DCT

2:24-cv-05959

Sol IP LLC v. VinFast Auto LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:24-cv-05959, C.D. Cal., 07/16/2024
  • Venue Allegations: Plaintiff alleges venue is proper in the Central District of California because several Defendant entities maintain a regular and established place of business in Los Angeles, California.
  • Core Dispute: Plaintiff alleges that Defendant’s vehicles equipped with 4G LTE and LTE-Advanced connectivity infringe five U.S. patents related to foundational wireless telecommunications technologies.
  • Technical Context: The patents-in-suit relate to methods for managing data transmission, device synchronization, and power consumption in cellular networks conforming to the 3rd Generation Partnership Project (3GPP) standards for LTE.
  • Key Procedural History: The complaint states the asserted patents were invented by researchers at the Electronics and Telecommunications Research Institute (ETRI), a South Korean government-funded institution, and that ETRI declared the intellectual property may be or may become standard-essential to the LTE standards. Plaintiff asserts it holds an exclusive license to the patents and that they are available for license through the Avanci patent pool on Fair, Reasonable, and Non-Discriminatory (FRAND) terms. Plaintiff alleges that it has offered such a license since at least August 2022, but Defendant has not accepted.

Case Timeline

Date Event
2006-04-26 Earliest Priority Date for ’383 Patent
2006-07-25 Earliest Priority Date for ’547 Patent
2007-07-20 Earliest Priority Date for ’633 Patent
2008-08-19 Earliest Priority Date for ’337 Patent
2010-01-11 Earliest Priority Date for ’168 Patent
2012-11-27 ’337 Patent Issued
2015-03-03 ’168 Patent Issued
2021-07-27 ’383 Patent Issued
2022-06-14 ’547 Patent Issued
2022-08-23 ’633 Patent Issued
2022-08-31 Alleged FRAND License Offer (approx. date)
2022-12-08 VinFast Announces T-Mobile Connectivity Partnership
2024-07-16 Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent 8,320,337 - "Method and apparatus for transmitting ACK/NACK" (issued Nov. 27, 2012)

The Invention Explained

  • Problem Addressed: The patent describes a need for an efficient and reliable method for a terminal (e.g., a mobile device) to send data to a base station and receive an acknowledgement (ACK) or negative acknowledgement (NACK) in return (’337 Patent, col. 1:11-25). The technical challenge involves coordinating the uplink and downlink resources to handle this feedback loop with minimal signaling overhead.
  • The Patented Solution: The invention proposes a method where a base station sends "cyclic shift information" to a terminal. The terminal uses this information to determine a "cyclic shift value" for an uplink reference signal that it transmits along with its data. The key inventive step is that the specific downlink radio resource used by the base station to send the ACK/NACK back to the terminal is also identified using a "modifier" that is directly mapped to the original cyclic shift information. This creates a deterministic link between the properties of the uplink transmission and the location of the corresponding downlink response (’337 Patent, Abstract; col. 5:1-25).
  • Technical Importance: This approach streamlines resource allocation for the critical ACK/NACK feedback process in LTE systems, reducing ambiguity and improving the efficiency of control channel signaling (Compl. ¶¶47-49).

Key Claims at a Glance

  • The complaint asserts independent claim 11 (Compl. ¶44).
  • Essential Elements of Claim 11:
    • A non-transitory computer-readable recording medium storing a program.
    • Receiving cyclic shift information for a reference signal from a base station.
    • Transmitting data and a reference signal having a cyclic shift value, where the value is determined based on a dynamic cyclic shift value that is mapped one-to-one to the received cyclic shift information according to the patent's Table 9.
    • Receiving ACK or NACK information on a downlink channel radio resource, where the resource is identified based on a modifier that is also mapped one-to-one to the received cyclic shift information.
  • The complaint expressly reserves the right to assert additional claims (Compl. ¶44, fn. 21).

