DCT
1:23-cv-00282
ICPillar LLC v. ARM Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: ICPillar LLC (Delaware)
- Defendant: Arm Ltd. (United Kingdom) and Arm, Inc. (Delaware)
- Plaintiff’s Counsel: Cherry Johnson Siegmund James PLLC; Waymaker LLP; Eichmann, a professional corporation
- Case Identification: 1:23-cv-00282, W.D. Tex., 03/14/2023
- Venue Allegations: Plaintiff alleges venue is proper for Arm Ltd. as a foreign entity and for Arm, Inc. based on its commission of infringing acts and maintenance of a regular and established place of business in Austin, Texas.
- Core Dispute: Plaintiff alleges that Defendant’s integrated circuit design software tools infringe patents related to systems and methods for designing custom hardware and associated software by selecting from categorized functional components.
- Technical Context: The technology addresses the design of complex Systems-on-Chip (SoCs) by creating a standardized framework to accelerate development, a critical process in the semiconductor industry.
- Key Procedural History: The complaint notes that U.S. Patent No. 9,367,657 is a continuation of the application that resulted in U.S. Patent No. 8,924,899. No other significant procedural events are mentioned.
Case Timeline
| Date | Event |
|---|---|
| 2013-05-23 | Priority Date for '899 and '657 Patents |
| 2014-12-30 | U.S. Patent No. 8,924,899 Issues |
| 2016-06-14 | U.S. Patent No. 9,367,657 Issues |
| 2018-06-15 | Date of YouTube video cited regarding Arm's Austin office |
| 2023-03-14 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,924,899, "System and Method for Universal Control of Electronic Devices", Issued Dec. 30, 2014
The Invention Explained
- Problem Addressed: The patent describes conventional integrated circuit (IC) design as an expensive, time-consuming, and proprietary process, where each new device required custom-designed hardware and software from the ground up, hindering component reuse and slowing time-to-market (Compl. ¶3; ’899 Patent, col. 1:11-20, col. 2:5-13).
- The Patented Solution: The invention proposes a unified design framework, or "Fabless Development Kit" (FDK), that allows a designer to build a custom IC by selecting from a library of standardized and categorized functional characteristics. The system then uses these selections to automatically generate both the hardware IC design and the corresponding operating software, streamlining the entire development process (’899 Patent, col. 4:35-45, Fig. 4).
- Technical Importance: This approach sought to commoditize aspects of IC design by enabling the rapid reuse of pre-defined, tested functional blocks, thereby reducing bespoke engineering effort and cost for each new product (’899 Patent, col. 4:39-45).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 8 (Compl. ¶13).
- Independent Claim 1 (Method) requires the steps of:
- receiving a selection of categorized input and output characteristics of an electronic device into memory;
- analyzing the selection;
- outputting a hardware integrated circuit design based on the selection; and
- outputting software programming commands to be executed by the hardware IC.
- Independent Claim 8 (System) requires:
- one or more processors and non-transitory computer-readable media;
- logic operable to receive a selection of categorized input and output characteristics of a device into memory;
- logic operable to design a hardware IC based on the selection, where the design includes a communication bus; and
- logic operable to output software programming commands for controlling the device via the communication bus.
- The complaint does not explicitly reserve the right to assert dependent claims, but infringement allegations are not limited to the listed claims (Compl. ¶13).
U.S. Patent No. 9,367,657, "System and Method for Universal Control of Electronic Devices", Issued June 14, 2016
The Invention Explained
- Problem Addressed: As a continuation of the '899 patent, this patent addresses the same challenges of costly and inefficient custom IC design processes (Compl. ¶19; ’657 Patent, col. 2:15-28).
- The Patented Solution: The invention claims a system and method where a user characterizes an electronic device by selecting values for specific parameter types—control, display, input, and output—from a "hierarchal classification database." The system then uses these selected parameters to generate the hardware design and associated software commands, again focusing on a unified, parameter-driven design flow (’657 Patent, col. 9:35-47, Fig. 4).
- Technical Importance: The invention provides a structured method for defining device functionality through a hierarchical selection process, aiming to standardize the interface between device requirements and IC implementation (’657 Patent, col. 4:45-56).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 9 (Compl. ¶20).
