DCT
6:23-cv-00325
Mobile Motherboard Inc v. ASUSTeK Computer Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Mobile Motherboard Inc. (Texas)
- Defendant: AsusTek Computer Inc. (Taiwan)
- Plaintiff’s Counsel: Direction IP Law
- Case Identification: 6:23-cv-00325, W.D. Tex., 05/05/2023
- Venue Allegations: Venue is asserted based on Defendant being a non-resident of the United States, which under 28 U.S.C. § 1391(c)(3) permits suit in any judicial district.
- Core Dispute: Plaintiff alleges that Defendant’s VivoStick PC (TS10), when used with an HDMI-equipped display, infringes a patent related to a portable, external motherboard system for providing or augmenting computing power.
- Technical Context: The technology relates to modular computing architectures, specifically separating the core processing components (motherboard) from a host device (computer box or display) to enhance portability and upgradeability.
- Key Procedural History: The patent-in-suit, RE48,365, is a reissue of U.S. Patent No. 7,990,724. The reissue process, which allows for correcting errors in an original patent, may have altered claim scope, a factor the court will consider during claim construction.
Case Timeline
| Date | Event |
|---|---|
| 2006-12-19 | RE’365 Patent Priority Date (Provisional App. 60/875,842) |
| 2016-11-04 | Accused Product BIOS Date (from complaint evidence) |
| 2020-12-22 | RE’365 Patent Issue Date |
| 2023-05-05 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Reissued Patent No. RE48,365 - "Mobile Motherboard"
- Patent Identification: U.S. Reissued Patent No. RE48,365, "Mobile Motherboard", issued December 22, 2020.
The Invention Explained
- Problem Addressed: The patent describes conventional computers of the time as geographically limited, with motherboards integrated inside a computer box, making them difficult to upgrade or use with multiple devices (RE’365 Patent, col. 1:19-22, 1:37-43).
- The Patented Solution: The invention proposes a "portable motherboard" that is external to a "computer box." This external motherboard contains the core processing components and connects to the computer box (which may lack its own processor) to provide computing functionality. This architecture is intended to make processing power "more efficient and ubiquitous" and improve heat dissipation by exposing the motherboard to natural air flow (RE’365 Patent, Abstract; col. 4:29-36).
- Technical Importance: The invention sought to decouple the processing unit from the chassis, allowing a single powerful "brain" to serve multiple, otherwise-unintelligent terminals or to boost the power of existing computers (RE’365 Patent, col. 4:54-65).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 1 (Compl. ¶13).
- Essential elements of independent claim 1 include:
- A computer system with two main components: (1) a "computer box without a processor" and (2) a "portable and handholdable motherboard external to the housing."
- The computer box must have a housing, internal circuitry, an internal bus, and a communication port.
- The portable motherboard must have a central processor, a motherboard bus, a connector to engage with the computer box's port, and additional communication ports for external circuitry.
- The portable motherboard must include "Northbridge and Southbridge circuitry."
- Connection of the two components enables the computer box to perform computing operations.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- The Accused Instrumentality is the Asus VivoStick PC (TS10) computer (Compl. ¶13).
Functionality and Market Context
- The complaint describes the VivoStick PC as a "pocket-sized Windows PC" that can turn any HDMI-equipped monitor, TV, or projector into a fully functional computer (Compl. ¶17, p. 7). It is a self-contained computer in a small "stick" form factor.
- The product contains an Intel Atom quad-core processor, memory, storage, Wi-Fi, and various I/O ports including HDMI, USB 3.0, and an audio jack (Compl. ¶¶19, 21, p. 5, 8, 10). The complaint includes a diagram from Defendant's website illustrating the VivoStick's ports (Compl. p. 10).
- The complaint alleges the VivoStick is used in combination with an HD TV, monitor, or projector to form the infringing system (Compl. ¶14).
IV. Analysis of Infringement Allegations
RE’365 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a computer box without a processor for performing computing operations, said computer box comprising: a housing; circuitry enclosed by said housing; a bus internal to said housing connected to said circuitry; and a first communication port for enabling electrical connection of circuitry external to said housing to said internal bus | The complaint alleges that an HD TV, monitor, or projector serves as the "computer box without a processor." The housing, internal circuitry, internal bus, and HDMI input port of the display are alleged to meet these limitations (Compl. ¶17). | ¶17 | col. 5:6-11 |
| a portable and handholdable motherboard external to the housing comprising: a central processor, a motherboard bus connected to said central processor | The VivoStick PC (TS10) itself is alleged to be the "portable and handholdable motherboard." It is described as portable and contains an Intel Atom central processor and a motherboard bus (Compl. ¶¶18-19). A provided screenshot shows the technical specifications of the VivoStick's processor and motherboard components (Compl. p. 8). | ¶¶18-19 | col. 5:12-15 |
| a motherboard connector for engagement with said first communication port for enabling electrical connection of said central processor through said motherboard bus to said internal bus of said computer box | The HDMI connector on the VivoStick is alleged to be the "motherboard connector." It engages with the HDMI port on the TV, monitor, or projector (the "first communication port") to connect the VivoStick's processor to the display's internal bus (Compl. ¶20). A provided image shows the VivoStick being held next to a display, illustrating the intended connection (Compl. p. 9). | ¶20 | col. 5:15-19 |
| one or more second communication ports for enabling electrical connection of circuitry external to said to motherboard to said motherboard bus | The VivoStick's communication ports, such as its USB 3.0 port, are alleged to be the "second communication ports" for connecting external circuitry (e.g., peripherals) to the VivoStick's motherboard bus (Compl. ¶21). | ¶21 | col. 5:19-21 |
| wherein connection of said motherboard connector to said first communication port enables said computer box to perform computing operations | The complaint alleges that connecting the VivoStick to an HD TV, monitor, or projector enables the display to perform computing operations, such as running the Windows 10 operating system (Compl. ¶22). A provided image depicts the Windows interface on a monitor connected to the VivoStick (Compl. p. 11). | ¶22 | col. 5:21-23 |
| and wherein said motherboard includes Northbridge and Southbridge circuitry | The complaint alleges the VivoStick includes Northbridge and Southbridge circuitry, citing a technical screenshot showing an "Intel Braswell Host Bridge" (Northbridge) and an "Intel Braswell LPC Bridge" (Southbridge) (Compl. ¶23, p. 12). | ¶23 | col. 5:23-24 |
- Identified Points of Contention:
- Scope Question: A central issue will be whether an HDMI-equipped display (e.g., a modern smart TV or monitor), which often contains its own processors, qualifies as a "computer box without a processor" as required by the claim.
