DCT

2:25-cv-00899

Mr Licensing LLC v. Texas Instruments Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:25-cv-00899, E.D. Tex., 08/27/2025
  • Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendant maintains a regular and established place of business in the district, including a commercial manufacturing facility, and has committed acts of alleged infringement there. The complaint also notes Defendant is constructing a new facility in the district and has not contested venue in prior patent litigation.
  • Core Dispute: Plaintiff alleges that Defendant’s semiconductor products, including battery chargers, microcontrollers, USB bridges, and various power converters, infringe ten patents related to power management, clock architecture, and data transfer protocols.
  • Technical Context: The patents relate to fundamental circuit designs for power conversion and management, clock signal generation, and data interface programming, which are foundational technologies for a wide array of modern electronic devices.
  • Key Procedural History: The complaint alleges that Defendant had pre-suit knowledge of the asserted patents and its alleged infringement based on a series of letters sent by the prior patent owner, Monterey Research, LLC, between September 2018 and September 2021. These communications allegedly identified specific patents-in-suit and exemplary infringing products, forming the basis for the willfulness allegations.

Case Timeline

Date Event
2000-06-08 ’563 Patent Priority Date
2000-10-26 ’320 Patent Priority Date
2001-10-09 ’554 Patent Priority Date
2002-01-08 ’563 Patent Issued
2003-09-02 ’320 Patent Issued
2005-08-02 ’554 Patent Issued
2006-02-27 ’127 Patent Priority Date
2007-02-16 ’431 Patent Priority Date
2007-03-06 ’887 Patent Priority Date
2007-04-18 ’264 Patent Priority Date
2008-01-16 ’873 Patent Priority Date
2009-03-17 ’482 Patent Priority Date
2010-02-02 ’127 Patent Issued
2011-02-23 ’344 Patent Priority Date
2011-07-19 ’431 Patent Issued
2011-12-13 ’887 Patent Issued
2012-11-27 ’482 Patent Issued
2012-12-04 ’873 Patent Issued
2014-09-02 ’344 Patent Issued
2015-09-01 ’264 Patent Issued
2018-09-05 Plaintiff's predecessor allegedly sent first notice letter to Defendant
2018-12-27 Plaintiff's predecessor allegedly sent follow-up letter to Defendant
2021-09-24 Plaintiff's predecessor allegedly sent second notice letter to Defendant
2025-08-27 Complaint Filed

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

U.S. Patent No. 6,337,563 - "DC-DC Converter and Semiconductor Integrated Circuit Device for DC-DC Converter"

The Invention Explained

  • Problem Addressed: The patent addresses the challenge of designing DC-DC converters for portable electronics that can operate safely and efficiently with external AC adapters having different current-supplying capacities ('563 Patent, col. 1:15-24). Using an adapter with insufficient capacity can cause it to shut down, while using an adapter with excess capacity may not leverage its full power potential ('563 Patent, col. 5:40-54).
  • The Patented Solution: The invention proposes a control unit for a DC-DC converter that incorporates four distinct types of controllers. These controllers independently monitor and react to four different parameters: the input current from the external supply, the charge current delivered to the battery, the battery's charge voltage, and the input voltage from the external supply ('563 Patent, Abstract; col. 6:11-31). By comparing each of these parameters to corresponding threshold values, the control unit can dynamically adjust the charging process to accommodate different power sources and load conditions.
  • Technical Importance: This multi-faceted control architecture allows a single electronic device to be compatible with a wider range of power adapters, enhancing user convenience and preventing damage or operational failure from mismatched power supplies.

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶30).
  • Claim 1 requires:
    • A DC-DC converter for generating a circuit current and charging a battery, comprising a supply circuit and a charge circuit.
    • A control unit connected to the charge circuit for controlling the charge current.
    • The control unit includes four distinct controllers:
      • A differential charge controller for comparing the input current with a first threshold value and controlling the charge current.
      • A charge current controller for comparing the charge current with a second threshold value and controlling the charge current.
      • A charge voltage controller for comparing a charge voltage of the battery with a third threshold value and controlling the charge current.
      • A dynamic charge controller for comparing an input voltage from the external DC power supply with a fourth threshold value and controlling the charge current.
  • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

U.S. Patent No. 6,614,320 - "System and Method of Providing a Programmable Clock Architecture for an Advanced Microcontroller"

