Marvell Semiconductor et. al. v. Freescale Semiconductor

7/30/2019 Marvell Semiconductor et. al. v. Freescale Semiconductor

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IN THE UNITED STATES DISTRICT COURTFOR THE WESTERN DISTRICT OF TEXAS

AUSTIN DIVISION

MARVELL SEMICONDUCTOR, INC.;

MARVELL INTERNATIONAL LTD.;MARVELL WORLD TRADE LTD.,

Plaintiffs,

v.

FREESCALE SEMICONDUCTOR, INC.,

Defendant.

CIVIL ACTION NO. 1:13-CV-_________

JURY TRIAL DEMANDED

COMPLAINT FOR PATENT INFRINGEMENT

Plaintiffs Marvell Semiconductor, Inc., Marvell International Ltd., and Marvell World

Trade Ltd. (together, Marvell ) hereby file this Complaint against Defendant Freescale

Semiconductor, Inc. ( Freescale ) for infringement of U.S. Patent Nos. 6,903,448 (the 448

Patent ); 7,216,276 (the 276(I) Patent ); 7,379,718 B2 (the 718 Patent ); 7,444,571 (the

571 Patent); 7,496,818 (the 818 Patent ); 7,562, 276 (the 276(II) Patent ); and 7,573,249

B2 (the 249 P atent) (collectively, Patents-In-Suit ).

PARTIES

1. Marvell Semiconductor, Inc. is a California Corporation with its principal place

of business at 5488 Marvell Lane, Santa Clara, California 95054.

2. Marvell International Ltd. is a Bermuda Corporation with its principal place of

business at Canon's Court, 22 Victoria Street, Hamilton HM 12, Bermuda.

3. Marvell World Trade Ltd. is a Barbados Corporation with its principal place of

business at LHori zon, Gunsite Road, Brittons Hill, BB14027, St. Michael, Barbados.

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4. Upon information and belief, Defendant is a corporation organized under the

laws of Delaware, and maintains its principal place of business at 6501 William Cannon Drive

West, Austin, Texas 78721.

JURISDICTION AND VENUE

5. This lawsuit is an action for patent infringement arising under the patent laws of

the United States, 35 U.S.C. 1, et seq . This Court has jurisdiction over this action pursuant

to 28 U.S.C. 1331 and 1338.

6. Upon information and belief, Defendant is subject to personal jurisdiction in

this Court because it does and has done substantial business in this judicial district, including:(i) maintaining its principal place of business in this judicial district; (ii) employing numerous

employees in this judicial district; (iii) designating an agent for service of process in this

judicial district; (iv) regularly receiving shipments of infringing display devices within this

judicial district; (v) committing acts of patent infringement and/or contributing to or inducing

acts of patent infringement by others in this judicial district and elsewhere in Texas and the

United States; and (vi) regularly doing business or soliciting business, engaging in other

persistent courses of conduct, and/or deriving substantial revenue from products and/or

services provided to individuals in this judicial district and in this State.

7. Venue is proper in this judicial district pursuant to 28 U.S.C. 1391 and

1400(b) because Defendant regularly conducts business in this judicial district, has regular and

established places of business in this judicial district, and/or because certain of the acts

complained of herein occurred in this judicial district.


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U.S. PATENT NO. 6,903,448

8. On June 7, 2005, the United States Patent and Trademark Office duly and

legally issued the 448 Patent, High Performance Leadframe in Electronic Package, to Sehat

Sutardja, Vincent Kao, and Hendrick Santo. A true and correct copy of the 448 Patent is

attached as Exhibit 1.

9. Marvell International Ltd. is the sole owner and assignee of all right, title, and

interest in and to the 448 Patent and possesses all rights of recovery under the 448 Patent,

including the right to recover damages for past infringements.

10.

The 448 Patent is valid and enforceable.U.S. PATENT NO. 7,216,276

11. On May 8, 2007, the United States Patent and Trademark Office duly and

legally issued the 276(I) Patent, Apparatus and Method for Testing and Debugging an

Integrated Circuit, to Saeed Azimi and Son Ho. A true and correct copy of the 276(I) Patent

is attached as Exhibit 2.


interest in and to the 276(I) Patent and possesses all rights of recovery under the 276(I)

Patent, including the right to recover damages for past infringements.

13. The 276(I) Patent is valid and enforceable.

U.S. PATENT NO. 7,379,718 B2

14. On May 27, 2008, the United States Patent and Trademark Office duly and

legally issued the 718 P atent, Method and Apparatus to Manage Power Consumption of a

Semiconductor Device , to Amit Dor, Charles Roth, and Mark Fullerton. A true and correct

copy of the 718 Patent is attached as Exhibit 3.


