DCT
6:23-cv-00461
BiTMICRO LLC v. Kioxia America Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: BiTMICRO LLC (Delaware)
- Defendant: KIOXIA America, Inc. (California) and KIOXIA Corporation (Japan)
- Plaintiff’s Counsel: Bunsow De Mory LLP; George Brothers Kincaid & Horton, L.L.P.
- Case Identification: 6:23-cv-00461, W.D. Tex., 06/22/2023
- Venue Allegations: Plaintiff alleges venue is proper because Defendant KIOXIA America, Inc. maintains an established place of business within the Western District of Texas and has committed acts of alleged infringement in the district.
- Core Dispute: Plaintiff alleges that Defendant’s solid-state drives (SSDs) and related storage systems infringe patents related to direct memory access (DMA) controllers with integrated encryption and networked memory system architectures.
- Technical Context: The lawsuit concerns core technologies in modern solid-state storage, focusing on methods for securing data efficiently during high-speed transfers and for building scalable, high-performance networks of flash memory modules for enterprise and data center applications.
- Key Procedural History: The complaint alleges that U.S. Patent No. 7,716,389 was cited by the USPTO during the prosecution of a patent application owned by Defendant (then Toshiba Memory Corporation), a fact that may be used to support allegations of pre-suit knowledge and willfulness.
Case Timeline
| Date | Event |
|---|---|
| 2006-03-17 | U.S. Patent No. 7,716,389 Priority Date |
| 2010-05-11 | U.S. Patent No. 7,716,389 Issue Date |
| 2013-03-15 | U.S. Patent No. 9,875,205 Priority Date |
| 2015-03-30 | KIOXIA (Toshiba) '739 Application Filed |
| 2017-02-10 | USPTO rejects KIOXIA's patent application claims in light of the '389 Patent |
| 2018-01-23 | U.S. Patent No. 9,875,205 Issue Date |
| 2023-06-22 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,716,389 - “Direct Memory Access Controller with Encryption and Decryption for Non-Blocking High Bandwidth I/O Transactions”
The Invention Explained
- Problem Addressed: The patent describes that prior to the invention, performing computationally intensive encryption on multiple, simultaneous data transfers negatively impacted performance, as it could not be done without slowing down the system or requiring inefficient, extra memory-to-memory data transfers (’389 Patent, col. 2:20-26, 56-65; Compl. ¶19).
- The Patented Solution: The invention proposes a Direct Memory Access (DMA) controller architecture that includes an integrated Data Processing Core (DPC). This DPC is designed to monitor DMA transfers, and when a transfer targets a specific memory address range, it intercepts the data "on-the-fly" to perform encryption or decryption. This avoids processing delays and the need for separate data transfers to and from a cryptographic engine (’389 Patent, Abstract; col. 4:16-30).
- Technical Importance: This architecture enabled high-speed, secure data transfers in storage systems by integrating encryption directly into the primary data path, which was a critical improvement for performance-sensitive applications in enterprise and military environments (Compl. ¶1).
Key Claims at a Glance
- The complaint asserts independent claim 19, which is a means-plus-function claim (Compl. ¶21, ¶34).
- The essential elements of claim 19 include:
- A means for performing a DMA data transfer, including at least one DMA engine.
- A means for performing data processing (encryption/decryption) coupled to the DMA transfer means.
- The data processing is performed in response to a "DPC hit signal."
- The processing means uses a "DPC channel" to intercept the data, causing it to be transferred to the processing means.
- The complaint alleges infringement of "one or more claims," reserving the right to assert others later (Compl. ¶27).
U.S. Patent No. 9,875,205 - “Network of Memory Systems”
The Invention Explained
- Problem Addressed: As demand for flash memory capacity grew, particularly in networked environments like servers and data centers, traditional methods of interconnecting many flash modules became a performance bottleneck and raised reliability concerns (’205 Patent, col. 1:27-44; Compl. ¶24).
- The Patented Solution: The patent discloses an apparatus and network architecture where a system controller is separate from a flash memory module and communicates with it via an external communication bus and a communication bus interface. This enables a more flexible, scalable, point-to-point topology for connecting numerous memory modules and system controllers (’205 Patent, Abstract; Fig. 1).
- Technical Importance: This networked architecture improved the throughput, flexibility, and reliability of large-scale storage systems by creating a more robust and distributed method for connecting system controllers to flash memory arrays (Compl. ¶25, p.7).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶25, ¶53).