The Invention Explained

  • Problem Addressed: The patent's background section notes that the clocking functionality in microcontrollers is often customized for specific applications, which can limit the functional range of any integrated programmable logic blocks that rely on those clock signals ('320 Patent, col. 2:34-40).
  • The Patented Solution: The patent describes a flexible clock architecture within a microcontroller that includes multiple clock sources and a programmable switch to select between them ('320 Patent, Abstract; Fig. 2). The architecture includes an internal oscillator that operates independently, an "oscillator support circuit" that can be coupled to a higher-precision external crystal, and a second internal oscillator that provides a clock signal to a programmable circuit capable of generating a plurality of clock signals for the microprocessor ('320 Patent, col. 2:49-67). This allows a user to select the appropriate clock source—for instance, a low-cost internal oscillator or a more precise external one—based on the application's needs.
  • Technical Importance: This architecture provides system designers with the flexibility to balance cost, power consumption, and timing precision by selecting from multiple on-chip and external clocking options within a single microcontroller device.

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶49).
  • Claim 1 requires:
    • A microcontroller with a microprocessor and programmable logic, containing a clock architecture.
    • A first internal clock oscillator circuit.
    • An oscillator support circuit that functions as a clock oscillator when a crystal is coupled to it.
    • A programmable switch for selectively switching a clock signal line between said first internal clock oscillator circuit and said oscillator support circuit.
    • A second internal clock oscillator circuit for providing a programmable circuit that generates a plurality of programmable clock signals for the microprocessor.
  • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

U.S. Patent No. 9,124,264 - "Load Driver"

  • Technology Synopsis: This patent describes a method for driving an output terminal by configuring an output driver to operate in two distinct modes. In a first mode, the driver drives the output to a voltage within a desired range; in a second mode, triggered by reaching that first voltage, the driver drives the output to a second voltage approximately equal to an appropriate output voltage, a technique used for managing signal integrity in high-speed data transmission.
  • Asserted Claims: Claim 1 is asserted (Compl. ¶64).
  • Accused Features: The complaint alleges that TI’s USB redrivers, such as the TUSB501-Q1, infringe by practicing the claimed method. The accused features include the product's ability to provide selectable "de-emphasis and output swing control" to achieve USB 3.0 compliance (Compl. ¶¶66-69).

U.S. Patent No. 6,925,554 - "Method of Programming USB Microcontrollers"

  • Technology Synopsis: This patent relates to a microcontroller with a communication engine that operates in two modes. In a first mode, it transfers normal data over data lines (e.g., standard USB communication). In a second mode, it receives programming data over the same data lines, which is then written to a memory by a programming circuit. This allows for in-system programming without requiring dedicated programming pins.
  • Asserted Claims: Claim 1 is asserted (Compl. ¶80).
  • Accused Features: The complaint alleges that TI’s USB 3.0 to SATA Bridge products, such as the TUSB9261, infringe. The accused features include the device's ability to transfer normal data using protocols like UASP and to receive firmware updates via USB for "in-circuit programming of the SPI Flash" (Compl. ¶¶81-82).

U.S. Patent No. 7,656,127 - "Method and Apparatus for Using an External Resistor for Charging Applications"

  • Technology Synopsis: The patent describes a battery charger control loop that uses a single external resistor for two purposes. The loop is configured to use the resistor both to set the battery's charge current and to monitor for an over-current condition. This dual-purpose use of a single component can reduce component count and simplify circuit design.
  • Asserted Claims: Claim 1 is asserted (Compl. ¶93).
  • Accused Features: The complaint alleges that certain TI battery chargers, such as the bq25871, infringe. The accused feature is the device's battery charger control loop that allegedly uses a single external sense resistor to both monitor battery current and regulate the battery current at a set threshold (Compl. ¶¶94, 44).

U.S. Patent No. 8,324,873 - "Power Supply Apparatus and Power Supply Method"

  • Technology Synopsis: This patent describes a power supply apparatus with a specific arrangement of switches, an inductor, and control circuitry. The invention uses a comparator to compare an input voltage with a comparison voltage, and a signal generator then outputs a frequency signal based on that comparison. A control circuit uses this frequency signal to control switches and regulate current flowing into the inductor.
  • Asserted Claims: Claim 1 is asserted (Compl. ¶105).
  • Accused Features: The complaint alleges that TI Boost converters, such as the TPS61022, infringe. The accused features are the converter's internal switches, output terminal, and PWM controller that allegedly compares an input voltage to a threshold (e.g., 1.5V) to adjust its switching frequency (Compl. ¶¶107-111).

