2:25-cv-00441
Mr Licensing LLC v. Renesas Electronics Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: MR Licensing LLC (Texas)
- Defendant: Renesas Electronics Corporation (Japan); Denso Corporation (Japan); Denso International America (Delaware)
- Plaintiff's Counsel: FABRICANT LLP
- Case Identification: 2:25-cv-00441, E.D. Tex., 04/25/2025
- Venue Allegations: Plaintiff alleges venue is proper because Defendants Renesas and Denso are foreign corporations, making venue proper in any judicial district. Venue is also alleged to be proper for Denso International America due to its permanent and continuous presence, acts of infringement, and established places of business in the district.
- Core Dispute: Plaintiff alleges that Defendants' microcontrollers and related semiconductor components, primarily for the automotive market, infringe eight U.S. patents covering a range of technologies including configurable interfaces, shared signal conductors, wireless vehicle monitoring, and non-volatile memory operations.
- Technical Context: The dispute centers on semiconductor technologies for microcontrollers (MCUs) and systems-on-a-chip (SoCs) that are fundamental to modern automotive electronics, including vehicle control, communication, and safety systems.
- Key Procedural History: The complaint does not reference prior litigation, inter partes review proceedings, or licensing history for the patents-in-suit. It does note an alleged collaborative relationship between Renesas, Denso, and Toyota in developing components for vehicle control systems.
Case Timeline
| Date | Event |
|---|---|
| 2000-02-16 | Priority Date: '300 Patent |
| 2000-10-26 | Priority Date: '689 Patent |
| 2000-10-26 | Priority Date: '688 Patent |
| 2001-06-05 | Issue Date: '300 Patent |
| 2002-01-22 | Priority Date: '381 Patent |
| 2003-09-16 | Priority Date: '133 Patent |
| 2004-11-30 | Issue Date: '689 Patent |
| 2005-12-06 | Priority Date: '232 Patent |
| 2005-12-06 | Priority Date: '789 Patent |
| 2006-08-08 | Issue Date: '133 Patent |
| 2006-09-05 | Issue Date: '381 Patent |
| 2007-05-29 | Priority Date: '968 Patent |
| 2010-03-16 | Issue Date: '968 Patent |
| 2010-07-20 | Issue Date: '232 Patent |
| 2010-11-02 | Issue Date: '688 Patent |
| 2011-09-27 | Issue Date: '789 Patent |
| 2025-04-25 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,825,689, "Configurable input/output interface for a microcontroller," issued November 30, 2004
The Invention Explained
- Problem Addressed: The patent addresses the problem of input/output (I/O) pins on conventional microcontrollers having fixed, dedicated system functions, which limits design flexibility and can lead to costly hardware redesigns if pin assignments need to change during the development process ʼ689 Patent, col. 1:47-51 ʼ689 Patent, col. 2:1-4
- The Patented Solution: The invention proposes a configurable I/O interface where an I/O pin can be dynamically and selectively coupled to either the device's microprocessor or a "global mapping system" on a clock-cycle-by-cycle basis. This global mapping system, in turn, connects the I/O pin to various other functional units on the chip, allowing its function to be reconfigured through software rather than hardware changes ʼ689 Patent, abstract ʼ689 Patent, col. 2:25-33 ʼ689 Patent, Fig. 1
- Technical Importance: This approach provides designers with the flexibility to create customized I/O configurations through software, potentially reducing pin counts, development time, and non-recurring engineering (NRE) costs ʼ689 Patent, col. 2:5-14
Key Claims at a Glance
- The complaint asserts independent claim 1 Compl. ¶25
- The essential elements of independent claim 1 are:
- A microcontroller with a microprocessor and an input/output interface comprising:
- an input/output pin;
- a global mapping system for selectively coupling the input/output pin to a plurality of functional units of the microcontroller; and
- a configuration system for defining a system function for the input/output pin and for selectively coupling the input/output pin to one of the microprocessor and the global mapping system.