U.S. Patent 8,971,168 - "Carrier aggregation in wireless communications systems" (issued Mar. 3, 2015)

The Invention Explained

  • Problem Addressed: To achieve higher data rates, advanced wireless standards like LTE-Advanced employ carrier aggregation, which combines multiple frequency bands. This creates challenges in designing the uplink control channels, which must efficiently convey control information, sometimes within shortened transmission windows, particularly in Time Division Duplex (TDD) systems where uplink and downlink share the same frequency band (’168 Patent, col. 1:23-44).
  • The Patented Solution: The invention defines a specific structure for transmitting data symbols on an uplink control channel across two time slots within a subframe. It specifies multiplying data symbols with distinct scrambling and orthogonal sequences for each slot. A key aspect of the solution is the asymmetric structure of the slots: the first slot contains five DFT-S-OFDM symbols, while the second contains four. The invention further requires that the orthogonal sequences be selected from specific predefined tables (a DFT sequence for the first slot and a Walsh sequence for the second) and that the "sequence index" used to select the sequence for the first slot must be the same as the index used for the second slot (’168 Patent, Abstract; col. 6:4-39).
  • Technical Importance: This defined structure standardizes the "shortened PUCCH format 3," providing a robust method for transmitting uplink control information in LTE-Advanced systems, which is particularly useful in TDD configurations that require flexible subframe structures (Compl. ¶¶55, 60).

Key Claims at a Glance

  • The complaint asserts independent claim 11 (Compl. ¶54).
  • Essential Elements of Claim 11:
    • A user equipment (UE) with a processor and a transmitter.
    • The processor multiplies data symbols with a first scrambling sequence and a first orthogonal sequence and maps them to a first slot.
    • The processor multiplies other data symbols with a second scrambling sequence and a second orthogonal sequence and maps them to a second slot.
    • The first slot includes five DFT-S-OFDM symbols, and the second slot includes four DFT-S-OFDM symbols.
    • The first orthogonal sequence is selected from orthogonal sequences in the patent's Table 3, and the second is selected from sequences in Table 4.
    • The sequence index of the first orthogonal sequence is the same as the sequence index of the second orthogonal sequence.
  • The complaint expressly reserves the right to assert additional claims (Compl. ¶54, fn. 21).

U.S. Patent No. 11,076,383 - "Method for paging information in cellular system" (issued July 27, 2021)

  • Technology Synopsis: The patent addresses methods for efficiently notifying a device in a low-power state about incoming data. The claimed invention involves the device receiving initial control information that contains an identifier and points to physical radio resources, then using that identifier to obtain the full paging message on a shared channel without first having to determine if the page is intended for that specific device, thereby saving processing power (’383 Patent, Abstract; col. 2:35-42). (Compl. ¶63).
  • Asserted Claims: At least Claim 17 is asserted (Compl. ¶66).
  • Accused Features: The complaint accuses products complying with the 3GPP Release 8 standard for receiving paging messages, which involves monitoring a control channel (PDCCH) for a paging-specific identifier (P-RNTI) that indicates the location of the paging message on a shared data channel (PDSCH) (Compl. ¶¶70-72).

U.S. Patent No. 11,363,547 - "Cell search method, forward link frame transmission method, apparatus using the same and forward link frame structure" (issued June 14, 2022)

  • Technology Synopsis: This patent relates to the initial cell search procedure where a device finds and synchronizes with a base station. The invention defines a specific frame structure where Primary and Secondary Synchronization Signals (PSS and SSS) are placed in designated OFDM symbols within specific time slots (e.g., the first and eleventh slots of a frame). A device uses the PSS to find a first identifier and the SSS to find a second identifier, which are then combined to determine the full cell identity (’547 Patent, Abstract). (Compl. ¶74).
  • Asserted Claims: At least Claim 7 is asserted (Compl. ¶77).
  • Accused Features: Infringement is alleged based on the implementation of the 3GPP Release 8 cell search procedure, which uses PSS and SSS signals transmitted in slot 0 and slot 10 of a radio frame to allow a device to establish synchronization and determine the physical-layer cell ID (Compl. ¶¶80-82).