U.S. Patent No. 8,078,887 - "Power Supply Voltage Regulator Circuit and Microcomputer"

  • Technology Synopsis: This patent describes a microcomputer power supply circuit that switches between four distinct power states based on control signals for a "normal circuit" (including the CPU) and a "backup system circuit." The states manage whether a primary or secondary voltage is supplied to neither, one, or both circuits, allowing for fine-grained power management for operation, backup, and stop modes.
  • Asserted Claims: Claim 6 is asserted (Compl. ¶122).
  • Accused Features: The complaint alleges that TI processors, such as the AM65x series, infringe. The accused features are the SoC's ARM processor ("normal circuit"), its "independently controlled power supply per module" ("backup system circuit"), and its ability to transition between low power modes like "DeeperSleep," "Standby," and "Active" that allegedly correspond to the claimed four states (Compl. ¶¶123-129).

U.S. Patent No. 8,319,482 - "Power Supply and Power Control Device"

  • Technology Synopsis: The patent relates to a power supply controller that adjusts the switching cycle of a first switch based on detecting a "light load state." The controller changes the cycle from a first, shorter cycle to a second, longer cycle when a voltage at the junction between the power supply's switches indicates a light load, thereby improving efficiency under low-power conditions.
  • Asserted Claims: Claim 1 is asserted (Compl. ¶140).
  • Accused Features: The complaint alleges that TI Synchronous Buck Converters, such as the TPSM86837, infringe. The accused features are the product's power supply architecture and a controller that allegedly changes the switching cycle to manage light load states (Compl. ¶¶141-144).

U.S. Patent No. 8,823,344 - "Control Circuit, Electronic Device, and Method for Controlling Power Supply"

  • Technology Synopsis: This patent describes a control circuit for a power supply with two switches. A first control circuit switches them in a complementary manner based on a reference voltage. A second control circuit can disable this complementary switching based on comparison circuits that monitor output voltage and current, providing a mechanism to interrupt normal operation under certain conditions.
  • Asserted Claims: Claim 1 is asserted (Compl. ¶154).
  • Accused Features: The complaint alleges that TI Synchronous Buck Converters, such as the TPS548B23, infringe. The accused features are the device's control circuit, integrated MOSFETs, and its ability to operate in different modes (Eco-mode or FCCM) which allegedly involves disabling and enabling complementary switching based on load conditions (Compl. ¶¶155-158).

U.S. Patent No. 7,982,431 - "Detection Circuit"

  • Technology Synopsis: The patent describes a detection circuit that uses a plurality of current amplifiers to generate detection signals corresponding to current flowing through a plurality of resistors. A single error amplifier then compares these multiple detection signals with multiple reference signals to generate a single error signal, consolidating the error detection function.
  • Asserted Claims: Claim 1 is asserted (Compl. ¶168).
  • Accused Features: The complaint alleges that certain TI battery chargers, such as the BQ25713, infringe. The accused features are the device's multiple current amplifiers and an error amplifier that allegedly compares their detection signals to generate error signals like "PROCHOT" (Compl. ¶¶169-170).

III. The Accused Instrumentality

Product Identification

  • The complaint names a wide range of Texas Instruments semiconductor products, grouped into several categories: (a) battery chargers (e.g., bq25890), (b) microcontrollers (e.g., TM4C123GH6ZRB), (c) USB 3.0 to SATA Bridge products (e.g., TUSB9261), (d) USB redrivers (e.g., TUSB501-Q1), (e) processors (e.g., AM65x), (f) Boost converters (e.g., TPS61022), and (g) Synchronous Buck Converters (e.g., TPSM86837) (Compl. ¶19).

Functionality and Market Context

  • The accused instrumentalities are integrated circuits that perform core functions in modern electronic devices. The complaint focuses on specific functionalities within exemplary products to map onto the patent claims. For the ’563 Patent, the complaint highlights the bq25890's role as a "switch-mode battery charge management and system power path management device" that converts DC input to charge a battery (Compl. ¶31). The complaint includes a simplified schematic of the bq25890 to illustrate its external connections and internal blocks (Compl. p. 9).
  • For the ’320 Patent, the complaint identifies the Tiva TM4C123GH6ZRB as a microcontroller containing an ARM CPU and multiple on-chip clock sources, including a "Precision Internal OSC" and a "Main OSC" that supports an external crystal (Compl. ¶¶50-51). A block diagram is provided showing the system architecture, including the "System Control and Clocks" module (Compl. p. 22).
  • These products are fundamental building blocks for consumer electronics, industrial controls, automotive systems, and computing devices, and are alleged to be commercially significant components for Defendant.

