Longhorn HD LLC v. Startechcom Ltd

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Longhorn HD LLC. (Texas)
  • Defendant: StarTech.com Ltd. (Canada)
  • Plaintiff’s Counsel: Fabricant LLP
• Case Identification: 2:22-cv-00503, E.D. Tex., 12/30/2022
• Venue Allegations: Plaintiff alleges venue is proper because Defendant is not a U.S. resident and may be sued in any judicial district.
• Core Dispute: Plaintiff alleges that Defendant’s external data interface products, including a serial-to-IP server and a hard drive docking station, infringe patents related to information backup systems and methods for enabling hot-swappable hard drives.
• Technical Context: The technologies at issue address methods for bridging data between disparate devices and for enabling standard hard drives to be treated as removable, hot-swappable media by a host computer.
• Key Procedural History: The complaint does not reference any prior litigation, inter partes review proceedings, or licensing history related 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 identifies the difficulty of backing up data from handheld devices like cell phones, which can be easily lost or damaged. It notes that restoring this information to a new, potentially different model of phone is a significant challenge. (ʼ924 Patent, col. 1:29-43).
• The Patented Solution: The invention proposes a system and method where a "host microcontroller" acts as an intermediary, or bridge, between a handheld device (e.g., a smart phone) and a separate mass storage device (e.g., a USB drive). The system supplies power to both ports and enables the host microcontroller to manage data transfer between the two connected devices, overcoming the inability of the handheld device to act as a host itself. (ʼ924 Patent, Abstract; Fig. 10).
• Technical Importance: This approach provides a device-agnostic way to back up and restore data from portable electronics to generic storage, without relying on cloud services or device-specific software. (ʼ924 Patent, col. 7:36-40).

Key Claims at a Glance

• The complaint asserts independent claim 1. (Compl. ¶16).
• 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's background describes the limitations of then-current removable media (e.g., floppy disks, CD-ROMs) in terms of capacity and speed. It notes that while standard hard drives offer high capacity, they are configured as permanently attached, non-removable devices, and operating systems do not typically handle their unexpected removal. (ʼ104 Patent, col. 1:17-33, col. 5:1-7).
• The Patented Solution: The invention provides a drive assembly containing a programmable processing device (e.g., a printed circuit board). When a standard hard drive is inserted, the device reads the drive's native identification data, modifies certain data bits to identify the drive as "removable media," and presents this altered identification to the host computer. This process "fools" the host's operating system into treating a standard, fixed hard drive as a hot-swappable, removable device. (ʼ104 Patent, Abstract; col. 8:22-36).
• Technical Importance: This solution enabled the use of high-capacity, inexpensive standard hard drives in applications requiring portability and hot-swapping, which was not their native design function. (ʼ104 Patent, col. 5:8-14).

Key Claims at a Glance

• The complaint asserts independent claim 9. (Compl. ¶27).
• 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 with an opening;
  • a removable cartridge containing a hard drive device, dimensioned for insertion into the opening; and
  • a printed circuit board connected between the hard drive and the host controller, which is programmed to modify an identification of the hard drive to indicate to the host that it is a removable drive.
• The complaint does not explicitly reserve the right to assert dependent claims.

III. The Accused Instrumentality

Product Identification

• The complaint names the StarTech NETRS232 and the StarTech SATDOCK2REU3 as accused instrumentalities. (Compl. ¶¶15, 26).

Functionality and Market Context

• StarTech NETRS232: The complaint alleges this is a "Serial-to-IP Ethernet Device Server" that performs a method of operating an information backup system. (Compl. ¶¶15, 17). A provided screenshot from Defendant's website describes the product as a "cost-effective way to connect, configure, and manage a remote RS-232 serial device over an IP network." (Compl. p. 5).
• StarTech SATDOCK2REU3: The complaint alleges this is a computer device that constitutes a removable hard drive assembly. (Compl. ¶¶27-28). The allegations describe it as a computer system with a drive bay, power supply, and drive controller, into which a removable cartridge with a hard drive can be inserted. (Compl. ¶28). The complaint further alleges the device contains a printed circuit board that modifies the hard drive's identification to indicate it is a removable drive. (Compl. ¶28).

IV. Analysis of Infringement Allegations

’924 Patent Infringement Allegations

The complaint includes a product screenshot from Defendant's website showing the accused NETRS232 device. (Compl. p. 5).

