DCT
2:22-cv-00070
Longhorn HD LLC v. QNAP Systems Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Longhorn HD LLC. (Texas)
- Defendant: QNAP Systems, Inc. (Taiwan)
- Plaintiff’s Counsel: Fabricant LLP; Rubino IP; Truelove Law Firm, PLLC
- Case Identification: 2:22-cv-00070, E.D. Tex., 03/07/2022
- Venue Allegations: Plaintiff alleges venue is proper because Defendant QNAP is not a U.S. resident and may therefore be sued in any judicial district. The complaint further alleges that QNAP makes, uses, and sells infringing products within the Eastern District of Texas.
- Core Dispute: Plaintiff alleges that Defendant’s external storage devices, specifically the QNAP TL-D800C-US, infringe two patents related to information backup systems and hot-swappable hard drives.
- Technical Context: The lawsuit concerns the technical fields of external computer data storage and methods for interfacing removable drives with host computers.
- Key Procedural History: The complaint does not mention any prior litigation, IPR proceedings, or licensing history related to the patents-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2003-08-12 | Priority Date for U.S. Patent No. 6,938,104 |
| 2005-08-30 | U.S. Patent No. 6,938,104 Issued |
| 2006-06-01 | Priority Date for U.S. Patent No. 8,725,924 |
| 2014-05-13 | U.S. Patent No. 8,725,924 Issued |
| 2022-03-07 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,725,924 - "Information Backup System with Storing Mechanism and Method of Operation Thereof," Issued May 13, 2014
The Invention Explained
- Problem Addressed: The patent addresses the problem of backing up and restoring data from handheld devices like smartphones, which often have unique, proprietary communication interfaces. This makes it difficult to transfer data to a new or different device if the original is lost, damaged, or replaced (’924 Patent, col. 1:29-54). Existing solutions, such as cloud backup, have drawbacks related to cost, security, and reliance on internet connectivity ('924 Patent, col. 4:1-6).
- The Patented Solution: The invention proposes a backup device with a "host microcontroller" that can act as a host to both a handheld device (e.g., a phone) and a mass storage device (e.g., a USB drive) simultaneously. This configuration allows the microcontroller to manage data transfer directly between the phone and the external storage, without requiring the phone itself to have the capability to act as a host ('924 Patent, Abstract; Fig. 10). The system is powered by an internal power supply, which can also charge the connected handheld device ('924 Patent, col. 8:6-11).
- Technical Importance: This architecture provides a self-contained, physical backup solution that is independent of the internet and can interface with various devices by isolating the communication protocols through a central microcontroller.
Key Claims at a Glance
- The complaint asserts at least Claim 1 ('924 Patent) (Compl. ¶15).
- Independent Claim 1 (Method):
- supplying a power to a first communication port and a second communication port with an internal power supply;
- electrically connecting a host microcontroller to the first communication port for connecting a handheld device;
- electrically connecting the host microcontroller to the second communication port for connecting a mass storage device;
- the host microcontroller is for functioning as a host to the second communication port and the first communication port; and
- transferring data between the first communication port and the second communication port.
- The complaint does not explicitly reserve the right to assert other claims, but makes general allegations of infringement of "one or more claims" (Compl. ¶14).
U.S. Patent No. 6,938,104 - "Removable Hard Drive Assembly, Computer with a Removable Hard Disk Drive, Method of Initializing and Operating a Removable Hard Drive," Issued August 30, 2005
The Invention Explained
- Problem Addressed: Standard internal hard drives are configured as "non-removable" or fixed devices. Operating systems treat them as permanently attached, and removing them while the computer is running (hot-swapping) can cause system instability or data loss. The patent sought to overcome this limitation to allow standard, high-capacity hard drives to be used like portable, swappable media (’104 Patent, col. 5:32-46).
- The Patented Solution: The invention uses an intermediary drive assembly with a programmable processing device. When a standard hard drive is inserted, the assembly reads the drive's "ID buffer," which contains information identifying it as a fixed device. The assembly's electronics then modify this information "in-flight" to report to the host computer that the drive is a "removable media device" before presenting the modified ID buffer to the host. This effectively "fools" the operating system into treating a standard, fixed hard drive as if it were a hot-swappable, removable drive ('104 Patent, Abstract; col. 4:16-23).
- Technical Importance: This method enabled the use of inexpensive, high-capacity, off-the-shelf hard drives in applications requiring portability and hot-swapping, which was previously the domain of more specialized and expensive storage solutions.
Key Claims at a Glance
- The complaint asserts at least Claim 13 (’104 Patent) (Compl. ¶27).