- The complaint alleges infringement of "one or more claims" and reserves the right to assert other claims Compl. ¶24
U.S. Patent No. 7,103,381, "Method and/or apparatus for implementing USB and audio signals shared conductors," issued September 5, 2006
The Invention Explained
- Problem Addressed: The patent identifies the cost and space constraints associated with including multiple physical connectors on portable electronic devices, such as a separate audio jack and a separate USB port on a cellphone ʼ381 Patent, col. 1:16-28
- The Patented Solution: The invention describes a transceiver circuit that allows a single set of conductors (pins) to be shared for different signal types. The circuit uses a multiplexer to switch the function of the bus I/Os between a "first state" for handling analog signals (like audio) and a "second state" for handling digital signals (like USB), controlled by an interface circuit '381 Patent, abstract ʼ381 Patent, col. 2:30-39
- Technical Importance: By sharing conductors, the invention enables the use of a single connector for multiple functions, which can reduce the physical size, cost, and complexity of portable devices like cellphones '381 Patent, col. 2:40-62
Key Claims at a Glance
- The complaint asserts independent claim 1 Compl. ¶39
- The essential elements of independent claim 1 are:
- A transceiver circuit comprising a multiplexer circuit, an interface circuit, a physical layer interface, and a plurality of bus input/outputs (I/Os).
- The transceiver circuit is configured to directly couple (i) an analog input signal to the bus I/Os when in a "first state" and (ii) a plurality of digital signals to the bus I/Os when in a "second state."
- The multiplexer circuit is configured to present/receive (i) an analog output signal when in the "first state" and (ii) the digital signals when in the "second state."
- The interface circuit is configured to present a control signal to the multiplexer and physical layer interface to control the coupling in response to the first and second states.
- The complaint alleges infringement of "one or more claims" and reserves the right to assert other claims Compl. ¶38
U.S. Patent No. 7,761,232, "Wireless locating and monitoring system," issued July 20, 2010
Technology Synopsis
The patent addresses the high cost and inflexibility of conventional cellular-based vehicle tracking systems '232 Patent, col. 1:16-29 The proposed solution is a method for vehicle monitoring where a device in the vehicle periodically determines its current status (including location), scans for an available wireless data network access point (e.g., Wi-Fi), and transmits the status through that access point to an endpoint receiver '232 Patent, abstract
Asserted Claims
The complaint asserts independent claim 1 Compl. ¶52
Accused Features
The complaint alleges that the Renesas R-Car W2H product, which supports Intelligent Transportation System (ITS) communication, practices the claimed method by detecting vehicle status, scanning for wireless networks, and transmitting data Compl. ¶¶53-55
U.S. Patent No. 8,027,789, "Wireless locating and monitoring system," issued September 27, 2011
Technology Synopsis
This patent, related to the '232 Patent, likewise addresses the cost and limitations of traditional vehicle tracking systems '789 Patent, col. 1:21-34 It discloses a method where a device in a vehicle periodically determines its location, scans for an available wireless data network, and transmits a status through the located access point to a receiver '789 Patent, abstract
Asserted Claims
The complaint asserts independent claim 1 Compl. ¶65
Accused Features
The complaint accuses the Renesas R-Car W2H product, alleging its GPS and V2X radio capabilities are used to perform the claimed method of monitoring and transmitting vehicle location Compl. ¶¶66-69
U.S. Patent No. 6,243,300, "Substrate hole injection for neutralizing spillover charge generated during programming of a non-volatile memory cell," issued June 5, 2001
Technology Synopsis
The patent addresses the problem of "spillover electrons" that can accumulate in a non-volatile memory cell's channel during programming, potentially disrupting read/write operations '300 Patent, col. 1:21-36 The solution is a method for erasing the memory cell that involves generating "neutralizing holes" in the substrate and moving them into the channel to substantially neutralize these unwanted spillover electrons '300 Patent, abstract '300 Patent, col. 2:1-8
