DCT

2:25-cv-00441

Mr Licensing LLC v. Renesas Electronics Corp

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:25-cv-00441, E.D. Tex., 04/25/2025
  • Venue Allegations: Plaintiff alleges venue is proper because the foreign defendants (Renesas, Denso Corp.) may be sued in any judicial district, and the domestic defendant (Denso International America) has a permanent and continuous presence, has committed acts of infringement, and maintains regular and established places of business in the district.
  • Core Dispute: Plaintiff alleges that Defendants’ microcontrollers and related semiconductor products, used in automotive and other systems, infringe a portfolio of eight patents related to microcontroller architecture, memory cell operation, vehicle monitoring, and system reset functions.
  • Technical Context: The patents cover fundamental technologies in microcontrollers, non-volatile memory, and wireless communication systems, which are critical components in the automotive electronics and embedded systems markets.
  • Key Procedural History: The complaint alleges that Defendants received prior notice of the patents-in-suit, which may form the basis for a claim of willful infringement. No other significant procedural events are mentioned.

Case Timeline

Date Event
1999-09-24 U.S. Patent No. 7,679,968 Priority Date
2000-02-16 U.S. Patent No. 6,243,300 Priority Date
2001-06-05 U.S. Patent No. 6,243,300 Issued
2001-09-14 U.S. Patent No. 6,825,689 Priority Date
2002-01-22 U.S. Patent No. 7,103,381 Priority Date
2003-09-16 U.S. Patent No. 7,089,133 Priority Date
2004-11-30 U.S. Patent No. 6,825,689 Issued
2005-12-06 U.S. Patent Nos. 7,761,232 & 8,027,789 Priority Date
2006-08-08 U.S. Patent No. 7,089,133 Issued
2006-09-05 U.S. Patent No. 7,103,381 Issued
2007-03-23 U.S. Patent No. 7,825,688 Priority Date
2010-03-16 U.S. Patent No. 7,679,968 Issued
2010-07-20 U.S. Patent No. 7,761,232 Issued
2010-11-02 U.S. Patent No. 7,825,688 Issued
2011-09-27 U.S. Patent No. 8,027,789 Issued
2025-04-25 Complaint Filing Date

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

U.S. Patent No. 6,825,689 - "Configurable input/output interface for a microcontroller"

The Invention Explained

  • Problem Addressed: The patent describes a limitation in prior art microcontrollers where input/output (I/O) pins have dedicated system functions, forcing circuit designers to work around fixed pin assignments and limiting design flexibility (’689 Patent, col. 1:45-2:14). This fixed hardware approach can lead to increased costs, production delays, and a higher pin count if designers need to make changes or accommodate multiple functions (’689 Patent, col. 2:1-14).
  • The Patented Solution: The invention provides a configurable I/O interface that decouples the physical I/O pin from a single, fixed function. It introduces a "global mapping system" and a "configuration system" that allow a single I/O pin to be selectively and dynamically coupled to either the microprocessor or to a plurality of other functional units on the chip on a clock-cycle-by-clock-cycle basis (’689 Patent, col. 2:25-41; Fig. 1). This allows pin assignments to be modified through software rather than hardware, granting designers greater flexibility (’689 Patent, col. 2:42-51).
  • Technical Importance: This approach provides a programmable system-on-a-chip architecture where I/O functionality is not fixed by the vendor, but can be customized by the user to suit a particular application, facilitating easier design changes and potentially reducing the number of required I/O pins.

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (Compl. ¶25).
  • Claim 1 Elements:
    • In a microcontroller having a microprocessor, an input/output interface comprising:
    • a) an input/output pin;
    • b) a global mapping system for selectively coupling said input/output pin to a plurality of functional units of said microcontroller; and
    • c) a configuration system for defining a system function for said input/output pin and for selectively coupling said input/output pin to one of said microprocessor and to said global mapping system.
  • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

U.S. Patent No. 7,103,381 - "Method and/or apparatus for implementing USB and audio signals shared conductors"

