Longhorn HD LLC v. Noon Technology Co Ltd

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Longhorn HD LLC. (Texas)
  • Defendant: Noon Technology Co., Ltd. (China) and TerraMaster Technology Co., Ltd. (China)
  • Plaintiff’s Counsel: Fabricant LLP
• Case Identification: 2:22-cv-00502, E.D. Tex., 12/30/2022
• Venue Allegations: Venue is alleged to be proper under 28 U.S.C. § 1391(c)(3), which states that non-U.S. residents may be sued in any judicial district.
• Core Dispute: Plaintiff alleges that Defendant’s Network Attached Storage (NAS) devices and related products infringe patents concerning technology for enabling hot-swappable hard drives and for backing up data from handheld devices.
• Technical Context: The technologies at issue address methods for making standard hard drives behave as removable, hot-swappable media and for creating intermediary devices that facilitate data backup between mobile devices and mass storage without a PC.
• Key Procedural History: The complaint does not mention any prior litigation, licensing history, or inter partes review proceedings relevant to the patents-in-suit.

Case Timeline

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 describes the difficulty of backing up data from handheld devices like cell phones, which are prone to being lost or damaged. It notes that different device models have varied and often incompatible communication interfaces, and that existing solutions often require a full personal computer or rely on cloud services with potential security risks and fees (ʼ924 Patent, col. 1:21-col. 2:9).
• The Patented Solution: The invention is a method and system that acts as an intermediary for data backup. It features a "host microcontroller" that can function as a host to both a handheld device (e.g., a smart phone) and a separate mass storage device simultaneously. The system provides power to both connected devices and manages the data transfer between them, allowing for direct backup without needing a PC (ʼ924 Patent, Abstract; Fig. 7).
• Technical Importance: The technology aimed to provide a universal, portable, and self-contained solution for backing up mobile device data, overcoming the challenge of diverse and proprietary connection standards in the market (ʼ924 Patent, col. 4:35-44).

Key Claims at a Glance

• The complaint asserts at least independent claim 1 (Compl. ¶17).
• 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, where the host microcontroller functions as a host to both ports; and
  • transferring data between the first and second communication ports.
• The complaint does not explicitly reserve the right to assert dependent claims.

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: The patent notes that standard internal hard disk drives (HDDs) offer high capacity and speed but are not designed to be removable or hot-swappable. Conversely, existing removable media like floppy disks or CD-ROMs suffered from low capacity, slow speeds, or reliability issues (ʼ104 Patent, col. 1:16-52).
• The Patented Solution: The invention is a system that allows a standard, off-the-shelf HDD to be treated as a removable device by a host computer. It uses a drive assembly with a special printed circuit board that intercepts the HDD's "ID buffer"—the data the drive reports about its own characteristics. The circuit board modifies this data to indicate that the drive is a "removable media device" before passing the information to the host computer, thereby "fooling" the operating system into enabling hot-swap functionality (ʼ104 Patent, Abstract; col. 5:1-7).
• Technical Importance: This approach enabled the use of inexpensive, high-capacity commodity HDDs for portable and removable storage applications, which was previously impractical (ʼ104 Patent, col. 2:32-38).

Key Claims at a Glance

• The complaint asserts at least independent claim 9 (Compl. ¶28).
• Independent Claim 9 (Apparatus):
  • A computer system with a standard drive bay, power supply, and an ATA-standard drive controller.
  • A drive assembly fixedly mounted in the drive bay and connected to the power supply and controller.
  • At least one removable cartridge containing a hard drive device, dimensioned for insertion into the drive assembly.
  • A printed circuit board connected between the hard drive and the system's drive controller, which is programmed to modify an identification of the hard drive to indicate to the system host that the drive is removable.
• The complaint does not explicitly reserve the right to assert dependent claims.

III. The Accused Instrumentality

Product Identification

The complaint specifically identifies the TerraMaster F4-210, and more broadly accuses Defendant's "hard disk enclosures, dockings stations, and adapters" (Compl. ¶13, ¶16).

Functionality and Market Context

• The TerraMaster F4-210 is described as a 4-bay Network Attached Storage (NAS) device, a type of dedicated file server (Compl. p. 5). The complaint alleges it includes an internal power supply and communication ports (Compl. ¶18). A product screenshot provided in the complaint describes the F4-210 as having an ARM v8 quad-core CPU, 2GB RAM, and compatibility with SATA HDDs, and running its own operating system (TOS) (Compl. p. 5).
• The complaint also references a "TNAS Mobile" application, which allows users to access the NAS and back up photos and videos from a mobile device (Compl. p. 6). This is presented to support allegations that the device performs the steps of the ’924 Patent (Compl. ¶¶18-19).