Asserted Claims
The complaint asserts independent claim 1 Compl. ¶79
Accused Features
The complaint alleges that Renesas RH850 devices, which contain embedded flash memory, practice this erasing method Compl. ¶¶79-80
U.S. Patent No. 7,679,968, "Enhanced erasing operation for non-volatile memory," issued March 16, 2010
Technology Synopsis
This patent is directed at improving the erasing operation for non-volatile memory, noting that capacitive coupling between the cell's well and word line can disrupt the required voltages and delay the process '968 Patent, col. 2:1-11 The invention is a semiconductor device with a negative voltage generating circuit and a positive voltage generating circuit, wherein there is a "timing gap" between the start of applying the negative voltage to the word line and the start of applying the positive voltage to the well, which enhances the erasing operation '968 Patent, abstract
Asserted Claims
The complaint asserts independent claim 1 Compl. ¶89
Accused Features
The complaint alleges that Renesas RX600 family devices, which include circuits for generating Negative High Voltage (NHV) and Positive High Voltage (PHV), infringe by implementing this timed voltage application during erase operations Compl. ¶89
U.S. Patent No. 7,089,133, "Method and circuit for providing a system level reset function for an electronic device," issued August 8, 2006
Technology Synopsis
The patent addresses the need for a reliable system reset function, particularly in unfavorable power supply conditions '133 Patent, col. 1:18-24 The invention is a multi-tiered reset method comprising: a first, initial reset function for low voltage conditions; a second, tunable reset function that can be calibrated; and a third, "boot-up" reset function that verifies calibration data, ensuring the device is held in a safe reset state across various operating conditions '133 Patent, abstract
Asserted Claims
The complaint asserts independent claim 1 Compl. ¶99
Accused Features
The complaint alleges that Renesas RL78 MCUs infringe by implementing a power-on reset, a low-voltage detection (LVD) reset, and a boot-up function, which correspond to the three reset functions claimed Compl. ¶99
U.S. Patent No. 7,825,688, "Programmable microcontroller architecture (mixed analog/digital)," issued November 2, 2010
Technology Synopsis
The patent addresses the challenge of integrating and interconnecting analog and digital functions on a single microcontroller chip '688 Patent, col. 1:25-30 The solution is a programmable architecture that includes a plurality of analog and digital circuit blocks, a bus to couple their input/output data, and a clock to control that coupling, enabling flexible communication between the disparate circuit types '688 Patent, abstract
Asserted Claims
The complaint asserts independent claim 1 Compl. ¶108
Accused Features
The complaint alleges that the Renesas RA6M5, which contains analog blocks (e.g., A/D converter) and digital blocks (e.g., Clocked Serial Interface) connected by a "P-Bus," infringes the patent Compl. ¶108
III. The Accused Instrumentality
Product Identification
The complaint names a broad range of Renesas microcontroller (MCU) and system-on-chip (SoC) products, including the RL78, M16C, RX, R-Car, RA, V850, H8SX, and RH850 families of microcontrollers and solutions Compl. ¶20
Functionality and Market Context
The Accused Products are alleged to be semiconductor components, primarily microcontrollers, that provide the core processing and control functions in a wide variety of electronic systems, with a particular focus on the automotive market (Compl. ¶6; Compl. ¶7). The complaint alleges these products are incorporated by co-Defendants Denso Corporation and Denso International America into components and systems that are then sold to customers such as Toyota Compl. ¶7 Compl. ¶18 Specific functionalities highlighted include configurable I/O pins, mixed analog/digital signal processing, embedded flash memory, and wireless vehicle-to-everything (V2X) communication Compl. ¶20 A block diagram from a Renesas user manual for the V850E2/ML4 microcontroller illustrates its internal CPU core and I/O pin count Compl. ¶26, p. 9
IV. Analysis of Infringement Allegations
'689 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an input/output pin | The Renesas V850E2/ML4 microcontroller contains a "general purpose" I/O pin. | ¶27 | col. 2:34-35 |
