DCT
1:23-cv-00307
Aptiv Tech AG v. Microchip Technology Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Aptiv Technologies Limited (Barbados)
- Defendant: Microchip Technology Inc (Delaware)
- Plaintiff’s Counsel: Potter Anderson & Corroon LLP; Morrison & Foerster LLP
- Case Identification: 1:23-cv-00307, D. Del., 06/23/2023
- Venue Allegations: Plaintiff alleges venue is proper in the District of Delaware because Defendant is a Delaware corporation with continuous and systematic contacts in the state, and because Defendant previously availed itself of the court in prior litigation against Plaintiff.
- Core Dispute: Plaintiff alleges that Defendant’s automotive-grade Universal Serial Bus (USB) hub integrated circuits infringe six patents related to managing dual-host USB connections in vehicle infotainment systems.
- Technical Context: The technology enables a vehicle's infotainment system, which typically acts as a primary USB host, to also connect to a smartphone that must act as a secondary USB host, a configuration required for modern features like Apple CarPlay.
- Key Procedural History: The complaint notes that the parties were previously involved in litigation, Microchip Technology Inc v. Aptiv Services US, LLC](https://ai-lab.exparte.com/case/ptab/IPR2024-00228/microchip-technology-inc-et-al-v-aptiv-technologies-ag-et-al), Case No. 17-cv-01194 (D. Del.) ("the 2017 Action"), where Defendant unsuccessfully accused Plaintiff's "Dual Role Hub" product of infringement. Plaintiff alleges Defendant became aware of the asserted patents, which were trial exhibits in that case, and that infringement was explicitly raised during pre-trial negotiations in December 2021.
Case Timeline
| Date | Event |
|---|---|
| 2013-09-26 | Earliest Priority Date for all Asserted Patents |
| 2013 | Apple announces plans for CarPlay feature |
| 2014-10 | Microchip learns Aptiv acquired Unwired Technology |
| 2015 | Aptiv begins shipping its Dual Role Hub product |
| 2015-03-26 | Patent application for '037 Patent family is first published |
| 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 |
| c. 2017 | Microchip's accused Sandia products enter the market |
| 2020-01-28 | U.S. Patent No. 10,545,899 issues |
| 2021-11-16 | U.S. Patent No. 11,176,072 issues |
| 2021-12 | Aptiv allegedly informs Microchip of infringement |
| 2022-04 | Trial occurs in the prior 2017 Action |
| 2023-06-08 | Microchip allegedly learns of '643 Patent allowance |
| 2023-06-20 | U.S. Patent No. 11,681,643 issues |
| 2023-06-23 | 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", issued April 11, 2017
The Invention Explained
- Problem Addressed: The patent's background describes the technical challenge that arises when a smartphone, which needs to act as a USB "host" for features like Apple CarPlay, is connected to a vehicle's infotainment system, which is also a USB host (Compl. ¶14; ’420 Patent, col. 3:5-10). Standard USB protocol prohibits two hosts from directly communicating, and retrofitting vehicles with specialized USB On-the-Go (OTG) controllers is described as costly and complex, negating the wiring-saving benefits of USB hubs (’420 Patent, col. 3:28-43).
- The Patented Solution: The invention proposes a USB hub module that contains both a standard USB hub and a "USB bridge" connected to a "USB routing switch" (’420 Patent, Abstract; Fig. 4). When a connected device operates in standard "device mode," the switch routes its signals through the hub directly to the vehicle's head unit. When the device must operate in "host mode," the switch reroutes its signals through the USB bridge, which manages the host-to-host communication and makes the device compatible with the vehicle's embedded host system (’420 Patent, col. 4:18-34).
- Technical Importance: This architecture allowed automakers to implement dual-host systems for new smartphone integration features using existing USB infrastructure without requiring significant hardware changes to the vehicle's main head unit (Compl. ¶17-18).
Key Claims at a Glance
- The complaint asserts independent claim 7 (Compl. ¶43).
- Essential elements of claim 7 include:
- An integrated circuit comprising a USB hub, a USB bridge, and a USB routing switch.
- The USB hub is interconnected to a first USB port (for the vehicle host) and a second USB port (for the consumer device).
- The USB routing 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, enabling bidirectional communication.
- The USB routing switch is also configured to connect the second port to the first port directly through the USB hub when the consumer device is in a USB device mode.
