Socket Mobile Inc v. Kioxia

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Socket Mobile Inc. (Delaware)
  • Defendant: Toshiba America Electronic Components, Inc. (California)
  • Plaintiff’s Counsel: Rabicoff Law LLC
• Case Identification: 1:20-cv-00418, W.D. Tex., 04/20/2020
• Venue Allegations: Plaintiff alleges venue is proper because Defendant has committed acts of patent infringement in the district and maintains an established place of business in Austin, Texas.
• Core Dispute: Plaintiff alleges that Defendant’s products infringe three patents related to removable memory modules that provide wireless communication capabilities to host devices.
• Technical Context: The technology addresses adding wireless functionality, such as Bluetooth, to devices like digital cameras via a memory card, enabling data transfer to remote devices like mobile phones before such features became standard.
• Key Procedural History: The front page of each patent-in-suit indicates it is subject to a terminal disclaimer. This suggests that during prosecution, an obviousness-type double patenting rejection may have been raised over a related patent, which can place limits on patent term and enforceability. The complaint does not allege any other prior litigation or licensing history.

Case Timeline

Date	Event
2002-04-08	Earliest Priority Date for ’774, ’998, and ’008 Patents
2003-04-08	’774 Patent Application Filed
2004-09-13	’998 Patent Application Filed
2008-10-21	’774 Patent Issued
2011-09-19	’008 Patent Application Filed
2011-09-20	’998 Patent Issued
2013-06-25	’008 Patent Issued
2020-04-20	Complaint Filed

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

U.S. Patent 7,440,774, "Wireless enabled memory module," issued October 21, 2008

The Invention Explained

• Problem Addressed: The patent describes a technical environment where many digital devices (e.g., cameras) use removable memory cards but lack native wireless connectivity, making data transfer cumbersome (’774 Patent, col. 2:58-63).
• The Patented Solution: The invention is a removable memory module, built to a standard form factor like CompactFlash, that contains not only non-volatile memory but also an integrated processor and a wireless transceiver (’774 Patent, Abstract; Fig. 1). This allows a remote device, such as a mobile phone, to wirelessly connect to the module and transfer data, all without the host device (e.g., the camera) needing any innate wireless awareness or capability (’774 Patent, col. 1:5-16; col. 6:50-57).
• Technical Importance: This technology served as a bridge, enabling modern wireless functionality on a large installed base of legacy consumer electronics that were not originally designed with such capabilities (’774 Patent, col. 2:63-col. 3:2).

Key Claims at a Glance

• The complaint states that infringement allegations are detailed in an exhibit not provided with the filing, so the specific asserted claims are not identified in the complaint itself (Compl. ¶15, 21). Independent claim 1 is representative of the patent’s core technology.
• Independent Claim 1 requires:
  • A removable module for coupling to a digital host.
  • A "host-to-module interface" with an interconnect and a controller.
  • "Wireless transceiver circuitry".
  • An "embedded non-volatile memory" coupled to a "memory controller".
  • A "control sub-system" coupled to the wireless circuitry and memory controller, which is adapted to control data transfers between the memory and the wireless network "without requiring any action by the host".
  • All components are contained in a "shared housing".
• The complaint reserves the right to assert additional claims (Compl. ¶15).

U.S. Patent 8,023,998, "Wireless enabled memory module," issued September 20, 2011

The Invention Explained

• Problem Addressed: Similar to the ’774 Patent, the invention addresses the lack of wireless capability in many host devices that use standard memory cards (’998 Patent, col. 1:26-33).
• The Patented Solution: The ’998 Patent builds on the concept of a self-contained wireless memory module. A key feature disclosed is the inclusion of "media scaling circuitry", which can create smaller versions (e.g., thumbnails) of media files stored on the module (’998 Patent, col. 3:5-14). This allows a user on a remote device to quickly browse content over a potentially slow wireless link before deciding to transfer a full-sized file (’998 Patent, col. 5:62-col. 6:2).
• Technical Importance: The addition of on-module media scaling addressed a practical usability problem, making it feasible to browse large photo libraries from a host device using the limited bandwidth of early mobile wireless technologies.

Key Claims at a Glance

• The complaint refers to an unprovided exhibit for the specific claims asserted (Compl. ¶25, 31). Independent claim 1 is representative.
• Independent Claim 1 requires:
  • A removable module for coupling to a digital host.
  • A "host-to-module interface controller".
  • "Wireless transceiver circuitry".
  • "Media scaling circuitry".
  • An "embedded non-volatile memory" and "memory controller".
  • A "control sub-system" that manages data transfers between the memory and wireless network "without requiring any action by the host".
  • The components are enabled to operate "completely inside the host".
• The complaint reserves the right to assert additional claims (Compl. ¶25).

Multi-Patent Capsule

• Patent Identification: U.S. Patent 8,473,008, "Wireless enabled memory module," issued June 25, 2013 (Compl. ¶12).
• Technology Synopsis: This patent continues the same inventive theme, describing a removable memory module that adds wireless capability to a host device. The claims cover a system comprising the host, the removable module, and a remote device, where the module contains its own processor, memory, and wireless transceiver, and is capable of managing data transfers, including scaled media, independently of the host. (’008 Patent, Abstract; col. 9:1-26).
• Asserted Claims: The complaint refers to exemplary claims in Exhibit 6, which was not provided (Compl. ¶35, 41). Independent claims 1 and 7 are representative of the asserted technology.
• Accused Features: The complaint alleges infringement by "Exemplary Defendant Products" but provides no specific details, instead incorporating by reference the unprovided claim charts in Exhibit 6 (Compl. ¶35, 41).

