DCT

1:14-cv-13560

Acqis LLC v. EMC Corp

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:14-cv-13560, D. Mass., 07/07/2017
  • Venue Allegations: Venue is alleged to be proper in the District of Massachusetts because Defendant EMC is incorporated and has its principal place of business in Massachusetts.
  • Core Dispute: Plaintiff alleges that Defendant’s modular computing systems, including its Isilon, VMAX, and VNX series systems, infringe eleven patents related to modular computer architectures and high-speed data transfer channels.
  • Technical Context: The technology concerns modular computer systems, such as blade servers, designed to increase processing density and simplify maintenance by allowing individual computer modules to be inserted into a shared chassis or console.
  • Key Procedural History: The complaint notes extensive prior litigation and post-grant proceedings involving the asserted patent portfolio. Plaintiff ACQIS previously prevailed at a jury trial against IBM in 2011 on related patents, which was followed by a settlement. Several of the patents-in-suit have also survived inter partes reexamination and inter partes review proceedings initiated by IBM, Hewlett-Packard, and EMC, which may be presented to argue the patents' validity and scope.

Case Timeline

Date Event
1999-05-14 Earliest Priority Date for all Patents-in-Suit
2008-04-22 U.S. Patent No. 7,363,416 Issues
2009-04-04 ACQIS files suit against IBM and others (the "2009 litigation")
2010-03-09 U.S. Patent No. 7,676,624 Issues
2010-04-27 U.S. Patent No. RE41,294 Issues
2010-10-19 U.S. Patent No. 7,818,487 Issues
2010-11-23 U.S. Patent No. RE41,961 Issues
2011-02-01 Jury trial against IBM begins (approximate date)
2011-10-01 ACQIS files second suit against IBM (approximate date)
2011-10-18 U.S. Patent No. 8,041,873 Issues
2011-10-04 U.S. Patent No. RE42,814 Issues
2011-11-29 U.S. Patent No. RE42,984 Issues
2012-01-17 U.S. Patent No. RE43,119 Issues
2012-02-07 U.S. Patent No. RE43,171 Issues
2013-05-03 EMC allegedly has knowledge of ten asserted patents
2013-08-27 U.S. Patent No. RE44,468 Issues
2013-09-09 ACQIS files initial suit against EMC in E.D. Texas
2013-09-12 EMC allegedly has knowledge of the ’468 Patent
2015-04-13 Case transferred to the District of Massachusetts
2015-06-10 Court grants EMC's motion to stay pending IPR results
2016-08-10 Court lifts stay after PTAB decisions
2017-07-07 Plaintiff files Third Amended Complaint

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

U.S. Patent No. 7,363,416 - "Computer System Utilizing Multiple Computer Modules with Password Protection"

  • Issued: April 22, 2008

The Invention Explained

  • Problem Addressed: The patent's background section describes the drawbacks of conventional computing models, where users often needed separate, non-interoperable desktop and laptop computers, leading to duplicated costs and wasted time transferring data. It also notes that prior dual-processor systems often suffered from performance bottlenecks because both processors had to share resources like memory and disk drive bandwidth (ʼ416 Patent, col. 1:19–2:65).
  • The Patented Solution: The invention proposes a modular computer system where multiple independent "computer modules" (each a self-contained computer with its own processor, memory, and storage) can be inserted into a shared peripheral "console." This allows for independent operation, fault tolerance, and easier upgrades. Communication between the modules and the console is achieved via a specialized high-speed interface channel (’416 Patent, col. 3:9–4:28; Fig. 1).
  • Technical Importance: This modular approach aimed to combine the portability of laptops with the power of desktops, while enabling multi-processing capabilities that were more robust than traditional shared-resource systems (ʼ416 Patent, col. 3:9-14).

Key Claims at a Glance

  • The complaint asserts independent claim 51 and/or dependent claim 60 (Compl. ¶42). The core elements of independent claim 51 are:
    • A console with a power supply and multiple coupling sites (e.g., bays).
    • A plurality of computer modules, each coupled to a coupling site.
    • Each module includes a processing unit, main memory, and a flash memory for storing a password.
    • The computer modules are "substantially similar in design" and operate "fully independent of each other."
    • Each module communicates with the console through "two sets of unidirectional serial, differential signal channels which transmit data in opposite directions."

