DCT

1:24-cv-05268

Georgia Tech Research Corp v. Murata Electronics North America Inc

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:24-cv-05268, N.D. Ga., 11/17/2024
  • Venue Allegations: Venue is alleged to be proper as Defendant Murata Electronics North America has its principal place of business in the district, and Defendant Murata Manufacturing Co. maintains a regular place of business via its subsidiary, has transacted business, and has committed alleged acts of infringement within the district.
  • Core Dispute: Plaintiff alleges that Defendant’s multi-layer liquid crystal polymer (LCP) radio frequency modules infringe a patent related to the design of multi-band RF transceivers using embedded passive components in organic substrates.
  • Technical Context: The technology concerns methods for miniaturizing and improving the performance of radio frequency components in wireless devices by integrating passive electronic components directly into compact, multi-layered organic substrates.
  • Key Procedural History: The complaint alleges a detailed pre-suit history, asserting that from 2006 to 2008, Defendant Murata engaged in extensive licensing and co-development discussions with Plaintiff's then-licensee, Jacket Micro Devices (JMD). These discussions allegedly involved sharing technical details and prototypes related to the patent-in-suit. Plaintiff alleges that after these discussions ended, Defendant acquired an LCP manufacturer and began selling the accused products, which allegedly incorporate the patented technology.

Case Timeline

Date Event
2003-03-28 Earliest Priority Date for ’914 Patent
2004-01-01 GTRC licenses patent family to Jacket Micro Devices (JMD)
2005-11-10 Application for ’914 Patent published
2006-06-01 Murata allegedly begins licensing discussions with JMD
2009-02-10 ’914 Patent issued
2013-03-31 Prior licenses to ’914 Patent terminated
2016-11-01 Murata acquires LCP manufacturer Primatec
2017-01-01 Murata allegedly begins selling accused MetroCirc™ products
2024-07-27 ’914 Patent expired
2024-11-17 Complaint Filing Date

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

U.S. Patent No. 7,489,914 - Multi-Band RF Transceiver with Passive Reuse in Organic Substrates

  • Patent Identification: U.S. Patent No. 7,489,914, Multi-Band RF Transceiver with Passive Reuse in Organic Substrates, issued February 10, 2009.

The Invention Explained

  • Problem Addressed: The patent’s background section describes the challenge of designing compact, power-efficient radio frequency (RF) transceivers that can operate across multiple wireless bands and protocols, a growing need for portable devices like cell phones (’914 Patent, col. 1:28-51). Traditional approaches required numerous discrete components, which increased the size, cost, and power consumption of the final device (’914 Patent, col. 1:52-62).
  • The Patented Solution: The invention proposes a "chip-package co-design" approach where passive electronic components (e.g., inductors, capacitors) are embedded directly within multi-layer organic substrates, such as liquid crystal polymer (LCP) (’914 Patent, col. 2:7-14). By patterning metal layers within the substrate, the invention creates high-quality (high-Q) passive networks that can be "reused" across different frequency bands, enabling the creation of compact, high-performance, multi-band components like low-noise amplifiers (LNAs) and voltage-controlled oscillators (VCOs) (’914 Patent, col. 2:15-20). Figure 35 of the patent illustrates an LNA circuit with input and output matching networks embedded in an organic substrate, showcasing this integration (’914 Patent, col. 24:20-25).
  • Technical Importance: This method of embedding passive components in organic substrates enabled significant miniaturization and performance improvements for RF modules, a key technological step for integrating numerous wireless standards into compact consumer electronics (’914 Patent, col. 24:38-46).

Key Claims at a Glance

  • The complaint asserts independent claim 1.
  • The essential elements of independent claim 1 include:
    • A multi-band RF device operable at a first and a second, different frequency.
    • An active device.
    • A first passive network, comprising a first matching network at the input of the active device.
    • A second passive network, comprising a second matching network at the output of the active device.
    • An organic-based substrate with at least two patterned metal layers forming at least a portion of the first and second passive networks.
    • The impedances of the first and second passive networks must be different at the first frequency than at the second frequency.
  • The complaint asserts infringement of dependent claims 2, 11, 12, 13, 14, 15, and 16 and reserves the right to assert additional claims (Compl. ¶132, 134).

III. The Accused Instrumentality

Product Identification

  • The accused products are Murata's multi-band RF devices and antenna modules that comprise multi-layer LCP substrates, including those sold under the MetroCirc™ brand ("the Accused Products") (Compl. ¶¶14, 102). Representative examples cited include RF and connectivity modules such as the LKBA series and 2FGG LG modules, which are allegedly incorporated into smartphones from Google, Samsung, and Apple (Compl. ¶¶112, 116-119, 122).

Functionality and Market Context

  • The accused products are described as integrated modules that use multi-layer LCP to manufacture "not only a substrate, but also transmission lines and other components" such as "composite components that combine antennas and matching circuits" (Compl. ¶104). The complaint provides a figure from an IEEE white paper showing a "use case" where an LCP-based Antenna in Module (AiM) connects a main board's transceiver to an RF front end and antenna in a 5G millimeter wave circuit (Compl. ¶107). The complaint also includes teardown photographs showing Murata's allegedly infringing modules inside a Google Pixel Pro 6 and a Samsung Galaxy A53 (Compl. ¶118).
  • The complaint alleges that these products are commercially significant, citing a Murata report stating that "multilayer LCP products" accounted for 26.9% of the company's total sales in fiscal year 2022, or approximately $3.1 billion USD (Compl. ¶17). A pie chart from a Murata value report is included to illustrate this sales breakdown (Compl. ¶17).