The Invention Explained

  • Problem Addressed: The patent addresses the cost and design complexity in portable devices like cellphones, which often require separate physical connectors for different interfaces, such as a USB port for data and a jack plug for an audio headset (’381 Patent, col. 1:37-45). Using multiple connectors increases cost and the potential for unreliable contacts (’381 Patent, col. 2:1-4).
  • The Patented Solution: The invention discloses a transceiver circuit that allows analog audio signals and digital USB signals to share the same physical conductors or pins. The transceiver includes a multiplexer circuit that, based on a control signal, can switch the I/O bus between a first state (for coupling analog signals) and a second state (for coupling digital signals) (’381 Patent, Abstract; Fig. 2). This allows a single multi-pin connector to serve dual purposes, simplifying device design and reducing component count (’381 Patent, col. 2:40-52).
  • Technical Importance: This technology enables the consolidation of ports on mobile and other electronic devices, a critical factor in miniaturization and cost reduction, by allowing different signal types to be multiplexed over a shared physical interface.

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (Compl. ¶39).
  • Claim 1 Elements:
    • An apparatus comprising a transceiver circuit comprising a multiplexer circuit, an interface circuit, a physical layer interface and a plurality of bus input/outputs (I/Os), wherein:
    • (a) said transceiver circuit is configured to directly couple (i) an analog input signal to said bus I/Os with said multiplexer circuit when said bus I/Os are in a first state and (ii) a plurality of first digital signals to said bus I/Os with said multiplexer circuit when said bus I/Os are in a second state,
    • (b) said multiplexer circuit is configured to present/receive (i) an analog output signal on an input/output when in said first state and (ii) said plurality of first digital signals on said input/output when in said second state, and
    • (c) said interface circuit is configured to present a control signal to said multiplexer circuit and said physical layer interface to control coupling in response to said first state and said second.
  • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

U.S. Patent No. 7,761,232 - "Wireless locating and monitoring system"

  • Technology Synopsis: The patent describes a method for monitoring a vehicle by periodically determining its location, scanning for an available wireless data network (like Wi-Fi), and transmitting the vehicle's status through that network to a remote receiver (’232 Patent, Abstract). This avoids reliance on costly cellular data subscriptions for vehicle tracking (’232 Patent, col. 1:41-49).
  • Asserted Claims: At least Claim 1 (Compl. ¶52).
  • Accused Features: The complaint alleges that Renesas R-Car W2H products, which support Intelligent Transportation System (ITS) communication, infringe by using a GPS module to determine vehicle location and a V2X Radio to scan for and transmit that information through a wireless access point (Compl. ¶¶53-55). A system block diagram from a Renesas webpage illustrates the accused components, including the R-Car W2H communication processor, V2X Radio SoC, and GPS Module (Compl. p. 22).

U.S. Patent No. 8,027,789 - "Wireless locating and monitoring system"

  • Technology Synopsis: This patent is related to the ’232 Patent and similarly describes a method for monitoring a vehicle by using a positioning system to determine its location, scanning for a wireless data network, and transmitting a status update. The ’789 patent claims focus on a method of monitoring a vehicle that includes the steps of periodically determining a vehicle location, scanning to locate an access point, and transmitting a status of the vehicle through that access point (’789 Patent, Abstract).
  • Asserted Claims: At least Claim 1 (Compl. ¶65).
  • Accused Features: The infringement allegations are nearly identical to those for the ’232 Patent, targeting the Renesas R-Car W2H products for their ability to monitor vehicle location via GPS and transmit status information via a V2X radio (Compl. ¶¶66-69).

U.S. Patent No. 6,243,300 - "Substrate hole injection for neutralizing spillover charge generated during programming of a non-volatile memory cell"

  • Technology Synopsis: The patent addresses a problem in non-volatile memory cells where "spillover electrons" can accumulate in the channel during programming, degrading the programmed threshold voltage and making erasure difficult (’300 Patent, col. 2:14-17). The invention proposes a method for erasing the memory cell that involves generating "neutralizing holes" in the substrate and moving them to the channel to neutralize these spillover electrons, thereby enabling a more effective and reliable erase operation (’300 Patent, Abstract).
  • Asserted Claims: At least Claim 1 (Compl. ¶79).
  • Accused Features: The complaint alleges that Renesas RH850 devices, which contain embedded flash memory, infringe by practicing the claimed method of erasing a memory cell. The allegations are supported by diagrams from an IEEE article describing the accused SG-MONOS flash memory, which allegedly show the spillover electrons and the use of band-to-band tunneling to generate holes for erasure (Compl. ¶¶79-80; pp. 29-31).

