Volterra Semiconductor LLC, v. Monolithic Power Systems, INC.

Filing 244

MEMORANDUM OPINION Signed by Judge Colm F. Connolly on 9/30/2021. (nmf)

Case 1:19-cv-02240-CFC-SRF Document 244 Filed 09/30/21 Page 1 of 17 PageID #: 11269

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
VOLTERRASEWCONDUCTOR
LLC,

Plaintiff,
Civil Action No. 19-2240-CFC

v.
MONOLITHIC POWER SYSTEMS,
INC.,

Defendant.

Robert M. Oakes, FISH & RICHARDSON, P.C., Wilmington, Delaware; David
M. Barkan, FISH & RICHARDSON, P.C., Redwood City, California; Noel F.
Chakkalakal, Aaron P. Pirouznia, FISH & RICHARDSON, P.C., Dallas, Texas

Counsel for Plaintiff
Karen E. Keller, Andrew E. Russell, Nathan R. Hoeschen, SHAW KELLER LLP,
Wilmington, Delaware; Bob Steinberg, Matthew J. Moore, LATHAM &
WATKINS LLP, Washington, District of Columbia; Surendra K. Ravula,
LATHAM & WATKINS LLP, Chicago, Illinois; Lionel M. Lavenue,
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNERLLP, Reston,
Virginia; R. Benjamin Cassady, Forrest A. Jones, Chen Zhang, FINNEGAN,
HENDERSON, FARABOW, GARRETT & DUNNERLLP, Washington, District
of Columbia

Counsel for Defendant

Case 1:19-cv-02240-CFC-SRF Document 244 Filed 09/30/21 Page 2 of 17 PageID #: 11270

MEMORANDUM OPINION

September 30, 2021
Wilmington, Delaware

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at..~tY-~

COLM F. C~
OLLY
CHIEF JUDGE

Plaintiff Volterra Semiconductor LLC has sued Monolithic Power Systems,
Inc., for infringement of U.S. Patent Nos. 6,362,986 (the #986 patent), 7,525,408
(the #408 patent), and 7,772,955 (the #955 patent). D.I. 71. The asserted patents
are directed to DC-to-DC converters with coupled inductive windings and methods
for making those windings. Pending before me is Monolithic's motion pursuant to
Federal Rule of Civil Procedure 12(b)(6) to dismiss Volterra's Second Amended
Complaint in its entirety for failure to adequately plead both direct and indirect
infringement. D.I. 83.
I.

BACKGROUND

A.

The Asserted Patents

The #986 patent claims improved methods for DC-to-DC conversion with
coupled inductive windings. Volterra alleges infringement of independent claim
17 and dependent claims 18, 20-21 , and 23 of the #986 patent. D.I. 71
Claim 17 recites
[a] method for reducing ripple in a DC-to-DC converter
of the type producing an output voltage from an input
voltage, comprising the steps of:
orienting, in like direction, first and second
windings about a common core to increase
coupling between the windings; and

,r 26.

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alternatively activating the first winding about 180
degrees out of phase with the second winding, to
regulate magnitude of the output voltage.
The #408 and #955 patents are both divisions of a common prior application. The
#408 patent, in relevant part, claims an N-phase coupled inductor for coupled
power conversion. Volterra alleges infringement of independent claim 14 and its
dependent claim 20 of the #408 patent. D.I. 71

,r 48.

Claim 14 recites

[a]n N-phase coupled inductor for magnetically coupling
N phases of a power converter, comprising:
a magnetic core including a first and a second
magnetic element and N connecting magnetic
elements, N being an integer greater than one, the
first and second magnetic elements being disposed
parallel to each other and separated by a linear
separation distance, each connecting magnetic
element being coupled to the first and second
magnetic elements, the first and second magnetic
elements and the N connecting elements
cooperatively forming N-1 passageways; and
N windings, each of the N windings for electrically
connecting to a respective phase of the power
converter,
each winding being wound about a respective
connecting element and at least partially through at
least one passageway, and
each passageway having two of the N windings
wound at least partially therethrough.