U.S. Patent No. 7,676,624 - "Multiple Module Computer System and Method Including Differential Signal Channel Comprising Unidirectional Serial Bit Channels"

  • Issued: March 9, 2010

The Invention Explained

  • Problem Addressed: The patent addresses the limitations of standard computer interfaces like the Peripheral Component Interconnect (PCI) bus for connecting modular components. The specification notes that PCI buses are not "cable friendly" and require a very large number of pins and conductive lines, making them bulky, expensive, and less reliable for connecting physically separate modules (’624 Patent, col. 3:9-52).
  • The Patented Solution: The patent describes using a low voltage differential signal (LVDS) channel to interface computer modules with a peripheral console. This LVDS channel uses fewer conductive lines than a parallel PCI bus and transmits data serially at high speed, which the patent asserts is faster, consumes less power, and is more reliable for cabled connections between modules (’624 Patent, col. 3:53–4:15; Fig. 9).
  • Technical Importance: The use of LVDS for this purpose enabled more practical and robust modular computer designs by overcoming the physical limitations of parallel bus architectures for inter-module communication (’624 Patent, col. 4:1-5).

Key Claims at a Glance

  • The complaint asserts independent claim 39 (Compl. ¶51). Its key elements are:
    • A method involving providing a computer module (with a processing unit, memory, and an interface controller).
    • Coupling the module to a console.
    • The interface controller couples to a "differential signal channel having two sets of unidirectional, multiple serial bit channels to transmit data in opposite directions."
    • Operating the module to communicate with the console through this channel.

Multi-Patent Capsule: U.S. Patent No. 7,818,487

  • Patent Identification: U.S. Patent No. 7,818,487, "Multiple Module Computer System and Method Using Differential Signal Channel Including Unidirectional, Serial Bit Channels," issued October 19, 2010.
  • Technology Synopsis: This patent, part of the same family, further details the method and system for using a high-speed, serial, differential signal channel to connect independent computer modules to a shared console, overcoming the physical limitations of traditional parallel bus architectures like PCI (Compl. ¶9; ’487 Patent, col. 3:9-52).
  • Asserted Claims: Independent claims 38, 45, 48, and/or 49 (Compl. ¶60).
  • Accused Features: The accused EMC products are alleged to include modular architectures that use industry standard PCI Express channels, which are identified as infringing differential signal channels (Compl. ¶¶30, 60).

Multi-Patent Capsule: U.S. Patent No. 8,041,873

  • Patent Identification: U.S. Patent No. 8,041,873, "Multiple Module Computer System and Method Including Differential Signal Channel Comprising Unidirectional Serial Bit Channels to Transmit Encoded Peripheral Component Interconnect Bus Transaction Data," issued October 18, 2011.
  • Technology Synopsis: This patent focuses specifically on the transmission of "encoded Peripheral Component Interconnect (PCI) bus transaction data" over the described unidirectional, serial bit channels. This suggests a system where parallel PCI bus data is converted into a serial format for transmission between modules (Compl. ¶10; ’873 Patent, Abstract).
  • Asserted Claims: Claims 6, 9, 29, 54, 61, 65, and/or 71 (Compl. ¶69).
  • Accused Features: The complaint alleges that the PCI Express channels in the accused products are used to communicate encoded PCI bus transactions, thereby infringing this patent (Compl. ¶¶30, 35, 69).

Multi-Patent Capsule: U.S. Patent No. RE41,294

  • Patent Identification: U.S. Patent No. RE41,294, "Password Protected Modular Computer Method and Device," issued April 27, 2010.
  • Technology Synopsis: This patent relates to security features within a modular computer system, describing methods and devices for password-protecting the modules. The claims focus on the combination of the modular architecture with security mechanisms to prevent unauthorized use (Compl. ¶11; ’294 Patent, Abstract).
  • Asserted Claims: Claims 35 and/or 44 (Compl. ¶78).
  • Accused Features: The accused EMC modular computing products are alleged to embody the claimed password-protected systems (Compl. ¶¶29, 78). The complaint does not provide specific detail for analysis of the security features.

