DCT
1:24-cv-00187
OmniVision Tech Inc v. Re Secured Networks LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: OmniVision Technologies, Inc. (Delaware)
- Defendant: RE Secured Networks, LLC (Delaware)
- Plaintiff’s Counsel: Richards, Layton & Finger; Barack Ferrazzano Kirschbaum & Nagelberg, LLC
- Case Identification: 1:24-cv-00187, D. Del., 02/12/2024
- Venue Allegations: Venue is asserted in the District of Delaware on the basis that Defendant is a Delaware limited liability company and is therefore deemed to reside in the district.
- Core Dispute: Plaintiff seeks a declaratory judgment that its image sensor products do not infringe Defendant’s patents related to CMOS sensor technology, following Defendant’s demand for a license fee and threat of litigation.
- Technical Context: The technology concerns Complementary Metal-Oxide-Semiconductor (CMOS) image sensors, which are fundamental components in a vast range of electronic devices including digital cameras and smartphones.
- Key Procedural History: The complaint notes that the patents-in-suit were previously asserted by their former owner, Pictos Technologies, Inc., against Samsung in both the U.S. International Trade Commission and the Eastern District of Texas. The current patent owner, RESN, acquired the patents in July 2022 and subsequently engaged in licensing discussions with OmniVision, which included providing claim charts and, ultimately, threatening an infringement lawsuit, which prompted this declaratory judgment action.
Case Timeline
| Date | Event |
|---|---|
| 2004-12-30 | Earliest Priority Date for ’671 and ’145 Patents |
| 2008-01-29 | ’671 Patent Issue Date |
| 2010-09-21 | ’145 Patent Issue Date |
| 2020-09-25 | Previous owner files ITC complaint against Samsung on Asserted Patents |
| 2021-05-21 | Previous owner files E.D. Tex. complaint against Samsung on Asserted Patents |
| 2021-10-01 | OmniVision begins correspondence with previous patent owner (approximate) |
| 2022-07-06 | RESN purchases the Asserted Patents from Pictos |
| 2023-03-06 | RESN's agent sends claim charts to OmniVision |
| 2024-02-09 | RESN's agent threatens to sue OmniVision for infringement |
| 2024-02-12 | Complaint for Declaratory Judgment filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,323,671 - "Method and Apparatus for Varying a CMOS Sensor Control Voltage," issued January 29, 2008
The Invention Explained
- Problem Addressed: The patent describes that standard CMOS fabrication processes are not ideally suited for creating high-quality image sensors, resulting in lower picture quality compared to more expensive Charge-Coupled Device (CCD) technology ( ’671 Patent, col. 1:50-59). Furthermore, variations in manufacturing can lead to a high percentage of defective products because the sensors are not adaptable to such process fluctuations (’671 Patent, col. 2:5-9).
- The Patented Solution: The invention proposes to overcome these limitations by incorporating "variable voltage circuitry" into the CMOS image sensor pixel architecture (’671 Patent, Abstract). This circuitry, which can be controlled by a register, allows for the voltage applied to the pixel's transfer gate to be adjusted post-fabrication, thereby compensating for manufacturing variances, ensuring complete charge transfer, and reducing image defects like lag (’671 Patent, col. 2:10-14, 21-25). Figure 1 illustrates this concept with a block for "Selectable Voltage Circuitry" (110) connected to the pixel's transfer gate.
- Technical Importance: This approach provides a method to fine-tune sensor performance after manufacturing, potentially increasing production yields and bridging the performance gap between lower-cost CMOS sensors and higher-quality CCD sensors (’671 Patent, col. 2:60-65).
Key Claims at a Glance
- The complaint asserts non-infringement of at least independent claim 1 (Compl. ¶¶ 27, 31).
- Essential elements of independent claim 1 include:
- An image sensor integrated circuit comprising a plurality of photodetectors, nodes, transfer devices, and reset devices.
- Row and column circuitry.
- A plurality of signal devices.
- Variable voltage circuitry including a voltage selector determining a control voltage of the control signal applied to the plurality of transfer devices.
- The complaint does not explicitly reserve the right to seek judgment on dependent claims but seeks a declaration of non-infringement for "any valid and enforceable claim of the '671 patent" (Compl. ¶33).
U.S. Patent No. 7,800,145 - "Method and Apparatus for Controlling Charge Transfer in CMOS Sensors with a Transfer Gate Work Function," issued September 21, 2010
The Invention Explained
- Problem Addressed: This patent addresses two specific issues in CMOS sensors: the generation of "dark current" (noise) in the region of the transfer gate, which contaminates the image signal, and the difficulty in reliably preventing electrons from leaking from the photodetector when the transfer gate is supposed to be off (’145 Patent, col. 2:6-12).
- The Patented Solution: The invention proposes modifying the "work function" of the transfer gate, for example, by using p-type polysilicon instead of the standard n-type (’145 Patent, col. 14:21-26). This modification creates an inherent electric field within the gate structure that actively repels electrons from the transfer channel when no control voltage is applied. This built-in field serves to both suppress dark current generation and create a more robust "off" state for the gate (’145 Patent, Abstract; col. 2:25-29).
- Technical Importance: By altering a fundamental physical property of the gate material, the invention provides a structural solution to reduce noise and prevent signal leakage, improving overall sensor fidelity without complex circuit additions (’145 Patent, col. 14:21-31).
Key Claims at a Glance
- The complaint asserts non-infringement of at least independent claim 1 (Compl. ¶¶ 27, 36).
- Essential elements of independent claim 1 include:
- An image sensor integrated circuit with photodetectors, nodes, transfer devices, and reset devices.
