Case 1:22-cv-00425-RP Document 1 Filed 05/05/22 Page 1 of 10
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`Advanced Silicon Technologies LLC,
`
`Plaintiff,
`
`Civil Action No.
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`1:22-CV-425
`
`v.
`
`NXP Semiconductors N.V.,
`NXP B.V., and
`NXP USA, Inc.,
`
`Defendants.
`
`Jury Trial Demanded
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`COMPLAINT FOR PATENT INFRINGEMENT
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`Plaintiff Advanced Silicon Technologies LLC (“AST”) files this complaint for patent
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`infringement against Defendants NXP Semiconductors N.V., NXP B.V., and NXP USA, Inc.
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`(collectively, “NXP”), and alleges the following:
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`Nature of the Action
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`1.
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`AST sues to stop, and to recover damages caused by, NXP’s infringement of
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`AST’s patents.
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`2.
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`This action involves patents that stem from the research and design of innovative
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`and proprietary technology developed by AST’s licensee, Advanced Micro Devices, Inc.
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`(“AMD”). AMD is an American multi-national company and pioneer of cutting-edge graphics
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`processor and microprocessor technology. The asserted patents cover inventions relating to
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`important aspects of AMD’s integrated circuit and microfabrication technology.
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`Case 1:22-cv-00425-RP Document 1 Filed 05/05/22 Page 2 of 10
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`3.
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`Tracing its history back to Philips and Motorola Semiconductors, NXP in its
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`present form took shape in 2015 through a merger with Freescale Semiconductor. See, e.g.,
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`https://www.nxp.com/company/about-nxp/history:NXP-HISTORY.
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`Parties
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`4.
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`Plaintiff Advanced Silicon Technologies LLC is a Delaware limited liability
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`company with a principal place of business in Portland, Maine, and a mailing address of 533
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`Congress Street, Portland, Maine 04101.
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`5.
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`Defendant NXP Semiconductors N.V. is a Dutch corporation with a principal
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`place of business at High Tech Campus 60, 5656 AG Eindhoven, Netherlands.
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`6.
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`Defendant NXP B.V. is a Dutch company with a principal place of business at
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`High Tech Campus 60, 5656 AG Eindhoven, Netherlands.
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`7.
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`Defendant NXP USA, Inc. is a Delaware corporation with a principal place of
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`business at 6501 W. William Cannon Drive, Austin, Texas 78735.
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`8.
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`On information and belief, NXP Semiconductors N.V. is a publicly traded
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`company that owns and controls NXP B.V., which in turn owns and controls NXP USA, Inc.
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`See, e.g., https://investors.nxp.com/sec-filings/sec-filing/10-k/0001413447-21-000011. NXP
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`Semiconductors N.V. trades on the NASDAQ stock exchange under the symbol NXPI.
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`Jurisdiction and Venue
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`9.
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`This Court has subject matter jurisdiction under 28 U.S.C. §§ 1331 and 1338(a)
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`because this action presents a federal question under the patent laws of the United States,
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`including 35 U.S.C. §§ 271, 281, 284, and 285.
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`10.
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`This Court has specific or, alternatively, general personal jurisdiction over
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`Defendant NXP Semiconductors N.V. On information and belief, NXP Semiconductors N.V. is
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`Case 1:22-cv-00425-RP Document 1 Filed 05/05/22 Page 3 of 10
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`not subject to the jurisdiction of any state’s court of general jurisdiction. Shares of NXP
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`Semiconductors N.V. stock are routinely traded by investors, including investors in the United
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`States, on NASDAQ and other stock exchanges under the symbol NXPI. On information and
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`belief, investors in the United States own shares of NXP Semiconductors N.V. stock.
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`11.
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`This Court also has personal jurisdiction over NXP Semiconductors N.V. because
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`it is the sole owner of NXP B.V. and owns, directly or indirectly, NXP USA, Inc. On
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`information and belief, NXP Semiconductors N.V. through NXP B.V. and NXP USA, Inc.
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`directly or indirectly owns, operates, or controls facilities that include offices and fabrication
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`facilities in Austin, Texas where infringing products are designed, developed, manufactured,
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`tested, used, marketed, imported, exported, offered for sale, or sold into a stream of commerce
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`that includes this District. See https://www.nxp.com/company/about-nxp/worldwide-
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`locations/united-states:USA.
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`12.
