IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`
`
`Plaintiff,
`
`
`
`v.
`
`
`HD SILICON SOLUTIONS LLC,
`
`
`
`
`
`MICROCHIP TECHNOLOGY INC.,
`
`
`
`
`
`Civil Action No. 6:20-cv-01092-ADA
`
`PATENT CASE
`
`JURY TRIAL DEMANDED
`
`
`
`Defendant.
`
`PLAINTIFF HD SILICON SOLUTIONS LLC’S
`PRELIMINARY INFRINGEMENT CONTENTIONS AND RELATED DISCLOSURES
`
`Plaintiff HD Silicon Solutions LLC (“HDSS”) hereby provides its preliminary
`
`
`
`infringement contentions and related disclosures. HDSS’s disclosures are based on publicly
`
`available materials regarding the accused infringing products of defendant Microchip
`
`Technology Inc. (“MTI”) that describe or discuss aspects of the operation of such products.
`
`HDSS has not had access to any discovery of defendant’s materials at this point, and certain
`
`information is not yet available to HDSS that may be relevant to its infringement claims. HDSS
`
`reserves the right to supplement or alter its disclosures herein based on additional information
`
`obtained concerning defendant’s products.
`
`I.
`
`Preliminary Infringement Contentions
`
`A.
`
`Infringed Claims
`
`
`
`The following table identifies the patents-in-suit and summarizes each claim of those
`
`patents that is alleged to be infringed by MTI.
`
`
`
`1
`
`MICROCHIP TECH. INC. - EXHIBIT 1039
`MICROCHIP TECH. INC. V. HD SILICON SOLS. - IPR2021-01265 - Page 001
`
`
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`
`
`Plaintiff,
`
`
`
`v.
`
`
`HD SILICON SOLUTIONS LLC,
`
`
`
`
`
`MICROCHIP TECHNOLOGY INC.,
`
`
`
`
`
`Civil Action No. 6:20-cv-01092-ADA
`
`PATENT CASE
`
`JURY TRIAL DEMANDED
`
`
`
`Defendant.
`
`PLAINTIFF HD SILICON SOLUTIONS LLC’S
`PRELIMINARY INFRINGEMENT CONTENTIONS AND RELATED DISCLOSURES
`
`Plaintiff HD Silicon Solutions LLC (“HDSS”) hereby provides its preliminary
`
`
`
`infringement contentions and related disclosures. HDSS’s disclosures are based on publicly
`
`available materials regarding the accused infringing products of defendant Microchip
`
`Technology Inc. (“MTI”) that describe or discuss aspects of the operation of such products.
`
`HDSS has not had access to any discovery of defendant’s materials at this point, and certain
`
`information is not yet available to HDSS that may be relevant to its infringement claims. HDSS
`
`reserves the right to supplement or alter its disclosures herein based on additional information
`
`obtained concerning defendant’s products.
`
`I.
`
`Preliminary Infringement Contentions
`
`A.
`
`Infringed Claims
`
`
`
`The following table identifies the patents-in-suit and summarizes each claim of those
`
`patents that is alleged to be infringed by MTI.
`
`
`
`1
`
`MICROCHIP TECH. INC. - EXHIBIT 1039
`MICROCHIP TECH. INC. V. HD SILICON SOLS. - IPR2021-01265 - Page 001
`
`
`
`
`
`
`
`
`Patent
`
`Infringed Claims
`
`7,260,731 1, 4, 6, 8
`
`7,870,404 1, 3, 5, 6, 11, 14, 15, 16, 18, 19, 21
`
`7,810,002 1, 2, 3, 4, 5, 6, 8, 9, 11, 12, 15, 16, 17, 18, 19
`
`6,748,577 1–38
`
`7,154,299 1–16, 18, 19, 23, 24, 25
`
`7,302,619 1, 2, 3, 6, 10, 11, 12, 13, 14, 17, 21 22, 24, 26, 27, 28, 29, 30, 31
`
`6,774,033 1, 2, 5, 8, 10, 13, 17
`
`HDSS reserves the right to augment and supplement its identification of asserted claims
`
`based upon additional information obtained through discovery.
`
`B.
`
`Infringing Instrumentalities
`
`
`
`Based upon information presently available to it, HDSS asserts infringement by the
`
`instrumentalities set forth in the table below.