| a global mapping system for selectively coupling said input/output pin to a plurality of functional units of said microcontroller | The Renesas V850E2/ML4 has registers in a "global mapping system" to couple I/O pins to one of up to four functional units of the microprocessor. | ¶28 | col. 2:40-44 |
| a configuration system for defining a system function for said input/output pin and for selectively coupling said input/output pin to one of said microprocessor and to said global mapping system | The Renesas V850E2/ML4 provides a configuration system to define the function of each pin and assign it to functional units using an "alternative mapping function in the global mapping system." | ¶29 | col. 2:45-51 |
- Identified Points of Contention:
- Scope Questions: A central question will be whether the accused product's architecture, which appears to use registers to configure a pin for one of several "alternative modes" Compl. ¶27, p. 9, meets the claim requirement of a system that "selectively" couples a pin to one of two distinct paths: the microprocessor and the global mapping system. The claim language suggests a choice between two high-level destinations, which may raise a dispute over whether configuring a pin's single path to one of several functions is equivalent.
- Technical Questions: The patent describes a system that can be reconfigured dynamically "on each clock cycle" ('689 Patent, abstract; '689 Patent, col. 2:42-44). The infringement analysis may turn on what evidence exists that the accused product's register-based configuration system Compl. ¶29, p. 11 can be reconfigured with such dynamic, clock-level frequency, as opposed to being set once at initialization.
'381 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a transceiver circuit comprising a multiplexer circuit, an interface circuit, a physical layer interface and a plurality of bus input/outputs (I/Os) | The Renesas RL78/F14 is a transceiver circuit that includes a multiplexer, an interface circuit, a physical interface, and a plurality of bus I/Os. | ¶40 | col. 2:30-32 |
| wherein (a) said transceiver circuit is configured to directly couple (i) an analog input signal to said bus I/Os... when said bus I/Os are in a first state and (ii) a plurality of first digital signals to said bus I/Os... when said bus I/Os are in a second state | The Renesas RL78/F14's port 8 interface can be configured for a combination of digital and analog functions. For example, pin P80 can be set to analog input. | ¶41; ¶41, p. 16 | col. 2:32-39 |
| (b) said multiplexer circuit is configured to present/receive (i) an analog output signal on an input/output when in said first state and (ii) said plurality of first digital signals on said input/output when in said second state | The RL78/F14's multiplexer can be configured by control registers to present or receive an analog signal in a first state and digital signals in a second state. A diagram shows a selector block routing either analog or digital signals Compl. p. 15 | ¶42 | col. 5:2-15 |
| (c) said interface circuit is configured to present a control signal to said multiplexer circuit and said physical layer interface to control coupling in response to said first state and said second | Configuration registers in the RL78/F14 (e.g., ADPC, PM8, DAM2) are alleged to configure the multiplexers and physical layer to control coupling. | ¶43 | col. 5:16-20 |
- Identified Points of Contention:
- Scope Questions: The interpretation of "first state" and "second state" will be critical. A question for the court is whether these terms simply refer to any two distinct, software-selectable configurations (e.g., pin configured as analog vs. pin configured as digital), or if they require a more specific, hardware-defined state-switching mechanism related to the overall mode of the bus, as might be suggested by the patent's USB On-The-Go context.
- Technical Questions: The infringement analysis may focus on whether the accused product's architecture truly "couples" both analog and digital signals to the same bus I/Os via a multiplexer as claimed. The evidence provided shows a pin (P80) can be configured for either analog or digital functions Compl. ¶41, p. 16 Compl. ¶42, p. 17 A dispute could arise over whether this configuration meets the claim's requirement for a transceiver circuit that couples signals in response to the bus being in a particular state.
