DCT
1:22-cv-00151
Oasis Tooling Inc v. Siemens Industry Software Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Oasis Tooling, Inc. (Delaware)
- Defendant: Siemens Industry Software, Inc. (Delaware)
- Plaintiff’s Counsel: Potter Anderson & Corroon LLP
- Case Identification: [Oasis Tooling, Inc.](https://ai-lab.exparte.com/party/oasis-tooling-inc) v. [Siemens Industry Software, Inc.](https://ai-lab.exparte.com/party/siemens-industry-software-ltd), 1:22-cv-00151, D. Del., 02/01/2022
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendant is a Delaware corporation and is therefore a resident of the district.
- Core Dispute: Plaintiff alleges that Defendant’s Calibre Design Solutions suite, a software product for semiconductor chip verification, infringes patents related to methods for evaluating and comparing chip design data at the component ("cell") level.
- Technical Context: The technology operates in the Electronic Design Automation (EDA) field, providing tools to verify the integrity and consistency of complex semiconductor designs before the costly manufacturing process.
- Key Procedural History: The complaint alleges that Defendant had pre-suit knowledge of the asserted patents and technology through its 2017 acquisition of Mentor Graphics. Plaintiff alleges that a former Oasis employee familiar with the inventions joined Mentor Graphics in 2007 and that Oasis provided Mentor Graphics with technical white papers and an evaluation copy of its own patented software in 2013. These allegations form the basis for the claim of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2004-06-01 | Oasis Tooling, Inc. founded |
| 2007-12-15 | Key Oasis employee Sandeep Koranne quits Oasis |
| 2008-06-01 | Oasis informs Mr. Koranne (now at Mentor Graphics) of patent application filing |
| 2008-06-10 | '545 and '571 Patents Priority Date |
| 2010-03-23 | '545 Patent Issue Date |
| 2012-09-11 | '571 Patent Issue Date |
| 2013-09-01 | Oasis provides white paper summarizing inventions to Mentor Graphics |
| 2013-11-14 | Oasis provides evaluation copy of its software to Mentor Graphics |
| 2013-11-23 | Mentor Graphics confirms receipt of evaluation software |
| 2017-01-01 | Siemens acquires Mentor Graphics |
| 2022-02-01 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,266,571 - "Methods and Devices for Independent Evaluation of Cell Integrity, Changes and Origin in Chip Design for Production Workflow"
- Issued: September 11, 2012
The Invention Explained
- Problem Addressed: The patent's background describes the difficulty in tracking changes and verifying the integrity of individual components ("cells") within complex semiconductor designs. Conventional file-level comparison tools are ineffective because they are sensitive to non-functional changes (e.g., comments, formatting) and cannot identify functionally identical cells that have been renamed or are described in different data formats (U.S. Patent No. 7,685,545, col. 2:20-44).
- The Patented Solution: The invention provides a method and system for granular, cell-level analysis of chip design files. It involves parsing design data, normalizing it into a standardized "canonical form" to eliminate non-functional variations, and generating a unique digital signature, or "digest," for each cell. These digests can then be compared across different design files or libraries to reliably identify matches, differences, or the use of outdated components ('571 Patent, Abstract; '545 Patent, col. 5:61-col. 6:23). The process is illustrated in the patent's Figure 5, which depicts a flow from design data through a parser, normalizer, digester, and ultimately to a comparer and reporter ('545 Patent, Fig. 5).
- Technical Importance: This cell-level digest approach allows for a more robust and efficient method of verifying design integrity and managing component libraries in the semiconductor industry ('545 Patent, col. 3:1-10).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 16 (Compl. ¶49).
- Claim 1 (method) essential elements:
- Evaluating similarities and/or differences between design data for circuits in at least two files.
- Parsing the syntax of the design data within cells in the files.
- Normalizing the design data into canonical forms that reduce sensitivity to non-functional variations.
- Calculating and storing digests of the cells.
- Comparing the digests of cells from the first file to the digests of cells in the second file.
- Claim 16 (computer-readable medium) essential elements:
- Program code stored on a non-transitory medium comprising modules to perform the evaluation, including a parser, normalizer logic, a canonical forming module, a digester, a comparer, and a reporter.
U.S. Patent No. 7,685,545 - "Methods and Devices for Independent Evaluation of Cell Integrity, Changes and Origin in Chip Design for Production Workflow"
- Issued: March 23, 2010
The Invention Explained
- Problem Addressed: The '545 Patent shares a specification with the '571 Patent and addresses the same problem of effectively tracking and verifying individual design cells within a complex semiconductor workflow ('545 Patent, col. 2:20-44).
