Optical Licensing LLC v. Mouser Electronics Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Optical Licensing LLC (Texas)
  • Defendant: Mouser Electronics, Inc. (Delaware)
  • Plaintiff’s Counsel: Chong Law Firm PA
• Case Identification: 1:21-cv-00306, D. Del., 02/26/2021
• Venue Allegations: Venue is alleged to be proper based on Defendant's incorporation in Delaware.
• Core Dispute: Plaintiff alleges that Defendant’s unspecified products infringe a patent related to memory devices capable of both synchronous and asynchronous data transfer.
• Technical Context: The technology concerns memory chip architecture, specifically a design that allows a single device to be configured for either clock-driven (synchronous) or self-timed (asynchronous) operation.
• Key Procedural History: A subsequent Inter Partes Review (IPR) proceeding, IPR2021-01593, was initiated against the patent-in-suit. On March 27, 2023, the U.S. Patent and Trademark Office issued a certificate cancelling all claims (1-18) of the patent. This post-filing event is dispositive, as the cancellation of all asserted claims extinguishes the basis for an infringement action.

Case Timeline

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

U.S. Patent No. 6,791,898 - Memory device providing asynchronous and synchronous data transfer

The Invention Explained

• Problem Addressed: The patent describes a field where memory devices were typically designed to be either exclusively synchronous (requiring a shared clock signal) or asynchronous (where a device initiates a transfer and waits for a response), limiting design flexibility (’898 Patent, col. 2:11-17).
• The Patented Solution: The invention is a memory device that includes a "configuration register" and "async/sync logic." This architecture allows the device to be set to operate in either a synchronous or asynchronous mode, providing functionality for both types of data transfer within a single chip (’898 Patent, Abstract; col. 4:36-48). The configuration register can be loaded with settings that determine not only the primary transfer mode but also other operational parameters like burst length and data access latency (’898 Patent, col. 4:63-67).
• Technical Importance: This unified design approach could offer greater versatility in system design, potentially allowing a single type of memory component to be used in a wider variety of applications or to replace multiple specialized memory chips (’898 Patent, col. 2:51-58).

Key Claims at a Glance

• The complaint asserts "one or more claims" without specifying them (’Compl. ¶10). The most fundamental are independent claims 1 (method) and 7 (device).
• Independent Claim 1 (Method):
  • determining a transfer mode between synchronous and asynchronous, wherein a configuration register specifies said transfer mode between synchronous and asynchronous;
  • determining whether said transfer mode is write or read; and
  • transferring data according to said determined mode.
• Independent Claim 7 (Device):
  • an array of memory cells for storing data;
  • an asynchronous/synchronous logic coupled to a plurality of control signals and said array of memory cells, wherein asynchronous transfer of data...is provided based upon a first state of said control signals and wherein synchronous transfer of data...is provided based upon a second state of said control signals; and
  • a configuration register coupled to said asynchronous/synchronous logic, wherein said first state...or said second state...is latched for access by said asynchronous/synchronous logic.
• The complaint incorporates by reference allegations for "Exemplary '898 Patent Claims" but does not identify them or any dependent claims (’Compl. ¶¶12-13).

III. The Accused Instrumentality

Product Identification

The complaint does not identify any specific accused products by name. It refers generally to "Exemplary Defendant Products" that are detailed in an unprovided "Exhibit 2" and to "numerous other devices" (’Compl. ¶¶10, 12).

Functionality and Market Context

The complaint does not provide sufficient detail for analysis of the functionality or market context of any accused instrumentality.
No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint references claim charts in an exhibit that was not filed with the public complaint; therefore, a claim chart summary cannot be provided (’Compl. ¶12). The narrative infringement theory is presented without specific factual support. The complaint alleges that Defendant directly infringes by making, using, selling, offering for sale, and/or importing the "Exemplary Defendant Products" (’Compl. ¶10). It further alleges that these unidentified products "practice the technology claimed by the '898 Patent" and "satisfy all elements" of the asserted claims, including through internal testing by Defendant's employees (’Compl. ¶¶11-12).

• Identified Points of Contention:
  • Scope Questions: Had the patent remained valid, a central question would concern the scope of "configuration register." The dispute would likely focus on whether this term can read on general-purpose registers in a standard memory controller or if it is limited to a dedicated hardware register for storing the async/sync mode as described in the patent's preferred embodiment.
  • Technical Questions: A key technical question would have been whether any accused products actually implement both true, distinct asynchronous and synchronous data transfer protocols as understood in the patent, or if they utilize other methods for performance flexibility that are technically different from what is claimed.

V. Key Claim Terms for Construction

Term: "configuration register" (Claim 1, 7)

• Context and Importance: This term is foundational to the claimed invention, as it is the mechanism that stores the selected operational mode. The breadth of its construction would be critical to determining infringement.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification states the "configuration register 340 may be a single register or may comprise a plurality of registers," suggesting the term is not limited to a single hardware component (’898 Patent, col. 4:60-62).
  • Evidence for a Narrower Interpretation: The patent describes a specific embodiment where the register (340) is a distinct block loaded via a specific timing sequence, which could support an argument that the term requires a dedicated structure separate from a device's general-purpose control registers (’898 Patent, Fig. 3; col. 6:58-67).

Term: "asynchronous/synchronous logic" (Claim 7)

• Context and Importance: This functional block is the "brains" of the invention that executes the mode selected in the configuration register. Its definition is crucial for assessing whether an accused device contains the claimed inventive concept.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent describes this element by its function: "controls operation in asynchronous and synchronous modes, based upon the state of various control signals" (’898 Patent, col. 4:36-38). This functional language could support a broad interpretation covering any logic that achieves this result.
  • Evidence for a Narrower Interpretation: Figure 3 depicts the "SYNC/ASYNC LOGIC" (355) as a discrete block receiving a specific set of inputs (CLK, /CE, /OE, etc.). A party could argue the term should be limited to a structure that operates on this particular set of signals, as shown in the primary embodiment (’898 Patent, Fig. 3).

VI. Other Allegations

Willful Infringement

The complaint does not allege willful infringement. It includes a prayer for relief that the case be declared "exceptional" under 35 U.S.C. § 285, but it does not plead any specific facts (such as pre-suit knowledge of the patent or egregious conduct) to support this request (’Compl. ¶E(i)).

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

1. Case Viability: The primary and likely dispositive issue is the legal effect of the IPR Certificate that cancelled all claims of the '898 patent. As claim cancellation in an IPR is effective from the date of patent grant, it retroactively extinguishes the property right underlying the infringement claim, rendering the lawsuit moot.
2. Pleading Sufficiency: Setting aside the claim cancellation, a threshold question would be one of pleading sufficiency. Does a complaint that fails to identify a single accused product or allege any specific facts tying a product feature to a claim limitation meet the plausibility pleading standard required by federal courts?
3. Distributor Liability: A further question, had the case proceeded, would involve distributor liability. The case targets Mouser Electronics, a major component distributor. A key factual dispute would be whether Mouser's acts of "offering to sell" and "selling" standard memory components manufactured by third parties could be proven to constitute direct infringement of the asserted claims.