DCT

1:23-cv-00353

Memory Tech LLC v. PNY Tech Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:23-cv-00353, D. Del., 03/28/2023
  • Venue Allegations: Venue is alleged to be proper in the District of Delaware because the Defendant is a Delaware corporation and therefore resides in the district for purposes of venue.
  • Core Dispute: Plaintiff alleges that Defendant’s High Capacity (HC) and Extended Capacity (XC) SD and microSD memory cards infringe eight patents related to memory card addressing, power management, interface signaling, and performance optimization.
  • Technical Context: The technology at issue involves fundamental operations of flash memory cards that comply with the widely adopted Secure Digital (SD) industry standards.
  • Key Procedural History: The complaint details an extensive pre-suit history, alleging that Plaintiff provided Defendant with notice of infringement and offered a license on reasonable and non-discriminatory (RAND) terms on multiple occasions over seven years, beginning in at least 2015. Plaintiff also alleges it provided detailed claim charts to Defendant, and that it has successfully licensed the asserted patents to "nearly every major flash memory manufacturer in the world."

Case Timeline

Date Event
2003-03-26 Priority Date for RE45,542 Patent
2004-11-17 Priority Date for RE45,486 and ’469 Patents
2008-02-28 Priority Date for ’180, ’850, ’486, ’094, and ’079 Patents
2009-07-21 U.S. Patent No. 7,565,469 Issues
2012-11-06 U.S. Patent No. 8,307,180 Issues
2015-01-01 Plaintiff alleges notice of infringement to Defendant began "at least 2015"
2015-04-21 U.S. Patent No. RE45,486 Issues
2015-06-02 U.S. Patent No. RE45,542 Issues
2015-06-23 U.S. Patent No. 9,063,850 Issues
2016-06-14 U.S. Patent No. 9,367,486 Issues
2018-03-08 Plaintiff sends follow-up letter to Defendant
2020-01-21 U.S. Patent No. 10,540,094 Issues
2020-06-12 Plaintiff sends letter providing notice of infringement, including for the ’486 and ’094 Patents
2020-06-30 Parties execute a Non-Disclosure Agreement
2020-07-31 Plaintiff begins sending claim charts to Defendant
2021-11-23 U.S. Patent No. 11,182,079 Issues
2022-03-10 Plaintiff resends claim charts, including for the ’094 and ’079 Patents
2023-03-28 Complaint Filed

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

U.S. Reissue Patent No. RE45,486 - "Method for Addressing a Memory Card, a System Using a Memory Card, and a Memory Card"

The Invention Explained

  • Problem Addressed: The patent describes a problem where memory card standards, such as the MultiMediaCard standard, set an upper limit on the addressable memory capacity (e.g., 4 gigabytes) based on a fixed number of bits for addressing. As memory technology advanced, cards could physically store more data than the standard could address, rendering the excess capacity unusable. (RE45,486 Patent, col. 2:17-40).
  • The Patented Solution: The invention provides a method to overcome this limitation by using an "expanded addressing method." It proposes using a parameter stored on the memory card itself—referred to as "addressing data"—to indicate to a host system that the card supports an addressing scheme capable of accessing a larger number of memory locations than the basic method. This can involve addressing larger blocks of data (sectors) with a single address or increasing the number of bits used for an address. (RE45,486 Patent, col. 3:1-12, col. 3:52-64).
  • Technical Importance: This approach allows for backward compatibility while enabling memory card standards to evolve and support progressively higher storage capacities beyond their original design limits. (RE45,486 Patent, col. 9:5-24).

Key Claims at a Glance

  • The complaint asserts independent claims 9 and 23. (Compl. ¶41).
  • Independent Claim 9 requires a system comprising:
    • A memory card with at least one stored parameter for calculating the number of memory locations.
    • The system is configured to use "addressing data" stored on the card.
    • The addressing data is "indicative of at least one addressing method supported" and indicates either a "basic addressing method or an expanded addressing method."
    • The expanded method enables addressing a larger number of memory locations than the basic method.
  • Independent Claim 23 requires a memory card configured for use in the system of claim 9.
  • The complaint also asserts dependent claims 6, 10, 26, 27, 30, and 31. (Compl. ¶41).

