DCT

0:24-cv-03691

Godo Kaisha IP Bridge 1 v. Seagate Technology LLC

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 0:24-cv-03691, D. Del., 03/15/2024
  • Venue Allegations: Venue is alleged to be proper in the District of Delaware because two of the defendant entities are incorporated in Delaware, and the remaining foreign entities are subject to venue in any judicial district.
  • Core Dispute: Plaintiff alleges that Defendants’ hard disk drives (HDDs) containing specific read/write head structures infringe three U.S. patents related to Magnetic Tunnel Junction (MTJ) technology.
  • Technical Context: The technology at issue, MTJ, is fundamental to modern high-capacity data storage, enabling the dense and reliable storage of information on magnetic media by precisely controlling and detecting magnetic states.
  • Key Procedural History: The complaint alleges a significant history between the parties, including a 2014-2017 litigation in Japan over a counterpart patent between Defendants and the prior owners of the asserted patent portfolio. This prior litigation allegedly led to licensing negotiations in 2018 where Defendants learned of the U.S. patents-in-suit but ultimately only licensed the Japanese portfolio in 2019. The '372 patent is subject to a terminal disclaimer filed on January 21, 2025.

Case Timeline

Date Event
2004-03-12 Earliest Priority Date for ’403, ’263, and ’372 Patents
2011-02-08 U.S. Patent No. 7,884,403 Issued
2012-11-27 U.S. Patent No. 8,319,263 Issued
2014-01-01 Japan litigation between prior patent owners and Seagate begins (approx.)
2017-05-31 Japanese court finds Seagate HDDs infringed Japanese counterpart patent
2018-03-01 Alleged infringement start date for Accused Products (approx.)
2019-03-31 Seagate licenses Japanese patent portfolio but not U.S. patents (approx.)
2021-01-01 IP Bridge obtains ownership of the MTJ Patent Portfolio (approx.)
2023-08-22 U.S. Patent No. 11,737,372 Issued
2024-03-15 Complaint Filed
2025-01-21 Terminal Disclaimer filed for U.S. Patent No. 11,737,372

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

U.S. Patent No. 7,884,403, "Magnetic Tunnel Junction Device and Memory Device Including the Same," issued February 8, 2011

The Invention Explained

  • Problem Addressed: The patent describes that conventional MTJ devices, which are critical components for memory technologies like MRAM, suffered from a low magnetoresistance (MR) ratio and a low output voltage (Compl. ¶¶31-32). This was largely due to their use of an amorphous aluminum-oxide (Al-O) tunnel barrier, which limited performance and suitability for high-density applications ('403 Patent, col. 1:49-61).
  • The Patented Solution: The invention replaces the amorphous barrier with a highly-ordered, crystalline or poly-crystalline magnesium-oxide (MgO) layer in which the (001) crystal plane is preferentially oriented ('403 Patent, col. 2:21-36). This specific crystalline structure is said to enable "coherent tunneling" of electrons, reducing scattering and dramatically increasing the MR ratio and output voltage (Compl. ¶32; '403 Patent, col. 2:4-11). The patent also discloses introducing oxygen vacancy defects to intentionally lower the potential barrier height of the MgO layer, which can increase the tunneling current ('403 Patent, col. 6:47-56).
  • Technical Importance: This shift from an amorphous to a specific crystalline barrier structure represented a significant advance, enabling higher performance MTJs suitable for "very large scale integrated MRAMs of gigabit class" ('403 Patent, col. 9:18-24).

Key Claims at a Glance

  • The complaint asserts at least dependent claim 5 (Compl. ¶52). Claim 5 depends from independent claim 1.
  • Independent Claim 1:
    • A magnetoresistive device having a tunnel barrier junction structure comprising a tunnel barrier layer, a first ferromagnetic material layer (BCC structure), and a second ferromagnetic material layer (BCC structure).
    • The tunnel barrier layer is formed by a single-crystalline MgOx (001) or a poly-crystalline MgOx (0<x<1) in which the (001) crystal plane is preferentially oriented.
    • The tunnel barrier height between the barrier layer's conduction band and the ferromagnetic layers' Fermi energy is a discontinuous value in a range of 0.2 to 0.5 eV.
  • Dependent Claim 5: Adds the limitation that the magnesium oxide layer has oxygen vacancy defects.

