DCT
1:23-cv-00307
Aptiv Tech AG v. Microchip Technology Inc
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Aptiv Technologies AG (Switzerland)
- Defendant: Microchip Technology, Inc. (Delaware)
- Plaintiff’s Counsel: Potter Anderson & Corroon LLP; Morrison & Foerster LLP
- Case Identification: 1:23-cv-00307, D. Del., 11/08/2023
- Venue Allegations: Venue is alleged based on Defendant’s incorporation in Delaware, its continuous and systematic contacts with the state, and its prior litigation in the district which involved the technology at issue.
- Core Dispute: Plaintiff alleges that Defendant’s automotive USB hub integrated circuits infringe six patents related to technology for managing communications between a vehicle’s infotainment system and a consumer device, such as a smartphone running Apple CarPlay.
- Technical Context: The technology addresses the challenge of integrating consumer devices that can act as a USB host (like a smartphone) into automotive systems that have their own embedded USB host, a scenario not natively supported by the standard USB protocol.
- Key Procedural History: The complaint references prior litigation between the parties (the "2017 Action"), alleging that Defendant became aware of the Asserted Patents when they were presented as trial exhibits. This history is cited as a basis for Defendant’s knowledge and alleged willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2013-09-26 | Earliest Priority Date for all Asserted Patents |
| 2014-10-01 | Microchip allegedly learned of Aptiv's acquisition of Unwired |
| 2015-03-26 | Publication of patent application leading to the '037 Patent |
| 2016-10-04 | U.S. Patent No. 9,460,037 Issues |
| 2017-04-11 | U.S. Patent No. 9,619,420 Issues |
| 2017-05-09 | U.S. Patent No. 9,645,962 Issues |
| 2020-01-28 | U.S. Patent No. 10,545,899 Issues |
| 2021-11-16 | U.S. Patent No. 11,176,072 Issues |
| 2021-12-01 | Aptiv allegedly informed Microchip of infringement in pre-trial negotiations |
| 2023-06-20 | U.S. Patent No. 11,681,643 Issues |
| 2023-11-08 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,619,420 - "Flexible Mobile Device Connectivity to Automotive Systems with USB Hubs"
The Invention Explained
- Problem Addressed: The patent describes a conflict in vehicle infotainment systems where the vehicle’s head unit is a USB Host, but modern consumer devices (e.g., a smartphone running Apple CarPlay) also need to function as a USB Host to control accessories. Standard USB protocol does not permit two Hosts to connect directly, and prior solutions like USB On-the-Go ("OTG") were described as having disadvantages, such as requiring dedicated wiring that negates the cost-saving benefits of using USB hubs ('420 Patent, col. 3:5-39).
- The Patented Solution: The invention proposes an architecture, typically within a USB hub module, that includes a standard USB hub, a "USB Host to Host Bridge," and a switching mechanism. When a connected consumer device operates in standard "device mode," its signals are routed through the normal USB hub path. When the device operates in "host mode," the switching mechanism reroutes its signals through the USB bridge, which processes the communications to make the two USB Hosts compatible ('420 Patent, Abstract; col. 4:16-34).
- Technical Importance: This solution allows a vehicle’s standard, non-OTG embedded USB Host to seamlessly communicate with dual-role consumer devices, enabling features like CarPlay without requiring costly changes to the vehicle's head unit or additional dedicated cabling ('420 Patent, col. 4:7-15).
Key Claims at a Glance
- The complaint asserts independent claim 7.
- The essential elements of claim 7 are:
- An integrated circuit, comprising:
- a USB hub interconnected to a first USB port (for a USB host) and a second USB port (for a consumer device);
- a USB bridge interconnected to the USB hub; and
- a USB routing switch interconnected to the bridge, hub, and second USB port, where the switch is configured to:
- connect the second port to the first port through the USB bridge when the consumer device is in a USB host mode, providing bidirectional communication; and
- connect the second port directly to the first port through the USB hub when the consumer device is in a USB device mode, allowing it to only respond to the USB Host.
U.S. Patent No. 9,645,962 - "Flexible Mobile Device Connectivity to Automotive Systems with USB Hubs"
The Invention Explained
- Problem Addressed: The '962 Patent addresses the same technical problem as the '420 Patent: enabling connectivity between a vehicle’s embedded USB Host and a consumer device that also needs to act as a USB Host ('962 Patent, col. 3:5-39).