- The Patented Solution: The solution is substantively the same as that described in the '571 Patent, focusing on parsing, normalizing, and generating digests of design cells to enable granular comparison ('545 Patent, Abstract; Fig. 5).
- Technical Importance: The invention enables a new level of granular analysis for verifying the integrity of semiconductor designs ('545 Patent, col. 3:1-10).
Key Claims at a Glance
- The complaint asserts independent claim 1 for direct infringement and references claim 14 for indirect infringement (Compl. ¶¶71, 85).
- Claim 1 (method) essential elements:
- Evaluating similarities and/or differences between design data in at least two files.
- Parsing the syntax of the design data within cells.
- Normalizing the design data into canonical forms.
- Partitioning functionally significant design data from non-significant data.
- Calculating and storing digests of the cells including at least the functionally significant data.
- Comparing the digests of cells from the first file to digests of cells in the second file.
- Claim 14 (computer-readable medium) essential elements:
- Program code on a storage medium comprising a parser, normalizer logic, a digester module, a comparer module, and a reporter module.
III. The Accused Instrumentality
Product Identification
- The complaint identifies the "Calibre Design Solutions suite" as the Accused Products (Compl. ¶33). Specific infringing modules and features alleged include Calibre Physical Verification Platform, Calibre Pattern Matching, Calibre RealTime Platform, Calibre DBdiff, Calibre nmLVS, Calibre PERC, and the Auto-Waivers functionality (Compl. ¶¶35, 37, 38, 41).
Functionality and Market Context
- The Calibre suite is described as a "flagship product" for the physical verification of semiconductor chip designs, used across the industry by foundries, fabless companies, and integrated device manufacturers (Compl. ¶¶33, 36). Its core functionality involves performing verification tasks such as "layout vs. schematic" (LVS) comparisons, design rule checking (DRC), and identifying functional differences between design files ("DBdiff") (Compl. ¶¶37, 39, 43). The complaint alleges the software can compare a design file against a library of approved "waivers" for design rule violations, a process illustrated in a diagram showing a "Results Database" being compared against user waivers to create a "Master Waivers" database (Compl. ¶55; Compl. Exhibit 18 at 3).
IV. Analysis of Infringement Allegations
'571 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a method of evaluating similarities and/or differences between design data for circuits in at least two files | The Accused Products provide physical verification to evaluate similarities and differences between design data for circuits. | ¶53 | col. 4:20-24 |
| parsing syntax of the design data within cells in the files | The Accused Products parse design layout files into syntax trees. | ¶56 | col. 5:61-65 |
| normalizing the design data within the cells into canonical forms that reduce sensitivity of data analysis to non-functional variations in the design data within a cell | To produce canonical forms, non-functional variations such as comments and spaces are removed from the design data file. | ¶56 | col. 3:10-14 |
| calculating and storing digests of the cells including at least functionally significant design data | A "checksum" is generated and assigned to the parsed and normalized data, serving as a unique identifier for each cell. A screenshot shows a user interface with an option for "Checksum Annotation" (Compl. Exhibit 18 at 1). | ¶56, ¶58 | col. 6:4-10 |
| comparing the digests of the cells in the first file to the digests of the cells in the second file | The generated checksum is used to compare cells in first and second files, and the results are summarized in a report. | ¶58 | col. 6:24-32 |
'545 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a method of evaluating similarities and/or differences between design data for circuits in at least two files | The Accused Products perform methods to evaluate similarities and differences between design data for circuits. | ¶74 | col. 4:20-24 |
| parsing syntax of the design data within cells in the files | The Accused Products parse design layout files into canonical forms. | ¶77 | col. 5:61-65 |
| normalizing the design data... into canonical forms... | The Accused Products reduce sensitivity to non-functional variations in the design data. | ¶77 | col. 3:10-14 |
| partitioning functionally significant design data from non-significant data within the canonical forms | The complaint alleges that to produce canonical forms, non-functional data such as comments and spaces are removed, which implies a partitioning of data. | ¶56 | col. 3:15-20 |
| calculating and storing digests of the cells including at least the functionally significant design data | The Accused Products generate a "digest of the cell designs represented as unique checksum values." This is illustrated by a UI showing an option for "Checksum Annotation" (Compl. Exhibit 18 at 1). | ¶77 | col. 6:4-10 |
| comparing the digests of the cells in the first file to the digests of the cells in the second file | The generated checksum is used to compare cells in first and second files, such as comparing cells with design-rule violations against a library of approved waived designs. | ¶79 | col. 6:24-32 |
Identified Points of Contention
- Scope Questions: The infringement theory relies on the term "checksum" (Compl. ¶¶56, 77) meeting the claim limitation of a "digest." A central dispute may be whether a checksum, as implemented in the accused products, falls within the scope of "digest" as defined and used in the patents, which also mention more complex hash functions like CRC and MD5 ('545 Patent, col. 6:8-10).