- Independent Claim 1 (Method) requires the steps of:
- selecting a value for a control type parameter, a display type parameter, an input type parameter, and an output type parameter from a hierarchal classification database;
- receiving the selected values into a processor's memory;
- analyzing the selected values;
- outputting a hardware integrated circuit design (including a communication bus); and
- outputting software programming commands.
- Independent Claim 9 (System) requires:
- one or more processors;
- a design user interface that allows a user to select values for control, display, input, and output type parameters;
- logic operable to receive the selected values, design a hardware IC (including a communication bus), and output software commands.
- The complaint states it is not limited to these claims (Compl. ¶20).
III. The Accused Instrumentality
- Product Identification: The accused instrumentalities are "Arm's IP Configuration Tools, Arm Socrates IP Tools, and Arm Development Studio (including what is currently called the Pack Manager)," collectively referred to as the "Accused Design Tools" (Compl. ¶1).
- Functionality and Market Context: The complaint alleges the Accused Design Tools provide a software environment for designers to explore, configure, and build Arm Intellectual Property (IP) for integration into a System-on-Chip (SoC) (Compl. ¶14). Users are said to select IP from a catalog, define parameters, and generate outputs including hardware design specifications (RTL), system specifications (Bill of Materials), and software components (CMSIS Packs) (Compl. ¶10, ¶14). The complaint provides a screenshot from the "Arm® Socrates™" tool showing a hierarchical "IP Catalog" from which users can select processor cores and other components (Compl. p. 5, Figure 1-2). These tools are allegedly used both by Arm internally and by its third-party licensees to design a wide range of processors and integrated circuits (Compl. ¶5).
IV. Analysis of Infringement Allegations
’899 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| receiving a selection of categorized input and output characteristics of an electronic device into a memory of a processor programmed by software commands to design a hardware integrated circuit and associated operating software for controlling the integrated circuit to control the electronic device; | Using the Accused Design Tools to select IP from the "IP Catalog" and specify configuration options for hardware and operating software, which are received into the memory of the computer running the tools (Compl. ¶14). | ¶14 | col. 4:65-6:2 |
| analyzing by the processor the selection of categorized input and output characteristics of the electronic device; | Using the Accused Design Tools to define parameters, configure selected IP, and validate a Bill of Materials (BOM), system specification, and RTL (Compl. ¶14). | ¶14 | col. 18:45-47 |
| outputting by the processor of a hardware integrated circuit design based on the selection of input and output characteristics of the device; and | Generating and outputting RTL, a system specification, and the final microarchitecture for the integrated circuit design (Compl. ¶14). | ¶14 | col. 18:48-51 |
| outputting by the processor software programming commands to be executed by the hardware integrated circuit for controlling the electronic device in accordance with the selection of categorized input and output characteristics of the electronic device. | Compiling and outputting software commands, such as through CMSIS packs, that control the hardware in accordance with the selected characteristics (Compl. ¶14). | ¶14 | col. 18:52-56 |
’657 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| selecting a value for a control type parameter associated with an electronic device from a hierarchal classification database; selecting a value for a display type parameter...; selecting a value for an input type parameter...; selecting a value for an output type parameter... | Using the Accused Design Tools' user interface to select IP from the catalog and specify configuration parameters for the IC's hardware and software, which the complaint maps to control, display, input, and output parameters (e.g., system control signals, graphics aspects, etc.) (Compl. ¶21). | ¶21 | col. 9:55-10:5 |
| receiving the selected values for the control type, display type, input type and output type parameters into a memory of a processor programmed by software commands to design a hardware integrated circuit...; | Receiving the selected IP and configuration parameters into the memory of the computer running the Accused Design Tools (Compl. ¶21). | ¶21 | col. 18:66-19:5 |
| analyzing by the processor the selected values for the control type, display type, input type and output type parameters of the electronic device; | Using the Accused Design Tools to define parameters, configure the selected IP, and create a Bill of Materials (BOM), system specification, and RTL based on the user's selections (Compl. ¶21). | ¶21 | col. 19:6-9 |
| outputting by the processor a hardware integrated circuit design based on the selection of input and output characteristics of the electronic device, the hardware integrated circuit including a communication bus for communicating with the electronic device; and | Generating and outputting RTL and a final microarchitecture, which includes a communication bus (e.g., AXI, ACE, or CHI system bus interface), based on the user's selections (Compl. ¶21, ¶14, ¶15). | ¶21 | col. 19:10-14 |
| outputting by the processor software programming commands to be executed by the hardware integrated circuit for controlling the electronic device... | Using the Accused Design Tools to compile and output software commands (e.g., via CMSIS Packs) that control the electronic device in accordance with the user's selections (Compl. ¶21). | ¶21 | col. 19:14-17 |
- Identified Points of Contention:
- Scope Questions: A central dispute may concern whether Arm's "IP Catalog" (Compl. p. 5, Figure 1-2) constitutes a "hierarchal classification database" as claimed. The patents illustrate a top-down, function-based classification (e.g., "Appliance -> Food Preparation -> Blender"), whereas the accused tools appear to present a library of pre-existing IP blocks. The case may turn on whether selecting a named component like "Cortex_A35" is equivalent to selecting from a functional hierarchy of "categorized input and output characteristics."