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The #955 patent claims, in relevant part, coupled inductors with multiple windings.
Volterra alleges infringement of independent claims 12, 16, and 23 and dependent
claims 13-15, 17-21, and 24-28 of the #955 patent. D.I. 71

,r 66.

Claim 12 recites

[a] coupled inductor, comprising:
a magnetic core having a bottom side, a first side,
and a second side opposite of the first side, the
magnetic core forming a passageway extending
from the first side to the second side, the
passageway having depth and height defining a
cross-sectional area of the passageway, the
magnetic core including an outer leg extending
from the first side to the second side and partially
defining the passageway; and
a first and a second winding having a same number
of turns, the first and second windings wound at
least partially around the outer leg and through the
passageway, the first and second windings
separated by a linear separation distance
throughout the passageway, the separation distance
being along an axis perpendicular to an axis of the
height of the passageway and perpendicular to an
axis of the depth of the passageway, the separation
distance being greater than the height of the
passageway, the cross-sectional area of the
passageway between the windings being at least
50% free of magnetic material, each winding
having a respective first end and a respective
second end extending to the bottom side of the
magnetic core for soldering to a printed circuit
board.
Claim 16 recites

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[a] two phase DC-to-DC converter, comprising:
a two phase coupled inductor, including:
a magnetic core forming a passageway, the
passageway having depth and height defining a
cross-sectional area of the passageway, and
a first and a second winding having a same number
of turns wound at least partially around a common
leg of the magnetic core and through the
passageway, the first and second windings
separated by a linear separation distance
throughout the passageway the separation distance
being along an axis perpendicular to an axis of the
height of the passageway and perpendicular to an
axis of the depth of the passageway, each winding
having a respective first end and a respective
second end, the second ends of the first and second
windings being electrically connected to a
common load, the cross-sectional area of the
passageway between the windings being at least
50% free of magnetic material;
a first switch electrically connected between a power
source and the first end of the first winding; and
a second switch electrically connected between the power
source and the first end of the second winding;
wherein the first and second switches independently and
sequentially switch the first end of their respective
winding to an input signal of the power source to regulate
an output signal at the load.
Claim 23 recites
[a] two phase coupled inductor for magnetically coupling
first and second phases of a power converter, comprising:

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a magnetic core forming a passageway at least
partially defined by first, second, third, and fourth
planar surfaces of the magnetic core, the first
planar surface being opposite of the second planar
surface, the third planar surface being opposite of
the fourth planar surface;
a first winding providing electrical interface for the
first phase, the first winding wound at least partly
about the magnetic core and passing through the
passageway along the first planar surface and
contacting the third planar surface; and
a second winding providing electrical interface for
the second phase, the second winding wound at
least partly about the magnetic core and passing
through the passageway along the first planar
surface and contacting the fourth planar surface,
the passageway having depth and height, the depth
being greater than the height,
the first and second windings extending through
the magnetic core only via the passageway, and
the first and second windings being separated by a
linear separation distance throughout the
passageway, the separation distance being along an
axis perpendicular to an axis of the height of the
passageway and perpendicular to an axis of the
depth of the passageway, the separation distance
being greater than the height of the passageway.

B.

Factual Allegations

The following facts are taken from the Complaint and assumed to be true in
assessing the merits of the pending motion. See Umland v. PLANCO Fin. Servs.,

Inc., 542 F.3d 59, 64 (3d Cir. 2008).
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Volterra is a developer of low-voltage power delivery solutions. D.I. 71

,r

13. Monolithic is a provider of electronics, including DC-to-DC power converters.
D.I. 71

,r 6.

Volterra accuses Monolithic's 48V-1V and substantially similar

products of infringing the asserted patents. D.I. 71

,r 18.

The 48V-1V Power

Solution for CPU, SoC or ASIC Controller is a two-phase DC-to-DC power
converter with coupled inductors. D.I. 71

,r,I 46(d), 78.

Volterra also alleges

indirect infringement claims based on :rv:IP2888A and :rvtP2965 controllers that
operate in a couple inductor mode. D.I. 71

ilil 24-25, 46-47, 64-65.