U.S. Patent No. 7,679,968 - "Enhanced erasing operation for non-volatile memory"

  • Technology Synopsis: The patent describes a method for erasing a non-volatile memory cell by carefully sequencing the application of negative and positive voltages. A negative voltage is applied to a word line, and once it reaches a predetermined level, a positive voltage is applied to the memory cell well, with a timing gap between the start of each voltage application (’968 Patent, Abstract). This timing control aims to prevent issues caused by capacitive coupling between the well and the word line, which could otherwise disrupt the erase operation (’968 Patent, col. 2:1-11).
  • Asserted Claims: At least Claim 1 (Compl. ¶89).
  • Accused Features: The complaint alleges that Renesas RX600 family devices infringe by incorporating a negative voltage generating circuit (NHV) for the word line and a positive voltage generating circuit (PHV) for the memory cell well, and applying these voltages with the claimed timing gap during an erase operation (Compl. ¶89).

U.S. Patent No. 7,089,133 - "Method and circuit for providing a system level reset function for an electronic device"

  • Technology Synopsis: The patent discloses a multi-tiered reset system for an electronic device to ensure proper operation, particularly during power-up. It combines an initial, imprecise power-on reset for low voltage conditions, a second, tunable reset that becomes more precise after calibration, and a third "boot-up" reset that verifies calibration data (’133 Patent, Abstract). This layered approach is designed to keep the device in a safe reset state across a wide range of voltage profiles and conditions (’133 Patent, col. 3:20-53).
  • Asserted Claims: At least Claim 1 (Compl. ¶99).
  • Accused Features: The complaint alleges that Renesas RL78 MCUs infringe by implementing the claimed three-tiered reset method, including a power-on reset, a tunable Low Voltage Detection (LVD) function, and a boot-up function that verifies calibration. A block diagram from an M16C 65C User's Manual is provided to show the accused "Power-on-reset and voltage detector circuits and reset controller" (Compl. ¶99; p. 37).

U.S. Patent No. 7,825,688 - "Programmable microcontroller architecture(mixed analog/digital)"

  • Technology Synopsis: The patent describes a mixed-signal microcontroller architecture that integrates programmable analog and digital circuit blocks on a single chip. These blocks can communicate with each other through a programmable interconnect structure, allowing for "on-the-fly" reconfiguration of their functions and parameters (’688 Patent, Abstract). The architecture includes both Continuous Time and Switched Capacitor analog blocks, providing a flexible platform for complex mixed-signal applications (’688 Patent, col. 2:30-47).
  • Asserted Claims: At least Claim 1 (Compl. ¶108).
  • Accused Features: Renesas RA6M5 microcontrollers are accused of infringing. The complaint alleges these products contain a plurality of analog (e.g., A/D converter) and digital (e.g., Clocked Serial Interface) circuit blocks, a bus (P-Bus) coupling them, and a clock to control the data coupling, thereby meeting the claim limitations (Compl. ¶108). A block diagram from the RA6M5 datasheet is used to identify the accused digital and analog circuit blocks and the bus structure (Compl. pp. 41-42).

III. The Accused Instrumentality

Product Identification

  • The Accused Products are a wide range of Renesas microcontrollers (MCUs) and System-on-Chip (SoC) products, including but not limited to the V850E2/ML4, RL78/F13, RL78/F14, R-Car W2H, RH850 Family, RX600 Family, RL78 MCUs, and RA6M5 MCUs (Compl. ¶¶7, 20).

Functionality and Market Context

  • These components are described as central processing units for embedded systems, particularly in the automotive industry (Compl. ¶18). For example, the V850E2/ML4 is a 32-bit single-chip microcontroller used for large-capacity data processing and real-time control (Compl. p. 9). The RL78/F14 is a transceiver circuit with multiplexing capabilities for handling both analog and digital I/O (Compl. ¶40). The R-Car W2H is a V2X (Vehicle-to-Everything) communication processor SoC that integrates a GPS module and V2X radio for automotive communication systems (Compl. ¶¶53-54). The RH850 and RX600 families contain embedded non-volatile flash memory (Compl. ¶¶79, 89). The RA6M5 is a mixed-signal MCU with both analog and digital peripheral blocks (Compl. ¶108).
  • The complaint alleges these products are incorporated into components and systems sold by Denso and used in vehicles from manufacturers like Toyota, highlighting their significant commercial role in the automotive supply chain (Compl. ¶¶7, 18).