IV. Analysis of Infringement Allegations

The complaint incorporates by reference appendices containing claim charts that were not attached to the filed document (Compl. ¶120). The infringement theory, based on the complaint’s narrative allegations, is summarized below.

The complaint alleges that Murata's Accused Products, such as its MetroCirc™ modules, are "multi-band RF devices" that meet all limitations of the asserted claims (Compl. ¶132). The infringement theory posits that these modules contain an active device (e.g., an LNA or other semiconductor device) and have input and output passive matching networks as required by claim 1 (Compl. ¶111). These networks are allegedly formed from patterned metal layers on the multi-layer LCP substrate, which the patent identifies as an "organic-based substrate" (Compl. ¶¶96, 104, 105; ’914 Patent, col. 2:18-20). The complaint asserts that these modules operate across multiple frequency bands and that the embedded passive networks necessarily exhibit different impedances at different frequencies to function, thereby satisfying the final limitation of claim 1 (Compl. ¶¶112, 114). To support these allegations, the complaint includes images of Murata's modules inside commercial products like the Apple iPhone 12 (Compl. ¶122).

  • Identified Points of Contention:
    • Scope Questions: A potential dispute may arise over the proper construction of "first passive network" and "second passive network." The question is whether these terms require structurally discrete networks, as might be suggested by patent diagrams like FIG. 14, or if they can read on the highly integrated, holistic circuitry of Murata's antenna-in-package modules.
    • Technical Questions: A key evidentiary challenge for the Plaintiff will be to prove that the accused modules meet the functional limitation that the "impedances of the first and second passive networks are different at the first frequency than the second frequency." The complaint does not provide specific technical data or simulations to demonstrate how the accused products meet this claim element.

V. Key Claim Terms for Construction

  • The Term: "organic-based substrate"

    • Context and Importance: This term defines the foundational material of the invention. While the accused products use LCP, which is explicitly named in the patent, the construction of this term will define the overall scope of the technology covered.
    • Intrinsic Evidence for a Broader Interpretation: The specification provides LCP as one example but also lists other materials, including "PPE, N6000, epoxy based N4000-13, or any other suitable low loss dielectric," suggesting the term is not limited to a single material (’914 Patent, col. 8:12-14).
    • Intrinsic Evidence for a Narrower Interpretation: The specification repeatedly emphasizes the advantages of using substrates that enable high-Q passive components, such as LCP which "may provide Qs of over 100 for capacitors" (’914 Patent, col. 18:53-55). A party could argue the term should be limited to organic materials possessing these specific, advantageous electrical properties.

  • The Term: "first passive network ... comprising a first matching network"

    • Context and Importance: This term is central to mapping the claims onto the accused devices. The dispute will likely focus on whether Murata's integrated modules contain a "network" that corresponds to this claim element. Practitioners may focus on this term because the alleged infringement hinges on whether Murata’s integrated design can be deconstructed into the claimed network architecture.
    • Intrinsic Evidence for a Broader Interpretation: The patent describes the networks functionally, for example, as providing "impedance transformation for minimum NF at the input and maximum power gain at the output" (’914 Patent, col. 24:11-14). This may support an interpretation where any structure performing this function meets the limitation.
    • Intrinsic Evidence for a Narrower Interpretation: The patent provides block diagrams (e.g., FIG. 14) and circuit diagrams (e.g., FIG. 35) that depict distinct input and output matching networks. A party could argue these embodiments define the required structure, suggesting a narrower interpretation that requires more discrete components than may be present in the accused integrated modules.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges both induced and contributory infringement. It asserts Murata sells the Accused Products to downstream customers (e.g., Apple, Google, Samsung) with the knowledge and intent that they will be incorporated into infringing end-user devices sold in the United States (Compl. ¶¶143-145). The complaint further alleges the Accused Products are not staple articles of commerce and are specially made to be used in an infringing manner (Compl. ¶¶151-152).
  • Willful Infringement: The complaint alleges willful infringement based on extensive pre-suit knowledge. It details a period from 2006-2008 in which Murata allegedly engaged in licensing and co-development negotiations with Plaintiff's licensee, JMD, which was commercializing the patented technology. During this time, Murata was allegedly given presentations on, and access to, the technology and patent application that matured into the ’914 Patent, giving Murata knowledge of the invention years before the alleged infringement began (Compl. ¶¶59-71, 135).

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

  • A core issue will be one of architectural mapping: can the highly integrated circuitry of Murata’s modern antenna-in-package modules be fairly mapped onto the claim elements of a "first passive network" and a "second passive network," or is there a fundamental mismatch between the patent's described architecture and the accused design?
  • A key evidentiary question will be one of functional proof: what technical evidence can Plaintiff provide to demonstrate that the embedded passive structures within the accused modules perform the specific, frequency-dependent impedance functions required by the asserted claims?
  • The outcome may also turn on the extensive pre-suit history alleged in the complaint. A central question for willfulness and damages will be whether Defendant’s development of the accused products was a good-faith independent design effort or an act of deliberate copying following its detailed exposure to the patented technology during failed licensing negotiations.