IV. Analysis of Infringement Allegations

’563 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a supply circuit for supplying the circuit current to internal circuits in accordance with an input current supplied from an external DC power supply The bq25890 contains VBUS, which receives an input DC current from an external source (e.g., USB) to supply internal circuits. ¶32 col. 7:36-40
a charge circuit for receiving the input current and supplying a charge current to the battery The bq25890 has a charge circuit including transistors (RBFET, HSFET, BATFET) that directs current flow from the VBUS input to the BAT terminal for battery charging. ¶33 col. 7:40-44
a control unit...for controlling the charge current...including, a differential charge controller for comparing the input current with a first threshold value and controlling the charge current... The bq25890 includes a control unit with a differential charge controller that measures the input current and compares it to a first threshold value (input current limit, I_INDPM). ¶35 col. 7:50-53
a charge current controller for comparing the charge current with a second threshold value and controlling the charge current... The bq25890 contains charge current controllers that compare the charge current to a second threshold value, such as the termination threshold (I_TERM) or the constant current regulation value (I_CNG_REF). ¶36 col. 7:53-56
a charge voltage controller for comparing a charge voltage of the battery with a third threshold value and controlling the charge current... The bq25890 has charge voltage controllers that compare the battery's charge voltage to a third threshold value (VBAT_REF) to regulate the voltage during the constant voltage phase. ¶37 col. 7:56-60
a dynamic charge controller for comparing an input voltage from the external DC power supply with a fourth threshold value and controlling the charge current... The bq25890 has dynamic charge controllers that feature Dynamic Power Management (DPM), which monitors the input voltage and compares it to a fourth threshold value (VINDPM) to reduce charge current if the input voltage falls. The complaint provides an annotated schematic identifying these dynamic charge controllers (Compl. p. 17). ¶38 col. 7:60-64
  • Identified Points of Contention:
    • Scope Questions: The core of the dispute may center on whether the accused product's integrated, multi-functional control logic constitutes four structurally and functionally distinct "controllers" as recited in the claim. A question for the court will be whether the claim requires four separate circuits that each independently exert control, or if a single, unified control logic that considers four different parameters meets the claim's requirements.
    • Technical Questions: A factual question will be what evidence demonstrates that each of the four alleged controllers in the bq25890 independently performs the function of "controlling the charge current." For example, does the dynamic charge controller directly adjust the charge current, or does it provide an input to a central PWM controller which then performs the ultimate act of control based on multiple inputs?

’320 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a microcontroller having a microprocessor and programmable logic, a clock architecture comprising: a first internal clock oscillator circuit The Tiva TM4C123GH6ZRB is a microcontroller containing a microprocessor (ARM CPU), is programmable, and has a first internal clock oscillator circuit, the "Precision Internal Oscillator (PIOSC)". ¶50 col. 7:57-61
an oscillator support circuit that functions as a clock oscillator when a crystal is coupled to said oscillator support circuit The Tiva TM4C123GH6ZRB contains a "Main Oscillator (MOSC)" which provides a frequency-accurate clock source by connecting to an external crystal across its OSC0 and OSC1 pins. ¶51 col. 7:61-63
a programmable switch for selectively switching a clock signal line between said first internal clock oscillator circuit and said oscillator support circuit... The Tiva TM4C123GH6ZRB contains a multiplexer (mux) that functions as a programmable switch to select a clock source from either the Main OSC or the Precision Internal OSC. The complaint includes an annotated "Main Clock Tree" diagram highlighting this mux (Compl. p. 25). ¶52 col. 7:65-67
a second internal clock oscillator circuit for providing a programmable circuit, wherein said programmable circuit generates a plurality of programmable clock signals, one for said microprocessor The Tiva TM4C123GH6ZRB has a second internal oscillator, the "Low-Frequency Internal Oscillator (LFIOSC)". This oscillator provides a clock signal to a programmable circuit that generates multiple clock sources for the microcontroller system clock. ¶53 col. 8:1-5
  • Identified Points of Contention:
    • Scope Questions: A potential dispute may arise over the term "oscillator support circuit." The accused product's "Main OSC" is alleged to also function with an "external single-ended clock source," not just a crystal (Compl. ¶51). This raises the question of whether a circuit with alternative operational modes falls within the scope of a term that describes a specific function ("functions as a clock oscillator when a crystal is coupled").
    • Technical Questions: The complaint alleges the "LFIOSC" is the "second internal clock oscillator circuit" that provides a programmable circuit. An evidentiary question will be whether the LFIOSC and its associated clock-dividing and multiplying circuitry meet all limitations of this element, specifically whether the resulting clock signals are "programmable" in the manner required by the claim and its specification.