Multi-Patent Capsule: U.S. Patent No. RE42,814

  • Patent Identification: U.S. Patent No. RE42,814, "Password Protected Modular Computer Method and Device," issued October 4, 2011.
  • Technology Synopsis: Continuing the theme of the '294 Patent, this patent also covers password protection for modular computer systems. It claims methods and devices where access to the computer module is controlled by a password, integrating security with the modular hardware concept (Compl. ¶12; ’814 Patent, Abstract).
  • Asserted Claims: At least claims 24 and/or 31 (Compl. ¶87).
  • Accused Features: The accused EMC products are alleged to be password-protected modular systems that infringe these claims (Compl. ¶¶29, 87). The complaint does not provide sufficient detail for analysis of the security features.

Multi-Patent Capsule: U.S. Patent No. RE43,171

  • Patent Identification: U.S. Patent No. RE43,171, "Data Security Method and Device for Computer Modules," issued February 7, 2012.
  • Technology Synopsis: This patent covers data security methods for computer modules, focusing on features like password protection and locking capabilities to prevent unauthorized access or theft of the module itself. The claims combine the physical and logical security aspects of the modular system (Compl. ¶13; ’171 Patent, Abstract).
  • Asserted Claims: At least claim 24 (Compl. ¶96).
  • Accused Features: The accused EMC products are alleged to incorporate infringing data security methods (Compl. ¶¶29, 96). The complaint does not provide sufficient detail for analysis of the security features.

Multi-Patent Capsule: U.S. Patent No. RE44,468

  • Patent Identification: U.S. Patent No. RE44,468, "Data Security Method and Device for Computer Modules," issued August 27, 2013.
  • Technology Synopsis: Similar to the '171 Patent, this patent concerns data security for computer modules, including methods for controlling access based on security credentials. The invention aims to secure the self-contained computing environment provided by each module (Compl. ¶14; ’468 Patent, Abstract).
  • Asserted Claims: Claim 29 (Compl. ¶105).
  • Accused Features: The accused EMC modular products are alleged to infringe the claimed data security methods (Compl. ¶¶29, 105). The complaint does not provide sufficient detail for analysis of the security features.

Multi-Patent Capsule: U.S. Patent No. RE42,984

  • Patent Identification: U.S. Patent No. RE42,984, "Data Security Method and Device for Computer Modules," issued November 29, 2011.
  • Technology Synopsis: This patent also covers data security methods for computer modules, describing systems that integrate password protection and access control within the modular hardware architecture. It addresses the need to secure the independent computing environments of each module (Compl. ¶15; ’984 Patent, Abstract).
  • Asserted Claims: Claims 48 and/or 85 (Compl. ¶114).
  • Accused Features: The accused EMC modular computing products are alleged to infringe the claimed security features (Compl. ¶¶29, 114). The complaint does not provide sufficient detail for analysis of the security features.

Multi-Patent Capsule: U.S. Patent No. RE43,119

  • Patent Identification: U.S. Patent No. RE43,119, "Password Protected Modular Computer Method and Device," issued January 17, 2012.
  • Technology Synopsis: This patent claims password protection methods and devices for modular computer systems. The claims cover the integration of security protocols with the modular hardware, ensuring that individual modules are secured against unauthorized access (Compl. ¶16; ’119 Patent, Abstract).
  • Asserted Claims: At least claims 38 and/or 39 (Compl. ¶123).
  • Accused Features: The accused EMC modular systems are alleged to contain the claimed password protection features (Compl. ¶¶29, 123). The complaint does not provide sufficient detail for analysis of the security features.

Multi-Patent Capsule: U.S. Patent No. RE41,961

  • Patent Identification: U.S. Patent No. RE41,961, "Password Protected Modular Computer Method and Device," issued November 23, 2010.
  • Technology Synopsis: This patent also focuses on password protection for modular computer systems. The invention covers the combination of a modular architecture with password-based access control to secure the independent processing environment of each module (Compl. ¶17; ’961 Patent, Abstract).
  • Asserted Claims: Claim 28 (Compl. ¶132).
  • Accused Features: The accused EMC products are alleged to embody the claimed password-protected modular systems (Compl. ¶¶29, 132). The complaint does not provide sufficient detail for analysis of the security features.

III. The Accused Instrumentality

Product Identification

  • The accused products are EMC’s modular computing products, including its Isilon series systems, VMAX series systems, and VNX series systems (Compl. ¶29).

