DCT
2:18-cv-00199
Upf Innovations LLC v. Synopsys Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: UPF Innovations, LLC (Texas)
- Defendant: Synopsys, Inc. (Delaware)
- Plaintiff’s Counsel: Capshaw DeRieux LLP; Radulescu LLP
- Case Identification: 2:18-cv-00199, E.D. Tex., 05/10/2018
- Venue Allegations: Plaintiff alleges that venue is proper in the Eastern District of Texas because Defendant Synopsys has a regular and established place of business in Plano, Texas, within the district.
- Core Dispute: Plaintiff alleges that Defendant’s DesignWare® ARC EM Microprocessor Family infringes a patent related to generating unique identifiers for integrated circuits by leveraging inherent, random physical variations from the manufacturing process.
- Technical Context: The technology, often related to Physical Unclonable Functions (PUFs), provides a method for creating a unique, hardware-based "fingerprint" for individual microchips, a critical feature for anti-counterfeiting and cybersecurity.
- Key Procedural History: The patent-in-suit is a reissue of U.S. Patent No. 6,161,213. The complaint alleges that Plaintiff provided Defendant with pre-suit notice of the patent on September 25, 2017, which may be relevant to the allegation of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 1999-02-17 | Patent Priority Date (RE40,188) |
| 2000-12-12 | U.S. Patent No. 6,161,213 (Original Patent) Issued |
| 2002-12-12 | Reissue Application for RE40188 Filed |
| 2008-03-25 | U.S. Patent No. RE40,188 (Patent-in-Suit) Issued |
| 2017-09-25 | Plaintiff allegedly sent notice letter to Defendant |
| 2018-05-10 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. RE40,188 - "System and Method for Providing an Integrated Circuit with a Unique Identification"
- Patent Identification: U.S. Patent No. RE40,188, “System and Method for Providing an Integrated Circuit with a Unique Identification,” issued March 25, 2008.
The Invention Explained
- Problem Addressed: The patent addresses the cost and complexity of existing methods for uniquely identifying individual integrated circuits (ICs), which often require special manufacturing steps like laser marking or custom photomasks ('188 Patent, col. 2:36-44; Compl. ¶19).
- The Patented Solution: The invention proposes an integrated circuit identification (ICID) device that creates a unique ID by exploiting the "random parametric variations" that naturally occur during chip fabrication ('188 Patent, col. 2:50-54). The ICID includes an array of identically designed cells whose electrical outputs will nevertheless differ slightly due to these microscopic variations. A measurement circuit then captures this unique pattern of outputs to generate a stable and unique ID, or "fingerprint," for the chip without needing any post-manufacturing customization ('188 Patent, col. 2:57-62; Compl. ¶21). The complaint includes a functional block diagram from the patent illustrating this concept. This diagram, Figure 2 of the patent, shows an identification cell array (46) providing signals to a measurement circuit (50) to generate a unique ID (Compl. ¶23).
- Technical Importance: This technique provides a low-cost, intrinsic security measure built directly into the silicon, enabling reliable authentication and anti-counterfeiting without altering standard manufacturing flows (Compl. ¶15-16, ¶22).
Key Claims at a Glance
- The complaint asserts at least independent claim 21 (Compl. ¶40).
- Independent Claim 21 recites:
- An apparatus within an IC for generating an ID.
- An "identification circuit" formed within the IC that outputs "signals that are a substantial function of random parametric variations" in the IC.
- A "measurement circuit" that receives these signals and "generates the ID", where the ID itself is also a "substantial function of the random parametric variations".
- The complaint does not explicitly reserve the right to assert other claims but notes infringement of "one or more claims of the '188 Patent, including at least Claim 21" (Compl. ¶40).
III. The Accused Instrumentality
Product Identification
- The "Synopsys Accused Products" are identified as the DesignWare® ARC EM Microprocessor Family, including the EM4, EM6, EM5D, EM7D, EM9D, EM11D, EM4SI, and EM5DSI Microprocessor products (Compl. ¶36).
Functionality and Market Context
- The complaint alleges these products incorporate "design security systems" that include Physically Unclonable Functions ("PUFs") to protect against tampering and counterfeiting (Compl. ¶37).
- The accused functionality is a PUF based on SRAM cells. The complaint alleges that due to random manufacturing variations, these SRAM cells generate unique startup values (a pattern of 0s and 1s) that form a "unique device fingerprint called the SRAM PUF response" (Compl. ¶37-38). This fingerprint is then allegedly used to create "strong secret cryptographic keys" that serve as a root key for the system (Compl. ¶39).
