DCT

3:21-cv-00633

MicroPairing Tech LLC v. Nissan Motor Co Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 3:21-cv-00633, M.D. Tenn., 12/01/2021
  • Venue Allegations: Venue is alleged to be proper in the Middle District of Tennessee because Defendant’s principal place of business is located in the district, and a substantial part of the alleged infringing activities occurred there.
  • Core Dispute: Plaintiff alleges that Defendant’s vehicle infotainment systems, which utilize the AUTOSAR platform, infringe four patents related to managing software applications in a secure, distributed, multi-processor environment.
  • Technical Context: The technology concerns the foundational software architecture for managing multiple, distinct applications (e.g., critical safety functions and non-critical infotainment) on the complex, multi-processor systems found in modern vehicles.
  • Key Procedural History: This filing is a First Amended Complaint. The complaint alleges that Defendant was put on notice of infringement prior to the lawsuit via a notice letter that included claim charts, a fact which forms part of the basis for the willfulness allegations.

Case Timeline

Date Event
2002-04-24 Priority Date for U.S. Patents 7,178,049; 8,020,028; 8,006,117; and 7,793,136
2007-02-13 U.S. Patent 7,178,049 Issued
2010-09-07 U.S. Patent 7,793,136 Issued
2011-08-23 U.S. Patent 8,006,117 Issued
2011-09-13 U.S. Patent 8,020,028 Issued
2021-12-01 First Amended Complaint Filed

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

U.S. Patent No. 7,178,049 - "Method for Multi-Tasking Multiple Java Virtual Machines in a Secure Environment"

  • Patent Identification: U.S. Patent No. 7,178,049, "Method for Multi-Tasking Multiple Java Virtual Machines in a Secure Environment," issued February 13, 2007. (Compl. ¶8).

The Invention Explained

  • Problem Addressed: The patent’s background section, as described in the complaint, identifies a need in distributed, real-time multiprocessor systems. It notes that while Java/Jini environments provided a platform for code to move between machines, they lacked the "necessary reconfiguration and security management" for such systems. (Compl. ¶15; ’049 Patent, col. 2:22-35).
  • The Patented Solution: The invention proposes a "Secure Real-time Executive" (SRE) that functions as a layer below the Java Virtual Machines (JVMs) to manage and secure operations across multiple processors. (Compl. ¶15; ’049 Patent, col. 2:36-42). This SRE is described as being able to manage tasks and assign priorities, for instance, by preventing a non-critical application like "audio control" from disrupting or taking priority over a critical "brake control application." (Compl. ¶16; ’049 Patent, col. 2:57-3:8).
  • Technical Importance: The technology aimed to enable the use of a hardware-independent language like Java in secure, real-time, safety-critical embedded systems, such as those in vehicles. (Compl. ¶16).

Key Claims at a Glance

  • The complaint asserts claims 29-31. Independent method claim 29 includes the following essential elements:
    • identifying vehicle applications running on different processors in the multiprocessor system;
    • operating a task manager that obtains data and state information associated with the applications;
    • operating a configuration manager that notifies the task manager upon detecting a failure of one of the applications;
    • using the task manager to automatically identify another processor and redirect the application associated with the failure;
    • using the configuration manager to redirect the data and state information to the new processor; and
    • initiating the application on the new processor. (Compl. ¶17).

U.S. Patent No. 8,020,028 - "Application Management System for Mobile Devices"

  • Patent Identification: U.S. Patent No. 8,020,028, "Application Management System for Mobile Devices," issued September 13, 2011. (Compl. ¶9).

The Invention Explained

  • Problem Addressed: The complaint explains that the patent addresses the insufficiency of security in prior art Java/Jini systems, where it is necessary to "restrict code sharing or operation sharing among selected devices in a secure embedded system." (Compl. ¶19; ’028 Patent, col. 1:51-61).
  • The Patented Solution: Like the '049 patent, this invention describes a Secure Real-time Executive (SRE) that extends the JVM to allow Java to run on different processors for real-time applications, managing messaging, security, and task control. (Compl. ¶20; ’028 Patent, col. 2:39-47). A core function is to ensure critical applications (e.g., braking) are not disrupted by non-critical ones by managing how applications are loaded and processed. (Compl. ¶21; ’028 Patent, col. 2:60-3:10).
  • Technical Importance: The invention provides a method for reconfiguring applications in a multiprocessor environment, which is crucial for systems that must integrate new or external devices securely. (Compl. ¶22).