IV. Analysis of Infringement Allegations

’689 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a) an input/output pin The Renesas V850E2/ML4 microcontroller is alleged to contain 113 input/output ("I/O") pins, which can operate as general-purpose I/O pins in "Port mode" or as pins for on-chip peripherals in "Alternative mode." ¶¶26-27 col. 3:1-3
b) a global mapping system for selectively coupling said input/output pin to a plurality of functional units of said microcontroller The Accused Products are alleged to comprise a global mapping system in the form of port control registers (e.g., PMCn, PFCn) that are used to configure the individual I/O pins and assign them to one of up to four functional units of the microprocessor. A table of these registers from the product manual is provided as evidence (Compl. p. 10). ¶28 col. 2:34-37
c) a configuration system for defining a system function for said input/output pin and for selectively coupling said input/output pin to one of said microprocessor and to said global mapping system. The V850E2/ML4 is alleged to have a configuration system that defines the function of each pin. This system can assign pins to functional units using an "alternative mapping function," as shown in a "Pin function settings" table from the user manual, which details how register bits control whether a pin operates in "Port mode," "S/W I/O control mode," or "Direct I/O control mode" (Compl. p. 11). ¶29 col. 2:37-41
  • Identified Points of Contention:
    • Scope Questions: A central question may be whether the set of hardware registers (PMCn, PFCn, etc.) cited in the complaint constitutes a "global mapping system" as that term is used in the patent. The defense may argue that these are standard port configuration registers and not the novel, dynamically reconfigurable system described in the patent specification.
    • Technical Questions: The analysis may focus on the degree of selectivity and dynamic reconfigurability alleged. The claim requires a system for "selectively coupling" the pin to either the microprocessor or the global mapping system. The court will need to determine if the accused product's architecture, as evidenced by its user manual, actually performs this specific selective coupling as claimed, or if it operates in a fundamentally different way.

’381 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a transceiver circuit comprising a multiplexer circuit, an interface circuit, a physical layer interface and a plurality of bus input/outputs (I/Os) The Renesas RL78/F14 is alleged to be a transceiver circuit with a multiplexer, an interface circuit, a physical interface, and bus I/Os. "Port 8" is identified as an example, comprising I/Os P80 to P87 and associated GPIO, analog inputs, and multiplexers. This is supported by a block diagram of the accused product (Compl. p. 14). ¶40 col. 2:30-32
(a) said transceiver circuit is configured to directly couple (i) an analog input signal...when said bus I/Os are in a first state and (ii) a plurality of first digital signals...when said bus I/Os are in a second state The complaint alleges the RL78/F14's Port 8 can be configured for a combination of digital inputs/outputs and analog inputs/outputs. A block diagram of pin P80 is provided, showing a "Selector" that can switch between "0: Analog input" and "1: Digital I/O," representing the two claimed states (Compl. p. 15). The complaint asserts this supports a plurality of signals. ¶41 col. 2:32-37
(b) said multiplexer circuit is configured to present/receive (i) an analog output signal...when in said first state and (ii) said plurality of first digital signals...when in said second state The complaint alleges the RL78/F14's multiplexer can be configured via control registers to present or receive analog signals (first state) or digital signals (second state). This is supported by a settings table showing how register values for the P80 pin determine whether its function is "Digital input," "Analog output," or "Analog input" (Compl. p. 17). ¶42 col. 4:5-13
(c) said interface circuit is configured to present a control signal to said multiplexer circuit and said physical layer interface to control coupling in response to said first state and said second. The complaint alleges that the configuration registers shown at the top of the settings table (e.g., ADPC Register, PM8 Register, DAM2 Register) constitute the interface circuit. These registers allegedly provide the control signals that configure the multiplexers and physical layer to switch between the analog and digital states. ¶43 col. 3:5-13
  • Identified Points of Contention:
    • Scope Questions: The definition of "directly couple" may be a point of contention. The defense could argue that the circuitry shown between the pin and the various functional blocks (e.g., A/D converter, output latch) in the accused product's block diagram (Compl. p. 15) means the coupling is not "direct" in the manner required by the patent.
    • Technical Questions: An evidentiary question will be whether the accused product's general-purpose I/O port, which can be configured for either analog or digital functions, is structurally and functionally equivalent to the specific "transceiver circuit" with distinct "first" and "second" states as claimed. The defense may argue that the patent claims a specific dual-mode transceiver for sharing USB and audio lines, not a generic configurable I/O pin.