U.S. Patent No. 11,425,633 - "Generating downlink frame and searching for cell" (issued August 23, 2022)

  • Technology Synopsis: Also directed to cell search, this patent claims a method where the Secondary Synchronization Signal (SSS) is generated from two short sequences that are scrambled with multiple distinct scrambling sequences. The device determines the cell identifier based on the Primary Synchronization Signal (PSS) in combination with the two unscrambled short sequences recovered from the SSS, a process which helps determine the cell's identity group (’633 Patent, Abstract). (Compl. ¶85).
  • Asserted Claims: At least Claim 8 is asserted (Compl. ¶88).
  • Accused Features: The complaint alleges infringement based on the accused products' implementation of the 3GPP Release 8 standard, where the SSS is constructed from two interleaved sequences scrambled in a specific way, allowing a UE to determine the cell-identity group as part of the overall cell identification process (Compl. ¶¶91-92).

III. The Accused Instrumentality

Product Identification

  • The complaint identifies the accused products as "VinFast LTE Products," which include vehicle models such as the VF 6, VF 7, VF 8, and VF 9 that incorporate "VF Connect" services (Compl. ¶32). These products are also described as being operable with the "VinFast App" (Compl. ¶33).

Functionality and Market Context

  • The accused products are electric vehicles equipped with wireless modems providing 4G LTE and LTE-Advanced connectivity compliant with at least 3GPP Release 8 and Release 10 standards (Compl. ¶34). This connectivity enables features such as maintenance and charging services, theft alerts, and remote vehicle access (Compl. ¶33). The complaint alleges that Defendant has partnered with T-Mobile to provide this connectivity for its vehicles in North America (Compl. ¶31).

IV. Analysis of Infringement Allegations

’337 Patent Infringement Allegations

Claim Element (from Independent Claim 11) Alleged Infringing Functionality Complaint Citation Patent Citation
receiving cyclic shift information for a reference signal from a base station The Accused Products receive a "cyclic shift for DMRS field in DCI format 0" from a base station. ¶47 col. 5:1-3
transmitting, to the base station, the data and a reference signal having a cyclic shift value... determined based on a dynamic cyclic shift value mapped one-to-one to the cyclic shift information for the reference signal... according to Table 9 The Accused Products transmit data on a PUSCH with a demodulation reference signal (DMRS) whose cyclic shift value is determined based on a value in the received DCI, allegedly corresponding to the one-to-one mapping in the patent's Table 9. The complaint includes an image of Table 9 from the patent. (Compl. p. 16) ¶48 col. 5:4-16
receiving, from the base station, ACK or NACK information... through a radio resource of a downlink channel, the radio resource... being identified based on a modifier mapped one-to-one to the cyclic shift information The Accused Products receive ACK/NACK information where the downlink channel resource is identified based on a modifier (identified as n_DMRS in the standard) that is allegedly mapped one-to-one to the cyclic shift information. ¶49 col. 5:17-25
  • Identified Points of Contention:
    • Scope Questions: The core of the dispute may center on whether the mappings defined in the 3GPP standards are legally equivalent to the "mapped one-to-one" relationships recited in the claim. A court may need to determine if the standard's use of a "cyclic shift for DMRS field" to derive a "dynamic cyclic shift value" and a "modifier" is the same structure as that claimed in the patent.
    • Technical Questions: What evidence does the complaint provide that the mapping in the 3GPP standard is identical to the patent's "Table 9"? The analysis will require a technical comparison of the values and indices in the standard versus those explicitly shown in the patent specification.

