ACQIS LLC, a subsidiary of Acqis Technology Incorporated, has filed Western District of Texas complaints against Microsoft ( 6:22-cv-00685) and Sony ( 6:22-cv-00686) in its long-running campaign targeting the support of the "[peripheral component interconnect express] PCIe and/or USB 3.x" functionality in various devices, here the Microsoft Surface Pro 6 computer and PlayStation 4 Slim gaming console, respectively. The new complaints come amid a Federal Circuit appeal from a summary judgment of noninfringement in a case filed earlier against Dell (EMC) ( 2021-1772), while earlier suits—one filed against each of Acer, ASUSTek, Inventec, Lenovo, and Wistron (Wiwynn)—deal with the fallout from a claim construction hearing and order from District Judge Alan D. Albright.
This campaign has been up and running since 2009, now with nearly 30 patents (many of them reissues) having been asserted over the years. In the fall of 2020, ACQIS filed the aforementioned Western District of Texas cases against ASUSTek, Inventec, Lenovo, and Wistron (Wiwynn), together with a suit against MiTAC, also in West Texas, and a suit against Samsung, in the Eastern District of Texas. The West Texas defendants asked Judge Albright, who had consolidated the cases before him for pretrial purposes, to stay the litigation to await both the outcome of the Samsung suit (which had been filed one month earlier than the others) and the EMC appeal.
The court denied that request, noting that by the time of its ruling, the Eastern District of Texas had handed down a claim construction order in the Samsung case (mooting related arguments for a stay), on September 26, 2021, and finding that "a stay would prejudice Plaintiff more than any hardship or inequity would befall Defendants" while not preserving judicial resources. Per Judge Albright, "[s]hould the Federal Circuit address the appeal during the course of this litigation, the Court can make the necessary modifications or hear pre-trial arguments concerning the claim construction" (citations omitted).
These 2020 defendants had hoped to use prior rulings in this campaign to good effect during claim construction with respect to two sets of claim terms at the center of this litigation: (1) "Peripheral Component Interconnect (PCI) bus transaction" and "PCI bus transaction" (the PCI bus transaction terms); and (2) "address and data [bits] of a Peripheral Component Interconnect (PCI) bus transaction" and "address bits, data bits, and byte enable information bits of a Peripheral Component Interconnect (PCI) bus transaction" (the address bits terms). District of Massachusetts Judge Allison D. Burroughs granted EMC's motion for summary judgment of noninfringement of all claims from eight asserted patents, principally because the accused products do not comply with the PCI Local Bus Specification, as Judge Burroughs ruled is required under the court's construction of the PCI bus transaction terms.
Judge Burroughs explained that prior to the claim construction before her, the parties agreed "to include a reference to the relevant industry standard, the [PCI Local Bus] Specification", and that at the hearing, "the parties further agreed on the inclusion of the word 'transaction'" in the eventual construction. Those agreements left only "whether the term required the presence of a PCI bus" at issue. The court declined "to read the presence of a PCI bus on the peripheral side into the claim language", issuing the following construction: "a transaction, in accordance with the industry standard PCI Local Bus Specification, for communication with an interconnected peripheral component".
EMC urged that this construction ended ACQIS's infringement case because "each of the asserted claims requires a PCI bus transaction in accordance with every element of the [PCI Local Bus] Specification, including an address phase followed by one or more data phases as well as control signals and parity signals". ACQIS did not dispute the absence of these features in the accused products, and, per Judge Burroughs, all of ACQIS's arguments in opposition to EMC's motion for summary judgment of noninfringement "are attempts to skirt the claim construction set forth by Judge [Leonard] Davis and this Court". ACQIS appealed, with oral argument scheduled for May 6, 2022.
Judge Davis of the Eastern District of Texas had issued the earlier claim construction ruling in this campaign, in February 2021, in a case filed against Nokia (Alcatel-Lucent). (That claim construction was actually the second such ruling in the campaign, which has been litigated in waves since 2009. The active defendants' current arguments, though, hinge on the Alcatel claim construction ruling, as well as summary judgment in the EMC case.) Magistrate Judge Roy S. Payne refused to apply collateral estoppel from the earlier litigation during claim construction, declining to determine "whether a particular set of information qualifies as a transaction under the PCI Local Bus Specification", noting that "[w]hile the scope of related limitations in related patents has been previously addressed in other cases, the previous determinations do not rise to the level of collateral estoppel regarding the issue here; namely, what set of information qualifies as a transaction under the PCI Local Bus Case Specification".