- Technical Questions: The complaint alleges that "normalizing... into canonical forms" is accomplished by removing comments and spaces (Compl. ¶56). A potential point of contention is whether this alleged filtering process performs the same function as the more structured reorganization into a "canonical form" described in the patent specification, which includes sorting and partitioning by data type ('545 Patent, col. 7:25-33).
V. Key Claim Terms for Construction
The Term: "digest"
Context and Importance: This term is central to the infringement analysis, as Plaintiff equates it with the "checksum" functionality allegedly present in the accused software (Compl. ¶56, ¶77). The case may depend on whether the court construes "digest" to be a broad term inclusive of checksums or a narrower term requiring a specific class of algorithm, such as a cryptographic hash.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states that a "variety of hash functions can be used to create the digests, such as CRC, MD5 and others" ('545 Patent, col. 6:8-10). Because a Cyclic Redundancy Check (CRC) is a type of checksum, this language may support a construction where "digest" is not limited to cryptographic hashes.
- Evidence for a Narrower Interpretation: The patent repeatedly describes the goal of uniquely and reliably identifying cell equivalence ('545 Patent, col. 4:19-24). A party could argue that in this context, the mention of robust hashes like MD5 suggests the term "digest" should be construed to require a higher degree of collision resistance than a simple checksum might provide.
The Term: "canonical form"
Context and Importance: Plaintiff's infringement theory alleges this element is met by removing "comments, spaces, or other non-functional variations" (Compl. ¶56). Practitioners may focus on this term because its construction will determine whether this alleged filtering is sufficient to infringe, or if a more substantial structural transformation of the data is required.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The abstract provides a high-level definition: "Organizing the design data into canonical forms generally reduces the sensitivity of data analysis to variations in data that have no functional impact on the design" ('545 Patent, Abstract). Removing comments and spaces fits this general purpose.
- Evidence for a Narrower Interpretation: The detailed description suggests a more complex process beyond simple filtering, including sorting order-independent data and separating data by layer ('545 Patent, col. 7:25-33). A party could argue that to be "canonical," the form must be uniquely standardized according to a defined set of rules, not just stripped of certain elements.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement based on Defendant providing extensive documentation, tutorials, white papers, and support services that allegedly instruct and encourage customers to use the Accused Products in an infringing manner (Compl. ¶¶65-67). Contributory infringement is alleged on the basis that the accused software is not a staple article of commerce suitable for substantial noninfringing use because it necessarily includes the claimed functional modules (e.g., parser, digester, comparer) when installed (Compl. ¶64, ¶85).
- Willful Infringement: The willfulness allegation is based on alleged pre-suit and post-suit knowledge. Pre-suit knowledge is alleged to have been established no later than November 2013, through communications and a software evaluation between Plaintiff and Mentor Graphics, which Defendant acquired in 2017 (Compl. ¶¶27-30, 62). The complaint also states that continued infringement after receipt of the complaint constitutes further evidence of willfulness (Compl. ¶47).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "digest," which the patent specification links to hash functions like CRC and MD5, be construed to cover the "checksum" functionality alleged to be performed by the accused software? The resolution of this claim construction issue may be dispositive for infringement.
- A key evidentiary question will be one of functional operation: does the accused product’s alleged removal of comments and spaces from design files constitute the claimed step of "normalizing the design data into canonical forms," or is there a fundamental mismatch between this filtering process and the more structured data reorganization described in the patents?
- A central factual dispute, critical for potential enhanced damages, will concern imputed knowledge and intent: what specific knowledge of the asserted technology did Mentor Graphics possess from its interactions with Oasis in 2013, and can that knowledge be legally imputed to Siemens following its 2017 acquisition to establish pre-suit willfulness?