`
`Patent
`
`7,260,731
`7,870,404
`
`Infringing Instrumentalities
`
`MTI microcontroller unit families/products:
`
`• PIC32MM0064GPL036
`
`• PIC32MM0256GPM064
`
`• PIC32MX1XX/2XX
`
`• PIC24FJ128GC010
`
`• PIC24FJ64GB202
`
`• PIC24FJ128GB202
`
`• PIC24FJ64GB204
`
`• PIC24FJ128GB204
`
`• PIC24FJ512GU410
`
`• PIC24FJ512GU410
`
`
`
`2
`
`MICROCHIP TECH. INC. - EXHIBIT 1039
`MICROCHIP TECH. INC. V. HD SILICON SOLS. - IPR2021-01265 - Page 002
`
`
`
`Patent
`
`Infringing Instrumentalities
`
`• PIC24FJ128GL306
`
`• PIC24FJ64GP205/GU205
`
`• PIC24FJ256GA412/GB412
`
`• PIC24FJ128GA204
`
`• PIC24FJ128GA310
`
`• PIC24FJ256GA412/GB412
`
`• PIC24FJ1024GA610/GB610
`
`• PIC24FJ256GA705
`
`• PIC24FV16KM204
`
`• PIC24FV32KA304
`
`• PIC24F16KA102
`
`• PIC18F06/16Q41
`
`• PIC18F27/47/57Q43
`
`• PIC18F26/45/46Q10
`
`• PIC16LF1554/1559
`
`• PIC16LF1566/1567
`
`• PIC16LF1902/3
`
`• PIC16LF1904/6/7
`
`• PIC16(L)F18855/75
`
`• PIC18(L)F67K40
`
`• PIC16(L)F1717/8/9
`
`• Any other microcontrollers described as including XLP Technology
`
`7,810,002 MTI microcontroller unit families/products:
`
`• SAM L11, including but not limited to ATSAML11D14A,
`ATSAML11D15A, ATSAML11D15A, and ATSAML11E15A
`
`6,748,577 MTI field-programmable gate array families/products:
`
`• AT40K05
`
`• AT40K10
`
`• AT40K20
`
`
`
`3
`
`MICROCHIP TECH. INC. - EXHIBIT 1039
`MICROCHIP TECH. INC. V. HD SILICON SOLS. - IPR2021-01265 - Page 003
`
`
`
`Patent
`
`Infringing Instrumentalities
`
`• AT40K40
`
`• AT40K10AL
`
`• AT40K20AL
`
`• AT40K40AL
`
`7,154,299 MTI field-programmable gate array families/products:
`
`• PolarFire FPGAs, including but not limited to Mid-Range FPGAs, PolarFire
`SOC FPGAs, and RT PolarFire Radiation-Tolerant FPGAs
`
`• SmartFusion2 SoC FPGA
`
`•
`
`IGLOO2 FPGA
`
`7,302,619 MTI microcontroller unit families/products:
`
`• PIC32MZ EF family
`
`• PIC32MZ DAK/DAL/DAR/DAS family
`
`• PIC32MK (GPG/MCJ) family
`
`• PIC32MK (GPK/MCM) family
`
`6,774,033 MTI products containing static RAM produced by foundries, including but not
`limited to TSMC, UMC, and SMIC, using foundry processes from 90 nm to 10 nm,
`including but not limited to:
`
`• 90 nm
`
`• 65 nm
`
`• 40 nm
`
`• 28 nm
`
`• 16 nm
`
`• 12 nm
`
`• 10 nm
`
`Examples of such products include, but are not limited to, the ’299 Accused Chips.
`
`
`
`
`More complete information about MTI’s products and methods is in the possession of
`
`MTI and is expected to be obtained through discovery. HDSS reserves the right to augment and
`
`
`
`4
`
`MICROCHIP TECH. INC. - EXHIBIT 1039
`MICROCHIP TECH. INC. V. HD SILICON SOLS. - IPR2021-01265 - Page 004
`
`
`
`supplement its preliminary identification of infringing products based upon additional
`
`information obtained through discovery.
`
`C.
`
`Claim Charts for Literal Infringement
`
`
`
`HDSS’s preliminary infringement charts are provided as attached Exhibits A1–A7. The
`
`“Accused Chips” referenced in each chart are the Infringing Instrumentalities identified above
`
`for that patent. In each claim chart, the discussion for dependent claims should be read as
`
`incorporating by reference the discussion corresponding to the claims on which they depend. In
`
`addition, the discussion for each row in the chart should be read within the context of the
`
`discussion for the entire claim to which that row pertains. Where the charts incorporate excerpts
`
`of a document, the excerpt is exemplary and should be read within the context of the entire
`
`document.
`
`
`
`HDSS reserves the right to augment and supplement its preliminary claim charts based
`
`upon additional information obtained through discovery.
`
`D.