U.S. Patent No. 9,645,962 - "Flexible mobile device connectivity to automotive systems with USB hubs", issued May 9, 2017
The Invention Explained
- Problem Addressed: As with the related ’420 Patent, this patent addresses the inability of standard USB architecture to support direct communication between two USB hosts, such as a vehicle head unit and a smartphone running an application like CarPlay (’962 Patent, col. 3:5-10; Compl. ¶14).
- The Patented Solution: The patent describes an integrated circuit that includes a USB hub, a USB bridge, and a USB routing switch that can intelligently manage connection paths (’962 Patent, Abstract; Fig. 6). The system determines the operating mode of a connected consumer device and dynamically routes the data path either through the USB bridge (for host-to-host communication) or by bypassing the bridge and using the standard hub pathway (for host-to-device communication), allowing a single physical port to support both functionalities (’962 Patent, col. 4:18-34).
- Technical Importance: The invention provided a component-level solution that enabled persistent USB functionality on all vehicle ports while simultaneously supporting the demanding dual-host requirements of emerging smartphone integration platforms (Compl. ¶16).
Key Claims at a Glance
- The complaint asserts independent claim 14 (Compl. ¶62).
- Essential elements of claim 14 include:
- An integrated circuit comprising a USB hub, a USB bridge, and a USB routing switch.
- The USB hub has an upstream port and a plurality of downstream ports.
- The USB bridge is configured to connect the upstream USB port to a USB host.
- The USB routing switch connects a first downstream port to the upstream port through the USB bridge when a connected consumer device is acting as a USB host.
- The USB routing switch connects the first downstream port directly to the USB hub when the consumer device is configured to act as a standard USB device.
Multi-Patent Capsule: U.S. Patent No. 9,460,037
- Patent Identification: US9460037B2, "Flexible mobile device connectivity to automotive systems with USB hubs", issued October 4, 2016.
- Technology Synopsis: This patent, from the same family as the patents above, discloses a system for a vehicle that enables a consumer device to connect to the vehicle's embedded USB host in either a host mode or a device mode. The system uses a USB hub, a USB bridge, and a USB routing switch to dynamically select the appropriate data path based on the consumer device's role, solving the dual-host communication problem inherent in standard USB architecture (Compl. ¶14, ¶81).
- Asserted Claims: Independent claim 1 (Compl. ¶81).
- Accused Features: The complaint alleges that Microchip's Sandia products, when used in a vehicle system with an embedded USB host, form an infringing system that practices the claimed invention by using a "Multi-Host Endpoint Reflector" (the alleged bridge) to manage dual-host communications (Compl. ¶81c-e).
Multi-Patent Capsule: U.S. Patent No. 10,545,899
- Patent Identification: US10545899B2, "Flexible mobile device connectivity to automotive systems with USB hubs", issued January 28, 2020.
- Technology Synopsis: This patent claims a method for supporting data communication between a vehicle's USB host and a consumer device capable of dual-role (host/device) operation. The method involves providing a USB hub, a USB bridge, and a USB routing switch, and automatically configuring the switch to route communication through the bridge when the device is in host mode and to bypass the bridge when the device is in device mode, thereby maintaining compatibility (’899 Patent, Abstract; Compl. ¶100).
- Asserted Claims: Independent claim 1 (Compl. ¶100).
- Accused Features: The complaint alleges that Microchip's use and testing of its Sandia chips, which are advertised as supporting "host / device swapping," constitutes practice of the claimed method (Compl. ¶100a-d).
Multi-Patent Capsule: U.S. Patent No. 11,176,072
- Patent Identification: US11176072B2, "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 in a data system that includes an embedded USB host, a dual-role USB device, a hub, a bridge, and multiplexing switches. The method involves receiving signals from the USB device and, based on its operating mode (host or device), routing the signals either through the bridge and hub or through the hub alone, bypassing the bridge (’072 Patent, Abstract; Compl. ¶119).
- Asserted Claims: Independent claim 1 (Compl. ¶119).
- Accused Features: The complaint alleges that Microchip's Sandia chips, with their dual-role ports and "Multi-Host Endpoint Reflector" (alleged bridge), are used in a manner that practices the claimed method of signal routing (Compl. ¶119a-d).
Multi-Patent Capsule: U.S. Patent No. 11,681,643
- Patent Identification: US11681643B2, "Flexible mobile device connectivity to automotive systems with USB hubs", issued June 20, 2023.