- Technical Questions: The complaint alleges that selecting IP and configuring parameters in the accused tools maps directly to selecting "control type," "display type," "input type," and "output type" parameters as required by the '657 patent (Compl. ¶21). A key question for the court will be whether the evidence shows a one-to-one correspondence or if the accused functionality is technically distinct from the specific parameter-based selection method claimed.
V. Key Claim Terms for Construction
The Term: "hierarchal classification database" (’657 Patent, Claim 1)
- Context and Importance: This term is the foundation of the claimed invention's selection process. The infringement case hinges on whether the accused "IP Catalog" and configuration wizards fall within this definition. Practitioners may focus on this term because its construction could determine whether the patent covers a "library of components" approach or is limited to a more abstract, function-first design methodology.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the concept generally as establishing "definitions of behavior, operation and modification for any parent device" through a class system, which could be argued to encompass any organized, hierarchical selection tool (’899 Patent, col. 4:9-12).
- Evidence for a Narrower Interpretation: The patent's figures and examples depict a specific, multi-level classification scheme based on industry, device type, and abstract functions (e.g., "Control Types", "Display Types") (’899 Patent, Figs. 2-3). A defendant could argue this limits the term to a functional decomposition, not a library of specific, named IP blocks.
The Term: "selecting a value for a control type parameter" (and for display, input, and output type parameters) (’657 Patent, Claim 1)
- Context and Importance: This phrase defines the specific user action at the heart of the claimed method. Infringement requires showing that users of the accused tools perform this specific type of selection.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Plaintiff may argue that any user choice that defines a control function—such as selecting a pre-configured processor that includes system control signals—constitutes "selecting a value for a control type parameter." The specification broadly ties these parameters to the functions of a device (’899 Patent, col. 8:18-24).
- Evidence for a Narrower Interpretation: The claim language recites four distinct selection steps for four parameter types. A defendant may argue this requires four separate and explicit selections of abstract parameters (e.g., choosing "joystick" for control, "LCD" for display), and that selecting a single, integrated IP block like a "Cortex" core does not satisfy the claim's multi-step selection requirement.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Arm induces infringement by providing the Accused Design Tools to its third-party licensees, along with user guides, documentation, and support that instruct them on how to use the tools in an infringing manner (Compl. ¶5, ¶14, ¶17).
- Willful Infringement: Plaintiff alleges pre-suit willfulness on the basis of facts it "expects to establish through discovery" and post-suit willfulness based on Arm's knowledge of the patents from the filing of the complaint (Compl. ¶6).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: Can the term "hierarchal classification database," which the patents illustrate using a top-down, functional classification system (e.g., "Appliance -> Blender -> Functions"), be construed to cover a modern IP design tool's "IP Catalog," which functions as a library of specific, pre-built hardware components? The outcome of this construction will likely be dispositive.
- A key evidentiary question will be one of operational mapping: Does the act of selecting a complex IP block (e.g., a "Cortex" core) and adjusting its configuration settings in the accused tools constitute the distinct, multi-step process of "selecting a value" for separate "control type," "display type," "input type," and "output type" parameters as explicitly recited in the '657 patent's claims? The plaintiff's ability to demonstrate this technical equivalence will be central to its infringement case.