- The Patented Solution: The patent describes the same core solution: a system architecture using a USB hub, a USB bridge, and a routing switch to intelligently manage communications based on whether the consumer device is operating in host or device mode ('962 Patent, Abstract; col. 4:16-34).
- Technical Importance: This technology facilitates the integration of advanced smartphone-based infotainment platforms into vehicles using existing USB hub architectures, thereby avoiding more complex and costly hardware redesigns ('962 Patent, col. 4:7-15).
Key Claims at a Glance
- The complaint asserts independent claim 14.
- The essential elements of claim 14 are:
- An integrated circuit, comprising:
- a USB hub with an upstream port and a plurality of downstream ports;
- a USB bridge interconnected to the hub and configured to connect the upstream port to a USB host; and
- a USB routing switch interconnected to the bridge, hub, and downstream ports, where the switch is configured to:
- connect a first downstream port to the upstream port through the USB bridge when a connected consumer device is the USB host and configured for bidirectional communication; and
- connect the first downstream port directly to the USB hub when the consumer device is configured to only respond to communication from the upstream port.
Multi-Patent Capsule: U.S. Patent No. 9,460,037
- Patent Identification: U.S. Patent No. 9,460,037, "Flexible Mobile Device Connectivity to Automotive Systems with USB Hubs," issued October 4, 2016.
- Technology Synopsis: This patent, from the same family, claims a system disposed within a vehicle that embodies the dual-mode USB connectivity solution. It describes the combination of an embedded USB Host, a USB hub, a USB bridge, and a routing switch that directs traffic based on the consumer device’s role (Compl. ¶¶86.b-e).
- Asserted Claims: Independent claim 1 is asserted (Compl. ¶86).
- Accused Features: The complaint alleges that systems incorporating Defendant's Accused Products, such as a vehicle infotainment system, infringe this patent. The "Multi-Host Endpoint Reflector" in the Accused Products is alleged to be the claimed "USB Bridge" (Compl. ¶¶86.d-e).
Multi-Patent Capsule: U.S. Patent No. 10,545,899
- Patent Identification: U.S. Patent No. 10,545,899, "Flexible Mobile Device Connectivity to Automotive Systems with USB Hubs," issued January 28, 2020.
- Technology Synopsis: This patent claims a method of supporting data communication between a USB host and a dual-role consumer device. The claimed steps involve providing the hub, bridge, and routing switch, and automatically configuring the switch to route communication through the bridge when the device is in host mode and directly through the hub when in device mode (Compl. ¶¶107.b-d).
- Asserted Claims: Independent claim 1 is asserted (Compl. ¶107).
- Accused Features: The Accused Products are alleged to be used in a manner that performs the claimed method steps, with the "Multi-Host Endpoint Reflector" enabling the step of routing through a bridge (Compl. ¶107.c).
Multi-Patent Capsule: U.S. Patent No. 11,176,072
- Patent Identification: U.S. Patent No. 11,176,072, "Flexible Mobile Device Connectivity to Automotive Systems with USB Hubs," issued November 16, 2021.
- Technology Synopsis: This patent claims a method of providing efficient communications among USB components. The claimed steps include receiving a first USB signal when the device is in host mode and routing it through a USB bridge, and receiving a second signal when the device is in device mode and routing it through the USB hub, bypassing the bridge (Compl. ¶128.d).
- Asserted Claims: Independent claim 1 is asserted (Compl. ¶128).
- Accused Features: The use of the Accused Products is alleged to practice the claimed method, distinguishing between routing through the "Multi-Host Endpoint Reflector" (the alleged bridge) in host mode and bypassing it in device mode (Compl. ¶¶128.e-f).
Multi-Patent Capsule: U.S. Patent No. 11,681,643
- Patent Identification: U.S. Patent No. 11,681,643, "Flexible Mobile Device Connectivity to Automotive Systems with USB Hubs," issued June 20, 2023.