- Independent Claim 13 (Method):
- providing a drive assembly mounted to a host computer and connected to its power supply and drive controller, and a removable cartridge with a hard drive device;
- the hard drive device having an ID buffer identifying it as a non-removable, fixed drive;
- modifying the ID buffer stored on the hard drive device to form a modified ID buffer identifying the hard drive as a removable drive device; and
- presenting the modified ID buffer to the host computer.
- The complaint also makes general allegations of infringement of "one or more claims" (Compl. ¶25).
III. The Accused Instrumentality
Product Identification
- The complaint identifies the QNAP TL-D800C-US 8-Bay Desktop USB-C 3.1 Gen2 10Gbps JBOD Expansion Unit as an exemplary accused product (Compl. ¶10).
Functionality and Market Context
- The complaint describes the accused product as an external storage device that functions as an "information backup system" (Compl. ¶15). It is alleged to include a power supply and communication ports (e.g., a USB connector) that connect to a host microcontroller (Compl. ¶15-16).
- The product is also alleged to utilize "hot-swappable hard disk drives and solid-state drives" (Compl. ¶10). The complaint specifically references QNAP's QTS operating system, which includes the ability to "hot swap" drives (Compl. ¶28).
- The complaint does not provide further technical details on the internal operation of the accused product but positions it as part of the market for external data storage and backup solutions (Compl. ¶10).
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
’924 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| supplying a power to a first communication port and a second communication port with an internal power supply; | The accused products perform a method comprising supplying power to a first communication port (USB connector) and a second port (storage of an external storage) with an internal power supply (the battery of an external storage unit). | ¶16 | col. 11:33-36 |
| electrically connecting a host microcontroller to the first communication port for connecting a handheld device; | The accused products perform a method of electrically connecting a host microcontroller to the first communication port for connecting an external storage unit. | ¶17 | col. 11:37-39 |
| electrically connecting the host microcontroller to the second communication port for connecting a mass storage device, | The accused products perform a method of electrically connecting the host microcontroller to the second communication port for connecting a mass storage device. | ¶17 | col. 11:40-42 |
| the host microcontroller is for functioning as a host to the second communication port and the first communication port; | The host microcontroller is for functioning as a host to the second communication port and the first communication port. | ¶17 | col. 11:43-45 |
| and transferring data between the first communication port and the second communication port. | The accused products perform a method of... transferring data between the first communication port and the second communication port. | ¶17 | col. 11:46-48 |
- Identified Points of Contention:
- Technical Question: The complaint provides only conclusory allegations tracking the claim language. A central question will be whether the accused QNAP device's internal architecture actually includes a "host microcontroller" that simultaneously functions as a host to two separate external devices as required by the claim. The complaint does not offer evidence on this point.
- Scope Question: Does the accused product, an external storage expansion unit, meet the claim limitation of connecting a "handheld device"? The complaint alleges it connects an "external storage unit" to the first port, which raises the question of whether this satisfies the patent's focus on devices like smartphones and PDAs ('924 Patent, col. 1:29-31).
’104 Patent Infringement Allegations
| Claim Element (from Independent Claim 13) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| providing a drive assembly mounted to a host computer... and a removable cartridge having a hard drive device selectively insertable in and connectable to the drive assembly... | The infringing storage devices are computer devices that include computer systems formed with at least one standard drive bay... and a removable cartridge having a hard drive device selectively insertable in and connectable to the drive assembly. | ¶27-28 | col. 10:48-55 |
| the hard drive device having stored thereon an ID buffer with a data item identifying the hard drive as a non-removable, fixed drive device; | The infringing storage devices also provide a method whereby the hard drive device... stores thereon an ID buffer with a data item identifying the hard drive as a non-removable, fixed drive device. | ¶28 | col. 10:56-59 |
| modifying the ID buffer stored on the hard drive device to form a modified ID buffer identifying the hard drive device as a removable drive device; | The infringing storage devices also provide a method whereby the hard drive device... modifies the ID buffer stored on the hard drive device to form a modified ID buffer identifying the hard drive device as a removable drive device. | ¶28 | col. 10:60-63 |
| and presenting the modified ID buffer to the host computer. | The infringing storage devices perform a method of presenting the modified ID buffer to the host computer. For example, QNAP’s QTS operating system includes the ability to “hot swap” drives. | ¶28 | col. 10:64-65 |
- Identified Points of Contention:
- Technical Question: Does the "hot swap" functionality in QNAP's QTS operating system operate by "modifying the ID buffer" of the drive itself, as specifically required by the claim? Modern hot-swap functionality is often managed by the storage controller and operating system drivers without altering the drive's fundamental identification buffer. The core dispute will likely hinge on the specific mechanism QNAP employs versus the one claimed in the patent. The complaint does not provide evidence of this specific mechanism.
