DCT

3:17-cv-00720

e-Tool Development, Inc. v Maxim Integrated Products, Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 3:17-cv-00720, D. Or., 05/08/2017
  • Venue Allegations: Venue is based on Defendant's operation of a fabrication facility in Beaverton, Oregon, and a research, design, and test facility in Hillsboro, Oregon.
  • Core Dispute: Plaintiffs allege that Defendant’s EE-Sim Tool, an online circuit design and simulation environment, infringes a patent related to network-based systems for configuring products by specifying performance characteristics.
  • Technical Context: The technology addresses the market need for automated tools that help engineers and designers select and configure complex products, such as specialty chemicals or integrated circuits, based on desired outcomes rather than a list of components.
  • Key Procedural History: The patent-in-suit, U.S. Patent No. 7,113,919, was the subject of an Inter Partes Reexamination. A certificate issued on January 16, 2015, confirmed the patentability of numerous claims, including many of those asserted in this litigation. This proceeding and its findings, particularly regarding claim construction, may significantly inform the current dispute.

Case Timeline

Date Event
2000-02-29 U.S. Patent No. 7,113,919 Priority Date
2006-09-26 U.S. Patent No. 7,113,919 Issue Date
2015-01-16 Inter Partes Reexamination Certificate for '919 Patent Issued
2017-05-08 Complaint Filing Date

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

U.S. Patent No. 7,113,919 - "System and Method for Configuring Products Over a Communications Network"

  • Patent Identification: U.S. Patent No. 7,113,919, "System and Method for Configuring Products Over a Communications Network," issued September 26, 2006.

The Invention Explained

  • Problem Addressed: The patent's background section describes the difficulty and resource-intensive nature of matching complex products, such as specialty chemicals or integrated circuits, with a buyer's specific performance needs. This process traditionally required extensive "seller hand holding" or sophisticated buyer knowledge, creating a barrier for smaller or less-specialized customers (Compl. ¶8; ’919 Patent, col. 1:16-32).
  • The Patented Solution: The invention is a network-based method that automates this process. Instead of selecting from a list of components, a user specifies desired performance characteristics for a final product. The system then searches a database of "formulations"—defined as specifications that impart the understanding to build at least a prototype—and presents those that match the user's criteria, effectively transforming the selection process from component-based to performance-based (’919 Patent, Abstract; ’919 Patent, col. 5:12-15). The system architecture is depicted in figures such as Figure 2, showing a user interacting with a formulation web site that includes various databases and software modules to perform the selection (’919 Patent, Fig. 2).
  • Technical Importance: This automated approach allows product designers to model potential solutions and evaluate performance without conducting laborious and time-consuming physical experiments, thereby accelerating the development cycle (Compl. ¶11).

Key Claims at a Glance

  • The complaint asserts independent claims 41, 51, 61, and 81 (Compl. ¶24).
  • Independent Claim 41 (Method for a supplier of specialty components):
    • Providing a computer database of promotional information, an offer to sell, and technical support information for making a plurality of product formulations.
    • Accepting input from a customer over a network indicative of customer-preferred characteristics.
    • Presenting technical support information with constituent components for formulations that correspond to the customer's characteristics.
    • Allowing the customer to select component combinations to create trial formulations.
    • Presenting performance characteristics for the trial formulation.
  • Independent Claim 61 (Method for promoting the sale of a specialty component):
    • Providing a computer database with promotional information, an offer to sell, and technical support for different formulations.
    • Accepting input from a customer specifying a product and a set of characteristics.
    • Selecting at least one formulation matching the input.
    • Providing an output of technical support information for making the selected formulation, including identification of the specialty component.
    • Providing an output of promotional information and an offer to sell the specialty component.
  • The complaint also asserts numerous dependent claims and reserves the right to assert additional claims (Compl. ¶12).

III. The Accused Instrumentality

Product Identification

  • Defendant's "EE-Sim Tool," an online "Design and Simulation Tool" and "Design Generation and Simulation Environment" (Compl. ¶19).

Functionality and Market Context

  • The EE-Sim Tool is alleged to be an internet-based platform where a customer can input detailed requirements for an electronic circuit, such as a DC/DC power solution (Compl. ¶¶19, 29). Based on these inputs, the tool "automatically creates a circuit schematic" complete with recommended components, which the user can then adjust, simulate, and analyze (Compl. ¶¶19, 20). The tool can generate a bill of materials (BOM), provide performance data like Bode plots and voltage graphs, and allow for the purchase of components (Compl. ¶¶19, 28, 33).
  • The complaint alleges that Defendant’s business strategy shifted from being a "second source" supplier to creating innovative, "proprietary products," which Plaintiffs frame as the "specialty components" central to the patent's claims (Compl. ¶¶14, 16).
  • The complaint provides a flowchart from Defendant's website illustrating the accused process. The flowchart depicts a user specifying input requirements, which leads to an online design and simulation, with options to make changes or proceed to download or share the design (Compl. ¶19, p. 9).