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`This Court has specific or, alternatively, general jurisdiction over Defendant NXP
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`B.V. because NXP B.V. has engaged and continues to engage in substantial activities in this
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`District that include causing the infringement of AST’s patents. On information and belief, NXP
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`B.V. is the parent company of NXP USA, Inc. and directly or indirectly owns, operates, or
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`controls facilities that include offices and fabrication facilities in Austin, Texas where infringing
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`products are designed, developed, manufactured, tested, used, marketed, imported, exported,
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`offered for sale, or sold into a stream of commerce that includes this District. See id. As one
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`example, NXP B.V. published the i.MX 8QuadMax Applications Processor Reference Manual
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`cited in AST’s Counts I and II as detailing how NXP’s products infringe the exemplary asserted
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`claims of AST’s patents at issue in this action. See generally Exs. A, B.
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`Case 1:22-cv-00425-RP Document 1 Filed 05/05/22 Page 4 of 10
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`13.
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`This Court specific or, alternatively, general jurisdiction over NXP USA, Inc.
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`because it is registered to do business in the State of Texas and operates its headquarters office
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`and a manufacturing facility in Austin, Texas. See https://www.nxp.com/company/about-
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`nxp/worldwide-locations/united-states:USA. NXP USA, Inc. has caused acts of infringement to
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`occur in this District in violation of 35 U.S.C. § 271. For example, on information and belief, at
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`its Austin, Texas facilities NXP USA, Inc. designs, develops, tests, uses, markets, imports,
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`exports, offers to sell, and sells infringing products.
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`14.
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`In addition, NXP Semiconductors N.V., NXP B.V., and NXP USA, Inc. have
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`acted together as a joint enterprise to design, develop, test, use, market, import, export, offer to
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`sell, and sell infringing products in the United States, including in this District. On information
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`and belief, NXP Semiconductors N.V. controls, dictates, or encourages the activities of NXP
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`B.V. and NXP USA, Inc., and in turn NXP B.V. controls, dictates, or encourages the activities of
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`NXP USA, Inc., which constitute infringement of one or more claims of AST’s patents.
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`15.
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`Because NXP maintains more than minimum contacts with this District, the
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`Court’s exercise of jurisdiction aligns with constitutional standards of fair play and substantial
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`justice and arises directly from NXP’s purposeful contacts with this District. This Court also has
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`jurisdiction over NXP Semiconductors N.V. and NXP B.V. upon service of the Complaint.
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`16.
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`Venue is proper in this District as to Defendants NXP Semiconductors N.V. and
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`NXP B.V. because foreign companies may be sued in any district under 28 U.S.C. § 1391(c)(3).
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`17.
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`Venue is proper in this District as to Defendant NXP USA, Inc. under 28 U.S.C. §
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`1400(b) because it has a regular and established place of business and has committed acts of
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`infringement in this District. NXP USA, Inc. maintains two offices, including its headquarters
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`office, in this District. NXP advertises, for example, that semiconductor design and
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`Case 1:22-cv-00425-RP Document 1 Filed 05/05/22 Page 5 of 10
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`manufacturing activities take place at both of its Austin, Texas facilities. See, e.g.,
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`https://www.nxp.com/company/about-nxp/worldwide-locations/united-states:USA. NXP further
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`advertises that “NXP owns and operates four wafer fabrication facilities in the US, two of which
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`are in Austin, Texas . . . ,” and that “representative products of these fabs include
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`microcontrollers (MCUs) and microprocessors (MPUs), power management devices, RF
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`transceivers, amplifiers, and sensors.” Id.
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`The Asserted Patents
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`18.
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`U.S. Patent No. 7,804,435, titled “Video decoder with reduced power
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`consumption and method thereof,” issued September 28, 2010 (“’435 patent”). The application
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`leading to the ’435 patent was filed August 31, 2006.
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`19.
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`U.S. Patent No. 8,933,945, titled “Dividing work among multiple graphics
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`pipelines using a super-tiling technique,” issued January 13, 2015 (“’945 patent”). The
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`application leading to the ’945 patent was filed June 12, 2003, and claims priority to U.S.
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`Provisional Appl. No. 60/429,641, filed November 27, 2002.
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`20.
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`The ’435 and ’945 patents (collectively, the “Asserted Patents”) are presumed
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`valid and enforceable under 35 U.S.C. § 282.
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`21.
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`AST owns all right, title, and interest in the Asserted Patents, including the right
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`to assert all causes of action involving the asserted patents and the right to any remedies for
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`infringement, including for past damages. The assignment records for the ’435 patent appear in
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`the public prosecution history at Reel/Frames 018534/0233, 019774/0115, 024880/0593, and
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`036703/0421. The assignment records for the ’945 patents appear in the public prosecution
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`history at Reel/Frames 014176/0613, 025573/0443, and 036703/0421.
