Mallard IP LLC v. Schweitzer Engineering Laboratories Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Mallard IP LLC (Texas)
  • Defendant: Schweitzer Engineering Laboratories, Inc. (Washington)
  • Plaintiff’s Counsel: KENT & RISLEY LLC
• Case Identification: 2:21-cv-00472, E.D. Tex., 12/29/2021
• Venue Allegations: Plaintiff alleges venue is proper because Defendant maintains a regular and established place of business within the Eastern District of Texas and has allegedly committed acts of infringement in the district.
• Core Dispute: Plaintiff alleges that Defendant’s SEL-3355 Automation Controller infringes a patent related to dynamically configurable digital circuit architecture for microcontrollers.
• Technical Context: The technology at issue concerns programmable digital circuit blocks designed for efficiency and flexibility, a core component in microcontrollers used across a wide range of electronic devices.
• Key Procedural History: The complaint does not mention any prior litigation, inter partes review proceedings, or licensing history related to the patent-in-suit. Plaintiff asserts ownership of the patent through an assignment recorded with the USPTO.

Case Timeline

Date	Event
2000-10-26	’330 Patent Priority Date
2001-07-18	’330 Patent Application Filing Date
2003-08-05	’330 Patent Issue Date
2021-12-29	Complaint Filing Date

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

U.S. Patent No. 6,603,330 - "Configuring Digital Functions in a Digital Configurable Macro Architecture"

• Patent Identification: U.S. Patent No. 6,603,330, “Configuring Digital Functions in a Digital Configurable Macro Architecture,” issued August 5, 2003 (’330 Patent).

The Invention Explained

• Problem Addressed: The patent’s background section identifies the inefficiency of conventional Field Programmable Gate Arrays (FPGAs) for cost-sensitive microcontroller applications. It states that FPGAs are inefficient with respect to chip area, increasing cost, and that reprogramming them to implement a new function is a "time consuming task." (’330 Patent, col. 1:46-57).
• The Patented Solution: The invention describes a "programmable digital circuit block" architecture designed to be dynamically configured to perform any one of a variety of predetermined digital functions (e.g., timers, counters, communication ports) by changing the contents of a small number of configuration registers (’330 Patent, Abstract). This approach is intended to be fast and efficient, as the underlying circuit components are specifically designed for reuse across this limited set of functions, minimizing die area and allowing for "real-time processing." (’330 Patent, col. 2:1-8, 28-32). Figure 1 illustrates the core architecture, including configuration registers (50), selectable logic circuits (30), and data registers (40).
• Technical Importance: This architecture sought to provide the flexibility of programmable logic while maintaining the size and cost efficiencies required for microcontroller applications. (’330 Patent, col. 1:58-62).

Key Claims at a Glance

• The complaint asserts independent method claim 25 (’330 Patent, col. 10:55-68; Compl. ¶15).
• The essential elements of claim 25 are:
  • loading a plurality of configuration data corresponding to any one of a plurality of predetermined digital functions into a configuration register of said programmable digital circuit block; and
  • configuring said programmable digital circuit block to perform any one of said plurality of predetermined digital functions based on said configuration data,
  • wherein said loading and configuring steps are dynamically performed, and
  • wherein said programmable digital circuit block includes a data register for storing data to facilitate performing any one of said plurality of predetermined digital functions.
• The complaint does not explicitly reserve the right to assert other claims.

III. The Accused Instrumentality

Product Identification

• Defendant's SEL-3355 Automation Controller (Compl. ¶15).

Functionality and Market Context

• The complaint identifies the accused product by name but does not provide any specific details about its technical functionality, operation, or market role. All infringement allegations are detailed in a preliminary claim chart attached as Exhibit B, which was not publicly available for this analysis (Compl. ¶15).

IV. Analysis of Infringement Allegations

The complaint references a preliminary claim chart (Exhibit B) that was not provided, which prevents a detailed tabular analysis (Compl. ¶15). The complaint’s narrative theory of infringement is limited to the assertion that Defendant's SEL-3355 Automation Controller infringes at least claim 25 of the ’330 Patent (Compl. ¶15). Without the claim chart, the specific manner in which the accused product allegedly performs the claimed method steps is not described in the complaint.

