Longhorn HD LLC v. Shenzhen KSY Co Ltd

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Longhorn HD LLC. (Texas)
  • Defendant: Shenzhen KSY Co., Ltd. (China)
  • Plaintiff’s Counsel: Fabricant LLP
• Case Identification: 2:22-cv-00504, E.D. Tex., 12/30/2022
• Venue Allegations: Venue is asserted on the basis that the defendant is not a resident of the United States and may therefore be sued in any judicial district.
• Core Dispute: Plaintiff alleges that Defendant’s computer storage and backup devices, including docking stations and enclosures, infringe patents related to information backup architectures and methods for making standard hard drives hot-swappable.
• Technical Context: The technology at issue addresses methods for managing data transfers between handheld devices and external storage, and for enabling operating systems to recognize and properly handle typically non-removable hard drives as removable media.
• Key Procedural History: The complaint does not mention any prior litigation, Inter Partes Review (IPR) 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 (’924 Patent)

The Invention Explained

• Problem Addressed: The patent identifies a need for a reliable system to back up data from handheld devices like cell phones, which are frequently lost or damaged, and where the stored information may be irreplaceable (ʼ924 Patent, col. 1:29-43). Existing solutions were often incompatible between different device models or required internet-based services with their own drawbacks (ʼ924 Patent, col. 3:6-4:9).
• The Patented Solution: The invention proposes a hardware system centered on a "host microcontroller." This controller is designed to function as a host to both a handheld device (e.g., a smart phone) and a separate mass storage device (e.g., a USB drive) simultaneously. By providing an intermediary host, the system allows data to be transferred directly from the phone to the backup drive, overcoming the common limitation where the phone itself lacks the capability to act as a host and manage an external drive (ʼ924 Patent, Abstract; col. 2:20-31).
• Technical Importance: This architecture simplifies the backup process by creating a self-contained hardware solution that does not rely on a separate PC or cloud service, and it circumvents the technical inability of many slave-only handheld devices to control a backup storage medium directly (ʼ924 Patent, col. 7:37-40).

Key Claims at a Glance

• The complaint asserts at least Claim 1 (Compl. ¶16).
• Independent Claim 1 recites a method with the essential elements of:
  • supplying a power to a first and second communication port with an internal power supply;
  • electrically connecting a host microcontroller to the first port for a handheld device;
  • electrically connecting the host microcontroller to the second port for a mass storage device;
  • the host microcontroller functioning as a host to both the first and second communication ports; and
  • transferring data between the two ports.
• The complaint alleges infringement of "one or more claims" but provides its exemplary infringement theory for Claim 1 (Compl. ¶¶15-17).

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 (’104 Patent)

The Invention Explained

• Problem Addressed: The patent's background explains that standard computer hard drives are typically configured as non-removable, "permanently attached" devices, which prevents them from being safely "hot-swapped" while the computer is running (’104 Patent, col. 5:1-6). While removable media like floppy disks existed, they suffered from low capacity, slow speeds, and poor reliability (’104 Patent, col. 1:32-50).
• The Patented Solution: The invention describes a system that uses a special piece of hardware—a programmed printed circuit board (PCB)—that sits between a standard hard drive and the host computer. This PCB intercepts the identification data that the hard drive sends to the computer. It then modifies this data to make the computer's operating system believe the standard hard drive is a "removable media device," thereby enabling the OS to handle its insertion and removal correctly (’104 Patent, Abstract; col. 8:25-33).
• Technical Importance: This technology allows for the use of high-capacity, inexpensive, and reliable standard hard drives as if they were convenient, hot-swappable removable media, effectively "fooling" the computer to unlock functionality it would not otherwise permit (’104 Patent, col. 5:43-47).

Key Claims at a Glance

• The complaint asserts at least Claim 9 (Compl. ¶26).
• Independent Claim 9 recites a device with the essential elements of:
  • 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 with a hard drive device, dimensioned for insertion into the opening; and
  • 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 device" to indicate to the system that it is a removable drive.
• The complaint alleges infringement of "one or more claims" but provides its exemplary infringement theory for Claim 9 (Compl. ¶¶25-27).

III. The Accused Instrumentality

Product Identification

• The complaint names the MAIWO K3527CH as infringing the ’924 Patent and the MAIWO K3094 as infringing the ’104 Patent (Compl. ¶¶15, 25). It also refers more broadly to "hard disk enclosures, docking stations, and adapters" sold by the Defendant (Compl. ¶12).

