E System Design Inc v. Mentor Graphics Corp

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: E-SYSTEM DESIGN, INC. (Delaware)
  • Defendant: Mentor Graphics Corp. (Oregon)
  • Plaintiff’s Counsel: Clayton, McKay & Bailey P.C.
• Case Identification: 1:17-cv-01127, N.D. Ga., 03/28/2017
• Venue Allegations: Venue is asserted based on Defendant’s alleged continuous and systematic contacts with the district, Plaintiff’s residence in the state, the location of key witnesses and the original patent assignee (Georgia Tech Research Corporation) in the district, and events giving rise to the claims occurring in the district.
• Core Dispute: Plaintiff alleges that Defendant’s electronic design automation (EDA) software for analyzing microchip interconnects infringes a patent related to methods for modeling electrical connections in three-dimensional structures.
• Technical Context: The lawsuit concerns EDA software used to model the complex electrical behavior of interconnects (like bonding wires) in advanced, three-dimensional microchip packages, a critical step in modern semiconductor design.
• Key Procedural History: The complaint alleges that Plaintiff E-System Design is the exclusive licensee of the patent-in-suit from Georgia Tech Research Corporation (GTRC), with an explicit right to sue for infringement. It also details several alleged pre-suit interactions between the parties, including emails and conference discussions beginning in 2011, which may be relevant to the issue of willful infringement.

Case Timeline

Date	Event
2007-10-25	’232 Patent Priority Date
2011-08-17	Plaintiff allegedly emailed Defendant's CEO regarding potential integration of licensed technology
2011-12-12	Plaintiff's inventor allegedly observed Defendant presenting a similar analysis methodology
2013-01-08	U.S. Patent No. 8,352,232 Issues
2013-04-XX	Plaintiff allegedly informed Defendant's employee about the newly issued patent at a conference
2014-XX-XX	Defendant's employees allegedly approached Plaintiff's booth at a conference and wrote down the patent number
2017-03-28	Complaint Filed

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

U.S. Patent No. 8,352,232 - "Modeling Electrical Interconnections in Three-Dimensional Structures"

The Invention Explained

• Problem Addressed: As microchip packaging became more complex and three-dimensional (e.g., stacked chips), accurately and efficiently modeling the electrical behavior of numerous tiny interconnects (like bonding wires) became a major challenge (US 8352232, col. 1:45-54). Existing methods were often computationally expensive, slow, or not geometrically suitable for modeling the cylindrical shape of these interconnects, especially at high frequencies where skin and proximity effects are significant (US 8,352,232, col. 1:55-65; col. 3:13-20).
• The Patented Solution: The invention proposes a more efficient modeling method that uses a specific set of mathematical functions, termed "cylindrical conduction mode basis functions," within a partial element equivalent circuit (PEEC) framework (US 8,352,232, Abstract; col. 3:45-48). Because these basis functions are inherently cylindrical, they are geometrically suited to modeling wire bonds and other circular interconnects, and their "global" nature is intended to reduce the size of the problem and the computational resources required compared to prior art methods (US 8,352,232, col. 3:5-12).
• Technical Importance: This approach aimed to provide an accurate, wide-band model for a large number of 3D interconnects, which is a key design requirement for advanced System-in-Package (SiP) modules used in RF, analog, and digital applications (US 8,352,232, col. 3:1-4).

Key Claims at a Glance

• The complaint alleges infringement of "one or more claims" but does not specify which claims are asserted (Compl. ¶19). Independent claim 1 is a representative apparatus claim.
• Independent Claim 1: An electrical modeling apparatus comprising a computer and software with code segments to perform the following:
  • define a plurality of cylindrical conduction mode basis functions constructed on cylindrical coordinates;
  • define a plurality of cylindrical accumulation mode basis functions constructed on cylindrical coordinates;
  • linearly combine the selected cylindrical conduction mode basis functions to approximate a current density distribution;
  • linearly combine the selected cylindrical accumulation mode basis functions to approximate a charge density distribution; and
  • construct equivalent circuit equations from the selected functions.

III. The Accused Instrumentality

Product Identification

• The accused instrumentalities are "Mentor Graphics interconnect solutions," specifically including the "Calibre xACT and xACT 3D" software products (Compl. ¶11).

Functionality and Market Context

• The complaint alleges these software products are a form of electronic design automation (EDA) tool used to facilitate microchip design and testing for the semiconductor and other industries (Compl. ¶11).
• The accused functionality is the software's ability to verify chip, IC package, and printed circuit board (PCB) designs by "analyzing vertical interconnects" and enabling customers to "model electrical connections in three-dimensional structures" (Compl. ¶11, ¶19).
• The complaint alleges that Defendant advertises, markets, and provides instructions for using these software products (Compl. ¶12).

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint.

The complaint does not provide a detailed mapping of accused product features to claim elements. The infringement theory is based on general allegations that the accused software incorporates the patented methodology.