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15. Marvell World Trade Ltd. is the sole owner and assignee of all right, title, and



16. The 718 Patent is valid and enforceable.


17. On October 28, 2008, the United States Patent and Trademark Office duly and

legally issued the 571 Patent, Apparatus and Method for Testing and Debugging an

Integrated Circuit, to Saeed Azimi, Son Ho, and Daniel Smathers. A true and correct copy of

the 571 Patent is attached as Exhibit 4.18. Marvell International Ltd. is the sole owner and assignee of all right, title, and

interest in and to the 571 Patent and possesses all rights of recovery under the 571Patent,


19. The 57 1 Patent is valid and enforceable.


20. On February 24, 2009, the United States Patent and Trademark Office duly and

legally issued the 818 Patent, Apparatus and Method for Testing and Debugging an

Integrated Circuit, to Saeed Azimi, Son Ho, and Daniel Smathers. A true and correct copy of

the 818 Patent is attached as Exhibit 5.






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23. On July 14, 2009, the United States Patent and Trademark Office duly and

legally issued the 276(II) P atent, Apparatus and Method for Testing and Debugging an

Integrated Circuit , to Saeed Azimi and Son Ho. A true and correct copy of the 276(II) Patent

is attached as Exhibit 6.


interest in and to the 276(II) Patent and possesses all rights of recovery under the 276(II)

Patent, including the right to recover damages for past infringements.

25.

The 276(II) Patent is valid and enforceable.U.S. PATENT NO. 7,573,249 B2

26. On August 11, 2009, the United States Patent and Trademark Office duly and

legally issued the 249 Patent, Power Array System and Method, to Sehat Sutardja,

Runsheng He, and Jiancheng Zhang. A t rue and correct copy of the 249 Patent is attached as

Exhibit 7.

27. Marvell World Trade Ltd. is the sole owner and assignee of all right, title, and




GENERAL ALLEGATIONS

29. Marvell re-alleges and incorporates herein the allegations of the preceding

paragraphs of this Complaint as if fully set forth herein.

30. Upon information and belief, Defendant makes, uses, sells, and offers to sell

within the United States, and/or imports into the United States one or more products, including


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but not limited to certain integrated circuits and/or chipsets that practice each of the elements

of one or more claims of the Patents-In-Suit, without license from Marvell, in the Western

District of Texas and throughout the United States. Examples of those integrated circuits

and/or chipsets include but are not limited to the Freescale MC34671, MC34672, MC34673,

MC34674, MC34675, MC34676, MC34700, MC34704, MC34712, MC34713, MC34716,

MC34717, MC34727, MC34848, MC34933, MCIMX233, MCIMX251, MCIMX253,

MCIMX255, MCIMX257, MCIMX258, MCIMX27, MCIMX31, MCIMX35, MCIMX351,

MCIMX353, MCIMX355, MCIMX356, MCIMX357, P4040, P4080, and Kinetis family.

Marvell reserves its right to contend that additional Freescale products infringe the Patents-In-Suit.

31. In addition, Freescale indirectly infringes the Patents-In-Suit. Freescale

contributorily infringes by selling or using its integrated circuits and/or chipsets, including

those identified above, to distributors, consumers, and end-users to directly infringe the

Patents-in-Suit by selling or using the Freescale integrated circuits and/or chipsets. Freescales

marketing, sales, and customer support materials, which it makes publicly-available, describe

and direct customers to use infringing features of its integrated circuits and/or chipsets in an

infringing manner. For example, Freescales website provides customers and potential

customers with product data sheets, technical papers and other marketing materials for

Freescales integrated circuits and/or chipsets that tout their infringing features and direct

customers to use them in an infringing manner. On information and belief, Freescale also

provides verbal and written instructions, including sales support and technical know-how, to its

distributors and customers that intentionally aid, assist, and encourage infringement.


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32. Freescales integrated circuits and/or chipsets , which it sells directly to

consumers, assemblers as well as through its distribution partners, are designed to be used (and

are used by said distributors, assemblers, consumers, and end-users) in an infringing manner.

Additionally, on information and belief, Freescales integrated circuits and/or chipsets were

especially designed, made, or adapted for use in an infringing manner. Freescales integrated

circuits and/or chipsets either embody the claimed inventions on their own or are material,

non-staple components of end-user products which embody the claimed inventions, which

components have no substantial non-infringing uses.

33.

Defendant's continuing acts of infringement are irreparably harming andcausing damage to Marvell. Marvell has no adequate remedy at law to redress Defendant's

continuing acts of infringement. The hardships that would be imposed upon Defendant by an

injunction are less than those faced by Marvell should an injunction not issue. Furthermore,

the public interest would be served by issuance of an injunction.

34. Upon information and belief, Defendant has knowledge of the Patents-In-Suit,

at least since service of this Complaint, and has not ceased its infringing activities in light of

such knowledge.

Count One Infringement of U.S. Patent No. 6,903,448

35. This count incorporates by reference Paragraphs 1 through 34 as if fully set

forth herein.

36. Upon information and belief, Defendant has infringed and continues to infringe,

has contributed to and continues to contribute to acts of infringement of the 448 Patent by

making, using, offering for sale and selling in the United States, and by importing into the

Western District of Texas and throughout the United States without authority, and/or by


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causing others to make, use, offer for sale and sell in the United States, and import into the

Western District of Texas and throughout United States without authority, integrated circuits

and/or chipsets, for example the ones identified in paragraph 30. These integrated circuits

and/or chipsets practice each of the elements of one or more claims of the 448 Patent, in that

they are designed with lead frame packaging technology, including extended leads that are

useful for multiple wire bonding and improved thermal and/or electrical properties output

regulation and dynamic voltage management.