V. Key Claim Terms for Construction
For the '689 Patent:
- The Term: "global mapping system"
- Context and Importance: This term is the core of the asserted claim 1. Its definition will determine whether the accused microcontrollers' pin-routing architecture falls within the scope of the invention. Practitioners may focus on this term because the plaintiff's infringement theory depends on equating Renesas's register-based pin configuration with the patent's "global mapping system."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent states the system "determines access to functional units on the microcontroller" ('689 Patent, col. 2:38-40), which could be argued to encompass any architecture that maps I/O pins to different on-chip peripherals.
- Evidence for a Narrower Interpretation: The abstract and summary repeatedly emphasize that the coupling can be done "on each clock cycle" and that the system can be "reconfigured dynamically" ('689 Patent, abstract; '689 Patent, col. 2:28-33). This language suggests a more powerful, real-time routing fabric than a set of registers that configure a pin's function at initialization.
For the '381 Patent:
- The Term: "first state" and "second state"
- Context and Importance: The infringement case for the '381 patent hinges on mapping these claimed "states" to the operational modes of the accused products. The construction of these terms will decide whether a software-configurable pin setting (e.g., analog vs. digital) is sufficient to meet the claim limitation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims and specification do not explicitly define what triggers the states, only that the transceiver couples different signal types when the bus I/Os are in those states ('381 Patent, claim 1). This could support an interpretation where any two mutually exclusive configurations constitute the two states.
- Evidence for a Narrower Interpretation: The patent's background and summary are rooted in the context of USB On-The-Go (OTG), which has distinct host and device roles ('381 Patent, col. 1:44-51). This context may support an argument that the "states" refer specifically to these USB-related operational modes, which control whether the shared pins carry digital USB data or are freed up for other functions like analog audio.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement for all eight patents-in-suit. The inducement allegations are based on Defendants allegedly providing the Accused Products with instructional materials, technical support, marketing, and product manuals that suggest or encourage customers and end-users to use the products in an infringing manner (Compl. ¶¶31; Compl. ¶44; Compl. ¶56). The contributory infringement allegations are based on the assertion that the accused components are material to the inventions, are not staple articles of commerce, have no substantial non-infringing uses, and are known by Defendants to be especially made for infringement (Compl. ¶¶32; Compl. ¶45; Compl. ¶57).
- Willful Infringement: The complaint alleges that "Defendants have received prior notice about the Patents-in-Suit and their infringement of the Patents-in-Suit, and/or have remained been willfully blind to the Patents-in-Suit" Compl. ¶20 The prayer for relief explicitly seeks a declaration that the infringement is willful and requests enhanced damages Compl. p. 44, ¶b Compl. p. 44, ¶d
VII. Analyst's Conclusion: Key Questions for the Case
- Definitional Scope: A recurring issue across several patents (e.g., '689, '381, '688) will be whether the accused products' use of software-configurable registers to assign a pin's function at or before runtime meets the claims' requirements for more dynamic systems. The case may turn on whether a "global mapping system" ('689) implies clock-cycle-level dynamic routing, and whether a bus being in a "first state" or "second state" ('381) can be satisfied by a static pin mode selection.
- Functional Equivalence in Operation: For the patents directed to memory and system-level operations (e.g., '300, '968, '133), a central question will be one of technical equivalence. The court will likely need to determine if the specific voltage application schemes, timing protocols, and reset logic described in the accused products' documentation perform substantially the same function, in substantially the same way, to achieve the same result as the patented methods, such as the generation of "neutralizing holes" ('300) or the use of a precise "timing gap" ('968).
- Evidentiary Proof of Method Claims: For the vehicle monitoring patents ('232, '789), which claim methods, a key challenge for the plaintiff will be demonstrating that the accused Renesas R-Car W2H system is not only capable of but actually performs the complete sequence of claimed steps: periodically determining vehicle status, scanning to locate an available wireless access point, and then transmitting that status through the located access point to an endpoint receiver.