U.S. Reissue Patent No. RE45,542 - "Method and a System for Determining the Power Consumption in Connection with an Electronic Device, and an Electronic Device"

The Invention Explained

  • Problem Addressed: The patent notes that different peripheral devices (like memory cards) have different power needs, and host devices (like mobile phones) must be designed to supply power for the most demanding peripherals. This can lead to inefficiently large and costly power regulators in the host device, especially when used with low-power peripherals. (RE45,542 Patent, col. 2:1-20).
  • The Patented Solution: The invention discloses a system where a host device and a peripheral device negotiate an appropriate power consumption level. The peripheral stores at least a "default value" and a "limiting value" for its power consumption. The host device can query the peripheral for these values and then send a command to set the peripheral's maximum power consumption to a suitable level between those two values. (RE45,542 Patent, col. 3:1-15; FIG. 3).
  • Technical Importance: This technology enables dynamic power management in portable electronics, allowing a host device to efficiently supply only the necessary power to a connected peripheral, which can extend battery life and reduce component costs. (RE45,542 Patent, col. 3:40-47).

Key Claims at a Glance

  • The complaint asserts independent claims 23 and 28. (Compl. ¶47).
  • Independent Claim 23 requires an electronic device (host) comprising:
    • A connector for a peripheral device.
    • A power supply.
    • A power gauge to determine power consumption.
    • Configuration to set the peripheral's power consumption based on a "default value" and a "limiting value" stored on the peripheral.
  • Independent Claim 28 requires a peripheral device comprising:
    • A memory storing a "default value" and a "limiting value" for power consumption.
    • A connector to couple to a host device.
    • Means for setting its maximum power consumption in response to information received from the host.
  • The complaint also asserts dependent claims 18, 29, 33, 37, 38, and 40. (Compl. ¶47).

U.S. Patent No. 7,565,469 - "Multimedia Card Interface Method, Computer Program Product and Apparatus"

  • Technology Synopsis: The patent addresses inefficiencies in data transfer protocols for memory cards. It discloses a method to change the meaning of a single "busy" signal during a multi-block data transfer, allowing it to first indicate "buffer ready" for intermediate blocks and then indicate "programming complete" after the final block, which avoids the need for the host device to waste processing cycles by repeatedly polling the card's status. (’469 Patent, Abstract; col. 2:37-51).
  • Asserted Claims: Independent claims 1 and 19 are asserted. (Compl. ¶53).
  • Accused Features: The complaint alleges that the Accused Products, by complying with the SD Standard, implement this dual-mode busy signaling protocol. (Compl. ¶53, Ex. 11).

U.S. Patent Nos. 8,307,180; 9,063,850; 9,367,486; 10,540,094; and 11,182,079 - "Extended Utilization Area for a Memory Device"

  • Technology Synopsis: This patent family addresses the problem that memory devices are typically optimized for a single type of data access (e.g., large sequential reads for video playback), making them inefficient for other types (e.g., small random writes for operating system tasks). The invention allows a host device to send a command to the memory card to activate one of several pre-defined "access profiles," thereby reconfiguring the card's operation in real-time to optimize it for the specific task at hand. (’180 Patent, Abstract; col. 1:42-53).
  • Asserted Claims: Claims 1 (independent) of the ’180, ’850, ’094, and ’079 patents are asserted; claims 8 (independent) and 10 (independent) of the ’486 patent are asserted, along with numerous dependent claims across the family. (Compl. ¶¶59, 65, 71, 77, 83).
  • Accused Features: The complaint alleges that the various performance modes and classes defined by the SD Standard and implemented in the Accused Products correspond to the claimed "access profiles." (Compl. ¶¶59, 65, 71, 77, 83, Exs. 12-16).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are PNY-branded High Capacity (HC) SD Cards and Extended Capacity (XC) SD Cards, including both standard SD and microSD form factors, that are compliant with SD Specification Version 2.0 or higher. (Compl. ¶7). A non-exhaustive list of accused product lines includes "Elite," "Elite-X," "Pro Elite," and others. (Compl. ¶7).

Functionality and Market Context

The Accused Products are flash memory cards used for digital data storage in a wide range of consumer electronics such as digital cameras, smartphones, and computers. (Compl. ¶7). The complaint alleges that these products function in accordance with the SD Standard, an industry-wide specification for memory cards. (Compl. ¶5). The core of the plaintiff's case is the allegation that compliance with this standard necessitates the use of its patented technologies. (Compl. ¶¶28, 30, 38).

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint.

RE45,486 Infringement Allegations

The complaint alleges that to provide storage capacities greater than 2GB, the Accused HC and XC SD Cards must implement a memory addressing scheme that goes beyond the original standard, which corresponds to the claimed "expanded addressing method." (Compl. ¶7, Ex. 9). The narrative theory is that information stored in the Accused Products' Card-Specific Data (CSD) register, which defines the card's capacity and access characteristics, constitutes the claimed "parameter" and "addressing data." (RE45,486 Patent, col. 3:52-59). A host system reads this data to understand how to address the full capacity of the card, allegedly practicing the system claims. (RE45,486 Patent, Claim 9).