’232 Patent Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
An electrical modeling apparatus for electrically modeling three-dimensional circuit structures having cylindrical conductors...	Defendant makes, uses, sells, and imports "Mentor Graphics interconnect solutions" which are software products that run on computers and are used to model electrical connections in three-dimensional structures (Compl. ¶11, ¶18).	¶11, ¶18	col. 17:56-59
a first code segment that defines a plurality of cylindrical conduction mode basis functions constructed on cylindrical coordinates;	Defendant’s Calibre xACT and xACT 3D software products allegedly "incorporate the vertical interconnect analysis methodology claimed in the '232 Patent" and enable customers to "model electrical connections in three-dimensional structures" (Compl. ¶19, ¶24).	¶19, ¶24	col. 17:62 - col. 18:2
a second code segment that defines a plurality of cylindrical accumulation mode basis functions constructed on cylindrical coordinates;	Defendant’s Calibre xACT and xACT 3D software products allegedly "incorporate the vertical interconnect analysis methodology claimed in the '232 Patent" and enable customers to "model electrical connections in three-dimensional structures" (Compl. ¶19, ¶24).	¶19, ¶24	col. 18:3-7
a fifth code segment that constructs equivalent circuit equations from the selected cylindrical conduction and accumulation mode basis functions.	Defendant’s Calibre xACT and xACT 3D software products allegedly "incorporate the vertical interconnect analysis methodology claimed in the '232 Patent" and enable customers to "model electrical connections in three-dimensional structures," which necessarily includes constructing circuit equations (Compl. ¶19, ¶24).	¶19, ¶24	col. 18:8-12

• Identified Points of Contention:
  • Technical Questions: The primary question is one of technical fact: do the algorithms within the Calibre xACT and xACT 3D software products actually implement the specific "cylindrical conduction mode basis functions" and "cylindrical accumulation mode basis functions" as defined in the '232 patent? The complaint alleges this incorporation (Compl. ¶24) but does not provide specific evidence of the software's internal operations.
  • Scope Questions: The dispute may turn on whether Defendant's method for modeling interconnects, even if different, falls within the scope of the patent's claims. This raises the question of whether the claimed "methodology" (Compl. ¶24) is practiced by the accused software.

V. Key Claim Terms for Construction

• The Term: "cylindrical conduction mode basis functions"
• Context and Importance: This term is the central technical feature of the invention. The entire infringement case hinges on whether the accused software uses functions that meet this definition. Practitioners may focus on this term because it is a highly technical, patent-specific phrase whose scope will determine whether Defendant’s potentially different mathematical modeling techniques are covered.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: Plaintiff may argue that the term should be interpreted functionally to cover any set of global basis functions adapted for cylindrical coordinates that solve the current density diffusion equation to model skin and proximity effects, as generally described in the specification (US 8,352,232, col. 5:1-10).
  • Evidence for a Narrower Interpretation: Defendant may argue the term is limited to the specific mathematical forms derived from the Bessel differential equation, as explicitly detailed in equations (5), (6), (7), and (8) of the patent (US 8,352,232, col. 5:60 - col. 6:40). The detailed mathematical derivation may suggest a narrower scope tied to that specific implementation.

VI. Other Allegations

• Indirect Infringement: The complaint alleges both induced and contributory infringement.
  • Inducement is alleged based on Defendant's knowledge of the patent since at least 2013 and its affirmative acts of providing advertising, product manuals, and other information that allegedly instruct and encourage its customers to use the accused software in an infringing manner (Compl. ¶26).
  • Contributory infringement is alleged on the basis that the accused software is a material part of practicing the invention and is not a staple article of commerce suitable for substantial noninfringing use (Compl. ¶27).
• Willful Infringement: The complaint alleges willful infringement based on Defendant having knowledge of the patent since "at least 2013" (Compl. ¶20). This allegation is supported by specific factual claims of pre-suit notice, including an alleged 2013 conversation where Plaintiff's CEO informed a Mentor Graphics employee about the patent and a 2014 event where Defendant's employees allegedly wrote down the patent number at a conference (Compl. ¶15, ¶16).

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

• A central issue will be one of technical implementation: what is the precise mathematical algorithm used by the accused Calibre xACT and xACT 3D software to model 3D interconnects? Discovery into the software's source code and operation will be critical to determine if it practices the specific "cylindrical conduction mode basis function" methodology claimed by the '232 patent.
• The case will also turn on a question of claim construction: how broadly can the term "cylindrical conduction mode basis functions" be defined? The outcome will depend on whether the court construes the term as being limited to the specific mathematical equations disclosed in the patent's embodiments or as encompassing a wider range of functional equivalents for modeling cylindrical conductors.
• A key factual dispute will concern willfulness: can Plaintiff prove its detailed allegations of pre-suit notice, including specific conversations and events where the patent was allegedly identified to Defendant's employees? If infringement is found, the resolution of this question will determine Defendant's exposure to enhanced damages.