline

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

U.S. Patent No. 5,892,777 - "Apparatus and Method for Observing the Mode of a Memory Device"

• Issued: April 6, 1999

The Invention Explained

• Problem Addressed: The patent’s background section describes the increasing difficulty of testing complex SDRAMs, whose operational state can be difficult to predict or observe, particularly in "embedded memories" that lack external pins for direct testing (ʼ777 Patent, col. 1:39-54). Existing test methods were described as increasing silicon area and manufacturing cost (ʼ777 Patent, col. 1:63-65).
• The Patented Solution: The invention provides a method to observe the internal mode register of a memory device by repurposing existing output pins. It uses a multiplexer to select between the normal data output from the memory array and the contents of the mode register, outputting the latter when no conventional data output is expected, such as during a power-down state ('777 Patent, Abstract; Fig. 3). This allows the internal state to be observed with "minimum silicon area" ('777 Patent, col. 2:24-26).
• Technical Importance: This approach provided a cost-effective way to test and debug increasingly complex memory components without requiring additional, dedicated test pins, a key consideration for integrated systems ('777 Patent, col. 2:26-31).

Key Claims at a Glance

• The complaint asserts infringement of at least independent claim 1 (Compl. ¶9).
• Claim 1 recites the following essential method steps:
  • storing a received value in the control register responsive to a first signal;
  • outputting the received value responsive to a second control signal when no output is expected from the memory device; and
  • disabling the operation of the memory device responsive to the second control signal subsequent to the step of outputting.
• The complaint does not explicitly reserve the right to assert other claims.

III. The Accused Instrumentality

Product Identification

• The accused product is the HTC One M9 Smartphone (Compl. ¶9).

Functionality and Market Context

• The complaint alleges that the HTC One M9 Smartphone is a "computing product" that contains infringing memory devices (Compl. ¶¶8, 10). Specifically, the complaint identifies a "Samsung 24Gb LPDDR4 SDRAM Part#: K3RG3G30MM-MGCH" and a "Qualcomm snapdragon 810 processor Part#: MSM8994" within the accused smartphone (Compl. p. 4). The infringement allegations focus on the operation of the LPDDR4 SDRAM according to the JEDEC industry standard, particularly its use of a mode register (MR4) to store and report temperature data via a Mode Register Read (MRR) command (Compl. ¶¶12, 20).

IV. Analysis of Infringement Allegations

The complaint provides a teardown photo of the accused product's internal board, identifying the specific SDRAM and processor components alleged to be involved in the infringement (Compl. p. 4).

'777 Patent Infringement Allegations

Identified Points of Contention

• Scope Questions: A primary question for the court may be whether the claim term "disabling the operation of the memory device" can be construed to read on the accused LPDDR4 standard's protocol that an "MRR operation must not be interrupted." The patent's specification discusses disabling the device in the context of a "POWERDOWN mode," which may suggest a more complete cessation of activity than what is alleged to occur during an MRR command sequence.
• Technical Questions: What evidence will show that the accused device's "Temperature Sensor Update" and "MRR command" correspond to the "first signal" and "second control signal" as contemplated by the patent? The patent discloses a circuit where control signals are tied to system-level states like "POWERDOWN" and "MRSET", and the court will need to determine if the accused functionality is equivalent.

V. Key Claim Terms for Construction

• The Term: "disabling the operation of the memory device"
• Context and Importance: The infringement allegation for the final step of claim 1 rests on the interpretation of this term. Practitioners may focus on this term because its construction could be dispositive of infringement; the defendant may argue that a temporary, uninterruptible read cycle is not equivalent to "disabling the operation" of the entire device.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claim language itself does not specify the degree or duration of the "disabling." A party could argue that any state in which normal memory read/write operations are temporarily suspended satisfies this limitation.
  • Evidence for a Narrower Interpretation: The specification links the inventive method to specific operational modes. It states that during a "POWERDOWN mode, the memory device 200 is disabled" and that the multiplexer outputs the mode register value when a "POWERDOWN" or "POWERUP" signal is active ('777 Patent, col. 4:37-38; col. 6:5-8). This may support an interpretation that "disabling" requires entering a non-operational state like power-down, rather than merely executing a specific command.

VI. Other Allegations

• Indirect Infringement: The complaint’s prayer for relief seeks an injunction against inducement and contributory infringement (Compl., Request for Relief ¶D). However, the factual allegations in the body of the complaint do not specify any acts supporting these claims, such as knowledge of the patent combined with specific intent to encourage infringement.
• Willful Infringement: The complaint does not contain an explicit allegation of willful infringement or facts to support a finding of willfulness, such as pre-suit knowledge of the ʼ777 Patent.

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

• A core issue will be one of claim scope: Can the term "disabling the operation of the memory device," which the '777 patent's disclosure associates with a "POWERDOWN mode," be properly construed to encompass the temporary, uninterruptible "Mode Register Read" (MRR) protocol defined by the LPDDR4 JEDEC standard?
• A key evidentiary question will be one of technical correspondence: Does the accused smartphone's alleged method of reading an internal temperature sensor via a standard JEDEC command sequence perform the same function, in substantially the same way, to achieve the same result as the specific circuit logic and test-mode methodology disclosed in the '777 patent?