IV. Analysis of Infringement Allegations

U.S. Patent No. 7,113,919 Infringement Allegations

Claim Element (from Independent Claim 41) Alleged Infringing Functionality Complaint Citation Patent Citation
A network-based method for a supplier of specialty components to provide promotional information about the specialty components including technical support information to a customer for making a formulation... Maxim's EE-Sim Tool is an internet-based method that provides promotional and technical support information for making electronic circuit designs using Maxim's proprietary components (Compl. ¶25). ¶25, 26 col. 19:30-38
accepting input from the customer over the network indicative of characteristics of a plurality of said formulations... The EE-Sim Tool accepts customer input over the network, such as design requirements for a DC/DC power solution (e.g., voltage, output current) (Compl. ¶29). ¶29 col. 19:40-42
selecting said plurality of said formulations in the database matching the characteristics... The EE-Sim Tool selects product formulations (i.e., circuit designs) from its database that are intended to match the customer's specified requirements (Compl. ¶30). ¶30 col. 19:43-45
providing an output to the customer over the network of said formulations selected and technical support information for making said formulations selected... The tool provides a "suggested design" as an output, including an interactive schematic and a bill of materials, enabling a customer to build the circuit (Compl. ¶¶30, 31). ¶30, 31 col. 19:46-53
accepting input from a customer over the network selecting more than one of said formulations selected as trial formulations... The tool allows a customer to modify the suggested design by changing components or their values, thereby creating alternative "trial formulations" (Compl. ¶32). ¶32 col. 19:54-56
providing an output to the customer over the network of performance characteristics for each of said trial formulations... The tool provides simulation results, including performance information such as waveforms, Bode plots, voltage graphs, and transient output ripple voltage (Compl. ¶33). ¶33 col. 19:57-61
  • Identified Points of Contention:
    • Scope Questions:
      • A central question will be whether the "interactive schematic" and "bill of materials" generated by the EE-Sim Tool constitute "technical support information for making... a formulation" as required by the claims. The patent defines "formulation" as a specification that "impart[s] the understanding to build at least a prototype product" (’919 Patent, col. 5:12-15). The dispute may turn on whether the tool's output is sufficient to enable a person of ordinary skill to physically construct the circuit.
      • The analysis may question whether Defendant's integrated circuits are properly classified as "specialty components." The defense could argue they are standard, off-the-shelf parts, while Plaintiffs allege they are proprietary and non-fungible, consistent with the construction adopted during reexamination (Compl. Ex. 2, p. 10).
    • Technical Questions:
      • Does the EE-Sim Tool's function of generating a design based on user-input electrical parameters (e.g., 10.8V input) meet the claim limitation of selecting a "formulation" that "matches" the "characteristics" specified by the customer? The court may need to determine if inputting engineering parameters is legally equivalent to selecting from pre-defined performance characteristics.

V. Key Claim Terms for Construction

  • The Term: "specialty component"

  • Context and Importance: This term is foundational, as the asserted claims are directed to methods involving such components. The infringement case depends on demonstrating that Defendant's proprietary integrated circuits, offered via the EE-Sim tool, meet this definition. Practitioners may focus on this term because its construction was a key issue during reexamination, where the Patent Trial and Appeal Board (PTAB) found it suggests "uniqueness" and non-fungibility (Compl. Ex. 2, p. 10).

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification discusses "specialty chemicals" and "integrated circuits" as examples, and notes that for many such products, "tech service" is needed to support their adoption, distinguishing them from fungible commodities (’919 Patent, col. 2:60-64).
    • Evidence for a Narrower Interpretation: The patent contrasts "specialty" components with those having many "competitive alternatives," stating they are often "proprietary in nature" (’919 Patent, col. 2:44-52). This language supports a narrower definition limited to unique or non-fungible products.

  • The Term: "technical support information for making a... formulation"

  • Context and Importance: The core of the infringement allegation is that Defendant provides this type of information. The dispute will hinge on whether the output of the EE-Sim tool (schematics, BOMs, simulation data) constitutes information "for making" a physical product, not just for modeling one. The PTAB linked this term to the patent's definition of "formulation" as imparting "the understanding to build at least a prototype product" (Compl. Ex. 2, p. 11; ’919 Patent, col. 5:12-15).

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The patent mentions providing a "starter product or formulation that describes one or more basic uses of the component," which a customer uses as a "starting point," suggesting the information need not be an exhaustive, final blueprint (’919 Patent, col. 2:4-9).
    • Evidence for a Narrower Interpretation: The patent explicitly defines "formulation" as a "product specification... [that] impart[s] the understanding to build at least a prototype product" (’919 Patent, col. 5:12-15). This suggests the information must be sufficient to enable physical fabrication, a higher standard than mere modeling.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement of infringement under 35 U.S.C. § 271(b). The factual basis is that Defendant provides the EE-Sim Tool and "caused, urged and encouraged its customers to use the EE-SIM Tool" in a manner that directly infringes the patent's method claims, with knowledge of the patent and the infringing nature of the use (Compl. ¶22, 24).
  • Willful Infringement: The complaint does not contain a separate count for willfulness. However, the prayer for relief requests enhanced damages "up to three times the actual amount assessed, pursuant to 35 U.S.C. § 284" (Compl. p. 24, ¶4). The complaint alleges that Defendant encouraged use of the EE-Sim tool "with knowledge of the '919 Patent" (Compl. ¶22), which could form the basis for a willfulness argument.

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

The dispute appears to center on claim construction issues that were previously addressed in a favorable reexamination proceeding, setting the stage for a focused legal battle. The key questions for the court will likely be:

  • A core issue will be one of definitional scope: Does the "interactive schematic" generated by the EE-Sim Tool meet the patent's specific definition of a "formulation"—a specification that imparts the understanding necessary "to build at least a prototype product"—or does it merely provide information for modeling?
  • A key evidentiary question will be one of characterization: Do Defendant's integrated circuits, as offered through the EE-Sim tool, factually qualify as "specialty components" under the patent's framework, which requires a degree of uniqueness or non-fungibility, as opposed to being commodity products?
  • A central infringement question will be one of process mapping: Does the user workflow within the EE-Sim tool—inputting electrical parameters and receiving a generated circuit design—map directly onto the claimed method steps, which recite a customer selecting from "formulations" based on "characteristics"?