37. On information and belief, Defendants infringement and contributory

infringement is literal infringement or, in the alternative, infringement under the doctrine of equivalents.

38. Defendants infringing activities have caused and will continue to cause Marvell

irreparable harm, for which it has no adequate remedy at law, unless Freescales infringing

activities are enjoined by this Court in accordance with 35 U.S.C. 283.

39. Marvell has been and continues to be damaged by Freescales infringement of

the 448 Patent in an amount to be determined at trial.

Count Two Infringement of U.S. Patent No. 7,216,276


forth herein.


has contributed to and continues to contribute to acts of infringement of the 276(I) Patent by





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and/or chipsets practice each of the elements of one or more claims of the 276(I) Patent, in

that they are designed with a serial/deserializer (SERDES) interface which is used for testing

and/or debugging.


infringement is literal infringement or, in the alternative, infringement under the doctrine of

equivalents.

43.

Defendants infringing activities have caused and will continue to cause Marvellirreparable harm, for which it has no adequate remedy at law, unless Freescales infringing



the 276(I) Patent in an amount to be determined at trial.

Count Three Infringement of U.S. Patent No. 7,379,718 B2


forth herein.


has contributed to and continues to contribute to acts of infringement of the 718 P atent by







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they are designed with power management features intended to provide high performance

processing while minimizing power consumption, including the digital control of output




equivalents.


irreparable harm, for which it has no adequate remedy at law, unless Freescales infringingactivities are enjoined by this Court in accordance with 35 U.S.C. 283.



Count Four Infringement of U.S. Patent No. 7,444,571


forth herein.










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they are designed with a serial/deserializer (SERDES) interface which is used for testing

and/or debugging.



equivalents.




54.

Marvell has been and continues to be damaged by Freescales infringement of the 571 P atent in an amount to be determined at trial.

Count Five Infringement of U.S. Patent No. 7,496,818


forth herein.








and/or chipsets practice each of the elements of one or more claims of th e 818 Patent, in that

they are designed with a serial/deserializer (SERDES) interface which is used for testing

and/or debugging.


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equivalents.





the 276(II) P atent in an amount to be determined at trial.

Count Seven

Infringement of U.S. Patent No. 7,573,249 B265. This count incorporates by reference Paragraphs 1 through 64 as if fully set

forth herein.









they are designed with power management features intended to provide high performance

processing while minimizing power consumption, including the digital control of output



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equivalents.






REQUEST FOR A JURY TRIAL70. Marvell requests a jury trial of all issues in this action so triable.

PRAYER FOR RELIEF

WHEREFORE, Marvell prays for the following relief:

(a) That Defendant be ordered to pay damages adequate to compensate

Marvell for Defendant's infringement of each of the Patents-In-Suit pursuant to 35 U.S.C. 284;

(b) That Defendant be ordered to pay attorneys fees pursuant to 3 5 U.S.C.

285 for each of the Patents-In-Suit;

(c) That Defendant, its officers, agents, servants, employees, and those

persons acting in active concert or in participation with them be enjoined from further

infringement of each of the Patents-In-Suit pursuant to 35 U.S.C. 283;

(d) That Defendant be ordered to pay prejudgment interest;

(e) That Defendant be ordered to pay all costs associated with this action; and(f) That Marvell be granted such other and additional relief as the Court

deems just and proper.


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Dated: January 4, 2013 Respectfully submitted:

By: /s/ B. Russell Horton

B. Russell HortonState Bar No. 10014450GEORGE BROTHERS KINCAID & HORTON, L.L.P.114 W. 7 th Street, Suite 1100Austin, Texas 78701(512) 495-1400(512) 499-0094 facsimile Email: [email protected]

Kevin P.B. Johnson (to be admitted pro hac vice )QUINN EMANUEL URQUHART & SULLIVAN,LLP555 Twin Dolphin Drive, Suite 560Redwood Shores, California 94065Telephone:(650) 801-5000Facsimile: (650) 801-5100E-mail: [email protected]

Sean S. Pak (to be admitted pro hac vice )Peter A. Klivans (to be admitted pro hac vice )James D. Judah (to be admitted pro hac vice)QUINN EMANUEL URQUHART & SULLIVAN,LLP50 California Street, 22 nd FloorSan Francisco, California 94111Telephone:(415) 875-6600Facsimile: (415) 875-6700E-mail: [email protected] E-mail: [email protected]

ATTORNEYS FOR PLAINTIFFS MARVELLSEMICONDUCTOR, INC., MARVELLINTERNATIONAL LTD., AND MARVELLWORLD TRADE LTD.
mailto:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]


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Marvell Semiconductor et. al. v. Freescale Semiconductor

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Transcript of Marvell Semiconductor et. al. v. Freescale Semiconductor