DCT
1:20-cv-00626
Bell Northern Research LLC v. Samsung Electronics Co Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Bell Northern Research, LLC (Delaware)
- Defendant: Samsung Electronics Co., Ltd. (Republic of Korea) and Samsung Electronics America, Inc. (New York)
- Plaintiff’s Counsel: Skiermont Derby LLP
- Case Identification: 6:20-cv-00326, W.D. Tex., 04/24/2020
- Venue Allegations: Venue is alleged to be proper for Samsung Electronics Co., Ltd. as a foreign corporation that may be sued in any district. For Samsung Electronics America, Inc., venue is based on alleged acts of infringement and a regular and established place of business within the Western District of Texas, including a facility in Austin and sales through authorized local retailers.
- Core Dispute: Plaintiff alleges that Defendant’s mobile devices and solid-state drives, which incorporate multi-chip modules, infringe two patents related to thermal management and structural support in such packages.
- Technical Context: The technology concerns methods for dissipating heat and providing structural rigidity in compact electronic packages containing multiple integrated circuits, a critical design challenge in high-performance devices like smartphones and enterprise SSDs.
- Key Procedural History: The complaint alleges that Samsung previously took a license to the patents-in-suit, which expired at the end of 2018. It further alleges that Samsung knew of the ’129 Patent at least as early as August 2007, when it was cited by a USPTO examiner during the prosecution of a Samsung patent application.
Case Timeline
| Date | Event |
|---|---|
| 2002-10-07 | ’930 Patent Priority Date |
| 2003-06-18 | ’129 Patent Priority Date |
| 2005-02-22 | ’930 Patent Issue Date |
| 2005-11-08 | ’129 Patent Issue Date |
| 2007-08-13 | Samsung allegedly notified of ’129 Patent during patent prosecution |
| 2011-01-01 | Samsung's license to Asserted Patents allegedly began (approx.) |
| 2018-12-31 | Samsung's license to Asserted Patents allegedly expired (approx.) |
| 2020-04-24 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,963,129 - “Multi-Chip Package Having a Contiguous Heat Spreader Assembly,” issued November 8, 2005
The Invention Explained
- Problem Addressed: The patent describes the challenge of packaging multiple integrated circuits (e.g., a logic device and a memory device) in close proximity to reduce signal delay and overall size, while still managing the heat generated by the chips (Compl. ¶24; ’129 Patent, col. 2:2-10). Conventional packaging methods can lead to undesirable thermal characteristics and design complexity (’129 Patent, col. 2:11-30).
- The Patented Solution: The invention proposes using a single, "unibody" heat spreader that extends over at least two integrated circuits. The circuits are intentionally spaced apart, creating a gap that allows for airflow or the placement of passive components beneath the heat spreader, thereby improving thermal transfer efficiency (’129 Patent, Abstract; col. 3:25-33). The design can also accommodate chips of different thicknesses, for instance by using a second, smaller heat spreader on a thinner chip to create a coplanar surface for the main heat spreader (’129 Patent, col. 6:44-59).
- Technical Importance: This design provides a flexible way to thermally manage dense, heterogeneous multi-chip modules, which is a key enabler for the miniaturization and increased performance of complex electronics (Compl. ¶26; ’129 Patent, col. 2:17-22).
Key Claims at a Glance
- The complaint asserts independent Claim 1 and dependent claims 2, 5, and 6 (Compl. ¶36).
- The essential elements of independent Claim 1 include:
- A single, unibody heat spreader configured to extend across substantially the entire first surface of at least two spaced integrated circuits.
- An adhesive placed between the heat spreader and the first surface of the integrated circuits.
- The heat spreader is secured at a spaced distance above at least one passive device arranged in the area between the spaced circuits.
- A second heat spreader is interposed between the main heat spreader and only one of the at least two integrated circuits (Compl. ¶25; ’129 Patent, col. 7:6-18, as amended by Certificate of Correction).
U.S. Patent No. 6,858,930 - “Multi Chip Module,” issued February 22, 2005
The Invention Explained
- Problem Addressed: The patent identifies a problem in multi-chip module design where providing structural support is difficult. Using individual "stiffener rings" around each integrated circuit consumes significant space, while omitting them compromises the package's structural integrity (’930 Patent, col. 1:48-55). The stated goal is a package design with both "adequate heat dissipation and structural support" (Compl. ¶30; ’930 Patent, col. 1:57-59).
