DCT
2:22-cv-00402
Winterspring Digital LLC v. Broadcom Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Winterspring Digital LLC (Texas)
- Defendant: Broadcom Inc. (Delaware)
- Plaintiff’s Counsel: Fabricant LLP; Truelove Law Firm, PLLC
- Case Identification: 2:22-cv-00402, E.D. Tex., 10/13/2022
- Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendant maintains a "regular and established place of business" in the district and has conducted business and committed alleged acts of infringement there.
- Core Dispute: Plaintiff alleges that Defendant’s network transceivers, integrated circuits, and network administration software infringe three patents related to high-speed data transmission, hardware-based packet tagging, and graphical user interface-based network management.
- Technical Context: The technologies at issue concern high-performance data networking hardware and software, which are fundamental components for enterprise networks, data centers, and cloud computing infrastructure.
- Key Procedural History: The complaint alleges that U.S. Patent No. 8,032,646 was cited during the prosecution of a patent owned by Defendant, which may be used to argue that Defendant had pre-suit knowledge of that patent.
Case Timeline
| Date | Event |
|---|---|
| 2000-07-28 | Earliest Priority Date for ’646 Patent |
| 2002-04-08 | Earliest Priority Date for ’692 Patent |
| 2002-12-20 | Earliest Priority Date for ’975 Patent |
| 2007-01-16 | ’692 Patent Issued |
| 2008-09-02 | ’975 Patent Issued |
| 2011-10-04 | ’646 Patent Issued |
| 2013-03-05 | Publication of Broadcom patent that cited the ’646 Patent |
| 2022-03-22 | Date of Accused Product BCM957412A4120AC Data Sheet |
| 2022-10-13 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,164,692 - “Apparatus and Method for Transmitting 10 Gigabit Ethernet LAN Signals Over a Transport System,” issued January 16, 2007 (’692 Patent)
The Invention Explained
- Problem Addressed: The patent describes a conflict between two networking standards: cost-effective, high-speed Ethernet LANs with limited range (under 100 km), and long-distance carrier transport systems (like SONET) that were complex and required inefficient "encapsulation" of Ethernet data into a different format, adding cost and complexity ( ’692 Patent, col. 1:55-2:18, 2:55-3:5).
- The Patented Solution: The invention discloses a transceiver that can receive a native 10-Gigabit Ethernet (10GE) LAN signal, regenerate it internally by re-clocking the signal, and re-transmit it over a long-haul transport system without ever converting it to a legacy WAN format like SONET. This allows for the extension of native LAN signals over long distances ( ’692 Patent, Abstract; col. 5:21-34).
- Technical Importance: This approach enabled enterprises to leverage the cost-effectiveness and simplicity of Ethernet for wide-area connections, avoiding the expensive and specialized equipment required for traditional WAN protocols ( ’692 Patent, col. 2:41-54).
Key Claims at a Glance
- The complaint asserts at least independent claim 10 (Compl. ¶19).
- Essential elements of claim 10 include:
- A method for transferring a 10GE LAN client signal from a transport system to a client system.
- Receiving the 10GE LAN client signal transmitted over the transport system.
- Converting the signal to an intermediate signal.
- Recovering clock data and a data stream from the intermediate signal.
- Reconverting the intermediate signal to the 10GE LAN client signal.
- Transferring the reconverted signal to a client system.
- Monitoring the intermediate form with a 10GE LAN media access controller.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 7,420,975 - “Method and Apparatus For High-Speed Frame Tagger,” issued September 2, 2008 (’975 Patent)
The Invention Explained
- Problem Addressed: The patent notes that network processors, which are responsible for processing data traffic, often have a heavy workload and cannot operate at "line speed" because they must analyze incoming packets to determine if they contain control information or data, a computationally intensive task ( ’975 Patent, col. 1:30-43).
- The Patented Solution: The invention describes a dedicated hardware apparatus, a "frame tagger," that operates within a framer at line speed. This apparatus performs a multi-pass comparison of packet data against predefined values to quickly classify and "tag" the packet. This offloads the initial analysis from the main network processor, allowing it to handle the pre-classified packets more efficiently ( ’975 Patent, Abstract; Fig. 1).
- Technical Importance: By moving the slow packet classification task to dedicated, high-speed hardware, the invention enabled faster overall network performance and reduced the processing burden on the central network processor ( ’975 Patent, col. 1:30-43).
Key Claims at a Glance
- The complaint asserts at least independent claim 5 (Compl. ¶29).
- Essential elements of claim 5 include:
- An apparatus with a network processor interface and a central processor interface.
- A protocol determination logic block that compares protocol information in a "first pass" and, if the result is positive, compares protocol information in a "second pass."
- A tag select logic block that applies a tag to the packet based on the results of the comparisons.