III. The Accused Instrumentality

Product Identification

The complaint does not name any specific accused products. It refers generally to "Exemplary Defendant Products" that are purportedly identified in claim charts attached as Exhibits 4, 5, and 6 (Compl. ¶15, 25, 35). As these exhibits were not filed with the complaint, the specific accused instrumentalities cannot be identified from the pleading.

Functionality and Market Context

The complaint does not provide sufficient detail for analysis of the accused products' functionality or market context. It makes only conclusory allegations that the unnamed products "practice the technology claimed" by the patents-in-suit (Compl. ¶21, 31, 41).

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint.

The complaint's infringement allegations are made by incorporating by reference external claim chart exhibits that were not provided with the public filing (Compl. ¶22, 32, 42). The pleading itself contains no specific factual allegations mapping claim elements to accused product features.

The complaint’s narrative theory asserts that Defendant's "Exemplary Defendant Products" directly infringe one or more claims of the ’774, ’998, and ’008 patents, either literally or under the doctrine of equivalents (Compl. ¶15, 25, 35). It further alleges that the referenced, but unprovided, exhibits set forth how the accused products "satisfy all elements" of the exemplary patent claims (Compl. ¶21, 31, 41). Without these exhibits, a detailed analysis of the infringement allegations is not possible.

Identified Points of Contention

• Scope Questions: A central question for all asserted patents will be whether the accused products meet the "without requiring any action by the host" limitation (’774 Patent, col. 6:55-57). The dispute may focus on whether the accused products are truly autonomous or if they rely on host-level drivers, software, or API calls that could be construed as "action by the host."
• Technical Questions: For the ’998 and ’008 Patents, a key technical question will be whether the accused products contain the claimed "media scaling circuitry" (’998 Patent, col. 9:4). The evidence presented to show the existence and operation of this specific function within the accused products will be a likely point of dispute.

V. Key Claim Terms for Construction

"without requiring any action by the host" (from ’774 Patent, Claim 1)

• Context and Importance: This negative limitation is central to defining the invention's autonomy from the host device. The outcome of the infringement analysis may depend on whether this term is construed to forbid any host interaction whatsoever, or if it permits certain background interactions (e.g., providing power and a data bus) so long as the host’s primary operating system is not actively involved in the wireless transfer.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification's description of a self-contained "Processor Sub-System" with its own CPU (1610) and firmware (1630) may support a construction where the module is a standalone computer that simply uses the host as a power source and physical shell (’774 Patent, Fig. 1; col. 4:35-42).
  • Evidence for a Narrower Interpretation: A defendant may argue that since the module relies on the host's physical expansion port for power and a data pathway, some "action" from the host is inherently required. The patent also describes a "browser-server relationship" between the module and a remote device, which itself is a specific type of protocol-based action that could be used to narrow the scope of what it means to be "without action" (’774 Patent, col. 4:32-42).

"media scaling circuitry" (from ’998 Patent, Claim 1)

• Context and Importance: This term is a key addition in the ’998 patent. Practitioners may focus on this term because its construction could determine whether the accused products, if they perform scaling via general-purpose software, infringe a claim requiring "circuitry."
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification of the parent '774 patent, which is part of the '998 patent's prosecution history, states that the functionality of the "media-scaling engine" can be "implemented via firmware in the processor sub-system" (’774 Patent, col. 2:48-51). A plaintiff may argue this supports construing "circuitry" to include firmware or software running on a general-purpose processor.
  • Evidence for a Narrower Interpretation: The word "circuitry" itself suggests a hardware implementation. The '774 patent's specification also draws a distinction between implementation in "signal processing hardware" and implementation in "firmware," which may support an argument that the two are not interchangeable and that "circuitry" requires a dedicated hardware structure (’774 Patent, col. 2:45-51).

VI. Other Allegations

Indirect Infringement

The complaint alleges induced and contributory infringement for all three patents. Inducement is based on allegations that Defendant distributes "product literature and website materials" that instruct customers on how to use the products in an infringing manner (Compl. ¶18, 28, 38). Contributory infringement is based on allegations that the products are not staple articles of commerce suitable for substantial non-infringing use (Compl. ¶20, 30, 40).

Willful Infringement

The complaint does not contain allegations of pre-suit knowledge of the patents. It alleges that the filing of the complaint provides "actual knowledge" and that Defendant's continued infringement thereafter is despite this knowledge, which lays a foundation for a claim of post-filing willfulness (Compl. ¶17-18, 27-28, 37-38).

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

• A primary issue for the court will be one of evidentiary proof: As the complaint provides no factual detail on the accused products, a key question is what evidence Plaintiff will offer to demonstrate that specific Toshiba products meet the core claim limitations, particularly the requirements for a "control sub-system" that operates "without requiring any action by the host" and contains "media scaling circuitry."
• The case will also turn on a question of claim construction: How will the court define the phrase "without requiring any action by the host"? Whether this limitation can be met if the accused module uses any host-level software resources or drivers will be a critical, and likely heavily disputed, legal determination.
• Finally, a central question will be one of technical implementation: Does the accused technology’s method for resizing media, if any, constitute "media scaling circuitry" as required by the '998 and '008 patents? The distinction between a dedicated hardware circuit and a software function running on a general-purpose processor will likely be a focal point for expert testimony.