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`Case 1:22-cv-00425-RP Document 1 Filed 05/05/22 Page 6 of 10
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`Count I: Infringement of the ’435 Patent
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`AST incorporates the preceding paragraphs as if it repeated them all here.
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`The ’435 patent recites 26 claims, including independent claims 1, 9, 14, 19, 22,
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`22.
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`23.
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`25, and 26.
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`24.
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`Claim 1 of the ’435 patent reads:
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`An apparatus comprising:
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`a power management controller operatively couplable to a video decoder
`that decodes at least one encoded digital video stream and in response to a
`determination of encoding description data that describes a scheme used to
`encode the input stream, varies power consumption of at least one
`operational portion of the video decoder.
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`25.
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`NXP has infringed and continues to infringe, literally or by the doctrine of
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`equivalents, at least claims 1, 9, 14, 19, 22, 25, and 26 of the ’435 patent by making, using,
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`selling, offering for sale, or importing products that infringe the ’435 patent in the United States.
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`26.
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`NXP’s products that infringe the ’435 patent include, for example, its i.MX
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`family of applications processors—such as the i.MX 8 QuadMax Applications Processor—and
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`other products with the same or similar features and functionality. Exhibit A contains an
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`exemplary claim chart showing one way NXP infringes the ’435 patent.
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`27.
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`NXP has known about the ’435 patent at least as early as its receipt of AST’s
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`letter of May 3, 2022, which notified NXP that at least its i.MX family of applications processors
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`infringed at least claims 1, 9, 14, 19, 22, 25, and 26 of the ’435 patent.
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`28.
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`At least as early as NXP’s knowledge of the ’435 patent, NXP indirectly infringes
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`the ’435 patent by inducement under 35 U.S.C. § 271(c). NXP knowingly induces infringement
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`of the ’435 patent by intending others to make, use, offer for sale, or sell in the United States
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`products covered by the ’435 patent. NXP provides these products and, on information and
`
`belief, provides instructions on their use to others—e.g., customers and end customers—who
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`Case 1:22-cv-00425-RP Document 1 Filed 05/05/22 Page 7 of 10
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`provision for use, incorporate into, offer for sale, or sell in the United States products or services
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`that directly infringe at least claims 1, 9, 14, 19, 22, 25, and 26 of the ’435 patent.
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`29.
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`NXP also contributes to infringement of the ’435 patent by others by knowingly
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`providing products that, when configured and combined with hardware and software supplied by
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`partners or downstream customers, result in a system that directly infringes at least claims 1, 9,
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`14, 19, 22, 25, and 26 of the ’435 patent. These products have no substantial non-infringing uses
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`and constitute a material part of the invention claimed by the ’435 patent.
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`30.
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`NXP is liable for infringement of the ’435 patent due to its actions in this District
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`and throughout the United States. NXP’s infringing conduct has caused AST to suffer damages
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`and irreparable harm.
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`Count II: Infringement of the ’945 Patent
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`AST incorporates the preceding paragraphs as if it repeated them all here.
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`The ’945 patent recites 21 claims, including independent claims 1, 18, and 21.
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`Claim 1 of the ’945 patent reads:
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`31.
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`32.
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`33.
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`A graphics processing circuit, comprising:
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`at least two graphics pipelines on a same chip operative to process data in a
`corresponding set of tiles of a repeating tile pattern corresponding to screen
`locations, a respective one of the at least two graphics pipelines operative
`to process data in a dedicated tile; and
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`a memory controller on the chip in communication with the at least two
`graphics pipelines, operative to transfer pixel data between each of a first
`pipeline and a second pipeline and a memory shared among the at least two
`graphics pipelines;
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`wherein the repeating tile pattern includes a horizontally and vertically
`repeating pattern of square regions.
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`34.
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`NXP has infringed and continues to infringe, literally or by the doctrine of
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`equivalents, at least claims 1, 18, and 21 of the ’945 patent by making, using, selling, offering for
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`sale, or importing products that infringe the ’945 patent in the United States.
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`35.
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`NXP’s products that infringe the ’945 patent include, for example, its i.MX
`
`family of applications processors—such as the i.MX 8 QuadMax Applications Processor—and
`
`other products with the same or similar features and functionality. Exhibit B contains an
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`exemplary claim chart showing one way NXP infringes the ’945 patent.
