Seagate Technology - Automatic Acoustic Management and Convolve Lawsuit

Automatic Acoustic Management and Convolve Lawsuit

In July 2000, Convolve Inc. and the Massachusetts Institute of Technology (MIT) filed a lawsuit against Compaq Computer Corp. and Seagate Technology Inc. in the US District Court Southern District of New York, alleging that the defendants had stolen Convolve's computer disk drive technologies (US patents 4,916,635 and 5,638,267) and incorporated them into Seagate's products as 'Sound Barrier Technology' (SBT). In June 2001, a claim for US patent 6,314,473 was added to the claim, and Convolve asserted amended Seagate's infringement of patent 6,314,473 in February 2002, which alleged Seagate's infringement was willful. A memorandum decision and order was filed in 2005-08-09.

During the course of lawsuit, National Union Fire Insurance Co. of Pittsburgh claimed the insurers have no duty to defend Seagate, but a federal judge in California ruled that NUFICOP must defend the claim.

Although Seagate had tried to suppress evidence from their attorneys due to attorney–client privilege, Convolve claimed that the evaluation was fair game for discovery. The district court found that Seagate had waived the privilege to all documents within the scope of the waiver and ordered Seagate to turn over all documents exchanged amongst outside counsel relating to the alleged use by Seagate of the Convolve patents. Seagate unsuccessfully tried to stay this decision at the district court level before the Federal Circuit stepped in. However, the Federal Circuit determined that the waiver of attorney–client privilege should not be extended to trial counsel.

In 2008, the Board of Patent Appeals and Interferences of the U.S. Patent and Trademark Office ruled in favor of Convolve Inc. and against Seagate Technology Inc. The Board denied Seagate's motions challenging the patentability of Convolve's claims. Seagate did not appeal the Board's decision. In 2008-08-20, U.S. Patent and Trademark Office (USPTO) concluded U.S. patent 6,314,473 was valid, without change to the originally issued claim scope. Convolve also filed lawsuit against Dell Computer, Western Digital, Hitachi Global Storage Technologies, Inc., and Hitachi Ltd., asserting the '473 and 4,916,635 patents. In 2009-04-01, USPTO concluded five of the original U.S. Patent 4,916,635 ('635) claim were valid, but the patent had expired during reexamination proceedings. The ruling allowed Convolve to claim damages against Seagate prior to the patent's expiration, with trial beginning in January 2010. Later in 2010, USPTO confirmed the validity of '635 patent.

As a result of the lawsuit, Seagate stopped supporting automatic acoustic management on hard drives beginning with Seagate Barracuda 7200.7, before rulings of the trial had been decided. Nevertheless, some Barracuda 7200.7 drives included AAM support. In later products such as Seagate Barracuda 7200.12, the quiet seek mode is set at the factory and cannot be adjusted by end users. However, Maxtor already had products utilizing Convolve Inc.'s technology prior to acquisition by Seagate.

In 2011-07-26, a Texas jury awarded $5.4 million to Convolve Inc. in the lawsuit against Dell Inc., Western Digital Corp. and Hitachi Global Storage Technologies Inc. over the infringement of '473 patent. The jury verdict assesses lump sum royalties of $1.5 million from Dell, $2.5 million from Western Digital and $1.4 million from Hitachi. Convolve had dropped the charge of '635 patent infringement in an amended complaint filed in October 2008.