Celebration IP LLC v. STMicroelectronics Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Celebration IP LLC (Texas)
  • Defendant: STMicroelectronics, Inc. (Delaware)
  • Plaintiff’s Counsel: Rabicoff Law LLC
• Case Identification: 2:20-cv-00162, E.D. Tex., 05/29/2020
• Venue Allegations: Plaintiff alleges venue is proper because Defendant has committed acts of patent infringement in the district and maintains an established place of business in the district.
• Core Dispute: Plaintiff alleges that Defendant’s semiconductor products infringe a patent related to battery discharge control circuits.
• Technical Context: The technology concerns electronic circuits designed to prevent the over-discharge of batteries, a critical function for preserving the lifespan and safety of portable electronic devices.
• Key Procedural History: The complaint does not reference any prior litigation, inter partes review (IPR) proceedings, or specific licensing history related to the patent-in-suit.

Case Timeline

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

U.S. Patent No. 6,346,795 - "Discharge control circuit of batteries"

• Patent Identification: U.S. Patent No. 6,346,795, “Discharge control circuit of batteries,” issued February 12, 2002.

The Invention Explained

• Problem Addressed: The patent addresses the problem of securely preventing the "over-discharge" of batteries, particularly lithium-ion batteries in portable electronics (ʼ795 Patent, col. 1:4-9). A specific issue with conventional circuits is that after a discharge is cut off, the battery's cell voltage can instantaneously recover. This recovery could cause the control circuit to re-engage the discharge, leading to an unstable on-off cycle that fails to protect the battery (ʼ795 Patent, col. 3:49-65).
• The Patented Solution: The invention proposes a control circuit that includes a "switch holding circuit." After a low-voltage condition triggers a "discharge stop signal," this holding circuit ensures the stop signal is continuously supplied to the discharge switch for a predetermined time, regardless of any immediate recovery in the cell's voltage (ʼ795 Patent, col. 4:15-24; Abstract). This creates a mandatory "off" period, preventing the unstable cycling described as a problem in the prior art and ensuring the battery is protected (ʼ795 Patent, col. 5:37-45, Fig. 4).
• Technical Importance: This approach provides a more robust method for protecting batteries from damaging over-discharge, which is crucial for extending the operational life and ensuring the reliability of portable devices (ʼ795 Patent, col. 1:6-9).

Key Claims at a Glance

• The complaint alleges infringement of "one or more claims" of the ’795 Patent, identified as "Exemplary '795 Patent Claims" in an external chart not provided with the complaint (Compl. ¶11).
• Independent Claim 1, an apparatus claim, includes the following essential elements:
  • A discharge control switch connected to the battery for cutting off a discharge current in response to a discharge stop signal.
  • A control circuit connected to the battery and the switch for generating the discharge stop signal when a cell voltage reaches a lower limit.
  • The control circuit includes a "switch holding circuit" for continuously supplying the discharge stop signal to the discharge control switch for a predetermined time after the signal is generated.

III. The Accused Instrumentality

Product Identification

• The complaint does not identify any specific accused products by name in its text. It refers to "Exemplary Defendant Products" that are identified in charts included as Exhibit 2 (Compl. ¶11, ¶17). However, Exhibit 2 was not filed as part of the public complaint document.

Functionality and Market Context

• The complaint alleges that the accused products are semiconductor devices sold by Defendant (Compl. ¶11, ¶15). It further alleges that these products are incorporated by Defendant's customers into "end-user products" (Compl. ¶15). The complaint does not provide sufficient detail for analysis of the technical functionality or market context of any specific accused product.

IV. Analysis of Infringement Allegations

The complaint references claim charts in an external "Exhibit 2" to detail its infringement allegations but does not include this exhibit with the filing (Compl. ¶17). Therefore, a detailed claim-chart analysis is not possible.

The complaint’s narrative theory of infringement alleges that the "Exemplary Defendant Products" practice the technology claimed by the ’795 Patent (Compl. ¶17). Plaintiff alleges that these products satisfy all elements of the asserted claims, including the limitations of the independent claims (Compl. ¶17). The allegations cover direct infringement through Defendant's own making, using, testing, and selling of the products, as well as indirect infringement through sales to customers for incorporation into end-user devices (Compl. ¶11-12, ¶15).

No probative visual evidence provided in complaint.

V. Key Claim Terms for Construction

• The Term: "switch holding circuit"
• Context and Importance: This term appears in independent claim 1 and captures the core inventive concept of maintaining a stable "off" state. The construction of this term will be central to the dispute, as it defines the specific function that distinguishes the invention from prior art that might permit unstable on-off cycling. Practitioners may focus on this term because the infringement analysis will depend on whether the accused circuitry, whatever its specific implementation, performs the function of this element as claimed.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party could argue for a broad, functional definition based on the language in claim 1 itself: a circuit "for continuously supplying the discharge stop signal... for a predetermined time after the discharge stop signal is generated" (’795 Patent, col. 16:39-42). This interpretation would cover any structure that achieves this functional outcome. The Summary of the Invention also describes the circuit in these high-level functional terms (ʼ795 Patent, col. 4:15-24).
  • Evidence for a Narrower Interpretation: A party could argue the term should be limited by the specific structures disclosed in the specification. For example, one embodiment discloses a "hysteresis buffer" (16) as a component of the delay time setting circuit that accomplishes this holding function (’795 Patent, col. 5:49-65, Fig. 5). Another embodiment uses a second latch circuit (19) to "invalidate a reset operation of the first latch circuit" for a predetermined time (’795 Patent, col. 12:21-26, Fig. 7). A defendant could argue these embodiments define the scope of the claimed "switch holding circuit."

VI. Other Allegations

• Indirect Infringement: The complaint alleges induced infringement based on Defendant selling the accused products to customers for use in end-user devices (Compl. ¶15). It further alleges inducement through the distribution of "product literature and website materials" that instruct users on the infringing use of the products (Compl. ¶14). Contributory infringement is alleged on the basis that the accused products are not staple articles of commerce suitable for substantial noninfringing use (Compl. ¶16).
• Willful Infringement: The complaint does not use the word "willful." However, it alleges that the filing of the complaint provides "actual knowledge of infringement" and that Defendant's continued infringement thereafter is intentional (Compl. ¶13, ¶14). These allegations may form the basis for a claim of post-filing willful infringement.

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

1. A Threshold Evidentiary Question: Given the complaint’s lack of specific technical detail about the accused products, a primary issue will be an evidentiary one: what proof can Plaintiff provide that STMicroelectronics’ semiconductor circuits contain a structure that performs the function of the claimed "switch holding circuit"? The case will depend heavily on the facts developed during discovery.

2. A Core Question of Claim Scope: The case will likely turn on the construction of the term "switch holding circuit". The central question for the court will be whether this functional limitation is broad enough to read on Defendant's accused technology or if its scope is implicitly limited by the specific hysteresis buffer and dual-latch embodiments disclosed in the patent's specification.