Functionality and Market Context

  • The complaint alleges that these products are modular computer systems that allow components to be inserted into a chassis, rack, or console to provide high processing power in a small space (Compl. ¶28).
  • The relevant technical features identified in the complaint include: computer modules insertable into a console; a main circuit board with one or more processors (e.g., Intel Xeon) and main memory; and industry standard PCI Express channels (Compl. ¶30). The complaint asserts these PCI Express channels are low voltage differential signal (LVDS) channels that comprise two sets of unidirectional, multiple serial bit channels for communicating encoded PCI bus transactions (Compl. ¶¶30, 35).
  • The complaint also identifies a "peripheral bridge circuit" that is either external to or incorporated into the processor packaging and is coupled to the processor and the PCI Express channels (Compl. ¶¶30, 31).

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint.

’416 Patent Infringement Allegations

Claim Element (from Independent Claim 51) Alleged Infringing Functionality Complaint Citation Patent Citation
a console comprising a power supply, a first coupling site and a second coupling site, each coupling site comprising a connector and a slot... EMC's products are modular computing systems comprising a chassis, rack, console, or other enclosure into which computer modules and related components can be inserted (Compl. ¶¶28, 30). ¶¶28, 30 col. 9:4-10
a plurality of computer modules; each computer module coupled to one of the coupling site...comprising a processing unit...a main memory... EMC's products include computer modules that are insertable into the console. These modules contain a main circuit board, a processing unit (e.g., Intel Xeon processors), and main memory (DRAM) (Compl. ¶30). ¶30 col. 9:11-15
wherein each computer module communicates with the console through two sets of unidirectional serial, differential signal channels which transmit data in opposite directions. The accused EMC products include industry standard PCI Express channels. The complaint alleges these are low voltage differential signal (LVDS) channels comprising two sets of unidirectional, multiple serial bit channels to transmit data in opposite directions (Compl. ¶30). ¶30 col. 27:10-14

Identified Points of Contention

  • Scope Questions: The complaint alleges that industry standard PCI Express channels meet the claim limitation "two sets of unidirectional serial, differential signal channels." A potential point of contention may be whether the technical standard and operation of PCI Express, which is a packet-based, bi-directional link layer protocol, can be properly characterized as two distinct "sets" of "unidirectional" channels as defined by the patent.
  • Technical Questions: What evidence does the complaint provide that the accused computer modules are "substantially similar in design" and operate "fully independent of each other" as required by claim 51, particularly in enterprise storage systems where modules might be specialized (e.g., storage processors vs. management modules) and operate inter-dependently?

’624 Patent Infringement Allegations

Claim Element (from Independent Claim 39) Alleged Infringing Functionality Complaint Citation Patent Citation
providing a computer module, the computer module comprising a processing unit, a main memory..., and an interface controller; The accused products include computer modules containing a processing unit (Intel Xeon) and main memory. The complaint also alleges a "peripheral bridge circuit" that includes an "interface controller" coupled to the processor (Compl. ¶30). ¶30 col. 29:34-38
coupling the computer module to a console, wherein the interface controller couples to a differential signal channel... The computer module is insertable into a console. The peripheral bridge circuit (containing the interface controller) is allegedly coupled to PCI Express LVDS channels, which the complaint identifies as the claimed "differential signal channel" (Compl. ¶¶30, 31). ¶¶30, 31 col. 29:39-40
...having two sets of unidirectional, multiple serial bit channels to transmit data in opposite directions; The complaint alleges that the PCI Express channels in the accused products are LVDS channels comprising "two sets of unidirectional, multiple serial bit channels to transmit data in opposite directions" (Compl. ¶30). ¶30 col. 29:40-43
operating the computer module, wherein the computer module communicates with the console through the interface controller and the two sets of unidirectional, multiple serial bit channels. The complaint alleges that the accused products, when operated, use the identified PCI Express channels to communicate between the computer modules and the console, thereby performing the infringing method (Compl. ¶30). ¶30 col. 29:44-48

Identified Points of Contention

  • Scope Questions: As with the ’416 Patent, a central question will be whether the architecture of a standard PCI Express link falls within the scope of "two sets of unidirectional, multiple serial bit channels." This definitional dispute appears central to the infringement case for much of the patent portfolio.
  • Technical Questions: Claim 39 requires communication "through the interface controller." A potential point of contention could be the precise role and structure of the accused "peripheral bridge circuit" and whether it functions as the specific "interface controller" described and claimed in the patent, or if it has a fundamentally different technical operation.