- The complaint does not explicitly reserve the right to assert dependent claims.
Multi-Patent Capsule: U.S. Patent No. 8,032,646 - “Administering a Communication Network,” issued October 4, 2011 (’646 Patent)
- Technology Synopsis: The patent addresses the administration of communication networks, such as Voice over IP (VoIP) networks. It describes a system with a graphical user interface (GUI) that allows a network administrator to visualize the network topology, including nodes and routers. The GUI enables the administrator to view potential data paths between two "edge nodes" (e.g., media aggregation managers), select a desired path, and initiate the configuration of the routers along that path to handle the communication traffic ( ’646 Patent, Abstract; col. 2:1-22).
- Asserted Claims: The complaint asserts at least independent claim 1 (Compl. ¶37).
- Accused Features: The complaint accuses the Broadcom DX NetOps software of infringement, alleging that it provides a GUI for a user to visualize a network, display available paths between nodes, and select a path to optimize routing decisions, thereby initiating configuration of the routers on the selected path (Compl. ¶¶ 36, 38).
III. The Accused Instrumentality
Product Identification
- The complaint accuses three categories of Broadcom products: (1) network switches, transceivers, and network interface cards (NICs); (2) integrated circuits (ICs) and network switches with packet tagging features; and (3) network management software (Compl. ¶15).
Functionality and Market Context
- For the ’692 Patent, the complaint identifies products such as the BCM957412A4120AC NIC that "receive, convert, monitor, and send 10GE LAN signals" for use in data centers and cloud computing (Compl. ¶¶ 18, 20; p. 6). The complaint includes a datasheet for the BCM957412A4120AC product, which describes it as a "Dual-Port 10 Gb/s Ethernet PCI Express Gen3 x8 Network Interface Card" (Compl. p. 6).
- For the ’975 Patent, the complaint identifies products including the BCM5388 switch controller and features like "TruFlow" that allegedly perform "packet tagging" by determining a protocol type and applying a tag (Compl. ¶¶ 28, 30). The complaint includes a block diagram of the BCM5388 Switch Controller (Compl. p. 10).
- For the ’646 Patent, the complaint identifies the Broadcom DX NetOps software, including its IP Routing Manager and OneClick Console, as an infringing instrumentality. These tools allegedly allow a user to visualize a network's topology and select paths to "optimize routing decisions" (Compl. ¶¶ 36, 38). The complaint provides a screenshot of the "OneClick Console User Interface," which shows a three-panel display for navigating and viewing network asset information (Compl. p. 13).
IV. Analysis of Infringement Allegations
’692 Patent Infringement Allegations
| Claim Element (from Independent Claim 10) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method for transferring a 10GE LAN client signal from a transport system to a client system, comprising: receiving the 10GE LAN client signal transmitted over the transport system | The BCM957412A4120AC NIC allegedly receives a 10GE LAN client signal transmitted over a transport system. | ¶20 | col. 5:25-28 |
| converting the 10GE LAN client signal to an intermediate signal | The accused product converts the received 10GE LAN client signal to an intermediate signal. | ¶20 | col. 5:28-30 |
| recovering clock data from the intermediate signal | The accused product recovers clock data from the intermediate signal. | ¶20 | col. 5:39-41 |
| recovering a data stream from the intermediate signal | The accused product recovers a data stream from the intermediate signal. | ¶20 | ¶20 |
| reconverting the intermediate signal to the 10GE LAN client signal | The accused product reconverts the intermediate signal back to a 10GE LAN client signal. | ¶20 | col. 9:15-18 |
| transferring the 10GE LAN client signal to a client system | The accused product transfers the reconverted 10GE LAN client signal to a client system. | ¶20 | col. 9:18-21 |
| and monitoring the intermediate form with a monitoring device, wherein the monitoring device is a 10GE LAN media access controller. | The accused product monitors the intermediate signal with a monitoring device that is a 10GE LAN media access controller. | ¶20 | col. 10:1-2 |
Identified Points of Contention
- Scope Questions: Claim 10 recites a method for transferring a signal "from a transport system to a client system." The infringement allegation focuses on a single endpoint device (a NIC). An issue for the court may be whether the internal signal processing within one NIC can satisfy the claim's framing of a transfer between distinct "systems."
- Technical Questions: The complaint's allegations in paragraph 20 are highly conclusory, largely mirroring the language of claim 10. A central evidentiary question will be whether the accused BCM957412A4120AC product actually performs this specific sequence of converting, recovering data, and reconverting a signal, as the provided datasheet does not detail this internal process (Compl. p. 6).