Monolithic demonstrated the 48V-1 V at the 2019 IEEE Applied Power
Electronic Conference and Exposition. D.I. 71

if 18. Volterra's allegations rely

heavily on Monolithic' s display at that conference and a Y ouTube video promoting
the 48V-1 V. Based on these materials, Volterra alleges that the accused products
have the electronic components (e.g., windings, magnetic elements, and an Nphase coupled inductor) covered by the asserted patents. D.I. 71

,I,r 28-38, 50-56,

68-110.
Volterra also alleges that Monolithic was made aware of Volterra's patents
and its potential infringement of the patents through communications it had with
Intel Corporation, Eaton Corporation PLC, and NVIDIA. D.I. 71

,r,r 23(a}-(c),

45(a}-(c), 63(a}-(c). According to the Second Amended Complaint, all three
companies expressed to Monolithic concerns about potential infringement of

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Volterra's coupled inductor patents. D.I. 71

,r,r 23(a}--(c), 45(a)-(c), 63(a)-(c).

Monolithic told Intel that Volterra's patents would not be a problem because they
would soon expire. D.I. 71

,r 23(a), 45(a), 63(a).

Monolithic did not respond to

Eaton's expressions of concerns. The Second Amended Complaint also alleges
that two of Monolithic' s senior engineers cited the asserted patents in their
technical writings before the filing of this lawsuit. D.I. 71
II.

,r 23(d).

LEGAL STANDARDS FOR STATING A CLAIM

To state a claim on which relief can be granted, a complaint must contain "a
short and plain statement of the claim showing that the pleader is entitled to relief."
Fed. R. Civ. P. 8(a)(2). Detailed factual allegations are not required, but the
complaint must include more than mere "labels and conclusions" or "a formulaic
recitation of the elements of a cause of action." Bell At/. Corp. v. Twombly, 550
U.S. 544,555 (2007) (citation omitted). The complaint must set forth enough
facts, accepted as true, to "state a claim to relief that is plausible on its face." Id. at
570. A claim is facially plausible "when the plaintiff pleads factual content that
allows the court to draw the reasonable inference that the defendant is liable for the
misconduct alleged." Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (citation
omitted). Deciding whether a claim is plausible is a "context-specific task that
requires the reviewing court to draw on its judicial experience and common sense."
Id. at 679 (citation omitted).

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Ill.

DISCUSSION
A.

Direct Infringement Claims

Monolithic argues that Volterra's direct infringement allegations should be
dismissed, because Volterra fails to plead that the 48V-IV practices all the
elements of the asserted claims. Volterra relies on a YouTube video to
characterize the accused product, and Monolithic argues that this video and
Volterra's accompanying annotations do not sufficiently support its allegations.
1.

Legal Standards

Liability for direct infringement arises when a party "without authority
makes, uses, offers to sell, or sells any patented invention, within the United States
or imports into the United States any patented invention during the term of the
patent." 35 U.S.C. § 271(a). To plead direct infringement, a plaintiff must allege
facts "that plausibly indicate that the accused products contain each of the
limitations found in the claim." TMI Sols. LLC v. Bath & Body Works Direct, Inc.,
2018 WL 4660370, at *9 (D. Del. Sept. 28, 2018) (citations omitted).
"The complaint must place the potential infringer on notice of what activity
is being accused of infringement." Nalco Co. v. Chem-Mod, LLC, 883 F.3d 1337,
1350 (Fed. Cir. 2018) (internal quotation marks, alterations, and citation omitted).
To provide notice, a plaintiff must generally do more than assert that the product
infringes the claim; it must show how the defendant plausibly infringes by alleging
some facts connecting the allegedly infringing product to the claim elements. See
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SIPCO, LLCv. Streetline, Inc., 230 F. Supp. 3d 351,353 (D. Del. 2017) (granting
the motion to dismiss because "[t]he complaint contains no attempt to connect
anything in the patent claims to anything about any of the accused products.").
I recognize that detailed structural information about the accused product is
not publicly available. It would create a catch-22 if Volterra were required to
know confidential facts to avoid the dismissal of its complaint. See BioMerieux,

S.A. v. Hologic, Inc., 2018 WL 4603267, at *4 (D. Del. Sept. 25, 2018) ("Plaintiffs
cannot be charged with knowing, at the time they drafted their Complaint, nonpublic information they could only obtain after filing suit and obtaining
discovery."). A party "cannot shield itself from a complaint for direct
infringement by operating in such secrecy that the filing of a complaint itself is
impossible." K-Tech Telecomms., Inc. v. Time Warner Cable, Inc., 714 F.3d 1277,
1286 (Fed. Cir. 2013).