- Technology Synopsis: This patent claims a method comprising providing ports and a signal detection circuit. The method involves routing signals through a routing logic circuit connected to a USB bridge when a signal detection circuit determines the device is in host mode, and routing signals via logic connected directly to the hub (bypassing the bridge) when the device is in device mode (Compl. ¶149.b).
- Asserted Claims: Independent claim 1 is asserted (Compl. ¶149).
- Accused Features: The Accused Products are alleged to include a signal detection circuit and routing logic that perform the claimed steps of mode-dependent routing, with the "Multi-Host Endpoint Reflector" again constituting the claimed USB bridge (Compl. ¶¶149.e-f).
III. The Accused Instrumentality
Product Identification
- The Accused Products are Defendant’s "Sandia" line of automotive hub chips, including at least models USB4912, USB4914, and USB4916 (Compl. ¶29).
Functionality and Market Context
- The Accused Products are integrated circuits designed for use in automotive USB hubs (Compl. ¶29). According to the complaint, they are marketed as providing "architectures for smart phones that require host / device swapping in order to set-up an automotive session," a function central to platforms like Apple CarPlay (Compl. ¶50). The complaint alleges these chips contain a feature Defendant calls a "Multi-Host Endpoint Reflector," which allegedly allows "USB data [to be] 'mirrored' between two USB hosts" to execute transactions (Compl. ¶44.c). The complaint presents a block diagram from a Microchip reference document that shows the "Multi-Host Endpoint Reflector" as a component interconnected with the Hub Controller Logic (Compl. ¶44.d).
IV. Analysis of Infringement Allegations
'420 Patent Infringement Allegations
| Claim Element (from Independent Claim 7) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a USB hub configured to be interconnected to a first USB port connected to a USB host and a second USB port connected to a consumer device | Each Accused Product is described as a "USB2.0 Hi-Speed Hub" with an "upstream port for host connection" (first port) and at least one "downstream port with dual role (host/device)" (second port). | ¶44.b | col. 4:18-22 |
| a USB bridge interconnected to the USB hub | The products contain a "Multi-Host Endpoint Reflector" that allegedly functions as a USB bridge to allow data to be mirrored between two USB hosts. | ¶44.c | col. 4:26-34 |
| a USB routing switch interconnected to the USB bridge, the USB hub, and the second USB port, wherein the USB routing switch is configured to connect the second USB port to the first USB port through the USB bridge... when the consumer device connected to the second USB port is in a USB host mode... | When a consumer device connects in host mode, the multi-host port is connected to the upstream port through the "Multi-Host Endpoint Reflector," allowing the two hosts to communicate bidirectionally. | ¶44.g | col. 4:35-48 |
| and wherein the USB routing switch is configured to connect the second USB port directly to the first USB port through the USB hub, thereby only responding to communication initiated by the USB Host when the consumer device... is in a USB device mode. | When a consumer device connects in device mode, the multi-host port connects to the upstream port through the hub without routing through the "Multi-Host Endpoint Reflector," allowing it to act as a standard USB device. | ¶44.f | col. 4:48-57 |
'962 Patent Infringement Allegations
| Claim Element (from Independent Claim 14) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a USB hub configured to be interconnected to an upstream USB port and a plurality of downstream USB ports... | The Accused Products are described as a "USB2.0 Hi-Speed Hub" with an "upstream port for host connection" and "multiple downstream USB ports." | ¶65.b | col. 4:18-22 |
| a USB bridge interconnected to the USB hub and configured to connect the upstream USB port to a USB host | The products' "Multi-Host Endpoint Reflector" allegedly functions as a USB bridge to connect two hosts, such as a vehicle head unit (via the upstream port) and an iPhone in host mode. A block diagram is provided showing the reflector interconnected to the hub logic. | ¶65.c-d | col. 4:26-34 |
| a USB routing switch... configured to connect a first downstream USB port... to the upstream USB port through the USB bridge when a consumer device connected to the first downstream USB port is the USB host... | When a consumer device connects to a multi-host port in host mode, it connects to the upstream port through the "Multi-Host Endpoint Reflector," allowing bidirectional communication between the two hosts. A diagram illustrates this host mode routing. | ¶65.g | col. 4:35-48 |
| and wherein the USB routing switch is configured to connect the first downstream USB port directly to the USB hub when the consumer device... is configured to only respond to communication from the upstream USB port... | When a consumer device connects to a multi-host port in device mode, it connects to the hub without routing through the "Multi-Host Endpoint Reflector," allowing it to respond to the vehicle host. | ¶65.f | col. 4:48-57 |
- Identified Points of Contention:
- Scope Questions: The core of the dispute may turn on whether Defendant’s "Multi-Host Endpoint Reflector" technology falls within the scope of the term "USB bridge" as used in the patents. A related question is whether the Accused Products' logic for handling different device modes constitutes a "USB routing switch" as claimed, or if there is a functional or structural distinction.