V. Key Claim Terms for Construction

For the ’689 Patent

  • The Term: "global mapping system"
  • Context and Importance: This term is the central novel element of claim 1. Its construction will determine whether a set of standard configuration registers, as alleged in the complaint, can be considered the patented invention. Practitioners may focus on this term because the plaintiff's infringement theory appears to equate this term with the accused product's port configuration registers.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent states the global mapping system "selectively couples functional units on the microcontroller with the I/O pin" and can be "reconfigured dynamically (e.g., per clock cycle)" (’689 Patent, col. 2:34-41). This functional language could support an interpretation covering any mechanism that achieves this dynamic coupling.
    • Evidence for a Narrower Interpretation: The detailed description consistently links the "global mapping system 105" to the "Digital Configurable System Macro (DCSM) 106," a specific collection of functional units (’689 Patent, col. 3:4-7). This could support a narrower construction requiring a specific architectural link to a defined macro block, not just any functional unit on the chip.

For the ’381 Patent

  • The Term: "transceiver circuit"
  • Context and Importance: The entire claim is directed to this apparatus. Whether the accused RL78/F14's configurable I/O port constitutes a "transceiver circuit" as claimed is fundamental to the infringement question. The term's scope will define whether the patent covers any shared analog/digital pin or is limited to the specific USB/audio context described.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim language itself does not limit the analog and digital signals to audio and USB, respectively. It speaks generally of an "analog input signal" and a "plurality of first digital signals," which could be read to cover any such signal types.
    • Evidence for a Narrower Interpretation: The patent's background is exclusively focused on the problem of sharing conductors for USB and audio signals on cellphone handsets (’381 Patent, col. 1:15-63). The Summary of the Invention also frames the invention in this context (’381 Patent, col. 2:30-40). This may support a narrower interpretation tied to the specific problem the patent purports to solve.

VI. Other Allegations

  • Indirect Infringement: For each asserted patent, the complaint alleges both induced and contributory infringement. Inducement is based on allegations that Defendants provide instructional materials, technical support, and user manuals that guide customers and end-users to use the Accused Products in an infringing manner (e.g., Compl. ¶¶31, 44). Contributory infringement is alleged on the basis that the accused components are material to the inventions, are not staple articles of commerce, and are known by Defendants to be especially made for use in an infringing manner (e.g., Compl. ¶¶32, 45).
  • Willful Infringement: The complaint alleges that "Defendants have received prior notice about the Patents-in-Suit and their infringement" and/or have been willfully blind, forming the basis for willfulness (Compl. ¶20; Prayer for Relief ¶b). This suggests an allegation of both pre- and post-suit willfulness.

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

  1. A central issue will be one of definitional scope: can terms rooted in specific inventive concepts, such as the "global mapping system" for dynamic I/O routing (’689 Patent) and the "transceiver circuit" for sharing USB/audio lines (’381 Patent), be construed broadly enough to read on the general-purpose, configurable hardware (e.g., port registers, mixed-signal I/O pins) found in the accused microcontrollers?
  2. A second core issue will be one of technological application: will the methods claimed in the memory patents (’300, ’968 Patents), which describe specific voltage timing and charge neutralization techniques for erasing memory cells, be found to be practiced by the accused Renesas flash memory products, or will there be a fundamental mismatch in their operational principles?
  3. A key evidentiary question will be one of knowledge and intent: what specific pre-suit notice did the Defendants allegedly receive regarding the eight asserted patents, and does the evidence show that they acted with the requisite knowledge for a finding of indirect and willful infringement across this diverse patent portfolio?