V. Key Claim Terms for Construction

’563 Patent, Claim 1

  • The Term: "controller...for...controlling the charge current"
  • Context and Importance: This phrase appears in the preamble of the "control unit" limitation and is functionally tied to each of the four subsequent controller sub-elements. The construction of "controlling" will be critical. Practitioners may focus on this term because the accused device appears to use a single, integrated control logic that synthesizes multiple inputs, raising the question of whether four separate acts of "controlling" occur as arguably required by the claim's structure.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent's block diagram (Fig. 5) depicts the four controllers (24, 25, 26, 27) as distinct functional blocks, which may support an interpretation that the presence of these four distinct comparison functions within a control unit is sufficient, regardless of how the ultimate control action is implemented.
    • Evidence for a Narrower Interpretation: The specification's description of a prior art device shows three separate comparison circuits (10, 11, 12) feeding into a single PWM comparison circuit (13) that makes a final decision based on the lowest voltage output ('563 Patent, col. 2:36-46). A party could argue that the claimed invention operates similarly, and that "controlling" implies a direct, final action on the charge current, which may not be performed by each of the four alleged controller functions in the accused device.

’320 Patent, Claim 1

  • The Term: "oscillator support circuit"
  • Context and Importance: The infringement allegation for this element relies on mapping it to the accused product's "Main Oscillator (MOSC)," which can operate with either an external crystal or an external single-ended clock source (Compl. ¶51). The viability of this mapping depends on whether "oscillator support circuit" is limited to a circuit solely for interfacing with a crystal.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim uses the functional language "that functions as...when a crystal is coupled," which does not explicitly exclude other functions. A party could argue that as long as the accused circuit performs this function, its additional capabilities are irrelevant to the claim.
    • Evidence for a Narrower Interpretation: The term "support circuit" itself may imply a passive or auxiliary role, distinct from a full-featured oscillator that can accept various inputs. The patent's own diagram (Fig. 2) shows the corresponding element ("32 KHZ PRECISION OSC 204") connected only to an "EXTERNAL CRYSTAL 202," without suggesting other modes of operation, which could support a narrower construction limited to a dedicated crystal interface.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges induced infringement for all asserted patents. The allegations are based on Defendant’s affirmative acts of manufacturing and selling the Accused Products, along with providing "instructions, documentation, technical support, marketing, product manuals, advertisements, and online documentation" that allegedly instruct and encourage customers and end-users to use the products in an infringing manner (Compl. ¶¶40, 55, 71).
  • Willful Infringement: The complaint alleges willful infringement based on pre-suit notice. It states that the prior patent owner, Monterey Research, LLC, sent letters to TI on September 5, 2018, and September 24, 2021, among other communications (Compl. ¶¶22, 24). These letters allegedly identified several of the patents-in-suit and exemplary accused product families. The complaint alleges that Defendant continued its infringing conduct despite this knowledge, constituting willful and deliberate infringement (Compl. ¶¶43, 58, 74).

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

  • A core issue will be one of definitional scope and structure: For the ’563 patent, can the four distinct "controller" limitations of Claim 1 be met by a single, integrated power management IC that monitors four corresponding parameters, or does the claim require four structurally and functionally separate control loops, each independently performing the act of "controlling the charge current"?
  • A key question of claim construction will be central to the ’320 patent: Can the term "oscillator support circuit," described as functioning with an external crystal, be construed to read on a multipurpose main oscillator that can also accept a single-ended clock input, or is the claim limited to a circuit dedicated solely to interfacing with a crystal?
  • A central evidentiary challenge will be one of scale and technical depth: Given the assertion of ten patents against dozens of different semiconductor products, the case will likely require a highly granular, product-by-product and claim-by-claim analysis, turning on detailed evidence of how the accused circuits actually operate at a micro-architectural level.