- The essential elements of claim 1 include:
- An apparatus comprising: a communication bus interface;
- a flash memory module coupled to the communication bus interface via a communication bus;
- a system controller coupled to the communication bus interface via an external communication bus; and
- wherein the system controller performs a memory transaction via the communication bus interface to the flash memory module.
- The complaint alleges infringement of "one or more claims," reserving the right to assert others (Compl. ¶28).
III. The Accused Instrumentality
Product Identification
- For the ’389 Patent, the accused products are KIOXIA SSDs with encryption capabilities, including the CM, PM, FL, CD, XD, BG, and XG Series, among others (the "'389 Accused Products") (Compl. ¶27).
- For the ’205 Patent, the accused products are Ethernet Bunch of Flash (EBOF) systems, specifically the Ingrasys ES2000/ES2100, which incorporate KIOXIA’s EM6 Series NVMe over Fabrics (NVMe-oF) SSDs (the "'205 Accused Products") (Compl. ¶53-54).
Functionality and Market Context
- The ’389 Accused Products are SSDs for enterprise, data center, and client markets that offer security features like Self-Encrypting Drives (SEDs) (Compl. ¶27, p.8). They allegedly use an on-board controller chip and a cryptographic module to manage data flow and perform encryption/decryption directly on the drive as data is written to or read from the internal flash memory (Compl. ¶35, ¶38).
- The ’205 Accused Products are high-density storage chassis that house numerous KIOXIA EM6 Series SSDs (Compl. ¶55). The complaint alleges these systems use a distinct system controller (e.g., an Intel processor and a network switch) that is separate from the individual KIOXIA SSDs and manages memory transactions with them over an external network fabric (Compl. ¶58-59). The complaint includes a photograph of the Ingrasys ES2000/ES2100 product, which is a 2U storage system that holds up to 24 SSDs (Compl. p. 21).
IV. Analysis of Infringement Allegations
’389 Patent Infringement Allegations
| Claim Element (from Independent Claim 19) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a means for performing a DMA data transfer, said means for performing a DMA data transfer including at least one DMA engine configured for transferring data | The accused SSDs' controller chips (e.g., TC58NCP090GSD) contain a DMA engine that performs direct data transfers between RAM and flash memory within the SSD. | ¶35, ¶41 | col. 4:31-35 |
| a means for performing data processing coupled to said means for performing a DMA data transfer, said data processing includes encrypting or decrypting said data... | The accused SSDs contain an on-board cryptographic module (e.g., Crypto Sub-Chip TC58NC1132GTC) that works with the DMA controller to encrypt and decrypt data. | ¶38, ¶42 | col. 3:51-57 |
| ...in response to a DPC hit signal... | In KIOXIA's Opal SSC cryptographic chips, "DPC hit signals are used in the selection of the appropriate MEK to use for encryption/decryption for a particular locking range of the memory." | ¶17, ¶42 | col. 5:22-26 |
| ...by at least using a DPC channel to intercept said data, causing said data to be transferred to said means for performing data processing. | The cryptographic module uses a channel to intercept data for processing. The "ISE / SED Data Path" diagram shows data passing through a crypto engine before being written to flash media. | ¶42, p. 16 | col. 4:30-34 |
- Identified Points of Contention:
- Scope Questions (Means-Plus-Function): As claim 19 is a means-plus-function claim, a central dispute will concern whether the structure disclosed in the complaint for performing the claimed functions (e.g., KIOXIA's specific controller and crypto-module) is the same as or equivalent to the corresponding structure disclosed in the ’389 patent’s specification (e.g., the DPC with an Address Comparator).
- Technical Questions: The complaint alleges that the accused products operate in response to a "DPC hit signal." A key technical question for the court will be whether the triggering mechanism for encryption in KIOXIA's products functions as the specific address-based "DPC Hit" described in the patent, or if it operates on a different principle.