2.

The #986 Patent

Monolithic maintains that Volterra does not sufficiently plead direct
infringement of the #986 patent because it does not explain how the 48V-1V
practices the limitation in independent claim 17 that requires "orienting, in like
direction, first and second windings about a common core to increase coupling
between the windings." Monolithic argues that the allegations are inadequate to

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permit the plausible inference that the 48V-1 V has increased coupling or windings
that are oriented as required by the claims. D .I. 84 at 13.
Monolithic mischaracterizes Volterra's allegations. Volterra has alleged that
each coupled inductor in the 48V-1 V must have two windings because they are
"dual-phase." D.I. 71

,r 30.

Volterra also alleges that to achieve coupling,

windings must be oriented about a common magnetic core. D.I. 71

,r 29.

These

allegations put Monolithic on notice that the 48V-1 V is being accused of
infringement based on its implementation of dual-phase coupling and they are
sufficient to plead direct infringement. See Nalco, 883 F.3d at 1350 ("[T]he
Federal Rules of Civil Procedure do not require a plaintiff to plead facts
establishing that each element of an asserted claim is met.") (internal quotation
marks and citation omitted).

3.

The #408 Patent

Monolithic argues that Volterra has not explained how the 48V-1 V has
"connecting magnetic elements" with "each winding being wound about a
respective connecting element and at least partially through at least one
passageway," as required by claim 14 of the #408 patent. D.I. 84 at 14. But
Volterra has alleged that the accused device has a second connecting magnetic
element and a second winding, and its annotations and labels on the twodimensional drawing of the accused device identify these components in distinct

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locations. D.I. 71

,r,r 51, 53.

The locations of these elements are factual assertions

that I must take as true for the motion before me. See Umland, 542 F.3d at 64.

4.

The #955 Patent

Monolithic also argues that Volterra does not sufficiently allege that the
48V-1V practices some of the #955 patent's limitations. Claims 12 and 16 require
that "the cross-sectional area of the passageway between the windings [is] at least
50% free of magnetic material." D.I. 84 at 16. Claims 12 and 23 require a
"separation distance greater than the height of the passageway" between the first
and second windings. D.I. 84 at 17. Claim 23 further requires that the first and
second windings contact the third and fourth planar surfaces respectively. D.I. 84
at 18. Monolithic argues these limitations have not been plausibly alleged, because
Volterra has only provided a two-dimensional annotated diagram that does not
show the area between the windings. D.I. 84 at 15-20.
Volterra has alleged, however, that the cross-sectional area of the
passageway between the windings is at least 5 0% free of magnetic material, D .I.
71

,r,r 70, 81, that the separation distance is greater than the height of the

passageway, D.I. 71

,r,r 70, 100, and that the first and second windings contact the

third and fourth planar surfaces respectively. D.I. D.I. 71

,r,r 95-97.

These

allegations put Monolithic on notice about how the 48V-1 V may infringe the #955
patent. See Nalco, 883 F.3d at 1350.

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B.

Induced and Contributory Infringement Claims
1.

Legal Standards

A plaintiff can prevail on claims of induced and contributory infringement
only by establishing direct infringement. See Limelight Networks, Inc. v. Akamai

Techs., Inc., 572 U.S. 915, 921 (2014) ("[I]nducement liability may arise if, but
only if, there is direct infringement.") (internal quotation marks, alterations, and
citation omitted); Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336,
341 (1961) ("[I]fthere is no direct infringement of a patent there can be no
contributory infringement.").
Both "induced infringement [and] contributory infringement require[]
knowledge of the patent in suit and knowledge of patent infringement." Commil