U.S. Patent No. 8,319,263, "Magnetic Tunnel Junction Device," issued November 27, 2012

The Invention Explained

  • Problem Addressed: As a continuation of the '403 patent, the '263 patent addresses the same fundamental problem: the performance limitations of prior art MTJ devices with amorphous Al-O barriers, which yielded low MR ratios and output voltages unsuitable for high-density memory applications ('263 Patent, col. 1:25-45).
  • The Patented Solution: The solution is materially the same as the '403 patent, focusing on a magnetic tunnel junction built with a specific crystalline MgO tunnel barrier sandwiched between two ferromagnetic electrodes ('263 Patent, Abstract). The patent again emphasizes that using a single-crystalline or preferentially oriented poly-crystalline MgO (001) layer enables coherent electron tunneling, which in turn achieves a higher MR ratio compared to the prior art ('263 Patent, col. 5:1-20). The structure is depicted in the patent’s Figure 1(B).
  • Technical Importance: The invention provided a pathway to create higher-performance, non-volatile memory devices and more sensitive read heads for data storage systems (Compl. ¶28).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (Compl. ¶79).
  • Independent Claim 1:
    • A magnetoresistive device comprising a first ferromagnetic material layer (BCC structure), a second ferromagnetic material layer (BCC structure), and a tunnel barrier layer between them.
    • The tunnel barrier layer comprises a single-crystalline MgO layer in which (001) crystal plane is preferentially oriented or a poly-crystalline MgO layer in which (001) crystal plane is preferentially oriented.
    • The tunnel barrier layer has a tunnel barrier height in a range of 0.2 to 0.5 eV.

U.S. Patent No. 11,737,372, "Method of Manufacturing a Magnetoresistive Random Access Memory (MRAM)," issued August 22, 2023 (Multi-Patent Capsule)

Technology Synopsis

This patent, which is part of the same family, claims a method for manufacturing the high-performance MTJ devices described in the other asserted patents. The claimed method involves specific steps for depositing the layers, including preparing a substrate, depositing a first Fe(001) layer, depositing the critical MgO tunnel barrier layer via electron beam evaporation under high vacuum, and then forming the second Fe(001) layer ('372 Patent, col. 18:25-36). The key is the process for creating the preferentially oriented crystalline MgO barrier that enables superior device performance.

Asserted Claims

The complaint asserts at least independent claim 1 (Compl. ¶107).

Accused Features

The complaint alleges that Defendants' manufacturing processes for their HDD read/write heads practice the claimed methods (Compl. ¶¶108-109).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are read/write heads within a broad range of Seagate's internal and external hard disk drives (HDDs), including those sold under product families such as Exos, IronWolf, BarraCuda, FireCuda, Nytro, SkyHawk, and others (Compl. ¶¶46-47).

Functionality and Market Context

The complaint alleges that the read/write heads in these HDDs incorporate MTJ structures that use a highly-ordered MgO tunnel barrier layer, consistent with the technology disclosed in the asserted patents (Compl. ¶¶28, 32). This technology is central to the HDDs' ability to read data from high-density magnetic platters. The complaint alleges that these HDDs are manufactured, imported, and sold for use in a wide array of applications, including laptops, servers, and data centers, and constitute a significant part of Defendants' business (Compl. ¶¶10, 63). The complaint presents a diagram explaining the underlying Tunnel MagnetoResistance (TMR) effect that these devices utilize (Compl. p. 9).

IV. Analysis of Infringement Allegations

The complaint alleges that the accused HDDs contain read/write heads with an MTJ structure comprising two ferromagnetic electrodes sandwiching a crystalline MgO tunnel barrier (Compl. ¶¶32, 54). A diagram from the complaint illustrates this basic layered structure, identifying the core Fe(001) and MgO(001) layers central to the invention (Compl. p. 11, ¶32).