  • Identified Points of Contention: A central question may be one of technical mapping: does the specific data structure and use of the CSD register in the SD Standard directly align with the claim limitations of an "addressing data" that indicates a choice between a "basic" and "expanded" method, as those terms would be construed from the patent? A defendant may argue that the SD Standard's evolution represents a different technical approach rather than the specific two-mode selection system claimed.

RE45,542 Infringement Allegations

The complaint's infringement theory rests on the power management protocols defined in the SD Standard. (Compl. ¶47, Ex. 10). It alleges that the Accused Products store and communicate their power requirements to host devices, which then set an operating power level. This functionality is alleged to meet the claim elements requiring the storage of a "default value" and a "limiting value" for power consumption and a mechanism for setting the operating power based on those values. (RE45,542 Patent, Claim 28).

  • Identified Points of Contention: A key legal and technical question will be one of definitional scope: do the various "power classes" and current limits specified in the SD Standard correspond to the patent's specific "default value" and "limiting value"? A defendant could argue that the standard defines multiple discrete power modes, which is a technically distinct implementation from the two-value range-based system described and claimed in the patent specification. (RE45,542 Patent, col. 3:1-9).

V. Key Claim Terms for Construction

The Term: "expanded addressing method" (RE45,486, Claim 9)

  • Context and Importance: The definition of this term is critical for the ’RE486 patent. The plaintiff's infringement theory appears to depend on construing this term to cover the sector-based addressing scheme used in SDHC and SDXC cards, as distinct from the byte-based addressing of older SD cards. Practitioners may focus on this term to determine if it is limited to the specific solution for the MultiMediaCard standard described in the specification or if it broadly covers any method that extends a prior addressing limit.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent Summary of the Invention describes the invention more generally as one where "two or more memory locations are addressed with one address, and/or the number of bits that can be used in an address is increased." (RE45,486 Patent, col. 3:8-12).
    • Evidence for a Narrower Interpretation: The Background section focuses heavily on the specific parameters and 4-gigabyte limitation of the MultiMediaCard standard. (RE45,486 Patent, col. 2:27-67). A defendant may argue that the term should be understood in that specific technical context.

The Term: "access profiles" ('180 patent family, e.g., '180 Patent, Claim 1)

  • Context and Importance: This term is central to the five patents in the '180 family. Infringement hinges on whether the standard performance modes and speed classes of the Accused SD Cards (e.g., "High Speed" mode, "UHS" speed classes) constitute "access profiles" that are "activated" by a "command" from a host.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification states the profiles "may correspond to at least one of a random and a sequential mode of access." (’180 Patent, col. 2:7-9). This language may support an argument that any command that switches the card between modes optimized for different access types falls within the claim.
    • Evidence for a Narrower Interpretation: The detailed description explains the profiles as being used to optimize for specific "application program" needs and describes suspending one profile to activate another for a different task (e.g., suspending a "large sequential" profile for a "short random" profile). (’180 Patent, col. 6:1-34; FIG. 3). This may support a narrower construction requiring application-specific, dynamically swappable configurations rather than general-purpose, semi-permanent speed modes.

VI. Other Allegations

Indirect Infringement

The complaint alleges inducement of infringement for all asserted patents. The basis for this allegation is that Defendant provides the Accused Products to third parties (e.g., customers, distributors) and encourages their infringing use through user manuals, advertising, providing lists of retailers, and offering technical support. (Compl. ¶¶42, 48, 54, 60, 66, 72, 78, 84).

Willful Infringement

Willfulness is alleged for all asserted patents. The complaint provides a detailed timeline of pre-suit communications, alleging Defendant had knowledge of the patents and their infringement since at least 2015 for the first group of patents, and since 2020 and 2022 for the newer patents. The complaint alleges that Plaintiff provided Defendant with specific notice, offers for a RAND license, and detailed infringement claim charts, but Defendant continued its allegedly infringing conduct. (Compl. ¶¶28-39, 45, 51, 57, 63, 69, 75, 81, 87).

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

  • A central question will be one of standards mapping: does compliance with the relevant SD Card standards (e.g., SD Specification v2.0 and higher) necessarily require practicing the inventions as claimed in the Asserted Patents? The resolution will likely depend on expert testimony regarding whether the protocols and data structures of the SD standard can be distinguished from the specific limitations recited in the patent claims.
  • The case may also turn on a question of claim scope: can terms rooted in the patents' descriptions of specific problems and solutions, such as "expanded addressing method" (RE45,486) and "access profiles" (’180 family), be construed broadly enough to read on the standardized features and operating modes of the Accused Products?
  • A key evidentiary issue for damages will be the allegations of willfulness. The extensive pre-suit notice detailed in the complaint, if proven, may support a finding of willful infringement, potentially leading to enhanced damages if infringement and validity are established.