No probative visual evidence provided in complaint.

• Identified Points of Contention: Based on the claim language and the nature of the technology, the dispute may center on several technical and legal questions.
  • Scope Questions: Does the architecture of the SEL-3355 Automation Controller contain a "programmable digital circuit block" that operates by selecting from a set of "predetermined digital functions," as required by the claim? A key question may be whether the accused device's functionality is constrained to a predetermined set in the manner described by the patent, or if it functions more like a general-purpose processor or FPGA.
  • Technical Questions: What evidence does the complaint provide that the accused product "dynamically" performs the loading and configuring steps? The patent contrasts this with the "time consuming" reprogramming of FPGAs, suggesting the analysis may focus on the speed, mechanism, and context (e.g., real-time) of any configuration changes in the accused device.

V. Key Claim Terms for Construction

• The Term: "predetermined digital functions"

• Context and Importance: This term is central to distinguishing the invention from a generic, fully programmable device like an FPGA. The patent's premise is that by limiting the block to a pre-selected set of functions, it achieves greater efficiency. The scope of "predetermined" will be critical to the infringement analysis. Practitioners may focus on this term because its definition will determine whether the accused product's set of configurable operations falls within the claim's scope.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The claim language uses the open-ended phrase "a plurality of predetermined digital functions" without limitation (’330 Patent, col. 10:57-58). The specification lists examples such as timers, counters, and communication protocols, but does not state this list is exhaustive (’330 Patent, col. 4:1-7).
  • Evidence for a Narrower Interpretation: The patent repeatedly emphasizes that the circuit components are "designed for reuse in several of the predetermined digital functions such that to minimize the size of the programmable digital circuit block" (’330 Patent, col. 3:60-64). This could support an argument that the set of functions is inherently limited by the specific, shared hardware architecture, implying a narrower, fixed set defined at the time of manufacture. Claim 6, which depends from claim 1, recites a specific list of such functions (’330 Patent, col. 8:41-47).

• The Term: "dynamically performed"

• Context and Importance: This term describes the required nature of the configuration process. The infringement case hinges on showing the accused device performs its configuration in a manner that is "dynamic." Practitioners may focus on this term because it directly relates to the patent's asserted technical advantage over the prior art's "time consuming" reprogramming tasks.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The term could be construed broadly to mean any reconfiguration that occurs during the device's operation, as opposed to only at initial programming or boot-up.
  • Evidence for a Narrower Interpretation: The specification links dynamic configuration to "real-time processing" and states that changes can be "accomplished by changing the contents of the configuration registers" which enables the block to be configured "on-the-fly" (’330 Patent, col. 2:28-32; col. 5:20-22). This may support a narrower construction requiring a very fast, low-overhead process, potentially initiated by a simple register write.

VI. Other Allegations

• Indirect Infringement: The complaint does not contain allegations of induced or contributory infringement. It alleges that Defendant "has made, used, sold, offered for sale, and/or imported" infringing products, which corresponds to direct infringement (Compl. ¶14).
• Willful Infringement: The complaint does not include an explicit allegation of willful infringement. It requests that the court declare the case "exceptional" and award attorneys' fees under 35 U.S.C. § 285, but does not allege the pre-suit knowledge or egregious conduct typically associated with a willfulness claim (Compl. Prayer for Relief ¶D).

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

• A core issue will be one of architectural correspondence: Can the plaintiff demonstrate that the SEL-3355 Automation Controller, a specialized industrial product, contains a discrete "programmable digital circuit block" that operates by selecting from a set of "predetermined digital functions," as that concept is defined in a patent directed at general microcontroller design?
• A key evidentiary question will be one of operational equivalence: What technical evidence will be adduced to show that the accused device performs the claimed method of "loading" configuration data and "configuring" its hardware "dynamically," particularly in a manner that aligns with the patent’s emphasis on real-time, on-the-fly changes? The initial complaint does not provide this evidence.