- Each transfer device includes a control terminal (gate).
- In an absence of the control voltage the control terminal creates an electric field tending to repel the electrons from a portion of the body (channel).
- A plurality of p-type regions with specific structural relationships.
- The complaint seeks a declaration of non-infringement for "any valid and enforceable claim of the '145 patent" (Compl. ¶38).
III. The Accused Instrumentality
- Product Identification: The accused products are OmniVision's OV24A Purecell® Plus-S series image sensors, with the OV24A1 image sensor being specifically identified (Compl. ¶¶ 21, 32, 37).
- Functionality and Market Context: The complaint describes OmniVision as a "fabless semiconductor organization that designs and develops digital imaging technology" (Compl. ¶4). It does not provide technical details on the operation of the accused OV24A series sensors. Instead, the complaint focuses on functionality that the products allegedly lack, as described in Section IV. The complaint does not provide sufficient detail for analysis of the product's commercial importance or market positioning.
IV. Analysis of Infringement Allegations
The complaint is for a declaratory judgment of non-infringement and does not contain claim chart exhibits. The following tables summarize OmniVision's non-infringement contentions as described in the complaint.
’671 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| variable voltage circuitry including a voltage selector determining a control voltage of the control signal applied to the plurality of transfer devices | The complaint alleges that the OV24A series image sensors do not include this functionality. | ¶31 | col. 18:7-11 |
’145 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| in an absence of the control voltage the control terminal creates an electric field tending to repel the electrons from a portion of the body by the control terminal | The complaint alleges that the OV24A series image sensors do not include this functionality. | ¶36 | col. 17:55-60 |
No probative visual evidence provided in complaint.
- Identified Points of Contention:
- Scope Questions: For the ’671 Patent, the dispute centers on the definition of "variable voltage circuitry." A question for the court is whether any standard power management or control circuitry within the accused sensor could be interpreted to meet the functional requirements of this limitation, even if not explicitly designed for the patent's stated purpose.
- Technical Questions: For the ’145 Patent, the dispute involves the inherent physical properties of the accused device. The central question is an evidentiary one: does the transfer gate in the OV24A sensor, as a matter of semiconductor physics, create the specific "electric field tending to repel the electrons" required by the claim? This will likely require expert analysis of the device's physical structure and material properties.
V. Key Claim Terms for Construction
Term from '671 Patent: "variable voltage circuitry including a voltage selector"
- Context and Importance: This term is the sole basis for the non-infringement argument against the ’671 Patent presented in the complaint (Compl. ¶31). Its construction will likely be dispositive for this patent. Practitioners may focus on this term because it appears to describe a specific structural addition rather than a generic capability.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patentee (RESN) may argue that any mechanism allowing the transfer gate voltage to be adjusted meets this limitation. The specification notes that the voltage can be set "by setting a register," a common and broad function in integrated circuits (’671 Patent, col. 2:13-14).
- Evidence for a Narrower Interpretation: The plaintiff (OmniVision) may argue that the term requires dedicated, specialized circuitry as depicted in Figure 1 (element 110) and described in the abstract, the purpose of which is specifically to vary the control voltage to overcome manufacturing defects, not for other operational reasons (’671 Patent, Abstract; col. 2:21-25).
Term from '145 Patent: "an electric field tending to repel the electrons"
- Context and Importance: This phrase describes the fundamental physical behavior of the invention and is the basis for the non-infringement argument against the ’145 Patent (Compl. ¶36). The dispute will turn on whether the accused device exhibits this specific physical property.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patentee may contend that any potential barrier that impedes electron flow when a gate is off constitutes a "field tending to repel," arguing it describes a general condition.
- Evidence for a Narrower Interpretation: The plaintiff may argue that the claim requires a specifically engineered field, such as one created by a modified work function (e.g., using p-type polysilicon), which actively repels electrons beyond the passive barrier of a standard gate. This is supported by the specification's focus on using a p-type poly gate to attract holes and create this effect (’145 Patent, col. 14:21-26).
VI. Other Allegations
- Indirect Infringement: The complaint seeks a declaration of non-infringement for both direct and indirect infringement but does not present specific facts related to indirect infringement theories (Compl. ¶¶ 32, 37).
- Willful Infringement: As this is a declaratory judgment action filed by the accused infringer, there is no allegation of willfulness against OmniVision in the complaint. However, the complaint establishes that RESN's agents provided OmniVision with claim charts asserting infringement as early as March 6, 2023, establishing pre-suit knowledge of the patents and the infringement allegations (Compl. ¶21). This history could form the basis for a willfulness counterclaim by RESN.
VII. Analyst’s Conclusion: Key Questions for the Case
This declaratory judgment action appears poised to center on a combination of claim construction and highly technical, evidence-based disputes. The key questions for the court will likely be:
- A core issue will be one of functional scope: For the ’671 Patent, does the accused OV24A sensor’s standard control architecture perform the function of the claimed "variable voltage circuitry including a voltage selector," or does the claim require a distinct, dedicated circuit for tuning the sensor post-fabrication?
- A key evidentiary question will be one of physical properties: For the ’145 Patent, does the transfer gate in the accused sensor, in the absence of an applied voltage, inherently create the claimed "electric field tending to repel the electrons"? The resolution will likely depend on expert testimony and physical analysis of the device's semiconductor structure and materials.
- A central strategic question arises from the procedural posture: By filing a preemptive declaratory judgment action in Delaware, OmniVision has chosen the forum and initial framing of the dispute. A key development will be how this posture influences the case as RESN presumably files counterclaims, shifting the litigation into a more traditional infringement-defense dynamic.