- Scope Question: The case may turn on whether the accused VivoStick, a self-contained, fully-functional computer-on-a-stick, can be construed as a "motherboard." The patent was filed when a "motherboard" was typically understood as a component within a larger system, not a standalone computer.
- Technical Question: The claim requires "Northbridge and Southbridge circuitry." While the complaint identifies corresponding components in the VivoStick (Compl. ¶23), modern system-on-a-chip (SoC) architectures, like the Intel Atom processor used, integrate many of these functions differently than the discrete chipsets common when the patent was filed. The court will need to determine if the VivoStick's integrated architecture meets this claim limitation.
V. Key Claim Terms for Construction
The Term: "computer box"
Context and Importance: This term's definition is critical because the plaintiff's infringement theory maps it onto a modern TV or monitor, an apparatus different from the traditional PC tower depicted in the patent (RE’365 Patent, Fig. 1). The defense may argue that a modern display is not a "computer box" or that it is not "without a processor."
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states, "By 'computer box' is meant a housing of any form factor that in the prior art contains a motherboard with central processing unit" (RE’365 Patent, col. 2:57-60). Plaintiff may argue "any form factor" is broad enough to include a display housing.
- Evidence for a Narrower Interpretation: The claim requires the computer box to be "without a processor." The specification consistently describes the invention as providing a "brain" to a computer box that lacks one or boosting a slow one (RE’365 Patent, Abstract; col. 4:54-58). The defense may argue that most modern displays contain their own processors for smart functions, disqualifying them.
The Term: "portable and handholdable motherboard"
Context and Importance: The entire infringement theory depends on construing the VivoStick PC—a complete, self-contained computer—as merely a "motherboard." Practitioners may focus on this term because the accused product's identity as a full computer, rather than a component, presents a potential mismatch with the claim language.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The complaint alleges the VivoStick contains the required components of the claimed motherboard, including a CPU, motherboard bus, and Northbridge/Southbridge circuitry (Compl. ¶¶19, 23). Plaintiff will likely argue that if it contains the necessary elements and is portable, its commercial name is irrelevant.
- Evidence for a Narrower Interpretation: The patent consistently distinguishes between the "motherboard" and the "computer box" as separate entities that combine to form a system (RE’365 Patent, col. 1:49-52). The defense may argue that the VivoStick is itself a complete "computer system" in a small form factor, not just a "motherboard" component as envisioned by the patent.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement, stating that Defendant "affirmatively encourages and intends" for customers to use the VivoStick in an infringing manner (i.e., by connecting it to a display) (Compl. ¶28). The basis for this allegation is Defendant's marketing and instructions that promote this exact use case (Compl. ¶29). The complaint also alleges contributory infringement, asserting the VivoStick is a material part of the invention, especially adapted for infringement, and not a staple article of commerce with substantial non-infringing uses (Compl. ¶30).
- Willful Infringement: Willfulness is alleged based on Defendant's awareness of the patent "at least as of the date of the service of the original Complaint" and its continued infringing conduct thereafter (Compl. ¶30). The complaint also makes a more general allegation of knowing or willfully blind conduct (Compl. ¶27).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this case will likely depend on the court’s interpretation of claim terms drafted in the mid-200s and applied to modern, highly integrated technology. The central questions are:
- A core issue will be one of definitional scope: Can the term "computer box without a processor," which originates in the context of a passive PC tower, be construed to read on a modern, often processor-equipped, TV or monitor?
- A second key issue will be one of technological identity: Can the term "motherboard," as defined and used in the patent, encompass a self-contained, computer-on-a-stick like the VivoStick, or does the accused product's nature as a complete computer in its own right create a fundamental mismatch with the claimed component?
- An important evidentiary question will be one of architectural correspondence: Do the integrated system-on-a-chip (SoC) components of the accused VivoStick, such as the "Intel Braswell Host Bridge," constitute the specific "Northbridge and Southbridge circuitry" required by the claim, or has the evolution of chip design created a technical distinction that avoids infringement?