DCT

2:24-cv-00291

SiOnyx LLC v. Samsung Electronics Co Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:24-cv-00291, E.D. Tex., 06/03/2024
  • Venue Allegations: Plaintiff alleges venue is proper because Samsung is registered to do business in Texas, has transacted business and committed acts of direct infringement in the district, and maintains regular and established places of business within the district.
  • Core Dispute: Plaintiff alleges that Defendant’s digital imaging sensors, and the consumer electronics that contain them, infringe five U.S. patents related to technologies for improving image sensor performance through pixel isolation and surface texturing.
  • Technical Context: The technology concerns structural enhancements to complementary metal-oxide-semiconductor (CMOS) image sensors designed to improve light sensitivity and reduce image noise, which is critical for high-performance imaging in consumer and industrial applications.
  • Key Procedural History: The complaint is a First Amended Complaint, indicating it supersedes an original complaint filed on April 30, 2024. The asserted patents constitute two related families, with four patents directed to "Pixel Isolation Elements" and one directed to "Shallow Trench Textured Regions," suggesting a degree of shared prosecution history and technical overlap.

Case Timeline

Date Event
2012-03-22 Priority Date for U.S. Patent Nos. 9,064,764; 9,905,599; 10,224,359; 11,721,714
2013-06-29 Priority Date for U.S. Patent No. 11,069,737
2015-06-23 U.S. Patent No. 9064764 Issued
2018-02-27 U.S. Patent No. 9905599 Issued
2019-03-05 U.S. Patent No. 10224359 Issued
2021-07-20 U.S. Patent No. 11069737 Issued
2023-08-08 U.S. Patent No. 11721714 Issued
2024-04-30 Original Complaint Filed
2024-06-03 First Amended Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 9,064,764 - Pixel Isolation Elements, Devices, and Associated Methods

Issued June 23, 2015

The Invention Explained

  • Problem Addressed: As the size of pixels in image sensors decreases, image quality degrades due to reduced signal-to-noise ratios and increased electrical and optical "cross-talk" between adjacent pixels. Specifically for backside illuminated (BSI) sensors, cross-talk can be generated by light reflecting off the planar back surface of the device ('359 Patent, col. 1:25-34).
  • The Patented Solution: The invention proposes creating physical isolation elements between pixels to trap light and prevent it from leaking to adjacent pixels. These elements are described as trenches filled with materials that form a reflective barrier. One embodiment describes a multi-layer structure within the trench, comprising a high refractive index material sandwiched between two low refractive index materials, which functions as a Bragg reflector to reflect light back into the pixel, thereby increasing efficiency and reducing cross-talk ('359 Patent, col. 8:35-43; Fig. 2).
  • Technical Importance: This approach provided a structural solution to the fundamental physical limitations of pixel scaling, enabling the development of higher-resolution, higher-performance CMOS image sensors, particularly for low-light conditions (Compl. ¶13).

Key Claims at a Glance

  • The complaint asserts exemplary claims 1, 8, 17, and 21 (Compl. ¶20). As the text of the '764 patent was not provided, independent claim 1 of the related and provided U.S. Patent No. 10,224,359 is analyzed as a representative example of the core technology.
  • Claim 1 of the ’359 Patent includes these essential elements:
    • An imager device with at least two adjacent light sensitive image sensor pixels.
    • A peripheral isolation element at least partially separating the two pixels.
    • The peripheral isolation element comprises a first, second, and third layer.
    • The third layer is disposed between the first and second layers.
    • The first and second layers each have an index of refraction that is less than the index of refraction of the third layer.
  • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

U.S. Patent No. 9,905,599 - Pixel Isolation Elements, Devices, and Associated Methods

Issued February 27, 2018

The Invention Explained

  • Problem Addressed: This patent, part of the same family as the ’764 Patent, addresses the same problem of optical and electrical cross-talk in increasingly small image sensor pixels (Compl. ¶25; ’359 Patent, col. 1:25-34).
  • The Patented Solution: The solution is substantively identical to that described for the ’764 Patent, involving the use of structured isolation elements, such as trenches filled with reflective materials, to confine light within a target pixel and prevent interference with its neighbors ('359 Patent, col. 1:40-54).
  • Technical Importance: The invention contributes to the technological foundation for producing high-fidelity, high-resolution CMOS image sensors despite the physical constraints of miniaturization (Compl. ¶13).