V. Key Claim Terms for Construction

’416 Patent

  • The Term: "two sets of unidirectional serial, differential signal channels which transmit data in opposite directions"
  • Context and Importance: This term is the core of the asserted patents' technological distinction over prior art parallel buses. The infringement allegation hinges on mapping this term to industry-standard PCI Express channels. Practitioners may focus on this term because its construction will determine whether a widely adopted industry standard falls within the patent's scope.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes the channels generically as a "low voltage differential signal (LVDS) channel" and states the term "is not intended to be limited to any particular type of LVDS technology" (’416 Patent, col. 3:60-65). This may support an argument that the term should be read broadly to cover various differential signaling technologies like PCI Express that achieve high-speed serial communication.
    • Evidence for a Narrower Interpretation: The patent repeatedly contrasts its invention with the "protocols of a PCI bus" (’416 Patent, col. 3:31-33). Embodiments in the patent show distinct transmit (PD0-PD3, PCN) and receive (PDR0-PDR3, PCNR) lines, which might be argued to define a specific architecture of paired, but separate, "sets" of unidirectional channels that is structurally different from a PCI Express link layer (’416 Patent, Fig. 12).

’873 Patent (Representative of PCI Transaction Patents)

  • The Term: "encoded Peripheral Component Interconnect (PCI) bus transaction data"
  • Context and Importance: This term is critical for the patents that claim the specific content being transmitted over the serial channels. The plaintiff's theory appears to be that PCI Express traffic constitutes "encoded PCI bus transaction data." The outcome of this construction could determine infringement for a substantial portion of the asserted patents.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification states that "PCI control signals are encoded into control bits" for transmission on the interface channel (’873 Patent, col. 5:35-39). An argument may be made that the packetized and layered protocol of PCI Express is a form of "encoding" PCI-like transactions for serial transmission. The complaint points to trial testimony from a prior case where IBM engineers allegedly stated that "PCI Express links carry encoded PCI bus transactions" (Compl. ¶35).
    • Evidence for a Narrower Interpretation: The patent specification describes specific translation and encoding schemes where parallel PCI signals are converted into serial bit packets for transmission (’873 Patent, Fig. 10; col. 15:41–16:65). A defendant may argue that this discloses a specific type of PCI-to-serial bridge and that the native packet protocol of PCI Express is a fundamentally different technology, not merely an "encoding" of traditional PCI bus transactions as contemplated by the patent.

VI. Other Allegations

Indirect Infringement

  • The complaint alleges active inducement of infringement against EMC. The basis for these allegations includes EMC providing "user guides and product documentation that instruct end-users, resellers, and customers to use EMC products in an infringing manner" (Compl. ¶¶44, 53).

Willful Infringement

  • The complaint alleges willful infringement based on both pre- and post-suit knowledge. It asserts that EMC had knowledge of ten of the patents since at least May 3, 2013, and of the ’468 patent since September 12, 2013, predating the original complaint filing (Compl. ¶33). The basis for knowledge includes: prior successful litigation against IBM on similar technology (Compl. ¶35); the fact that EMC's parent company, Dell, and thirteen other companies took licenses to the ACQIS portfolio (Compl. ¶34); and the fact that asserted patents survived reexamination and IPR challenges, including some initiated by EMC itself (Compl. ¶¶36, 37).

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

  • A core issue will be one of technical and definitional scope: can the patents' claims to a system of "two sets of unidirectional, serial... channels" be construed to cover the packet-based, bi-directional link layer architecture of the industry-standard PCI Express protocol used in the accused products? The case may turn on whether PCI Express is viewed as a direct implementation of the claimed invention or as a distinct, alternative technology.
  • A key evidentiary question will be one of functional identity: does the accused products' use of PCI Express to transmit data packets perform the same function, in substantially the same way, to achieve the same result as the claimed method of transmitting "encoded Peripheral Component Interconnect (PCI) bus transaction data"? This will likely require detailed expert analysis of both the patent's specific embodiments and the technical operation of the PCI Express protocol stack.
  • A significant legal question, particularly regarding damages, will be the impact of prior proceedings: to what extent will ACQIS’s prior litigation success against IBM on similar technology, and the survival of the patents through multiple reexaminations and IPRs, influence the analysis of willfulness and the potential for enhanced damages?