Functionality and Market Context

• The accused products are described as "information backup systems" and devices that "utilize hot swappable hard disk drives" (Compl. ¶12). The complaint alleges the K3527CH operates by supplying power to two ports and transferring data between them via a host microcontroller (Compl. ¶17). The K3094 is alleged to be a device with a drive bay, a removable cartridge, and a circuit board that modifies the hard drive's identification to signal that it is removable (Compl. ¶27). The complaint does not provide further detail on the products' market positions. No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

’924 Patent Infringement Allegations

• Identified Points of Contention:
  • Technical Questions: The complaint's allegations track the claim language almost verbatim. A key question for the court will be what technical evidence supports the assertion that the MAIWO K3527CH contains a single "host microcontroller" that simultaneously functions as a host to both a handheld device port and a mass storage port, as required by the claim's specific architecture.
  • Scope Questions: The complaint does not specify what components of the accused device constitute the "first communication port," "second communication port," and "host microcontroller." The mapping of the accused product's architecture onto these claimed elements will be a central point of dispute.

’104 Patent Infringement Allegations

• Identified Points of Contention:
  • Technical Questions: The allegation that the accused product's PCB is "programmed to modify an identification" is conclusory. The core technical question is whether the MAIWO K3094's circuitry performs the active read-modify-present function described in the patent, or if it acts as a more passive bridge or adapter.
  • Scope Questions: Claim 9 recites "a computer system formed with at least one standard drive bay," which appears to describe a full desktop or server computer. The complaint alleges the "MAIWO K3094," an external docking station, is this "computer system." This raises the question of whether an external peripheral device can meet the definition of the claimed "computer system".

V. Key Claim Terms for Construction

For the ’924 Patent:

• The Term: "host microcontroller"
• Context and Importance: This term defines the central component of the invention. The infringement analysis will depend on whether the accused device contains a component that meets the specific functional requirement of "functioning as a host to the second communication port and the first communication port" (’924 Patent, col. 11:7-9). Practitioners may focus on this term because the dual-host capability is the key technical differentiator.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification refers to the component as a "specialized microprocessor" (’924 Patent, col. 4:22-23) and a "Universal Serial Bus (USB) host controller" (’924 Patent, col. 7:21-22), which may support construing the term to cover a variety of processing units capable of hosting peripherals.
  • Evidence for a Narrower Interpretation: The claim language and abstract repeatedly tie the term to its specific function of connecting to both a handheld device and a mass storage device to mediate a data transfer between them (’924 Patent, Abstract). This could support a narrower construction requiring a single component that performs this specific dual-hosting role.

For the ’104 Patent:

• The Term: "programmed to modify an identification"
• Context and Importance: This phrase describes the inventive concept of actively altering a drive's identity. Proving infringement requires showing the accused device performs this function. Practitioners may focus on this term because it distinguishes the invention from a simple passive adapter.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification uses general terms like "electronics" and "special circuitry" to describe the invention, and states the hardware "fools" the system (’104 Patent, col. 5:4, 5:43). This language could support a construction that covers any electronic means that results in the drive being reported as removable.
  • Evidence for a Narrower Interpretation: The detailed description discloses a specific process of reading the drive’s ID buffer, modifying specific bits within it (e.g., "by setting Bit 7 of Word 0"), storing the modified buffer, and then presenting that modified buffer to the host upon request (’104 Patent, col. 8:25-33). This detailed embodiment may support a narrower construction that requires an active read-modify-store sequence.

VI. Other Allegations

• Indirect Infringement: For both the ’924 and ’104 patents, the complaint alleges inducement of infringement by "providing these products to end-users for use in an infringing manner" (Compl. ¶¶19, 29). The allegations do not cite specific evidence such as user manuals or marketing materials that would instruct users on how to perform the infringing acts.
• Willful Infringement: The complaint alleges that Defendant had knowledge of infringement "at least as of the date of this Complaint" for both patents (Compl. ¶¶19, 29). This phrasing primarily supports a claim for post-suit willfulness and does not allege specific facts pointing to pre-suit knowledge. The complaint also pleads willful blindness in the alternative (Compl. ¶¶20, 30).

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

• A central issue will be one of evidentiary proof: Can the Plaintiff produce technical evidence, such as source code or hardware analysis, to substantiate its conclusory allegations? For the ’924 patent, this means proving the accused device’s internal architecture contains a "host microcontroller" with the claimed dual-hosting function. For the ’104 patent, it requires demonstrating that the accused "printed circuit board" is actively "programmed to modify" a hard drive's identification data, rather than functioning as a passive pass-through or protocol converter.
• The case will also likely involve a key question of definitional scope for the ’104 patent: can the claim term "computer system," which the patent specification appears to describe as a host PC with an internal drive bay, be construed broadly enough to read on the accused product, which is an external, standalone docking station?