DCT
2:23-cv-00259
Winterspring Digital LLC v. Hewlett Packard Enterprises Co
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Winterspring Digital LLC (Texas)
- Defendant: Hewlett Packard Enterprise Company (Delaware)
- Plaintiff’s Counsel: Fabricant LLP; Truelove Law Firm, PLLC
- Case Identification: 2:23-cv-00259, E.D. Tex., 05/31/2023
- Venue Allegations: Venue is alleged to be proper based on Defendant maintaining a regular and established place of business within the Eastern District of Texas and having transacted business and committed acts of alleged infringement in the district.
- Core Dispute: Plaintiff alleges that Defendant’s high-speed networking products, including specific transceivers and switches, infringe patents related to the transmission of 10-Gigabit Ethernet signals and the high-speed classification of data packets.
- Technical Context: The technologies at issue address methods for extending native Ethernet signals over long-haul transport systems and for offloading packet protocol identification from central processors in network devices.
- Key Procedural History: The complaint does not reference any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history related to the patents-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2002-04-08 | ’692 Patent Priority Date |
| 2002-12-20 | ’975 Patent Priority Date |
| 2007-01-16 | U.S. Patent No. 7,164,692 Issues |
| 2008-09-02 | U.S. Patent No. 7,420,975 Issues |
| 2023-05-31 | Complaint Filed |
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 Jan. 16, 2007)
The Invention Explained
- Problem Addressed: The patent describes a fundamental incompatibility between packet-based enterprise Local Area Networks (LANs), like Ethernet, and the circuit-switched carrier networks (WANs) used for long-distance communication. Bridging this gap traditionally required converting native Ethernet signals into a different format, such as SONET, which added cost, complexity, and inefficiency to the network. (’692 Patent, col. 1:26-36, col. 2:3-12).
- The Patented Solution: The invention proposes a transceiver that can receive a standard 10-Gigabit Ethernet (10GE) LAN signal, process it internally, and re-transmit it over a long-haul transport system without encapsulating it into a SONET frame. The transceiver converts the signal to an internal electrical form, monitors it using a Media Access Controller (MAC), re-clocks it, and sends it on, preserving the native LAN format. (’692 Patent, Abstract; col. 5:21-30). The architecture shown in Figure 3, which includes a MAC for performance monitoring, illustrates this solution. (’692 Patent, Fig. 3).
- Technical Importance: This approach aimed to allow cost-effective, native 10GE LAN signals to extend over long-haul distances, potentially simplifying network infrastructure and reducing costs associated with WAN-specific hardware and protocols. (’692 Patent, col. 6:9-15).
Key Claims at a Glance
- The complaint asserts at least independent claim 10. (Compl. ¶17).
- Independent Claim 10 is a method for transferring a 10GE LAN signal from a transport system, comprising the key steps of:
- receiving the 10GE LAN client signal transmitted over the transport system;
- converting the 10GE LAN client signal to an intermediate signal;
- recovering clock data from the intermediate signal;
- recovering a data stream from the intermediate signal;
- reconverting the intermediate signal to the 10GE LAN client signal;
- transferring the 10GE LAN client signal to a client system; and
- monitoring the intermediate form with a monitoring device, wherein the monitoring device is a 10GE LAN media access controller.
- The complaint reserves the right to assert additional claims. (Compl. ¶16).
U.S. Patent No. 7,420,975 - "Method and Apparatus For High-Speed Frame Tagger" (issued Sep. 2, 2008)
The Invention Explained
- Problem Addressed: In high-speed networks, network processors are burdened with both processing the data within packets and identifying the protocol or type of each packet. This dual workload can create a bottleneck, as the processor may not be able to classify packets at line speed. (’975 Patent, col. 1:30-41).
- The Patented Solution: The patent discloses a dedicated hardware apparatus, or "frame tagger," designed to offload the task of packet classification. The apparatus extracts protocol information from a packet and compares it against predetermined values in a multi-pass process to determine the packet type. Based on the comparison, it applies a "tag" to the packet, which can then be used to steer the packet to the appropriate destination (e.g., a central processor or a network processor interface). (’975 Patent, Abstract; col. 2:42-56). This process is detailed in the block diagram of Figure 4. (’975 Patent, Fig. 4).
- Technical Importance: By using dedicated, high-speed logic for packet classification, the invention aimed to free up the main network processor to focus on data processing, thereby improving the overall performance and throughput of network devices. (’975 Patent, col. 1:35-41).