Key Claims at a Glance

  • The complaint asserts at least claim 18. Independent method claim 18 includes the following essential elements:
    • operating a wireless device manager configured to monitor for and connect a new device;
    • operating a configuration manager configured to monitor processors, identify data codes from the new device, and in response, select, download, and reconfigure a processor to run a second software application to take over control of the new device; and
    • operating a security manager configured to determine authority to access devices, applications, or data. (Compl. ¶22).

Multi-Patent Capsule: U.S. Patent No. 8,006,117 - "Method for Multi-Tasking Multiple Java Virtual Machines in a Secure Environment"

  • Patent Identification: U.S. Patent No. 8,006,117, "Method for Multi-Tasking Multiple Java Virtual Machines in a Secure Environment," issued August 23, 2011. (Compl. ¶10).
  • Technology Synopsis: The ’117 patent, like the others, addresses security and management shortcomings in Java/Jini environments for real-time, multi-processor systems. (Compl. ¶18-19). It discloses a computer system with an application management system configured to securely connect a new device, verify its data parameters, and dynamically configure and launch an application to process data from the new device. (Compl. ¶23).
  • Asserted Claims: At least claim 1. (Compl. ¶75).
  • Accused Features: Nissan vehicles with infotainment systems. (Compl. ¶75).

Multi-Patent Capsule: U.S. Patent No. 7,793,136 - "Application Management System with Configurable Software Applications"

  • Patent Identification: U.S. Patent No. 7,793,136, "Application Management System with Configurable Software Applications," issued September 7, 2010. (Compl. ¶11).
  • Technology Synopsis: The ’136 patent addresses the same prior art deficiencies related to using Java/Jini in secure, embedded systems. (Compl. ¶25). Its solution involves an SRE with a message manager that determines message priority and a task manager that controls task priority, ensuring that a high-priority task (e.g., a "sensor fusion thread") is performed before a lower-priority one (e.g., an "audio application"). (Compl. ¶28; ’136 Patent, col. 4:60-5:3).
  • Asserted Claims: At least claims 1 and 31. (Compl. ¶84).
  • Accused Features: Nissan vehicles with infotainment systems. (Compl. ¶84).

III. The Accused Instrumentality

  • Product Identification: The accused instrumentalities are "Nissan vehicles with infotainment systems and/or that operate on the AUTOSAR platform." (Compl. ¶6). The complaint specifically identifies the "NissanConnect" system by referencing its 2021 owner's manual. (Compl. ¶46, ¶65, ¶88).
  • Functionality and Market Context: The complaint alleges that the accused systems are distributed, multi-processor systems that implement the AUTOSAR (AUTomotive Open System ARchitecture) platform. (Compl. ¶37). This platform is alleged to manage and systematize various software applications within the vehicle, including both critical "safety and control systems" and non-critical infotainment functions. (Compl. ¶38). Plaintiff alleges that Nissan markets these systems as providing "redundant and/or fault tolerant safety and control systems" and "seamless integration of key infotainment system functionality," and that Nissan controls the software's operation. (Compl. ¶37-39). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint alleges infringement of all four patents-in-suit but relies on references to external exhibits (Exhibits 5, 6, 7, and 8) for detailed, element-by-element claim charts, which were not included with the complaint itself. (Compl. ¶35, ¶54, ¶73, ¶82).

The narrative infringement theory for method claims in the '049 and '028 patents is based on a theory of direct infringement under 35 U.S.C. § 271(a). Plaintiff alleges that Nissan "directs and controls" the performance of the claimed method steps because it develops and implements the accused software (the AUTOSAR platform and infotainment systems) in its vehicles. (Compl. ¶37, ¶56). The complaint asserts that this software is "not accessible to end users and automatically performs the steps of the claimed methods through normal operation of the vehicles... without action by users," thereby placing control over the execution of all method steps with Nissan. (Compl. ¶37, ¶56).