USA, LLC v. Cisco Sys., Inc., 575 U.S. 632, 639 (2015) (citation omitted). For "an
allegation of induced infringement to survive a motion to dismiss, a complaint
must plead facts plausibly showing that the accused infringer specifically intended
[another party] to infringe [the patent] and knew that the [other party]' s acts
constituted infringement." Lifetime Indus., Inc. v. Trim-Lok, Inc., 869 F .3d 13 72,
1379 (Fed. Cir. 2017) (alterations in original) (internal quotation marks and
citation omitted). Contributory infringement requires a showing that the accused
infringer "offers to sell or sells ... a component of a patented [invention], ...

knowing the same to be especially made or especially adapted for use in an

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infringement of such patent." 35 U.S.C. § 271(c) (emphasis added). Contributory
infringement thus requires "a showing that the alleged contributory infringer knew
that the combination for which his component was especially designed was both
patented and infringing." Aro Mfg. Co. v. Convertible Top Replacement Co., 377
U.S. 476,488 (1964).

2.

Underlying Direct Infringement

Monolithic argues that Volterra has failed to adequately allege that any third
party has directly infringed the asserted patents. D.I. 84 at 21. But in pleading
indirect infringement, a plaintiff "need not identify a specific direct infringer if it
pleads facts sufficient to allow an inference that at least one direct infringer exists."
In re Bill ofLading Transmission & Processing Sys. Pat. Litig., 681 F.3d 1323,

1336 (Fed. Cir. 2012) (emphasis in the original). Here, Volterra alleges that
Monolithic representatives work with customers and suppliers to facilitate
infringing marketing, importation, and sales. D.I. 71 ,I,I 24(e), 46(e), 64(e).
Taking these alleged facts as true, it is reasonable to infer that at least one direct
infringer exists.

3.

Knowledge of Asserted Patents

Monolithic next argues that Volterra has not adequately alleged that
Monolithic knew about the specific asserted patents. D.I. 84 at 22-23. But the
Second Amended Complaint alleges that Monolithic was made aware of Volterra's

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patents and its potential infringement of the patents through its communications
with Intel Corporation, Eaton Corporation PLC, and NVIDIA. And Volterra
further alleges that two of Monolithic' s senior engineers cited the asserted patents
in their technical writings before the filing of this lawsuit.

4.

Specific Intent for Induced Infringement

Monolithic argues that Volterra does not allege that Monolithic had the
specific intent to cause third parties to infringe as required for induced
infringement. See Lifetime Indus., 869 F.3d at 1379 ("For an allegation of induced
infringement to survive a motion to dismiss, a complaint must plead facts plausibly
showing that the accused infringer specifically intended another party to infringe
the patent") (internal quotation marks, alterations, and citatioi:i omitted). But as
noted above, Volterra has alleged sufficient facts from which it could be plausibly
inferred that Monolithic knew about the asserted patents and its potential
infringement of the patents, and the Second Amended Complaint further alleges
that Volterra promoted the sale of its accused products and explained to potential
customers how to use those products. D.I. 71

,r,r 23, 45, 63.

These allegations are

adequate to allege induced infringement at the pleadings stage. See Bill ofLading,
681 F.3d at 1341.

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5.

Substantial Non-infringing Use for Contributory
Infringement

"To state a claim for contributory infringement," Volterra must "plead facts
that allow an inference that the components sold or offered for sale have no
substantial non-infringing uses." In re Bill ofLading, 681 F.3d at 1337.
Monolithic contends that Volterra has not pled that the relevant controllers had no
substantial non-infringing uses. D.I. 84 at 25. The documentation referenced in
the Complaint shows that the rv:tP2888A and rv:tP2965 controllers can be used with
or without enabling couple inductor mode. D.I. 71 ,I 24(b). Because the alleged
infringing use only occurs when couple inductor mode is enabled, D.I. 711125(a),
47(a), 65(a), Volterra has not pled facts to show that the accused controllers have
no substantial non-infringing uses. Volterra has no substantive response to this
argument. See D.I. 90 at 28. Accordingly, I will grant the motion as to Volterra's
allegations of contributory infringement.

_
IV.

CONCLUSION
For the foregoing reasons, I will grant the motion to dismiss with respect to

the allegations of contributory infringement and will deny the remainder of the
motion.
The Court will enter an order consistent with this Memorandum Opinion.

15