DCT
2:18-cv-00020
Phenix Longhorn LLC v. Texas Instruments Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Phenix Longhorn, LLC (Texas)
- Defendant: Texas Instruments, Inc. (Delaware)
- Plaintiff’s Counsel: The Gikkas Law Firm, P.C.; MT² Law Group
- Case Identification: 2:18-cv-00020, E.D. Tex., 01/22/2018
- Venue Allegations: Plaintiff alleges venue is proper because Texas Instruments maintains multiple regular and established places of business in the district, including manufacturing plants, and has committed acts of infringement in the district.
- Core Dispute: Plaintiff alleges that Defendant’s programmable gamma (PGamma) integrated circuits infringe a patent related to generating gamma reference voltages for liquid crystal displays (LCDs).
- Technical Context: The technology concerns integrated circuits that provide precise, programmable reference voltages to correct color and brightness non-uniformities in LCD screens, a critical function for display fidelity.
- Key Procedural History: The complaint alleges that in 2012, the patent’s co-inventor, Mr. Orlando (then President of original assignee Alta Analog, Inc.), engaged in acquisition discussions with Texas Instruments’ Chief Technology Officer, Dr. Krenik. During these discussions, Mr. Orlando allegedly provided a list of Alta's patents that specifically identified the patent-in-suit as "significant." The complaint also alleges that Alta Analog marked its products with the patent number as early as 2009. These allegations form the basis for the willfulness claim.
Case Timeline
| Date | Event |
|---|---|
| 2002-03-01 | Alta Analog, Inc. (original patent owner) incorporated (approx.) |
| 2003-06-11 | ’305 Patent Priority Date |
| 2007-06-19 | ’305 Patent Issue Date |
| 2009-01-01 | Alta Analog, Inc. began marking products with ’305 patent (approx.) |
| 2012-06-01 | Inventor Mr. Orlando introduced to TI's Dr. Krenik (approx.) |
| 2012-06-29 | Conference call between Alta and TI to discuss technology (approx.) |
| 2012-07-17 | Mr. Orlando allegedly provides TI with a list including the ’305 patent (approx.) |
| 2018-01-22 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,233,305 - "Gamma Reference Voltage Generator"
The Invention Explained
- Problem Addressed: The patent describes the challenge of "Gamma Correction" in TFT flat-panel displays, which require specific reference voltages to ensure uniform color and brightness (Compl. ¶15). The traditional method used "Select-On-Test Resistors," which had to be manually selected, tested, and mounted for each individual display, a process described as a "major production problem" that was expensive and prohibited automated assembly (’305 Patent, col. 1:30-38).
- The Patented Solution: The invention is a programmable integrated circuit that generates and stores the necessary gamma reference voltages in non-volatile memory (’305 Patent, Abstract). This allows the correct voltage values to be programmed electronically during manufacturing and retained even when power is removed, eliminating the need for manual resistor selection (’305 Patent, col. 2:16-23). The circuit can store multiple sets, or "banks," of gamma correction curves, allowing for dynamic adjustment based on different application requirements (’305 Patent, col. 2:25-29).
- Technical Importance: The invention aimed to provide an automated, reprogrammable, and lower-cost solution to the problem of gamma correction, replacing a manual and inflexible prior art process (’305 Patent, col. 2:10-14).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶36).
- Essential elements of independent claim 1 include:
- A plurality of non-volatile storage cells.
- Circuits for programming the storage cells via a multiplexer.
- Drivers connected to the storage cells.
- The storage cells are organized into two or more "banks," with each bank containing a "predetermined gamma reference voltage signal display condition."
- "means to switch between the banks based on one or more external signals."
- The complaint does not explicitly reserve the right to assert dependent claims but references infringement of "one or more claims" generally (Compl. ¶35).
III. The Accused Instrumentality
Product Identification
- The complaint identifies five Texas Instruments integrated circuits: BUF16821, BUF08832, BUF08630, BUF22821, and BUF08821 (the "Infringing Products") (Compl. ¶23).
Functionality and Market Context
- The accused products are described as "Pgamma integrated circuits that improve the quality of a users' viewing experience while operating electronic products that have an LCD screen interface" (Compl. ¶23). They are alleged to be component parts incorporated into end products manufactured by third parties, including Apple computers (iMac series), Philips televisions, LG televisions, Toshiba televisions, and Samsung televisions (Compl. ¶¶ 25-29). The complaint alleges these circuits are manufactured in Texas and sold through a nationwide distribution network (Compl. ¶¶ 24, 30-31).
IV. Analysis of Infringement Allegations
The complaint alleges that the Infringing Products infringe at least claim 1 of the ’305 patent (Compl. ¶36).