- Scope Question: The claim recites modifying an ID buffer "stored on the hard drive device." The patent describes an intermediary circuit board that reads the buffer, modifies it, and saves the modified version ('104 Patent, col. 8:25-32). The infringement analysis may turn on whether QNAP's system performs this specific "read-modify-present" sequence or achieves a similar result through a different technical pathway.
V. Key Claim Terms for Construction
For the ’104 Patent
- The Term: "modifying the ID buffer"
- Context and Importance: This term is the central inventive concept of the '104 patent. The infringement case depends entirely on whether the accused "hot swap" feature meets this definition. Practitioners may focus on this term because the accused functionality could be achieved through modern SATA/AHCI controller features or OS-level drivers, which may not involve "modifying" the drive's reported ID buffer in the specific manner described in the patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not limit the term to a single method of modification. A party could argue that any process that results in the host computer "seeing" a modified ID qualifies, regardless of the precise electronic implementation.
- Evidence for a Narrower Interpretation: The specification repeatedly describes a specific sequence: "reading an ID buffer from the hard drive device, modifying the ID buffer... and returning the modified ID buffer" ('104 Patent, col. 4:4-8). The flowchart in Figure 4 explicitly shows the steps of "READ ID BUFFER FROM DRIVE" (103) followed by "MODIFY AND SAVE ID BUFFER" (104). This suggests a narrow construction requiring an actual read-and-alter process performed by the drive assembly electronics.
For the ’924 Patent
- The Term: "host microcontroller... functioning as a host to the second communication port and the first communication port"
- Context and Importance: This limitation defines the core architecture of the claimed system. The infringement allegation hinges on the QNAP device's microcontroller performing this dual-host role. Practitioners may focus on this term because standard USB hub architecture involves an upstream connection to a single host (the computer) and multiple downstream connections to devices, which is technically different from a single microcontroller acting as the host to multiple downstream devices simultaneously for the purpose of direct data transfer between them.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language is functional. A party could argue that any device that facilitates data transfer between two connected peripherals without requiring a separate host computer meets this limitation, regardless of the internal bus architecture.
- Evidence for a Narrower Interpretation: Figure 10 of the patent illustrates a specific architecture where a "host microcontroller" (1018) sits between downstream ports, connected via a "channel switch" (1016), to manage transfers. This embodiment, along with the specification's description of the microcontroller connecting "as a host to both slave devices" ('924 Patent, col. 7:43-44), suggests the microcontroller must be the master controller for both ports, not merely a passthrough or hub component.
VI. Other Allegations
- Indirect Infringement:
- For the '924 Patent, Plaintiff alleges that Defendant induces infringement by "providing these products to end-users for use in an infringing manner" (Compl. ¶19).
- For the '104 Patent, Plaintiff alleges inducement based on Defendant providing products to end-users for use in an infringing manner, specifically referencing QNAP's "QTS operating system" and its "hot swap" capability (Compl. ¶28-29).
- The complaint alleges knowledge and intent for both patents based on providing the products to customers and end-users (Compl. ¶18, ¶26).
- Willful Infringement: For both patents, Plaintiff alleges that Defendant had knowledge of infringement "at least as of the date of this Complaint" (Compl. ¶19, ¶29). The allegations appear to be based on post-suit knowledge. The complaint also pleads willful blindness in the alternative (Compl. ¶20, ¶30).
VII. Analyst’s Conclusion: Key Questions for the Case
This dispute appears to center on whether the accused QNAP storage system's modern features map onto the specific technical implementations described in two patents from earlier technological eras. The key questions for the court will likely be:
A core issue will be one of technical mechanism: Does QNAP's "hot-swap" feature operate by reading, altering, and presenting a drive's identification buffer, as claimed in the '104 patent, or does it rely on a different, more modern method (e.g., AHCI controller commands) to achieve a similar outcome? The complaint's lack of technical evidence on this point makes it a central open question.
A second key issue will be one of architectural equivalence: Does the microcontroller in the accused QNAP device function as a "host" to two separate external devices simultaneously to facilitate direct data transfer, as required by the '924 patent, or does it function as a more conventional USB peripheral or hub component under the control of a host computer?
An evidentiary question will be one of proof: Given the conclusory nature of the infringement allegations, the case may turn on whether discovery reveals that the internal workings of the accused QNAP product perform the specific, and arguably dated, methods recited in the patent claims.