Key Claims at a Glance

  • The complaint asserts exemplary claim 1 (Compl. ¶27). As a continuation of the application leading to the '764 patent and the parent of the application leading to the '359 patent, its independent claims are expected to cover the core pixel isolation technology.
  • Based on its position in the patent family, claim 1 likely recites an image sensor structure with a "peripheral isolation element" designed to optically and/or electrically separate adjacent pixels, consistent with the analysis of the '764 Patent above.
  • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

U.S. Patent No. 10,224,359 - Pixel Isolation Elements, Devices, and Associated Methods

Issued March 5, 2019

Technology Synopsis

Belonging to the same family as the '764 and '599 patents, this patent discloses an imager device where adjacent pixels are separated by a "peripheral isolation element." This element is structured as a multi-layer trench, such as a high-refractive-index material between two low-refractive-index materials, that acts as a Bragg reflector to trap light within a pixel and reduce crosstalk ('359 Patent, Abstract; col. 8:35-43).

Asserted Claims

The complaint asserts exemplary claims 1 and 18, which are independent claims (Compl. ¶34).

Accused Features

The complaint accuses Samsung’s “ISOCELL” image sensors of infringement, alleging that the brand name itself refers to the claimed pixel isolation technology (Compl. ¶¶31-32).

U.S. Patent No. 11,069,737 - Shallow Trench Textured Regions and Associated Methods

Issued July 20, 2021

Technology Synopsis

This patent addresses the problem of poor infrared light absorption in silicon-based sensors. The solution involves creating a "textured region" from a series of "shallow trench isolation features" coupled to the semiconductor layer, which interacts with and enhances the absorption of electromagnetic radiation passing through the sensor ('737 Patent, Abstract).

Asserted Claims

The complaint asserts exemplary claims 1, 26, and 32, which are independent claims (Compl. ¶41).

Accused Features

The complaint alleges that Defendant’s ISOCELL sensors infringe and that Samsung has published articles describing how its sensors meet the limitations of the patent's claims (Compl. ¶¶38-39).

U.S. Patent No. 11,721,714 - Pixel Isolation Elements, Devices, and Associated Methods

Issued August 8, 2023

Technology Synopsis

As a continuation in the same family as the '764, '599, and '359 patents, this patent covers the same fundamental pixel isolation technology. It describes light-trapping pixels that use a "peripheral sidewall" and "backside light trapping material" to reflect light back into the pixel, thereby preventing crosstalk and increasing efficiency ('714 Patent, Abstract).

Asserted Claims

The complaint asserts exemplary claim 1 (Compl. ¶48).

Accused Features

The complaint again targets Samsung’s “ISOCELL” sensors, alleging the name refers to the claimed technology (Compl. ¶¶45-46).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are Samsung’s “digital imaging sensors and mobile phones and tablet computers that contain those sensors” (Compl. ¶1). Specific examples include Samsung’s “ISOCELL” image sensors, which are incorporated into end devices such as the “Galaxy S23 Ultra,” “Galaxy Z Flip5,” and “Galaxy S24” smartphones (Compl. ¶¶17, 24).

Functionality and Market Context

The complaint alleges that the accused ISOCELL sensors implement “pixel isolation technology” (Compl. ¶18). Plaintiff repeatedly alleges that Samsung’s choice of the brand name “ISOCELL” is a direct reference to the patented technology of isolating pixels from one another (Compl. ¶¶18, 25, 32, 46). For the ’737 Patent, the complaint alleges that Samsung has published articles discussing how its sensors employ the claimed textured surface technology (Compl. ¶39). The accused products are positioned as flagship consumer smartphones, suggesting significant commercial activity (Compl. ¶5).

IV. Analysis of Infringement Allegations

The complaint references claim chart exhibits for each asserted patent (Exhibits F-N) but these exhibits were not filed with the complaint itself. As such, the specific mapping of claim elements to accused functionality is not available for analysis. The narrative infringement theory is summarized below.

No probative visual evidence provided in complaint.

Summary of Allegations ('764 and '599 Patents)

The complaint asserts that Samsung's ISOCELL image sensors, and the smartphones containing them, directly infringe one or more claims of the '764 and '599 patents (Compl. ¶¶17, 24). The central theory of infringement is that the technology marketed by Samsung as "ISOCELL" is the same as the "pixel isolation" technology claimed in the patents. The complaint alleges this name choice itself refers to the patented invention, suggesting Samsung’s awareness and implementation of structures that physically isolate sensor pixels to reduce crosstalk and improve performance (Compl. ¶¶18, 25).