’305 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a plurality of non-volatile storage cells | The complaint alleges the accused integrated circuits contain a plurality of non-volatile storage cells. | ¶36 | col. 2:20-22 |
| circuits for programming coupled to a multiplexer for addressing and programming said storage cells, wherein the addressing is based on a plurality of inputs | The complaint alleges the accused circuits contain circuits for programming coupled to a multiplexer for addressing and programming the storage cells. | ¶36 | col. 2:23-25 |
| drivers connected to said storage cells and to the plurality of outputs | The complaint alleges the accused circuits contain drivers connected to the storage cells and outputs. | ¶36 | col. 6:31-33 |
| wherein said voltage signals are gamma reference voltage signals for determining actual driving voltages of columns of a display | The complaint alleges the accused circuits generate gamma reference voltage signals for determining driving voltages of a display. | ¶36 | col. 1:23-26 |
| wherein said non-volatile storage cells are organized into two or more banks of cells wherein each bank contains a predetermined gamma reference voltage signal display condition | The complaint alleges the accused circuits organize their storage cells into two or more banks, each containing a predetermined gamma reference voltage signal display condition. | ¶36 | col. 6:50-52 |
| and means to switch between the banks based on one or more external signals is provided on said integrated circuit | The complaint alleges the accused circuits contain a means to switch between the banks based on one or more external signals. | ¶36 | col. 6:52-54 |
No probative visual evidence provided in complaint.
- Identified Points of Contention:
- Scope Questions: Claim 1 recites a "means to switch between the banks." This is a means-plus-function limitation under 35 U.S.C. § 112(f). The court must first identify the corresponding structure in the patent's specification (e.g., the "three address inputs B0, B1, B2" at col. 6:52-53) and then determine if the accused products contain an identical or equivalent structure. The complaint does not specify the structure within the accused products that allegedly performs this function.
- Technical Questions: A key evidentiary question will be whether the memory in the accused circuits is organized into distinct "banks" that each contain a "predetermined gamma reference voltage signal display condition," as required by the claim. The complaint does not provide specific evidence of how the accused products' memory is structured or what conditions it is pre-programmed to address.
V. Key Claim Terms for Construction
The Term: "means to switch between the banks based on one or more external signals"
- Context and Importance: This term is a means-plus-function limitation that is central to the claimed invention's flexibility. Its construction will define the specific hardware structure required to practice the invention. Infringement will depend on whether the accused products employ a structure that is identical or equivalent to the one disclosed in the patent. Practitioners may focus on this term because its construction and the subsequent infringement analysis are governed by the specific rules of 35 U.S.C. § 112(f).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The parties may dispute what constitutes an "external signal," which is not explicitly defined, potentially allowing for various types of input signals beyond simple address lines.
- Evidence for a Narrower Interpretation: The specification explicitly discloses the structure corresponding to this function as "the three address inputs B0, B1, B2," which are used to select one of eight "independent banks or groups of reference voltages" (’305 Patent, col. 6:51-54). A court may limit the scope of this term to that disclosed structure and its equivalents.
The Term: "predetermined gamma reference voltage signal display condition"
- Context and Importance: This term defines the content of each "bank" of memory cells. The scope of this term will determine what type of pre-stored information qualifies. Infringement requires showing that the accused products' memory banks contain data corresponding to a "display condition."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term is not explicitly defined, which could support a construction covering any set of pre-loaded gamma values intended for a specific purpose.
- Evidence for a Narrower Interpretation: The specification provides examples of such conditions, such as user or application requirements, or sensor feedback based on "temperature, lighting or other conditions present" (’305 Patent, col. 2:27-29; col. 7:28-30). A defendant may argue the term is limited to these types of adaptive or application-specific scenarios.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement by asserting that Texas Instruments actively encourages infringement by providing customers with "documentation, software, evaluation boards and/or evaluation modules" that instruct them on using the accused products in an infringing manner (Compl. ¶44). It also alleges contributory infringement, stating the accused circuits are a material part of the invention, are not a staple commodity suitable for substantial non-infringing use, and are known by Texas Instruments to be especially made for an infringing use (Compl. ¶46).
- Willful Infringement: The claim for willfulness is based on alleged pre-suit knowledge of the ’305 patent. The complaint alleges that Texas Instruments had actual notice as of July 2012, when the patent's inventor allegedly provided a list of patents to a TI executive that highlighted the ’305 patent as "significant" (Compl. ¶¶ 20, 48). The complaint also asserts constructive knowledge based on alleged patent marking by the original patent owner, Alta Analog, since at least 2009 (Compl. ¶33).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of structural equivalence: does the mechanism for selecting memory groups in the accused Texas Instruments circuits constitute an equivalent structure to the "means to switch between the banks" (specifically, the B0-B2 address inputs) disclosed in the ’305 patent, as required for infringement under 35 U.S.C. § 112(f)?
- A key factual question for willfulness will be one of pre-suit knowledge and intent: can Plaintiff prove that the 2012 discussions between its inventor and a Texas Instruments executive gave Defendant actual knowledge of the patent and its relevance, thereby making any subsequent infringement objectively reckless?
- The case may also turn on a question of definitional scope: does the data stored in the accused circuits' memory constitute a "predetermined gamma reference voltage signal display condition" as that term is understood in the context of the patent, or does it serve a more general purpose that falls outside the claim's scope?