’975 Patent Infringement Allegations
| Claim Element (from Independent Claim 5) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An apparatus, comprising: a network processor interface suitable for coupling to a network processor | The BCM5388 is alleged to include a network processor interface suitable for coupling to a network processor. | ¶30 | col. 3:58-4:2 |
| a central processor interface suitable for coupling to a central processor | The BCM5388 is alleged to include a central processor interface suitable for coupling to a central processor. | ¶30 | col. 4:56-59 |
| a protocol determination logic block... wherein the protocol determination logic compares the protocol information in a first pass to predetermined values... and, if the first result is positive, compares the protocol information in a second pass to predetermined values... | The complaint alleges, upon information and belief, that the BCM5388 includes a protocol determination logic that performs a conditional two-pass comparison on packet information. | ¶30 | col. 1:46-53 |
| and a tag select logic block to apply a tag to the packet... | The complaint alleges, upon information and belief, that the BCM5388 includes a tag select logic block to apply a tag to the packet based on the results of the comparisons. | ¶30 | col. 2:5-8 |
Identified Points of Contention
- Scope Questions: The complaint's allegation of the conditional two-pass comparison is made "Upon information and belief" (Compl. ¶30), suggesting a lack of direct evidence. The key question will be whether the accused BCM5388's logic performs a sequential, conditional comparison as required by the claim, or a different type of analysis (e.g., a parallel lookup). The provided high-level block diagram for the BCM5388 does not resolve this question (Compl. p. 10).
- Technical Questions: The meaning of "first pass" and "second pass" will be critical. The dispute may focus on whether this requires two distinct, temporally separate hardware operations or if it can describe a single, complex logical operation where the outcome of one check gates another.
V. Key Claim Terms for Construction
For the ’692 Patent:
- The Term: "intermediate signal"
- Context and Importance: This term is at the core of the claimed signal processing method (convert-process-reconvert). Its definition will determine whether any internal electrical state of a signal inside a chip infringes, or if a more specific, structured format is required.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification refers to it generally as an "internal electrical 10GE LAN signal" ( ’692 Patent, col. 5:29-30), which could support an argument that any internal electrical representation of the data meets the definition.
- Evidence for a Narrower Interpretation: The detailed description shows the "intermediate signal" as having a specific structure, such as a "16-channel wide 10GE LAN signal" ( ’692 Patent, col. 9:33-34), and being processed by specific components like a De-Mux and a MAC ( ’692 Patent, Fig. 3). This may support a narrower construction tied to this specific embodiment.
For the ’975 Patent:
- The Term: "a first pass" / "a second pass"
- Context and Importance: The invention's novelty rests on the conditional, multi-pass comparison. Defining what constitutes distinct "passes" is central to the infringement analysis. Practitioners may focus on this term because the allegation of this specific logical flow is made only on "information and belief."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent’s flowcharts depict logical decision points rather than hardware timing diagrams (e.g., ’975 Patent, Fig. 6), which could support an interpretation that a "pass" is a logical step, not necessarily a separate clock cycle.
- Evidence for a Narrower Interpretation: The background discusses the high-speed nature of the invention. A defendant may argue that in the context of hardware operating at "line speed," a "pass" refers to a distinct processing stage or pipeline step, pointing to language about comparing "early words in the packet" to determine if "later words need to be compared" ( ’975 Patent, col. 3:13-15).
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Broadcom induces infringement of all three patents-in-suit by providing the accused products to customers and end-users with the knowledge and intent that they will be used in an infringing manner (Compl. ¶¶ 22, 32, 39). The complaint also pleads willful blindness in the alternative for the ’692 and ’975 patents (Compl. ¶¶ 23, 33).
- Willful Infringement: For all three patents, the complaint alleges knowledge "at least as of the date of this Complaint," supporting a claim for post-suit willfulness (Compl. ¶¶ 22, 32, 40). Crucially, for the ’646 Patent, the complaint alleges pre-suit knowledge based on the fact that the patent was "cited directly against Broadcom's U.S. Patent No. 8,391,354, which was published on March 5, 2013" (Compl. ¶40, fn. 6).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue for the hardware-focused claims will be one of evidentiary proof: given that the infringement allegations for the ’692 and ’975 patents are based on conclusory statements and "information and belief," what technical evidence can Plaintiff obtain and present to demonstrate that Broadcom's silicon performs the specific, multi-step processes recited in the claims, such as the conditional two-pass comparison of the ’975 patent?
- A key question for the ’692 patent will be one of definitional scope: can the claim language describing a method of transferring a signal between a "transport system" and a "client system"—suggesting two distinct entities—be construed to read on the internal signal processing that occurs entirely within a single network interface card?
- The case may also turn on a question of pre-suit knowledge and intent: does the citation of the ’646 patent during the prosecution of Broadcom's own patent constitute legally sufficient notice to establish a basis for willful infringement from that earlier date, and what evidence will be required to show the requisite intent?