- Technology Synopsis: This patent claims a method that includes providing first and second USB ports and a signal detection circuit. Based on a determination from the signal detection circuit that a consumer device is in host mode, USB signals are routed through a logic circuit connected to a USB bridge. If the device is in device mode, signals are routed via the logic circuit to bypass the bridge, with the patent noting that the hub and bridge have "different components and functionality" (’643 Patent, Abstract; Compl. ¶138).
- Asserted Claims: Independent claim 1 (Compl. ¶138).
- Accused Features: The complaint alleges that Microchip's Sandia chips, when used in an automotive session, include a signal detection circuit to determine the device mode and route signals through the "Multi-Host Endpoint Reflector" (alleged bridge) or the hub accordingly, thereby practicing the claimed method (Compl. ¶138b, e).
III. The Accused Instrumentality
Product Identification
The accused products are Microchip’s "Sandia" line of integrated circuits, specifically including models USB4912, USB4914, and USB4916 (Compl. ¶28).
Functionality and Market Context
The complaint describes the Accused Products as "Multi-Host Sandia chips" designed for automotive USB hub modules (Compl. ¶33). Their key functionality is allegedly enabled by a "Multi-Host Endpoint Reflector" that allows "USB data [to be] 'mirrored' between two USB hosts" (Compl. ¶43c). This capability is marketed as providing "architectures for smart phones that require host / device swapping in order to set-up an automotive session," a function the complaint identifies as essential for systems like Apple CarPlay (Compl. ¶49). The complaint alleges that these products entered the market around 2017 to compete with Aptiv's "Dual Role Hub" and that module makers using these chips now supply over half of the relevant automotive USB hub market in the United States (Compl. ¶34-35). The complaint includes a block diagram from a Microchip reference document that illustrates the internal architecture of the accused USB4916 hub, showing an "Upstream Port," a "Multi-Host Reflector," and multiple downstream "Multi-Host Port[s]" (Compl. p. 14).
IV. Analysis of Infringement Allegations
U.S. Patent No. 9,619,420 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 | The Accused Products are described as a "USB2.0 Hi-Speed Hub" with an "upstream port for host connection" (the first USB port) and a downstream port "with dual role (host/device) physical interfaces" (the second USB port). | ¶43b | col. 4:35-41 |
| a USB bridge interconnected to the USB hub | The Accused Products contain a "Multi-Host Endpoint Reflector" that allegedly functions as a "USB bridge between two hosts." The complaint includes a block diagram showing the reflector interconnected with the hub logic. | ¶43c-d; p. 14 | col. 4:42-45 |
| a USB routing switch interconnected to the USB bridge, the USB hub, and the second USB port... | The complaint alleges on information and belief that the ability to change the routing of USB connections is facilitated by a USB routing switch. | ¶43h | col. 4:38-41 |
| ...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...is in a USB host mode... | When a consumer device is in host mode, it is connected to the upstream port through the "Multi-Host Endpoint Reflector," allowing bidirectional communication between two hosts. A diagram is provided showing this "Host Mode" configuration. | ¶43g; p. 15 | col. 4:48-54 |
| ...wherein the USB routing switch is configured to connect the second USB port directly to the first USB port through the USB hub...when the consumer device...is in a USB device mode. | When a consumer device is in device mode, the port connects to the upstream port through the hub, bypassing the "Multi-Host Endpoint Reflector," allowing the vehicle head unit to communicate with the consumer device as a standard USB device. | ¶43f | col. 4:54-58 |
U.S. Patent No. 9,645,962 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." | ¶62b | col. 4:35-41 |
| a USB bridge interconnected to the USB hub and configured to connect the upstream USB port to a USB host | The Accused Products contain a "Multi-Host Endpoint Reflector" described as a "USB bridge between two hosts" that connects the upstream port (vehicle head unit) to a consumer device in host mode. | ¶62c | col. 4:42-45 |
| a USB routing switch interconnected to the USB bridge, the USB hub, and the plurality of downstream USB ports... | The complaint alleges on information and belief that the ability to change routing is facilitated by a USB routing switch interconnected to the reflector, hub, and ports. | ¶62h | col. 4:38-41 |
| ...wherein the USB routing switch is configured to connect a first downstream USB port...to the upstream USB port through the USB bridge when a consumer device...is the USB host... | When a consumer device connects in host mode, its port is connected to the upstream port via the "Multi-Host Endpoint Reflector," allowing the two hosts to communicate bidirectionally. A diagram illustrates this "After Automotive Session Initiation" state. | ¶62g; p. 21 | col. 4:48-54 |
| ...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 in device mode, its port connects to the upstream port through the hub without routing through the reflector, allowing standard host-initiated communication. | ¶62f | col. 4:54-58 |
Identified Points of Contention
- Scope Questions: The primary dispute may center on whether Microchip’s term "Multi-Host Endpoint Reflector" is definitionally equivalent to the patents' claimed term "USB bridge." The case may also raise the question of whether the functionality alleged by the complaint meets the structural requirement of a "USB routing switch" as recited in the claims, or if the accused chips achieve mode-switching through a different, non-infringing architecture.