The infringement allegations for the apparatus and system claims of the '117 and '136 patents are based on Nissan making, using, selling, and testing vehicles that contain the infringing infotainment systems. (Compl. ¶75, ¶84).

V. Key Claim Terms for Construction

'049 Patent (Claim 29)

  • The Term: "task manager" / "configuration manager"
  • Context and Importance: Claim 29 recites specific actions performed by a "task manager" and a "configuration manager." The infringement analysis will depend on whether Nissan's AUTOSAR-based system has components that can be mapped to these two distinct functional roles. Practitioners may focus on these terms because the defense could argue that its system architecture is integrated differently and does not contain the specific, separate manager structures required by the claim.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes the SRE in functional terms, stating it "manages messaging, security, critical data, file I/O multiprocessor task control and watchdog tasks." (’049 Patent, col. 2:38-41). Plaintiff may argue that any software module or set of modules performing the claimed functions meets the definition, regardless of its name or implementation as a single block.
    • Evidence for a Narrower Interpretation: Figure 3 of the '049 patent depicts the "Task Manager (58)" and "Configuration Manager (60)" as distinct, separate blocks within the SRE (14). Defendant may argue this figure defines the terms as requiring structurally separate software modules, not merely a set of distributed functions.

'028 Patent (Claim 18)

  • The Term: "select a second software application ... wherein the second software application ... is not currently loaded into one of the multiple processors"
  • Context and Importance: This limitation is central to the method of dynamically adding functionality for a new device. The dispute may turn on the definition of "not currently loaded." Practitioners may focus on this term because the technical reality of modern embedded systems often involves pre-installing all possible software, which is then activated from non-volatile memory, rather than being "downloaded" in real time.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: Plaintiff could argue that "loaded into... the... processors" refers to being active in the processor's volatile RAM and ready for execution, and that an application stored in non-volatile flash memory is therefore "not currently loaded" until it is copied into RAM.
    • Evidence for a Narrower Interpretation: Element (f) of the same claim requires to "download a copy of the second software application selected from the memory." (’028 Patent, claim 18). Defendant may argue that the term "download" implies fetching the application from a separate storage location, and that the combination of "not currently loaded" and "download" excludes the mere activation of a pre-installed application already resident in the system's primary storage.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement to infringe the '049, '028, and '136 patents. The allegations are based on Nissan providing customers with owner's manuals and other instructions (e.g., the 2021 NissanConnect Owner's Manual) that allegedly instruct and encourage end users to operate their vehicles in a manner that performs the steps of the claimed methods. (Compl. ¶46, ¶65, ¶88).
  • Willful Infringement: The complaint alleges willful infringement of the '049, '028, and '136 patents. The basis for willfulness is two-fold: (1) alleged pre-suit knowledge based on "independent notice of infringement from MicroPairing (complete with claim charts) served via Federal Express," and (2) post-suit knowledge from the service of the original and amended complaints. (Compl. ¶44-45, ¶63-64, ¶86-87). The complaint further alleges that Nissan’s failure to respond to the notice or take remedial action constitutes willful blindness. (Compl. ¶47, ¶66, ¶89).

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

  • A core issue will be one of architectural mapping: Can the functional descriptions of the claimed "task manager," "configuration manager," and "security manager" be mapped onto the components of Nissan's allegedly infringing AUTOSAR-based infotainment systems, or is there a fundamental mismatch between the patent's claimed architecture and the accused product's design?
  • A key evidentiary question will be one of technical operation: Does Nissan's system, when integrating a new device, perform the specific step of "download[ing] a copy" of an application that was "not currently loaded," as required by claims in the '028 patent, or does it merely activate a pre-existing application already resident in the system's memory?
  • A central legal question for the asserted method claims will be one of control and direction: Does Nissan, as the software developer and vehicle manufacturer, exercise sufficient "control or direction" over the automatic, background operation of its infotainment systems to be held liable as a single actor for direct infringement of the multi-step methods?