Pearl IP Licensing LLC v. Deep Sea Electronics

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Pearl IP Licensing LLC (Texas)
  • Defendant: Deep Sea Electronics, Inc. (Illinois)
  • Plaintiff’s Counsel: Andreou & Casson, Ltd.; Sand, Sebolt & Wernow Co., LPA
• Case Identification: 1:21-cv-04624, N.D. Ill., 08/30/2021
• Venue Allegations: Plaintiff alleges venue is proper because Defendant is incorporated and registered to do business in the Northern District of Illinois, maintains a regular and established place of business in the district, and has committed acts of direct infringement there.
• Core Dispute: Plaintiff alleges that Defendant’s DSE5310 Auto Start Control Module infringes a patent related to methods for electronic circuit recovery from overstress conditions.
• Technical Context: The technology concerns methods within microcontrollers or other electronic systems to detect and respond to electrical stress events, aiming to improve operational robustness beyond conventional fault protection.
• Key Procedural History: The complaint does not mention any prior litigation, licensing history, or administrative proceedings involving the patent-in-suit.

Case Timeline

Date	Event
2001-08-20	’539 Patent Priority Date (Filing Date)
2004-11-16	’539 Patent Issue Date
2021-08-30	Complaint Filing Date

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

U.S. Patent No. 6,819,539 - "METHOD FOR CIRCUIT RECOVERY FROM OVERSTRESS CONDITIONS," issued November 16, 2004

The Invention Explained

• Problem Addressed: The patent’s background section states that conventional methods for protecting electronic devices from environmental stress, such as standard Electrostatic Discharge (ESD) protection or watchdog reset circuits, are often insufficient (U.S. Patent No. 6,819,539, col. 1:13-26). It notes that a device can enter a state of faulty operation, such as by executing code in an unintended location or experiencing memory corruption, that is not severe enough to trigger a traditional watchdog reset, leading to undetected failures (’539 Patent, col. 1:40-49).
• The Patented Solution: The invention proposes a method where an electronic device not only detects a fault-causing "event" but also stores a record of that event. The system then compares the stored event to a table of predefined event types and executes a specific response based on that type (’539 Patent, col. 2:50-59). For a "first predetermined type" of event, the device performs a direct reset; for a "second predetermined type," it initiates a "recovery" action, which can include self-checking, issuing warnings, or performing backups, offering a more nuanced response than a simple, universal reset (’539 Patent, col. 2:61-68; Fig. 1a).
• Technical Importance: This approach allows for a flexible and intelligent response to a wider range of stress conditions, aiming to increase the operational robustness and reliability of microcontrollers and other firmware-driven systems (’539 Patent, col. 1:55-66).

Key Claims at a Glance

• The complaint asserts independent claim 1 (Compl. ¶10).
• The essential elements of Claim 1 are:
  • (A) detecting an event;
  • (B) storing said event;
  • (C) comparing said stored event to a plurality of event types stored in a table to determine if said event is a first predetermined type or a second predetermined type; and
  • (D) resetting a device when said event is a said first predetermined type and providing recovery when said event is a said second predetermined type.
• The complaint notes that Plaintiff reserves the right to modify its infringement theories as discovery progresses (Compl. ¶15).

III. The Accused Instrumentality

Product Identification

The complaint identifies the DSE5310 Auto Start Control Module as an exemplary accused product (Compl. ¶10). It also notes that its investigation is ongoing and other products may be added later (Compl. p. 3, fn. 1).

Functionality and Market Context

The complaint does not provide specific technical details on the operation of the DSE5310 Auto Start Control Module. It alleges that the product is an "apparatus within the scope of Claim 1" (Compl. ¶10) and that it "meets every limitation of Claim 1" (Compl. ¶11). The complaint does not contain allegations regarding the product’s commercial importance or market position.

IV. Analysis of Infringement Allegations

The complaint states that a claim chart detailing the infringement of Claim 1 of the ’539 Patent by the Accused Product is attached as Exhibit B (Compl. ¶11). However, Exhibit B was not included with the provided complaint document. The infringement theory is therefore summarized from the complaint's narrative allegations.