- The Patented Solution: The invention uses a single stiffener that covers all of the integrated circuits and their respective individual heat spreaders. This approach replaces multiple, space-consuming stiffener rings, allowing the integrated circuits to be placed closer together without sacrificing rigidity (’930 Patent, Abstract; col. 2:9-19). The design also allows for discrete components to be placed on the substrate, coplanar with the integrated circuits (’930 Patent, col. 3:47-51).
- Technical Importance: The invention provides a method to create more compact, structurally robust, and thermally efficient multi-chip modules by consolidating structural support into a single component (Compl. ¶33; ’930 Patent, col. 2:12-19).
Key Claims at a Glance
- The complaint asserts independent Claim 1 and dependent claim 2 (Compl. ¶51).
- The essential elements of independent Claim 1 include:
- A package substrate for receiving electrical connections.
- Multiple integrated circuits connected to the substrate.
- Individual heat spreaders, with one associated with each integrated circuit.
- A single stiffener that covers all of the integrated circuits and heat spreaders.
- Discrete components that are electrically connected to the substrate and are coplanar with the integrated circuits (Compl. ¶32; ’930 Patent, col. 4:51-col. 5:21).
III. The Accused Instrumentality
Product Identification
- For the ’129 Patent, the accused products are Samsung mobile devices, including the Galaxy S10 Plus, Galaxy S9, and Galaxy Note 9, among others ("Evans Accused Products") (Compl. ¶44).
- For the ’930 Patent, the accused products are Samsung enterprise solid-state drives (SSDs), including the PM1725a, PM983 series, and PM1733/1735 series, among others ("Miller Accused Products") (Compl. ¶59).
Functionality and Market Context
- The complaint alleges that the accused mobile devices and SSDs contain high-performance integrated circuits that generate substantial heat. To prevent damage and performance throttling from overheating, these products allegedly utilize thermal management solutions like heat spreaders (Compl. ¶34). The complaint provides teardown photographs of a Samsung Galaxy S10 Plus to illustrate the heat spreader assembly accused of infringing the ’129 Patent (Compl. ¶¶39-43).
- Similarly, the complaint uses teardown images of a Samsung PM1725a SSD to show a multi-chip package that allegedly infringes the ’930 Patent by using a single stiffener to provide structural support for multiple integrated circuits and their individual heat spreaders (Compl. ¶¶54-58).
IV. Analysis of Infringement Allegations
’129 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a single, unibody heat spreader configured to extend across substantially the entire first surface of at least two spaced integrated circuits... | The complaint identifies a "single, unibody heat spreader (copper foil)" that extends over two integrated circuits in the Galaxy S10 Plus. An image shows a red-highlighted copper foil component. | ¶¶39-40 | col. 1:57-59 |
| adhesive placed between the heat spreader and the first surface for securing the heat spreader to the first surface of the integrated circuits... | A "black pad and thermal sheet" are identified as being coated with an adhesive to secure the heat spreader. An image shows these components circled in yellow. | ¶41 | col. 6:27-34 |
| ...at a spaced distance above at least one passive device arranged in the area between the spaced integrated circuits... | The complaint alleges the heat spreader is secured above passive devices located in the space between the integrated circuits. A close-up image shows small components highlighted in green in this area. | ¶42 | col. 6:10-13 |
| a second heat spreader interposed between the heat spreader and only one of the at least two spaced integrated circuits. | The complaint alleges the assembly includes a "second heat spreader" on one of the two ICs. An image shows a small component highlighted in blue in this position. | ¶43 | col. 6:44-47 |
- Identified Points of Contention:
- Technical Question: The complaint identifies a small, blue-highlighted component as the claimed "second heat spreader" (Compl. ¶43). A likely point of dispute is whether this component technically functions as a heat "spreader," or if it is merely a thermal interface material or a shim, which may not meet the claim's requirements.
- Scope Question: The claim recites a "single, unibody heat spreader." The infringement allegation rests on a "copper foil" (Compl. ¶39). The parties may dispute whether a thin, flexible foil falls within the scope of "unibody heat spreader" as understood from the patent's specification and figures, which depict a more rigid-appearing structure.