’403 Patent Infringement Allegations

Claim Element (from Independent Claim 1 and Dependent Claim 5) Alleged Infringing Functionality Complaint Citation Patent Citation
a magnetoresistive device having a tunnel barrier junction structure comprising: a tunnel barrier layer; a first ferromagnetic material layer of the BCC structure formed on a first side of said tunnel barrier layer; and a second ferromagnetic material layer of the BCC structure... The Accused Products are magnetoresistive devices (HDD read/write heads) that contain an MTJ structure with a tunnel barrier layer between two ferromagnetic electrodes (Compl. ¶¶29, 32). ¶¶29, 32, 54 col. 2:21-27
wherein said tunnel barrier layer is formed by a single-crystalline MgOx (001) (0<x<1) or a poly-crystalline MgOx (0<x<1) in which the (001) crystal plane is preferentially oriented The complaint alleges the tunnel barrier in the accused heads is a highly-ordered, crystalline MgO layer, moving beyond the prior art amorphous Al-O barriers (Compl. ¶32). ¶32, 54 col. 2:27-31
and wherein a tunnel barrier height between a bottom of a conduction band of said tunnel barrier layer and a Fermi energy of at least one of said first and second ferromagnetic layers is a discontinuous value in a range of 0.2 to 0.5 eV The complaint alleges Seagate’s own researchers reported their TMR reader had a barrier height in the claimed range, citing a 2006 paper that "revealed the barrier height to be around 100 meV" (0.1 eV) (Compl. ¶37). A screenshot from this Seagate paper is provided as evidence (Compl. p. 12). ¶37, 54 col. 6:47-52
wherein said magnesium oxide layer has oxygen vacancy defects The complaint alleges that the MgO layer in the accused heads is formed with oxygen vacancy defects, which lowers the barrier height and resistance (Compl. ¶33). ¶33, 54 col. 6:47-56

’263 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A magnetoresistive device comprising: a first ferromagnetic material layer of a BCC structure; a second ferromagnetic material layer of a BCC structure; and a tunnel barrier layer located between said first and second ferromagnetic material layers The Accused Products are magnetoresistive devices (HDD read/write heads) containing a tunnel barrier layer positioned between two ferromagnetic material layers (Compl. ¶¶29, 32). ¶¶29, 32, 81 col. 9:55-61
wherein the tunnel barrier layer comprises a single-crystalline magnesium oxide layer in which (001) crystal plane is preferentially oriented or a poly-crystalline magnesium oxide layer in which (001) crystal plane is preferentially oriented The complaint alleges that the accused devices utilize a highly-ordered, crystalline MgO layer as the tunnel barrier, which provides superior performance over conventional amorphous barriers (Compl. ¶32). ¶32, 81 col. 9:62-67
wherein the tunnel barrier layer has a tunnel barrier height in a range of 0.2 to 0.5 eV The complaint alleges, through a cited 2006 Seagate research paper, that Defendants' own TMR devices exhibit a barrier height consistent with the patented invention, stating the barrier height was found to be "around 100 meV" (0.1 eV) (Compl. ¶37). A visual of this finding is included in the complaint (Compl. p. 12). ¶37, 81 col. 7:1-3

Identified Points of Contention

  • Technical Questions: A significant technical question arises from the complaint's own evidence regarding the "tunnel barrier height". Both asserted claims require a height in the range of 0.2 to 0.5 eV. However, the 2006 Seagate paper cited by the Plaintiff reports a value of "around 100 meV," which is 0.1 eV (Compl. ¶37). This value is facially outside the claimed range. The case may turn on whether Plaintiff can produce evidence that the accused products, as sold, have a barrier height that falls within the claimed range, notwithstanding the cited publication, or whether the term "around" can bridge this numerical gap.
  • Scope Questions: A potential question of scope is whether the term "preferentially oriented", which the patents describe in the context of controlled epitaxial growth, can be read to cover the crystalline structure of MgO layers produced in Defendants' mass-manufacturing environment. The dispute may center on the degree of crystalline order required to meet this limitation.

V. Key Claim Terms for Construction

The Term: "tunnel barrier height ... in a range of 0.2 to 0.5 eV" ('403 Claim 1; '263 Claim 1)

Context and Importance

The precise numerical value of the tunnel barrier height is a critical limitation in both asserted independent claims. Practitioners may focus on this term because the Plaintiff's primary piece of extrinsic evidence—a 2006 Seagate paper—appears to disclose a value (0.1 eV) that falls outside this explicit range (Compl. ¶37). The viability of the infringement case may depend heavily on the construction of this range and the evidence presented to show the accused products meet it.