’205 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An apparatus comprising: a communication bus interface; | The Ingrasys ES2000/ES2100 products include high-speed Ethernet ports (e.g., QSFP28/56) that function as a communication bus interface. The complaint includes a graphic of the rear panel showing these ports. | ¶56, p. 22 | col. 4:36-49 |
| a flash memory module coupled to the communication bus interface via a communication bus; | Each KIOXIA EM6 Series SSD within the Ingrasys chassis is alleged to be a "flash memory module" coupled to the interface via an internal bus. An architectural diagram shows the KIOXIA SSDs connected via network switches. | ¶57, p. 23 | col. 4:12-16 |
| a system controller coupled to the communication bus interface via an external communication bus; and | The Ingrasys products contain a management processor (e.g., Intel Atom C3538) and an Ethernet switch, which together allegedly constitute a "system controller" separate from the SSDs. | ¶58 | col. 4:7-11 |
| wherein the system controller performs a memory transaction via the communication bus interface to the flash memory module. | The system controller in the Ingrasys products is alleged to handle memory operations for the KIOXIA SSDs, such as coordinating read/write operations over the network. | ¶59 | col. 4:7-11 |
- Identified Points of Contention:
- Scope Questions: A primary question is whether KIOXIA, which supplies the SSDs, can be held liable for directly infringing a claim to an "apparatus" that comprises the entire Ingrasys EBOF system, which is assembled and sold by a third party. The complaint attempts to address this by pleading infringement "jointly in partnership with Ingrasys" (Compl. ¶60).
- Technical Questions: The claim requires a "system controller" that is distinct from the "flash memory module." The court may need to determine if the controller components within the Ingrasys chassis are functionally and structurally distinct from the controllers within each KIOXIA SSD in a manner that maps onto the patent's claimed architecture.
V. Key Claim Terms for Construction
Term: "DPC hit signal" (’389 Patent, claim 19)
Context and Importance: This term is critical because infringement requires that the accused encryption is triggered "in response to" this specific signal. The viability of the infringement case for the ’389 Patent may depend on whether the internal command that initiates cryptography in KIOXIA's SSDs qualifies as a "DPC hit signal." Practitioners may focus on this term because the complaint's support for its existence in the accused products is tied to a specific interpretation of how Opal SSC chips function.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not provide a formal definition of the term, which could support an interpretation covering any signal that triggers data processing.
- Evidence for a Narrower Interpretation: The specification consistently describes the "DPC Hit" signal being asserted by an "Address Comparator" when a DMA transfer address falls within a pre-defined range (’389 Patent, col. 4:22-29; col. 5:22-26). This suggests the signal is specifically an address-based trigger, not a generic command.
Term: "system controller" (’205 Patent, claim 1)
Context and Importance: The claim requires a "system controller" that is architecturally separate from the "flash memory module." The definition of this term will be central to determining if the accused EBOF systems embody the claimed invention. Defendant may argue that the controller inside its own SSD performs system control functions, blurring the claimed distinction.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification provides a functional description, stating the system controller "communicates the memory specific transactions" and can be implemented as an IC, module, or SoC (’205 Patent, col. 4:7-11).
- Evidence for a Narrower Interpretation: The patent's figures consistently show the "System Controller" (e.g., 101) as a block that is physically separate from the "Flash Memory Module" (e.g., 107), which contains its own distinct "Flash Array Controller" (e.g., 111) (’205 Patent, Fig. 1). This visual depiction supports a construction requiring two separate and distinct controlling entities.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of the ’389 Patent based on KIOXIA's user manuals and website, which allegedly instruct customers on using the infringing encryption features (Compl. ¶47). For the ’205 Patent, it alleges both inducement and contributory infringement, based on KIOXIA providing its EM6 Series SSDs for use in the infringing Ingrasys systems, promoting that use, and knowing the SSDs are a material, non-staple component adapted for such use (Compl. ¶61, ¶65).
- Willful Infringement: Willfulness for the ’389 Patent is based on alleged pre-suit knowledge, stemming from the patent's citation during the prosecution of KIOXIA's own patent application in 2017 (Compl. ¶44-46). For the ’205 Patent, willfulness is based on knowledge acquired from the filing of the present lawsuit (Compl. ¶62).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue for the ’389 Patent will be one of structural equivalence: for the means-plus-function limitations of claim 19, the court must determine if the accused KIOXIA SSD controller and cryptographic module architecture is structurally equivalent to the specific "Data Processing Core" with its "Address Comparator" as disclosed in the patent’s specification.
- A key question for the ’205 Patent will be the locus of infringement: does KIOXIA, by supplying a key component (the EM6 SSD), directly infringe claims to an "apparatus" that is only completed and sold by a third party (Ingrasys), or must the plaintiff prevail on more complex theories of joint or indirect infringement?
- A central evidentiary question will be the impact of prosecution history: can the plaintiff establish that the citation of the ’389 Patent against a KIOXIA application provided KIOXIA not just with notice of the patent, but with knowledge that its own products were infringing, sufficient to support a finding of willful infringement?