’930 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a package substrate having a first side and an opposing second side, the first side for receiving package electrical connections... | The complaint identifies the main printed circuit board of the PM1725a SSD as the "package substrate." An image shows the "First side" of this board. | ¶55 | col. 3:20-24 |
| integrated circuits each having a first side...electrically connected and structurally connected to the second side of the package substrate... | The complaint shows integrated circuits on the "Second side" of the substrate, allegedly connected to it. | ¶¶55-56 | col. 3:28-30 |
| heat spreaders...where one each of the heat spreaders is associated with one each of the integrated circuits... | The PM1725a is alleged to have individual heat spreaders (highlighted in green) associated with individual integrated circuits (highlighted in red). | ¶56 | col. 2:3-5 |
| a single stiffener...covering all of the integrated circuits and heat spreaders... | A component identified as a "single stiffener" is shown (highlighted in green) that allegedly covers all the ICs and heat spreaders. | ¶57 | col. 2:5-9 |
| discrete components electrically connected to the second side of the package substrate and coplanar with the integrated circuits. | The complaint points to components surrounding the main ICs, alleging they are discrete and coplanar with the integrated circuits. | ¶58 | col. 3:47-51 |
- Identified Points of Contention:
- Scope Question: The central limitation is the "single stiffener covering all" of the components. The construction of "stiffener" and "covering" will be critical. The defendant may argue the accused frame-like component (Compl. ¶57) does not provide the type of structural rigidity contemplated by the patent or that "covering" requires more than merely overlying the components' general footprint.
- Factual Question: The claim requires that "discrete components" be "coplanar with the integrated circuits." This raises a factual question of geometric precision that will depend on a detailed analysis of the accused SSD's physical structure.
V. Key Claim Terms for Construction
For the ’129 Patent
- The Term: "second heat spreader"
- Context and Importance: This term appears in the final limitation of Claim 1. Its construction is critical because the complaint identifies a very small component as meeting this element (Compl. ¶43). If this component is construed as something other than a "heat spreader" (e.g., a simple thermal pad or shim), the infringement allegation may fail.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not appear to provide an explicit definition of "heat spreader" or impose a minimum size, material, or thermal conductivity. A party could argue that any component interposed to transfer or spread heat, regardless of its size, meets the plain and ordinary meaning of the term.
- Evidence for a Narrower Interpretation: The specification consistently discusses heat spreaders in the context of substantial thermal management elements designed to dissipate heat to the ambient environment (’129 Patent, col. 3:25-44). A party could argue that, in the context of the patent, a "heat spreader" must be more than a simple conductive interface and must have a structure sufficient to spread heat laterally, a function the small accused component may not perform.
For the ’930 Patent
- The Term: "single stiffener"
- Context and Importance: This term is the core of the asserted invention, which distinguishes itself from prior art using multiple "stiffener rings" (’930 Patent, col. 1:48-51). Whether the accused metal frame (Compl. ¶57) qualifies as the claimed "single stiffener" will be a central point of contention.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent abstract states that a "single stiffener...covers all of the integrated circuits and heat spreaders" to improve structural integrity. This functional language could support construing any single component that provides rigidity to the overall package as a "stiffener."
- Evidence for a Narrower Interpretation: The background criticizes "stiffener rings" that are "placed around an integrated circuit" (’930 Patent, col. 1:44-47). A party could argue that a "stiffener" must be a plate- or lid-like structure, not an open frame, to provide the intended structural improvement over the prior art rings.
VI. Other Allegations
- Willful Infringement: The complaint alleges willful infringement for both patents. The allegations are based on Samsung's alleged pre-suit knowledge. Specifically, the complaint claims Samsung had actual knowledge of the patents because it previously held a license to them, which expired at the end of 2018 (Compl. ¶¶20, 46, 61). For the ’129 Patent, the complaint further alleges Samsung had knowledge since at least August 2007, when a USPTO examiner cited the patent against a Samsung patent application (Compl. ¶46).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this case may turn on the following central questions:
A question of component characterization: Does the small element highlighted in the accused Galaxy S10 Plus (Compl. ¶43) perform the function of a "second heat spreader" as required by the ’129 Patent, or is it a mere thermal interface material or shim, creating a fundamental mismatch in technical operation?
A question of definitional scope: Can the term "single stiffener," intended to replace prior art "stiffener rings" in the ’930 Patent, be construed to cover the open, frame-like component in the accused Samsung SSD (Compl. ¶57), or does the patent require a more substantial, plate-like structure?
A question of intent: Given that Samsung was allegedly a former licensee of the patents-in-suit, the key question for willfulness will be whether its continued use of the accused technology after the license expired constitutes the type of "egregious" conduct that warrants enhanced damages, particularly in light of the other alleged notice events.