- Technical Questions: The complaint alleges the existence of a "routing switch" on information and belief, supported by diagrams showing a change in data paths (Compl. p. 15). A key technical question is what evidence demonstrates that the accused chips contain a distinct component or circuit that functions as the claimed "switch," as opposed to having this functionality integrated differently within the hub or reflector logic.
V. Key Claim Terms for Construction
The Term: "USB bridge"
- Context and Importance: This term is central to the dispute, as the complaint's infringement theory equates this claimed element with the accused product's "Multi-Host Endpoint Reflector" (Compl. ¶43c). The outcome of the case may depend on whether this feature, as implemented by Microchip, falls within the legal construction of a "USB bridge."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification provides a functional description, stating the bridge's purpose is to process signals from a consumer device acting as a host to "render[ing] the consumer device compatible with the vehicle's embedded USB Host" (’420 Patent, col. 4:51-54). This language could support a construction that covers any component performing this compatibility function.
- Evidence for a Narrower Interpretation: Figure 7 of the patents shows a specific embodiment of a "Bridge Device" with a "Bridge Controller" and distinct IN/OUT endpoint buffers for "Device A" and "Device B" (’420 Patent, Fig. 7). A party could argue that this structural detail limits the term to devices with this specific architecture, potentially excluding the accused "Reflector."
The Term: "USB routing switch"
- Context and Importance: The claims require a "switch" that is "interconnected to" both the hub and the bridge, which actively routes the signal path. Practitioners may focus on this term because the complaint infers its existence from the product's dual-mode operation rather than identifying a component explicitly named a "routing switch" in Microchip's documentation (Compl. ¶43h).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the element functionally as a "switching device... that is configured to route each consumer port to either the Bridge or the Hub" (’420 Patent, col. 4:38-41). This suggests the term could cover any mechanism, whether a discrete component or integrated logic, that performs this selective routing function.
- Evidence for a Narrower Interpretation: The specification provides "USB analog multiplexing switches" as a specific example of the switching device (’420 Patent, col. 5:64-65). A party might argue this example narrows the scope of the claim term to a particular type of hardware implementation.
VI. Other Allegations
Indirect Infringement
The complaint alleges inducement based on Microchip's advertising, website, and reference documents, which allegedly instruct customers and auto manufacturers how to incorporate the Accused Products into infotainment systems in a manner that infringes (e.g., to enable Apple CarPlay) (Compl. ¶48, ¶67). Contributory infringement is alleged on the basis that the Accused Products are specifically designed to infringe and that their core "host / device swapping" feature has no substantial non-infringing use (Compl. ¶49, ¶68).
Willful Infringement
Willfulness is alleged based on Defendant’s knowledge of the patents since at least the prior 2017 litigation, where the patents were trial exhibits (Compl. ¶47, ¶66). The complaint also pleads pre-suit knowledge based on actual notice allegedly provided by Aptiv to Microchip in December 2021 (Compl. ¶38). For the most recent patent (’643), knowledge is alleged as of a June 8, 2023 scheduling conference (Compl. ¶142).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "USB bridge," as defined by the patents' specifications, be construed to cover the "Multi-Host Endpoint Reflector" technology in the accused chips, or are they technically and legally distinct structures?
- A central question of claim interpretation will be whether the accused products' integrated architecture contains a structure that meets the limitations of a "USB routing switch," or if they achieve a similar result through a fundamentally different technical implementation that falls outside the claim scope.
- The case will likely present a key evidentiary question regarding knowledge and intent: what evidence from the parties' prior litigation and business interactions will be used to establish whether Microchip's alleged infringement, particularly after being put on notice, was willful?