Key Claims at a Glance
- The complaint asserts at least independent claim 5. (Compl. ¶27).
- Independent Claim 5 is an apparatus claim comprising:
- a network processor interface;
- a central processor interface;
- a protocol determination logic block that performs a multi-pass comparison of packet protocol information against predetermined values to produce a set of results; and
- a tag select logic block that applies a tag and determines packet routing based on the results of the comparison.
- The complaint reserves the right to assert additional claims. (Compl. ¶26).
III. The Accused Instrumentality
- Product Identification: The complaint names the "HPE BladeSystem c-Class 10gb SFP+ SR Transceiver" as infringing the ’692 Patent and the "HPE FlexFabric 5820 Switch" as infringing the ’975 Patent. (Compl. ¶¶18, 28). It also makes broader allegations against Defendant’s "servers, computers, network switches, modules, and transceivers." (Compl. ¶¶16, 26).
- Functionality and Market Context:
- The complaint alleges the accused HPE transceiver performs a method of receiving, converting, recovering data from, reconverting, and transferring 10GE LAN signals. (Compl. ¶18).
- It alleges, upon information and belief, that the accused HPE switch contains an apparatus with processor interfaces, a "protocol determination logic block" that performs a two-pass comparison to generate results such as VLAN tagging, and a "tag select logic block." (Compl. ¶28).
- The complaint asserts that Defendant is a "leading manufacturer and seller of computer equipment," but provides no further detail on the market context of the accused products. (Compl. ¶2).
IV. Analysis of Infringement Allegations
’692 Patent Infringement Allegations
| Claim Element (from Independent Claim 10) | Alleged Infringing Functionality (based on Compl. ¶18) | Complaint Citation | Patent Citation |
|---|---|---|---|
| receiving the 10GE LAN client signal transmitted over the transport system | The accused transceiver receives the 10GE LAN client signal transmitted over the transport system. | ¶18 | col. 11:1-4 |
| converting the 10GE LAN client signal to an intermediate signal | The accused transceiver converts the 10GE LAN client signal to an intermediate signal. | ¶18 | col. 11:5-12 |
| recovering clock data from the intermediate signal | The accused transceiver recovers clock data from the intermediate signal. | ¶18 | col. 11:6-9 |
| recovering a data stream from the intermediate signal | The accused transceiver recovers a data stream from the intermediate signal. | ¶18 | col. 11:6-9 |
| reconverting the intermediate signal to the 10GE LAN client signal | The accused transceiver reconverts the intermediate signal to the 10GE LAN client signal. | ¶18 | col. 11:18-21 |
| transferring the 10GE LAN client signal to a client system | The accused transceiver transfers the 10GE LAN client signal to a client system. | ¶18 | col. 11:21-25 |
| monitoring the intermediate form with a monitoring device, wherein the monitoring device is a 10GE LAN media access controller | The accused transceiver monitors the intermediate form with a monitoring device which is a 10GE LAN media access controller. | ¶18 | col. 10:1-14 |
- Identified Points of Contention:
- Technical Questions: The complaint’s allegations track the claim language nearly verbatim. A key question for the court will be one of evidence: what proof demonstrates that the accused transceiver performs the specific step of "monitoring the intermediate form with a... 10GE LAN media access controller"? The analysis will turn on whether the device contains a MAC that performs packet-level monitoring (e.g., CRC checks, byte counts) on an internal signal, as described in the patent, or if it performs a simpler signal regeneration function (e.g., 3R: re-amplification, re-shaping, re-timing) that does not meet this limitation.