- Technical Questions: The complaint relies on Defendant's marketing materials and high-level block diagrams, such as the one showing logic for a "Multi-Host Endpoint Reflector" (Compl. ¶¶44.d, 65.c), to support its infringement theory. A key technical question will be what evidence demonstrates that the "Reflector" performs the specific signal processing and routing functions required by the claims, rather than a different technical operation that achieves a similar outcome.
V. Key Claim Terms for Construction
The Term: "USB bridge"
Context and Importance: This term is central to the novelty of the invention and appears in the asserted claims of multiple patents. The complaint's infringement theory hinges on equating this term with Defendant's "Multi-Host Endpoint Reflector" (Compl. ¶44.c). Practitioners may focus on whether the technical operation of the "Reflector" matches the description of the "bridge" in the patent specification.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The abstract describes the bridge’s function broadly as "processing" signals between the consumer device and the embedded USB Host to make them compatible ('420 Patent, Abstract). The specification states the bridge "effectively" controls the switching device based on signals from the Head Unit, suggesting a functional definition ('420 Patent, col. 4:44-50).
- Evidence for a Narrower Interpretation: The detailed description and figures show a specific "Host to Host Bridge" architecture comprising a "Bridge Controller" and "Endpoint Buffers" (e.g., '420 Patent, Fig. 6). A defendant may argue that the term "USB bridge" should be construed as being limited to this more specific embodiment.
The Term: "USB routing switch"
Context and Importance: This element performs the critical function of directing communication through either the USB bridge (for host mode) or the standard USB hub (for device mode). The complaint alleges this function is present in the accused chips based on their ability to handle both modes (Compl. ¶44.e). The dispute may focus on whether the Accused Products contain a structure that meets this limitation or achieve the result through a different mechanism.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims define the switch functionally, based on its configuration to connect a port through the bridge in one mode and directly to the hub in another ('420 Patent, cl. 7). This could support a construction that covers any component or logic that performs this function.
- Evidence for a Narrower Interpretation: Figure 4 of the patent depicts "USB Routing Multiplexing Switches" as a distinct block separate from the USB hub and USB bridge ('420 Patent, Fig. 4). A defendant may argue this suggests the "switch" is a discrete structural element, not merely an abstract function that could be integrated into the hub or bridge logic.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement by asserting that Defendant encourages its customers (automotive hub module manufacturers) and end users to infringe by advertising the Accused Products for use in systems requiring host/device swapping, such as for Apple CarPlay (Compl. ¶¶49, 70). It further alleges contributory infringement by stating the Accused Products are specifically designed to infringe and do not have substantial non-infringing uses (Compl. ¶¶50, 71).
- Willful Infringement: Willfulness is alleged based on Defendant’s purported knowledge of the Asserted Patents since at least the April 2022 trial in the prior "2017 Action," where the patents were trial exhibits (Compl. ¶¶48, 69). The complaint also alleges Defendant followed the progress of Plaintiff's patent applications (Compl. ¶¶46, 67).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: does Defendant’s "Multi-Host Endpoint Reflector" technology, as implemented in its chips, constitute a "USB bridge" as that term is construed from the patent's specification and claims, or is it a technically distinct solution?
- A second central question will be one of structural and functional mapping: does the logic within the Accused Products that manages host-mode and device-mode connections meet the limitations of a "USB routing switch," or can Defendant demonstrate a fundamental mismatch between its implementation and the structure or function required by the claims?
- A key evidentiary question will be one of pre-suit knowledge: what was the extent of Defendant's knowledge of the Asserted Patents from the prior litigation, and could that knowledge support a finding that any infringement was willful?