`
`Doctrine of Equivalents
`
`
`
`Unless otherwise noted in the claim charts, HDSS alleges that defendants infringe
`
`literally all claims identified above. To the extent any differences are alleged to exist between the
`
`above-identified claims and MTI’s infringing conduct, such differences are insubstantial and
`
`MTI’s products and processes perform substantially the same function, in substantially the same
`
`way, to yield substantially the same result, and therefore MTI infringes under the doctrine of
`
`equivalents.
`
`
`
`MTI reserves the right to augment and supplement its disclosure concerning the doctrine
`
`of equivalents based upon additional information obtained through discovery or based upon the
`
`Court’s claim construction.
`
`
`
`5
`
`MICROCHIP TECH. INC. - EXHIBIT 1039
`MICROCHIP TECH. INC. V. HD SILICON SOLS. - IPR2021-01265 - Page 005
`
`
`
`II.
`
`Priority Dates
`
`
`
`The table below shows the asserted priority date for each asserted claim.
`
`Patent
`
`Claims
`
`Priority Date
`
`7,260,731 all asserted claims October 23, 2000
`
`7,870,404 all asserted claims October 23, 2000
`
`7,810,002 all asserted claims
`
`June 28, 2005
`
`6,748,577 all asserted claims December 30, 2000
`
`7,154,299 all asserted claims
`
`July 20, 2001
`
`7,302,619 all asserted claims
`
`July 6, 2004
`
`6,774,033 all asserted claims November 4, 2002
`
`
`
`
`HDSS reserves the right to augment and supplement its disclosure concerning priority
`
`dates based upon information obtained through discovery (including from the inventors), the
`
`Court’s claim construction, or other information.
`
`III. Document Production
`
`A.
`
`Conception and Reduction to Practice
`
`
`
`HDSS identifies the following documents as potentially evidencing conception and
`
`reduction to practice for each claimed invention: HDSS00000015–39 (relating to ’299 Patent)
`
`and HDSS00000040–59 (relating to ’577 Patent).
`
`
`
`HDSS’s identification of such documents is not an admission that any such document
`
`evidences a disclosure of any claimed invention or that such document evidences or is prior art
`
`under 35 U.S.C. § 102.
`
`B.
`
`File History
`
`
`
`HDSS identifies the following documents as the file history for each patent-in-suit:
`
`HDSS-FH-00000001–1881.
`
`
`
`6
`
`MICROCHIP TECH. INC. - EXHIBIT 1039
`MICROCHIP TECH. INC. V. HD SILICON SOLS. - IPR2021-01265 - Page 006
`
`
`
`
`DATED: May 4, 2021
`
`
`
`
`
`
`
`
`
`
`
`/s/ Max L. Tribble Jr.
`
`
`
`
`
`Max L. Tribble Jr.
`
`Texas State Bar No. 20213950
` mtribble@susmangodfrey.com
`Joseph S. Grinstein
`
`Texas State Bar No. 24002188
`
`jgrinstein@susmangodfrey.com
`SUSMAN GODFREY LLP
`1000 Louisiana Street, Suite 5100
`Houston, TX 77002
`Telephone: (713) 651-9366
`Facsimile: (713) 654-6666
`
`Kalpana Srinivasan
`(admitted pro hac vice)
`
` California State Bar No. 237460
`
`ksrinivasan@susmangodfrey.com
`SUSMAN GODFREY LLP
`1900 Avenue of the Stars, Suite 1400
`Los Angeles, CA 90067
`Telephone: (310) 789-3100
`Facsimile: (310) 789-3150
`
`Daniel J. Shih
`(admitted pro hac vice)
`
` Washington State Bar No. 37999
`
`dshih@susmangodfrey.com
`P. Ryan Burningham
`(admitted pro hac vice)
`
` Washington State Bar No. 54358
`
`rburningham@susmangodfrey.com
`SUSMAN GODFREY LLP
`1201 Third Avenue, Suite 3800
`Seattle, Washington 98101
`Telephone: (206) 516-3880
`Facsimile: (206) 516-3883
`
`ATTORNEYS FOR PLAINTIFF
`HD SILICON SOLUTIONS LLC
`
`7
`
`MICROCHIP TECH. INC. - EXHIBIT 1039
`MICROCHIP TECH. INC. V. HD SILICON SOLS. - IPR2021-01265 - Page 007
`
`
`
`
`
`
`I hereby certify that on May 4, 2021, a true and correct copy of the foregoing was served
`
`CERTIFICATE OF SERVICE
`
`upon all counsel of record by email.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` /s/ Daniel J. Shih
`Daniel J. Shih
`
`
`
`
`
`
`
`8
`
`MICROCHIP TECH. INC. - EXHIBIT 1039
`MICROCHIP TECH. INC. V. HD SILICON SOLS. - IPR2021-01265 - Page 008
`
`
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