’975 Patent Infringement Allegations
| Claim Element (from Independent Claim 5) | Alleged Infringing Functionality (based on Compl. ¶28) | Complaint Citation | Patent Citation |
|---|---|---|---|
| a network processor interface suitable for coupling to a network processor | The accused switch includes a network processor interface suitable for coupling to a network processor. | ¶28 | col. 6:55-60 |
| a central processor interface suitable for coupling to a central processor | The accused switch includes a central processor interface suitable for coupling to a central processor. | ¶28 | col. 6:55-60 |
| a protocol determination logic block to determine a protocol type of data in a packet, wherein the protocol determination logic compares the protocol information in a first pass... and, if the first result is positive, compares the protocol information in a second pass... | The accused switch includes a protocol determination logic block that compares protocol information in a first pass and a second pass to produce a set of results, such as for VLAN tagging. | ¶28 | col. 8:10-38 |
| a tag select logic block to apply a tag to the packet... and if the first result is positive the packet should be sent to either the central processor interface or the network processor interface based on the set of results. | The accused switch comprises a tag select logic block to apply a tag to the packet (e.g., if the packet has an unknown protocol type) and to direct the packet based on the results. | ¶28 | col. 6:61-65 |
- Identified Points of Contention:
- Scope Questions: The complaint alleges infringement "upon information and belief." The central dispute may involve claim scope: does the term "protocol determination logic block" require the specific hardware structure shown in the patent (e.g., a distinct extractor, register, and comparator), or can it be read to cover similar functionality implemented within a modern, highly integrated network ASIC or processor?
- Technical Questions: What evidence supports the allegation that the accused switch performs the claimed two-pass comparison? The complaint’s reference to "VLAN tagging" raises the question of whether this standard network function is implemented using the specific multi-pass comparison architecture required by the claim, or through a different, more conventional method.
No probative visual evidence provided in complaint.
V. Key Claim Terms for Construction
’692 Patent: "monitoring the intermediate form with a... 10GE LAN media access controller" (Claim 10)
- Context and Importance: This limitation defines the active processing step that distinguishes the claimed method from simpler signal regeneration. The definition of "monitoring" will be critical. If it requires complex, packet-aware functions, the infringement burden on the Plaintiff is higher; if it is construed more broadly, the claim may read on a wider range of technologies.
- Intrinsic Evidence for Interpretation:
- Evidence for a Narrower Interpretation: The specification explicitly states that "MAC 312 is used as a performance-monitoring device" and details its functions, including monitoring "packet data, idle, preamble," identifying the "total number of packets," and performing "cyclic redundancy checks (CRC) to detect errors in each packet." (’692 Patent, col. 10:1-8). This language suggests "monitoring" requires specific, packet-level analysis.
- Evidence for a Broader Interpretation: A party might argue that the term should be given its plain and ordinary meaning, which could encompass any form of observation of the intermediate signal's characteristics by a MAC, without necessarily requiring all the specific functions detailed in the preferred embodiment.
’975 Patent: "protocol determination logic block" (Claim 5)
- Context and Importance: This is a key structural limitation of the apparatus claim. Practitioners may focus on this term because the infringement analysis will depend on whether the accused switch contains a structurally equivalent "logic block" or performs the function in a fundamentally different way (e.g., via software on a general-purpose processor).
- Intrinsic Evidence for Interpretation:
- Evidence for a Narrower Interpretation: Figure 4 and the corresponding description detail a specific structure for this "block," comprising a "Protocol Extractor" (440), a "Protocol Register" (450), and a "Comparator" (460). (’975 Patent, Fig. 4; col. 6:31-48). A party could argue the claim requires this specific arrangement of sub-components, not merely a functional equivalent.
- Evidence for a Broader Interpretation: The term "logic block" itself is general. A party could argue that any dedicated hardware logic on a chip that performs the function of protocol determination would meet the limitation, even if not organized into the exact sub-components shown in the exemplary embodiment.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement for both patents, stating that Defendant provides the accused products to end-users for use in an infringing manner with the intent to cause infringement or, alternatively, with willful blindness. (Compl. ¶¶ 19-21, 29-31). The complaint does not cite specific instructional materials or marketing documents to support these allegations.
- Willful Infringement: Willfulness is alleged based on Defendant’s knowledge of infringement "at least as of the date of this Complaint." (Compl. ¶¶ 20, 30). This pleading appears to establish a basis for potential post-suit willfulness damages rather than alleging pre-suit knowledge.
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of evidentiary proof versus conclusory pleading: given that the infringement allegations closely track the claim language, the case will depend on whether discovery uncovers evidence that the accused products operate in the specific manner required by the claims.
- A key technical question will be one of functional specificity: for the ’692 patent, does the accused transceiver’s "monitoring" function rise to the level of packet-aware analysis performed by a MAC as described in the specification, or is it a more basic form of signal regeneration?
- A key legal and technical question will be one of structural scope: for the ’975 patent, can the term "protocol determination logic block" from a 2002-era patent be construed to read on the functionality of a modern, highly integrated networking ASIC, or does the claim require a discrete hardware structure that no longer exists in the accused device?