IV. Analysis of Infringement Allegations
RE40,188 Infringement Allegations
| Claim Element (from Independent Claim 21) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An apparatus in an integrated circuit (IC) for generating an identification number (ID) identifying the IC | The Accused Products allegedly contain design security systems with PUFs, which use SRAM cells to generate a unique device fingerprint (the SRAM PUF response) that identifies the IC. | ¶37 | col. 18:15-18 |
| an identification circuit formed within the IC, the identification circuit outputting signals that are a substantial function of random parametric variations in the IC | Transistors within the Accused Products' SRAM cells allegedly have random electrical properties from manufacturing, which are expressed as a unique pattern of 0s and 1s at startup (the SRAM PUF response). This response constitutes the output signals. | ¶38 | col. 18:19-22 |
| a measurement circuit, the measurement circuit receiving the signals that are a substantial function of random parametric variations in the IC, wherein the measurement circuit generates the ID, wherein the ID is a substantial function of the random parametric variations | The Accused Products allegedly turn the "electronic fingerprint" (the SRAM PUF response) into a "strong secret cryptographic key," which functions as the ID. | ¶39 | col. 18:23-29 |
- Identified Points of Contention:
- Scope Questions: A central question may be whether the term "identification circuit", as taught in the patent with specific cell array embodiments (e.g., '188 Patent, Fig. 3), can be construed to cover standard SRAM cells that are not specifically designed for identification purposes.
- Technical Questions: The infringement theory equates the digital "SRAM PUF response" (startup 0s and 1s) with the "signals" from the "identification circuit". The patent, however, describes its "signals" primarily as analog current differences (IH and IL) between transistor pairs ('188 Patent, col. 5:22-32). This raises the question of whether a digital startup state is equivalent to the analog differential signals described in the patent.
- Functional Questions: It may be disputed whether the accused process of generating a "cryptographic key" from the SRAM PUF response is equivalent to the patent's "measurement circuit", which is described as measuring current differences to produce a serial output ID ('188 Patent, col. 5:51-56).
V. Key Claim Terms for Construction
"identification circuit"
- Context and Importance: Practitioners may focus on this term because the infringement allegation maps it to standard SRAM cells. The patent’s specification, however, describes a purpose-built "identification cell array" (Compl. ¶24). The scope of this term will be critical to determining whether the accused SRAM-based PUF falls within the claims.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent's summary states the invention includes a "set of circuit cells" whose outputs "are functions of random parametric variations that naturally occur when fabricating chips" ('188 Patent, col. 2:50-54), language that could arguably encompass any on-chip circuits exhibiting such properties.
- Evidence for a Narrower Interpretation: The preferred embodiments consistently depict a dedicated "identification cell array" (46) composed of specific transistor pairs designed to produce differential current outputs for measurement ('188 Patent, Fig. 2-4; col. 5:17-21). This suggests the "identification circuit" may be a specialized structure, not a pre-existing, general-purpose one like an SRAM block.
"measurement circuit"
- Context and Importance: This term is critical because the complaint alleges it is met by the process of turning the SRAM PUF response into a cryptographic key (Compl. ¶39). Whether this software- or hardware-based cryptographic function meets the definition of the claimed "measurement circuit" will be a key point of dispute.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Claim 21 functionally requires the circuit to "receive[] the signals" and "generate[] the ID." This could be interpreted to cover any circuitry that performs this input-output function.
- Evidence for a Narrower Interpretation: The specification describes a specific implementation of the "measurement circuit" (50) that includes an "auto-zeroing comparator" and other specific components to measure current differences and produce a "serial output ID" ('188 Patent, col. 5:51-56, Fig. 10). An opponent could argue this detailed disclosure limits the term to a circuit that performs a direct measurement and encoding, rather than a more complex cryptographic transformation.
VI. Other Allegations
Indirect Infringement
- The complaint alleges inducement of infringement, stating that Synopsys provides the Accused Products along with "documentation and training materials that cause customers... to utilize the products and services in a manner that directly infringes" (Compl. ¶45).
Willful Infringement
- The willfulness claim is based on alleged pre-suit knowledge of the '188 Patent from a notice letter dated September 25, 2017, as well as continued infringement after the complaint was filed. The complaint characterizes this as "reckless disregard and/or willful blindness" (Compl. ¶42-43).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of technical and definitional scope: can the patent's claims, which are supported by embodiments describing a dedicated analog "identification circuit" that produces differential current signals, be construed broadly enough to cover the accused functionality, which allegedly uses standard digital SRAM cells and their binary startup state (the "SRAM PUF response")?
- A key evidentiary question will be one of functional correspondence: does the accused products' process of generating a "cryptographic key" from a PUF response constitute infringement of the claimed "measurement circuit", or is there a fundamental mismatch in technical operation compared to the patent's disclosure of a circuit that directly measures and serially encodes physical variations?
- The interpretation of the term "substantial function" will likely be central, as it appears three times in the asserted independent claim and underpins the connection between the physical randomness, the resulting signals, and the final generated ID.