Judge Payne noted that in the Alcatel case the court actually determined that a "'PCI bus transaction' in related patents does not require a PCI bus" without determining "all that is required by the PCI Local Bus Specification to qualify as a transaction". The court also noted that the EMC Markman ruling "similarly did not address all of what is required of a PCI bus transaction as defined in the PCI Local Bus Specification, but addressed only the dispute as to whether the PCI bus transaction required a PCI bus and held that 'the PCI Local Bus Specification does not define such transactions by the presence of a PCI bus'". Judge Payne situated the EMC summary judgment in the particular procedural posture there: "The EMC court ultimately dismissed as untimely Plaintiff's argument that a 'transaction' under the PCI Local Bus Specification does not require information used to convey the transaction".
Under these circumstances, Judge Payne ruled that the prior litigation had not settled the issues raised about the PCI bus transaction terms and that doing so in the context of the present claim construction process would be inappropriate: "a PCI bus transaction is a 'transaction' as defined by the PCI Local Bus Specification as is known in the art. Whether a particular set of information meets that standard is properly left be determined in the context of infringement or invalidity". Judge Payne also refused to get to that same issue through the address bits terms, leaving them to their plain and ordinary meaning, as ACQIS had urged. Among other things, Samsung objected to that second aspect of Judge Payne's rulings, but District Judge Rodney Gilstrap overruled those objections in summary fashion, adopting Judge Payne's recommendations.
Judge Albright, in the consolidated suits before him, followed Judge Gilstrap's lead—somewhat. In a November 2021 ruling, that court construed the PCI bus transaction terms such that transaction is a "transaction, in accordance or backwards compatible with the industry standard PCI Local Bus Specification, for communication with an interconnected peripheral component". Judge Albright also left the address bits terms to their plain and ordinary meaning.
In the wake of these claim construction rulings from Judges Gilstrap and Albright, ACQIS and Samsung filed a notice of settlement prompting a January 4, 2022 dismissal with prejudice in that case, while in West Texas, the MiTAC suit was dismissed with prejudice on February 25, 2022, after an earlier stay to await the finalization of a settlement. ACQIS and Acer filed a motion to adopt the earlier claim construction ruling in their case, rather than engage in another Markman process, which motion Judge Payne granted on March 29, 2022. Meanwhile, ASUSTek has asked Judge Albright to apply issue preclusion as to the PCI bus transaction terms (as well as to one other). ACQIS has opposed that motion as a disguised attempt to seek reconsideration of the court's claim construction rulings. Judge Albright has yet to rule.
However, a comment during Judge Albright's claim construction hearing has rankled the remaining West Texas cases, with the defendants seeking clarification that separate trials will be held. As noted, the court consolidated the actions before it for pretrial purposes. But, per the Lenovo briefing in support of its motion for a separate trial, "[s]ubsequently, during a consolidated Markman hearing, the Court directed the parties to meet and confer regarding the division of the asserted patents across multiple trials". That discussion "stalled", apparently "because ACQIS now contends that the Court's direction at the Markman hearing sua sponte consolidated the cases for trial". The defendants disagree. Per Lenovo, "ACQIS's refusal to consider a separate trial against the Lenovo defendants and its assertion that the Court's direction at the Markman hearing consolidated all cases for trial cannot be reconciled with the Court's actions or the law". ACQIS urges the court to keep the December 2022 trial date, endorsing the proposed "splitting" of the asserted patents across the defendants in a consolidated proceeding. Judge Albright has yet to rule.
Both assigned to Judge Albright, the new suits against Microsoft and Sony join this fray. ACQIS asserts five patents, including two ( RE44,654; RE45,140) generally related to running a security program on a "computer module" to verify the security status of a "console" into which that the module has been inserted and three ( 8,977,797; 9,529,768; 9,703,750) broadly directed to a computing device that communicates the data of a peripheral component interconnect (PCI) bus transaction in a "serial" form. To see an assertion grid for this campaign, see RPX Insight here.
ACQIS was formed in Texas in March 2009, identifying Delaware entity Acqis Technology as its governing person and William W. Y. ("Bill") Chu—the sole named inventor for the patents-in-suit—as its president, secretary, treasurer, and director. Citing former positions with Western Digital (vice president, 1982-1992) and Cirrus Logic ("General Manager, Desktop Graphics", 1993-1997), Chu identifies himself on social media as the CEO of ACQIS. Currently available USPTO records identify over 40 patent assets held by ACQIS, many of them reissues of prior patents. 4/14, Western District of Texas.
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