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`36.
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`NXP has known about the ’945 patent at least as early as April 25, 2016, when
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`AST issued a subpoena to non-party NXP seeking discovery of matters including NXP’s
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`potential infringement of the ’945 patent in Certain Computing or Graphics Systems,
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`Components Thereof, and Vehicles Containing Same, Inv. No. 337-TA-984 (U.S.I.T.C. 2016).
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`NXP has also known about the ’945 patent at least as early as its receipt of AST’s letter of May
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`3, 2022, which notified NXP that at least its i.MX family of applications processors infringed at
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`least claims 1, 18, and 21 of the ’945 patent.
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`37.
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`At least as early as NXP’s knowledge of the ’945 patent, NXP indirectly infringes
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`the ’945 patent by inducement under 35 U.S.C. § 271(c). NXP knowingly induces infringement
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`of the ’945 patent by intending others to make, use, offer for sale, or sell in the United States
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`products covered by the ’945 patent. NXP provides these products and, on information and
`
`belief, provides instructions on their use to others—e.g., customers and end customers—who
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`provision for use, incorporate into, offer for sale, or sell in the United States products or services
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`that directly infringe at least claims 1, 18, and 21 of the ’945 patent.
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`38.
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`NXP also contributes to infringement of the ’945 patent by others by knowingly
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`providing products that, when configured and combined with hardware and software supplied by
`
`—8—
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`Case 1:22-cv-00425-RP Document 1 Filed 05/05/22 Page 9 of 10
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`partners or downstream customers, result in a system that directly infringes at least claims 1, 18,
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`and 21 of the ’945 patent. These products have no substantial non-infringing uses and constitute
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`a material part of the invention claimed by the ’945 patent.
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`39.
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`NXP is liable for infringement of the ’945 patent due to its actions in this District
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`and throughout the United States. NXP’s infringing conduct has caused AST to suffer damages
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`and irreparable harm.
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`Prayer for Relief
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`AST asks the Court to enter judgment as follows:
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`A.
`
`B.
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`Declaring that NXP has infringed the ’435 and ’945 patents;
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`Awarding damages in an amount to be proven at trial, but in no event less than a
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`reasonable royalty for NXP’s infringement and prejudgment and post-judgment interest at the
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`maximum permissible rate;
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`C.
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`Awarding treble damages due to the willful, wanton, and deliberate nature of
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`NXP’s infringement under 35 U.S.C. § 284;
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`D.
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`Awarding reasonable attorneys’ fees against NXP to AST as allowed under
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`35 U.S.C. § 285;
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`E.
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`Awarding expenses, costs (including expert witness fees), and disbursements
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`against NXP, including prejudgment interest;
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`F.
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`Permanently enjoining NXP, its officers, agents, servants, employees, attorneys,
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`and all others acting in concert or participation with NXP from infringing the ’435 and ’945
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`patents; and
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`G.
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`Awarding any other relief the Court deems just and proper.
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`—9—
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`Case 1:22-cv-00425-RP Document 1 Filed 05/05/22 Page 10 of 10
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`Demand for Jury Trial
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`AST demands a trial by jury for all triable claims under Fed. R. Civ. P. 38.
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`
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`Dated: May 5, 2022
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`
`
`
`
`
`
`By: /s/ Brian A. Carpenter
` Brian A. Carpenter (State Bar No. 3840600)
`
`
`carpenter@cclaw.com
` Carstens & Cahoon, LLP
`
`1105 Wooded Acres, Suite 415
` Waco, Texas 76701
`
`(254) 294-8154
`
`
`Robert R. Brunelli (pro hac vice to be filed)
`rbrunelli@sheridanross.com
`
` Matthew C. Holohan (pro hac vice to be filed)
`
`mholohan@sheridanross.com
`
`Patrick A. Fitch (pro hac vice to be filed)
`
`pfitch@sheridanross.com
` Alex W. Ruge (pro hac vice to be filed)
`
`aruge@sheridanross.com
` Brian Boerman (pro hac vice to be filed)
`
`bboerman@sheridanross.com
`
`Sheridan Ross P.C.
`
`1560 Broadway, Suite 1200
` Denver, Colorado 80202
`
`Phone:
`(303) 863-9700
`
`Fax:
`(303) 863-0223
`
`Email:
`litigation@sheridanross.com
`
`Attorneys for
`Advanced Silicon Technologies LLC
`
`—10—
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