• Identified Points of Contention:
  • Technical Questions: A central question may be whether the architecture of the accused NETRS232 (a serial-to-IP server) maps onto the claimed architecture. Specifically, does its internal processor qualify as a "host microcontroller" that simultaneously functions as a "host" to both a "handheld device" (the serial device) and a "mass storage device" (the IP network connection) as required by the claim?
  • Scope Questions: The analysis may turn on whether the term "handheld device" can be construed to read on a generic RS-232 serial device, and whether a network interface can be construed as a "mass storage device" within the context of the patent.

’104 Patent Infringement Allegations

• Identified Points of Contention:
  • Technical Questions: A key evidentiary question may be whether the accused product’s printed circuit board is, in fact, "programmed to modify an identification of the hard drive device." The dispute may focus on whether the product implements the specific ID-buffer modification taught in the patent or achieves hot-swap functionality through other means, such as by relying on native support in modern ATA/SATA standards and operating systems.
  • Scope Questions: The term "computer system" as recited in the claim may be a point of dispute, as the accused product is a peripheral docking station rather than a self-contained computer.

V. Key Claim Terms for Construction

’924 Patent

• The Term: "host microcontroller"
• Context and Importance: This term is central to Claim 1, which requires this single component to function as a host to two different slave devices (a "handheld device" and a "mass storage device"). The definition will be critical to determining if the accused serial-to-IP server, which acts as a data bridge, contains a component that performs this claimed dual-host function.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent uses the term in its abstract and claims to describe the core bridging function, suggesting it could encompass any processing unit capable of managing data flow between two connected peripherals. (ʼ924 Patent, Abstract; col. 11:37-45).
  • Evidence for a Narrower Interpretation: The specification describes the component as a "specialized microprocessor" and, in one example, a "Universal Serial Bus (USB) host controller," which suggests a component with specific, standardized host capabilities rather than a generic processor. (ʼ924 Patent, col. 4:21-22; col. 7:19-21).

’104 Patent

• The Term: "programmed to modify an identification of the hard drive device"
• Context and Importance: This phrase captures the core inventive concept. The infringement analysis for the SATDOCK2REU3 will likely depend on whether its method of enabling hot-swapping falls within the scope of this term. Practitioners may focus on this term because modern hardware may achieve hot-swap functionality without performing the specific "modification" described in the patent.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claim language is functional, describing the result of the programming ("to indicate to the system host that the hard drive device is a removable drive"). This could support an argument that any programming which achieves this result infringes. (ʼ104 Patent, col. 10:8-10).
  • Evidence for a Narrower Interpretation: The detailed description provides a very specific mechanism: reading the drive's "identify buffer," setting specific bits (e.g., Bit 7 of Word 0) to change the drive's status from fixed to removable, and presenting the modified buffer to the host. (ʼ104 Patent, col. 7:9-24; col. 8:22-36). This could support an argument that the claim is limited to this specific method of modification.

VI. Other Allegations

• Indirect Infringement: For both the ’924 and ’104 patents, the complaint alleges induced infringement. The stated basis is that Defendant provides the accused products to customers and end-users with knowledge and intent that their use will constitute direct infringement. (Compl. ¶¶19-21, 29-31).
• Willful Infringement: The complaint alleges that Defendant had knowledge of its infringement "at least as of the date of this Complaint" and acted with the intent to cause infringing acts or, alternatively, was "willfully blind to the infringement." (Compl. ¶¶20-21, 30-31). These allegations may form the basis for a claim of post-suit willful infringement.

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

• A core issue for the ’104 Patent will be one of technical mechanism: does the accused SATDOCK2REU3 docking station achieve hot-swap functionality by implementing the specific "ID buffer modification" technique claimed in the patent, or does it rely on alternative, non-infringing methods inherent in modern SATA and OS standards?
• A key question for the ’924 Patent will be one of architectural equivalence: does the accused NETRS232 serial-to-IP server, which functions as a network bridge, possess the claimed architecture of a single "host microcontroller" that simultaneously acts as a "host" to two distinct slave peripherals?
• A broader question of definitional scope will underlie the dispute for both patents: can terms derived from the context of personal computers and mobile devices (e.g., "mass storage device," "computer system," "handheld device") be construed to cover the network interfaces and serial device peripherals at issue?