IV. Analysis of Infringement Allegations

’924 Patent Infringement Allegations

Identified Points of Contention

• Scope Questions: A central question may be whether the term "information backup system" as described in the patent—an intermediary device connecting two other devices—can be construed to read on the accused F4-210, which is a self-contained computer (a NAS) with its own operating system.
• Technical Questions: The complaint alleges the F4-210's CPU is a "host microcontroller" that functions as a host to two separate ports simultaneously. A technical question is whether the operation of a general-purpose NAS communicating over a network or USB with a mobile device and managing its own internal SATA drives is the same as the specific architecture claimed in the ’924 Patent.

’104 Patent Infringement Allegations

Identified Points of Contention

• Technical Questions: The core of the infringement allegation for the ’104 Patent rests on the claim that the F4-210's circuit board is "programmed to modify an identification of the hard drive device". The complaint does not provide specific evidence of how this is accomplished. A key factual dispute will likely be whether the F4-210 uses this specific "ID spoofing" technique, or whether it achieves hot-swap capability through modern, software-based protocols (e.g., AHCI) that are part of its operating system and do not modify the drive's reported identity.

V. Key Claim Terms for Construction

Term 1 (from '104 Patent): "programmed to modify an identification of the hard drive device"

• Context and Importance: This term is the central inventive concept of the ’104 Patent. The outcome of the infringement analysis will likely depend entirely on whether the accused F4-210 is found to perform this specific function.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party could argue that this phrase should cover any technical means, whether in hardware or software, that causes the "system host" to treat a normally non-removable drive as removable.
  • Evidence for a Narrower Interpretation: The specification repeatedly describes a specific process: reading the drive's ID buffer, changing specific bits (e.g., Bit 7 of Word 0) to indicate "removable media device," and presenting this modified buffer to the host ('104 Patent, Abstract; col. 4:10-23; col. 8:21-36). Practitioners may focus on this narrow definition, arguing the claim is limited to this "ID spoofing" mechanism and does not cover other methods of achieving hot-swapping.

Term 2 (from '924 Patent): "host microcontroller ... functioning as a host to the second communication port and the first communication port"

• Context and Importance: This term defines the required architecture of the claimed system. Infringement depends on whether the accused NAS, a complex computer, embodies this specific configuration.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party might argue the term covers any processor that manages data flow between two endpoints, one being a handheld device and the other being mass storage, regardless of the system's overall complexity.
  • Evidence for a Narrower Interpretation: The patent's figures and abstract describe a purpose-built, intermediary device, not a general-purpose computer or NAS ('924 Patent, Fig. 7). A party could argue that a "host microcontroller" implies an embedded controller in a simple device, and that "functioning as a host to" both ports requires a specific master-slave relationship with two external peripherals, which may differ from how a NAS manages its internal drives and network clients.

VI. Other Allegations

Indirect Infringement

The complaint alleges that Defendants induce infringement by "providing these products to end-users for use in an infringing manner" (Compl. ¶21, ¶31). This suggests a theory based on selling the F4-210 with instructions or features that encourage users to perform the patented methods (for the ’924 Patent) or use the patented system (for the ’104 Patent).

Willful Infringement

The complaint alleges Defendants knew of the patents "at least as of the date of this Complaint" and acted with a belief of a high probability of infringement, or were willfully blind (Compl. ¶21-22, ¶31-32). The allegations appear to be based on post-suit knowledge.

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

This case appears to present two primary areas of dispute, one evidentiary and one of claim scope. The key questions for the court will likely be:

1. A core evidentiary question will be one of technical mechanism: Does the accused TerraMaster F4-210 achieve hot-swap capability by performing the specific step recited in the ’104 patent—"modifying an identification" of the hard drive—or does it use an alternative, non-infringing software-based protocol common in modern NAS devices?

2. A central issue for the ’924 patent will be one of definitional scope: Can the patent's claims, which describe a simple intermediary "information backup system" with a "host microcontroller" managing two slave devices, be construed to cover the architecture and operation of a sophisticated, self-contained Network Attached Storage computer?