Identified Points of Contention

  • Structural Questions: A primary point of contention may be the specific physical and material composition of Samsung's ISOCELL technology. The analysis will question whether the accused sensors contain the specific multi-layer trench structure required by claims like Claim 1 of the related ’359 Patent, which calls for a high-refractive-index layer sandwiched between two low-refractive-index layers ('359 Patent, Claim 1).
  • Evidentiary Questions: The complaint heavily relies on Samsung's use of the marketing term "ISOCELL" as evidence of infringement (Compl. ¶18). A key question for the court will be what technical evidence, beyond the brand name, supports the allegation that the accused sensors practice the specific structural and material limitations of the asserted claims.

V. Key Claim Terms for Construction

Because the patents in the "Pixel Isolation Elements" family are closely related, Claim 1 of the provided ’359 Patent is used to identify key terms that will likely be central to the dispute for the '764, '599, '359, and '714 patents.

"peripheral isolation element"

Context and Importance

This term is the core of the asserted invention across four of the five patents. Its construction will define the scope of what constitutes a separating structure between pixels. Practitioners may focus on this term because its definition will determine whether any physical barrier qualifies, or if it must possess the specific reflective material properties detailed in the patent.

Intrinsic Evidence for Interpretation

  • Evidence for a Broader Interpretation: The specification discusses a "variety of reflective materials" that can be used, including Bragg reflectors, metal reflectors, and transparent conductive oxides, which may support an interpretation not limited to a single structure ('359 Patent, col. 7:63-col. 8:22).
  • Evidence for a Narrower Interpretation: Claim 1 itself requires the "peripheral isolation element" to comprise a specific three-layer structure with particular refractive index relationships ('359 Patent, col. 18:13-23). The figures consistently depict this element as a distinct trench (e.g., 214) physically separating the pixels, which could be used to argue for a definition tied to that specific disclosed embodiment ('359 Patent, Fig. 2).

"[layers exhibiting an] index of refraction less than an index of refraction of said third layer"

Context and Importance

This phrase defines the optical physics of the claimed "isolation element." The infringement case depends on whether the accused Samsung sensors are built with materials meeting this precise relative property.

Intrinsic Evidence for Interpretation

  • Evidence for a Broader Interpretation: The specification provides a numerical guideline, suggesting the difference in refractive index may only need to be "at least 0.2 lower," which could support a broader range of qualifying material combinations ('359 Patent, col. 8:48-52).
  • Evidence for a Narrower Interpretation: The patent’s primary described embodiment is a Bragg reflector made of polysilicon between layers of silicon dioxide, a combination with a very large refractive index mismatch ('359 Patent, col. 9:16-20). A party could argue that to achieve the patent's stated goal, the term implies a difference substantial enough to create high reflectivity, not just any minor variance.

VI. Other Allegations

Indirect Infringement

The complaint alleges both induced and contributory infringement for all five patents. Inducement is based on allegations that Samsung disseminates, manufactures, and distributes the accused products with knowledge and specific intent to cause infringement (e.g., Compl. ¶18). The use of the "ISOCELL" name is presented as potential evidence of this intent. Contributory infringement is alleged on the basis that the accused products are not staple articles of commerce suitable for substantial non-infringing use (e.g., Compl. ¶19).

Willful Infringement

Willfulness is alleged for all five asserted patents. The basis for this allegation is post-suit knowledge, stating that Samsung has had actual notice of the patents and the infringing nature of its products "since at least the date of filing of the Complaint in this action, April 30, 2024" (e.g., Compl. ¶18, ¶21).

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

This case will likely center on three key questions for the court's determination:

  • A core issue will be one of structural correspondence: Does the physical and material construction of Samsung's "ISOCELL" technology actually embody the specific multi-layer, Bragg reflector-like structure recited in the claims of the "Pixel Isolation" patents, or is there a fundamental mismatch between the marketing term and the technical implementation?
  • A second issue will be one of claim scope: Will the term "peripheral isolation element" be construed broadly to cover a wide range of structures that separate pixels, or will it be limited to the specific three-layer reflective trench embodiment detailed in the patent claims and specification?
  • A third evidentiary question relates to the '737 Patent: Can Plaintiff provide sufficient technical evidence to demonstrate that Samsung's sensors, primarily designed for pixel isolation, also necessarily practice the distinct invention of using "shallow trench textured regions" for enhanced light absorption, or will these be found to be separate and unrelated technologies?