Intrinsic Evidence for Interpretation

  • Evidence for a Broader Interpretation: The specification discusses the lowering of the barrier height as a key feature, noting that with oxygen vacancy defects, it is "thought to decrease (such as in the range of 0.10 to 0.85 eV; more specifically, 0.2 to 0.5 eV)" ('403 Patent, col. 6:52-54). A party might argue the broader "0.10 to 0.85 eV" range provides context that the claimed range is not an absolute, sharp boundary.
  • Evidence for a Narrower Interpretation: The claim language itself provides a specific, bounded numerical range. The specification provides an example where an "ideal tunnel barrier height of a MgO crystal is 3.6 eV" but that the invention achieves a height of "approximately 0.3 eV" ('403 Patent, col. 7:33-39), a value squarely within the claimed range. A party may argue this demonstrates the inventors contemplated and claimed this specific range to distinguish from other values.

The Term: "preferentially oriented" ('403 Claim 1; '263 Claim 1)

Context and Importance

This term defines the required crystalline quality of the MgO tunnel barrier, which is the core of the invention. Practitioners may focus on this term because it creates a potential distinction between the controlled, single-crystal growth described in the patent's embodiments and the potentially less-ordered structures resulting from commercial mass production.

Intrinsic Evidence for Interpretation

  • Evidence for a Broader Interpretation: The claim language uses the disjunctive phrase "single-crystalline... or a poly-crystalline... in which the (001) crystal plane is preferentially oriented" ('403 Patent, col. 2:27-31). This suggests the term is not limited to perfect single crystals and can encompass polycrystalline structures so long as there is a dominant orientation.
  • Evidence for a Narrower Interpretation: The patent's detailed description focuses heavily on creating high-quality epitaxial and single-crystal layers to enable coherent tunneling ('403 Patent, col. 5:1-20). The provided RHEED images (Figs. 3A, 3B) show highly ordered surfaces. A party could argue that "preferentially oriented" must be construed to require a degree of crystalline order high enough to achieve the "coherent spin polarized tunneling" that the patent identifies as the objective.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges Defendants induce infringement by providing customers with materials such as product datasheets and user manuals that encourage the use of the accused HDDs in an infringing manner (e.g., in computers and servers) (Compl. ¶¶63, 90, 118). It is also alleged that Defendants induce third-party distributors and resellers by working with them to sell the accused products (Compl. ¶¶64, 91, 119).
  • Willful Infringement: The complaint makes detailed allegations of willful infringement based on pre-suit knowledge. The asserted bases include: (1) Defendants' awareness of the inventor’s foundational work, as evidenced by citations in their own research papers from as early as 2006 (Compl. ¶36); (2) a prior patent litigation in Japan (2014-2017) on a counterpart patent (Compl. ¶57); and (3) licensing negotiations in 2018 where Defendants were allegedly informed of the U.S. patents but chose not to take a license, instead licensing only the Japanese portfolio (Compl. ¶¶58-59, 85-86).

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

  • A central issue will be one of evidentiary proof and technical fact: can the Plaintiff demonstrate that the commercially produced MgO layers in Seagate’s HDDs possess the specific "tunnel barrier height" of 0.2 to 0.5 eV, as explicitly required by the claims? This question is acute given that the complaint’s own supporting evidence points to a value of 0.1 eV, creating a factual conflict that will require expert testimony and discovery to resolve.
  • A second key question will be one of claim construction and scope: can the term "preferentially oriented", which is rooted in the patent's description of high-quality, epitaxially grown layers, be construed to encompass the crystalline structures achieved through Seagate's commercial-scale manufacturing processes?
  • Finally, the case will present a significant question regarding willfulness: do the detailed allegations of prior litigation in Japan and subsequent licensing negotiations, where Seagate allegedly learned of the U.S. patents but declined to license them, establish the "egregious" conduct necessary to support a finding of willful infringement?