DCT

3:22-cv-01937

Pearl IP Licensing LLC v. Makita USA Inc

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: [Pearl IP Licensing LLC](https://ai-lab.exparte.com/party/pearl-ip-licensing-llc) v. Makita USA Inc, 3:22-cv-01937, N.D. Tex., 09/01/2022
  • Venue Allegations: Plaintiff alleges venue is proper because Defendant is physically located in the district, has transacted business there, has committed acts of direct infringement in the district, and maintains an established place of business in the district.
  • Core Dispute: Plaintiff alleges that Defendant’s Makita XRM06B product infringes a patent related to methods for a circuit to recover from overstress conditions.
  • Technical Context: The technology concerns methods within microcontrollers and electronic systems for detecting and responding to electrical stress events in a differentiated manner, enhancing operational robustness.
  • Key Procedural History: The complaint does not mention any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history related to the patent-in-suit.

Case Timeline

Date Event
2001-08-20 U.S. Patent No. 6,819,539 Priority Date
2004-11-16 U.S. Patent No. 6,819,539 Issued
2022-09-01 Complaint Filed

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

U.S. Patent No. 6,819,539 - "METHOD FOR CIRCUIT RECOVERY FROM OVERSTRESS CONDITIONS"

  • Patent Identification: U.S. Patent No. 6819539, "METHOD FOR CIRCUIT RECOVERY FROM OVERSTRESS CONDITIONS", issued November 16, 2004 (’539 Patent).

The Invention Explained

  • Problem Addressed: The patent’s background section states that conventional methods for protecting electronic devices, such as standard Electrostatic Discharge (ESD) protection or watchdog reset circuits, are insufficient to handle all types of operational faults. For instance, a stress condition might cause "faulty operation that is not recognizable by the watchdog reset device," allowing the device to continue operating incorrectly without a complete crash, or memory corruption could go undetected until a later failure (’539 Patent, col. 1:39-48).
  • The Patented Solution: The invention proposes a method where an electronic device not only detects a fault-causing "event" but also stores it and classifies it. As described in the detailed description and illustrated in Figure 1a, the system detects an event, stores it (e.g., in a register), and then compares the stored event to a "table" of event types to determine the appropriate response (’539 Patent, col. 2:49-67). Based on this classification, the device can initiate a simple reset for one type of event or provide a more nuanced "recovery" action—such as self-checking or issuing warnings—for another type of event (’539 Patent, Abstract; col. 2:62-67).
  • Technical Importance: This two-tiered response system provides greater flexibility and robustness for microcontrollers operating in environments with significant electrical noise or stress, allowing for more intelligent fault handling than a simple, universal reset (’539 Patent, col. 2:30-41).

Key Claims at a Glance

  • The complaint asserts infringement of at least independent Claim 1 (Compl. ¶10).
  • The essential elements of Claim 1 are:
    • (A) detecting an event;
    • (B) storing said event;
    • (C) comparing said stored event to a plurality of event types stored in a table to determine if said event is a first predetermined type or a second predetermined type; and
    • (D) resetting a device when said event is a said first predetermined type and providing recovery when said event is a said second predetermined type.
  • The complaint reserves the right to modify its infringement theories as discovery progresses (Compl. ¶15).

III. The Accused Instrumentality

Product Identification

  • The complaint identifies the Makita XRM06B as an exemplary "Accused Product" or "Accused Instrumentality" (Compl. ¶11).

Functionality and Market Context

  • The complaint does not describe the specific functionality of the Makita XRM06B. It is identified only by its model number (Compl. ¶11). The complaint asserts that Defendant sells this and potentially other infringing products (Compl. ¶10, fn. 1). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint alleges that the Makita XRM06B meets every limitation of Claim 1 of the ’539 Patent and states that a claim chart detailing this correspondence is attached as Exhibit B (Compl. ¶11). However, Exhibit B was not filed with the complaint. Therefore, a detailed element-by-element analysis based on the plaintiff's specific theories is not possible from the provided documents. The narrative infringement theory is a conclusory assertion that the accused product infringes (Compl. ¶¶10-11).

  • Identified Points of Contention:
    • Scope Questions: A central question may be whether the firmware or circuitry within the Makita XRM06B, a power tool, performs the specific, multi-step data processing method recited in Claim 1. The dispute may focus on whether the product's fault-handling mechanisms, if any, rise to the level of the claimed invention.
    • Technical Questions: The complaint provides no evidence or specific allegations as to how the Makita XRM06B performs the claimed steps of "storing said event" and, critically, "comparing said stored event to a plurality of event types stored in a table." It raises the question of what evidence Plaintiff will proffer to show the existence of a "table" and a comparison process, as distinct from a simpler, hard-coded fault response. Further, a question exists as to whether the product performs both "resetting" and a separate "providing recovery" action depending on the event type, as required by the claim.

V. Key Claim Terms for Construction

  • The Term: "plurality of event types stored in a table"

    • Context and Importance: This term appears central to the patent's novelty, as it describes the mechanism for differentiating between fault types to enable a tailored response. The infringement analysis will likely depend on whether the accused product's architecture can be shown to contain a structure that meets this definition. Practitioners may focus on this term because its construction could determine whether a simple set of conditional logic statements (e.g., if-then-else) falls within the scope of the claim.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The patent describes the process functionally, stating the system may "read an event detector (e.g., an event table) to determine a type of event" (’539 Patent, col. 2:56-58). This language could support an argument that any logical structure performing this mapping function constitutes a "table."
      • Evidence for a Narrower Interpretation: The claim language recites "a table configured to store a plurality of event types" as a distinct element in the apparatus claims (’539 Patent, col. 8:20-21). This could support an argument that a specific, identifiable data structure is required, rather than just functional equivalence.

  • The Term: "providing recovery"

    • Context and Importance: Claim 1 distinguishes between "resetting a device" for a first event type and "providing recovery" for a second. This distinction is critical, as an accused device that only performs a reset under all fault conditions would not infringe.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The term could be construed broadly to mean any ameliorative action that is not a full device reset. The patent states the device may "take appropriate recovery action" (’539 Patent, col. 2:62), suggesting a range of possibilities.
      • Evidence for a Narrower Interpretation: Dependent claim 2 explicitly defines "recovery" as being "selected from the group consisting of (i) self checking, (ii) issuing warnings, (iii) performing back-up operations, and (iv) shutting-down" (’539 Patent, col. 7:30-36). A defendant may argue this list limits the scope of "recovery" in the independent claim.

VI. Other Allegations

  • Willful Infringement: The complaint alleges that Defendant has had knowledge of its infringement "at least as of the service of the present Complaint" (Compl. ¶12). This allegation forms a basis for potential post-filing willfulness but does not assert pre-suit knowledge of the ’539 Patent.

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

This case appears to present a dispute over applying method claims with specific logical steps to the internal operations of a physical product. The key questions for the court will likely be:

  1. A core issue will be one of evidentiary proof: What evidence can Plaintiff provide from the internal workings of the Makita XRM06B to demonstrate the existence of the specific structures and processes claimed, particularly the "plurality of event types stored in a table" and the corresponding comparison step?
  2. A second key issue will be one of claim construction and functional distinction: Can the term "providing recovery" be construed to read on the accused product's behavior, and can Plaintiff show that this behavior is functionally distinct from the "resetting" also required by the claim, with each action triggered by a different, classified event type?