Plaintiff alleges that Defendant directly infringes at least Claim 1 of the ’539 Patent by selling the DSE5310 Auto Start Control Module (Compl. ¶10). According to the complaint, this product embodies the patented method for circuit recovery, necessarily performing the claimed steps of detecting an event, storing it, comparing it to predefined types, and then performing either a reset or a recovery action based on the event's type (Compl. ¶¶10-11). No probative visual evidence provided in complaint.

Identified Points of Contention

• Evidentiary Question: A central issue will be whether Plaintiff can produce evidence showing that the DSE5310 module performs all the steps of Claim 1. Specifically, discovery will likely focus on whether the accused device's firmware or hardware architecture includes a mechanism for (i) storing an event, (ii) comparing that stored event against a "plurality of event types stored in a table," and (iii) executing a different response ("resetting" versus "providing recovery") based on the outcome of that comparison, as required by elements (C) and (D).
• Technical Question: The complaint does not specify what constitutes an "event" or "recovery" in the context of the accused product. A point of contention may arise over whether the accused device's fault-handling routines, if any, perform the specific logical sequence claimed, or if they operate in a technically distinct manner that falls outside the claim's scope.

V. Key Claim Terms for Construction

The Term: "event"

• Context and Importance: This term appears in every step of Claim 1 and defines the trigger for the entire claimed method. Its construction will determine the range of physical phenomena or system states that can initiate an infringing act. Practitioners may focus on this term because its breadth is a primary driver of the claim's overall scope.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification describes "stress conditions" broadly, including those covered by industry tests for "electrostatic discharge (ESD), electrical fast transient/burst (EFTB), radiated EMI, and operation in severe environments" (’539 Patent, col. 2:36-40). This language may support a construction that is not limited to a specific type of electrical stress.
  • Evidence for a Narrower Interpretation: The detailed embodiments and figures focus almost exclusively on detecting specific electrical conditions, such as over-voltage (Fig. 3a-c, Fig. 6), under-voltage (Fig. 4), high current (Fig. 7), and noise on a clock signal (Fig. 5). This focus on electrical phenomena could be used to argue for a narrower construction that excludes other types of system faults.

The Term: "providing recovery"

• Context and Importance: Claim 1(D) creates a dichotomy between "resetting a device" and "providing recovery." The meaning of "recovery" is therefore critical to establishing infringement of the second prong of this limitation and distinguishing the invention from a simple watchdog timer that only performs resets.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The term "recovery" is not explicitly defined in Claim 1, which may support a broader, plain-meaning interpretation. The patent states the goal is to "take appropriate action" to "recover from possible undesirable effects" (’539 Patent, col. 2:41-42).
  • Evidence for a Narrower Interpretation: Dependent claim 2 explicitly defines "recovery" as being selected from the group of "(i) self checking, (ii) issuing warnings, (iii) performing back-up operations, and (iv) shutting-down" (’539 Patent, col. 8:28-34). A defendant may argue that this list informs, and potentially limits, the meaning of "providing recovery" in the independent claim to these or similar software-driven, non-reset actions.

VI. Other Allegations

• Indirect Infringement: The complaint does not allege indirect infringement.
• Willful Infringement: The complaint alleges that "Defendant has had knowledge of infringement of the ’539 Patent at least as of the service of the present Complaint" (Compl. ¶12). This allegation supports a claim for post-filing willfulness but does not assert pre-suit knowledge.

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

• A core issue will be one of evidentiary proof: Lacking specific factual allegations in the complaint body, the case will depend on what discovery reveals about the internal operation of the DSE5310 module. Can Plaintiff demonstrate that the accused product’s architecture contains the specific "store-compare-act" logic, including the use of a "table" and the execution of distinct "reset" versus "recovery" routines, as mandated by the claims?
• A key legal question will be one of claim scope: The dispute will likely turn on the construction of foundational terms. Can "event" be construed broadly enough to read on the specific faults handled by the accused product, and is the accused product's response to those faults a form of "providing recovery" that is distinct from "resetting" in a manner consistent with the patent's teachings?