’168 Patent Infringement Allegations

Claim Element (from Independent Claim 11) Alleged Infringing Functionality Complaint Citation Patent Citation
a processor configured to multiply a plurality of data symbols with a first scrambling sequence and a first orthogonal sequence; to map... to a first slot The Accused Products' processor multiplies modulation symbols with a first scrambling sequence and a first orthogonal sequence for the first slot of a subframe. ¶57 col. 6:4-9
[and] to multiply a plurality of data symbols with a second scrambling sequence and a second orthogonal sequence and... to map... to a second slot The Accused Products' processor performs a similar multiplication with a second scrambling and orthogonal sequence for the second slot of the subframe. ¶58 col. 6:10-14
the first slot includes five DFT-S-OFDM symbols... and the second slot includes four DFT-S-OFDM symbols This functionality is alleged to be met by the Accused Products' implementation of the "shortened PUCCH format 3" in the LTE standard. ¶60 col. 6:18-22
the first orthogonal sequence is selected from orthogonal sequences listed in Table 3 and the second orthogonal sequence is selected from orthogonal sequences listed in Table 4 The Accused Products select sequences from tables in the 3GPP standard that allegedly correspond to the patent's Table 3 (DFT sequences) and Table 4 (Walsh sequences). The complaint includes images of these tables from the patent. (Compl. p. 21) ¶61 col. 6:23-27
the sequence index of the first orthogonal sequence is the same as the sequence index of the second orthogonal sequence The complaint alleges that in the shortened PUCCH format 3, the sequence index for the first slot (n_oc,0) is used to derive the sequence index for the second slot such that the indices are the same. ¶61 col. 6:33-35
  • Identified Points of Contention:
    • Scope Questions: Does the phrase "selected from orthogonal sequences listed in Table 3" require the use of one of the exact four sequences shown, or can it be construed to cover a broader class of DFT sequences of which those in Table 3 are merely examples?
    • Technical Questions: How is the "sequence index" defined and used in the 3GPP standard versus in the patent? A key technical question will be whether the standard's method of deriving the second slot's index from the first (e.g., via a modulo operation as described in the patent specification at col. 7:27-31) satisfies the claim requirement that the indices be "the same."

V. Key Claim Terms for Construction

For the ’337 Patent (Claim 11)

  • The Term: "mapped one-to-one"
  • Context and Importance: This term is critical because the infringement theory hinges on the allegation that the 3GPP standards create a direct, deterministic link between an input (cyclic shift information) and two separate outputs (the uplink reference signal's cyclic shift value and the downlink ACK/NACK channel's resource modifier). Practitioners may focus on this term to dispute whether the complex, multi-step procedures in the standard constitute the simple "one-to-one" mapping described in the patent.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification presents "Table 9" as an example of this mapping, stating the value "is determined based on" the information, which could support an interpretation where any deterministic functional relationship qualifies as "mapped one-to-one" (’337 Patent, col. 5:4-10).
    • Evidence for a Narrower Interpretation: The claim language itself explicitly ties the mapping to be "according to Table 9," suggesting the term could be limited to the exact tabular correspondence disclosed in the patent's specification, potentially excluding other forms of deterministic mapping (’337 Patent, Claim 11).

For the ’168 Patent (Claim 11)

  • The Term: "the sequence index of the first orthogonal sequence is the same as the sequence index of the second orthogonal sequence"
  • Context and Importance: The infringement case for this patent relies on the accused devices using a specific uplink control channel format where this condition holds true. The construction of "sequence index" and what it means for the indices to be "the same" will be central. A defendant might argue that if the indices for the two slots are derived through different processes or refer to different sets of underlying sequences (DFT vs. Walsh), they are not "the same" in the manner required by the claim.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes deriving the second index from the first, for example, through a mod 4 operation, which may support an argument that as long as the second index is deterministically dependent on the first in a way that preserves a common identifier, they are functionally "the same" (’168 Patent, col. 7:27-31).
    • Evidence for a Narrower Interpretation: The plain language "is the same as" suggests strict numerical identity. A party could argue that if the "index" refers to a position within two different tables (Table 3 for DFT sequences, Table 4 for Walsh sequences), the indices are not conceptually "the same" even if the integer value is identical, because they point to fundamentally different technical objects.

VI. Other Allegations

The complaint does not contain separate counts or specific factual allegations to support claims of indirect infringement or willful infringement.

VII. Analyst’s Conclusion: Key Questions for the Case

This case appears to be a quintessential dispute over standard-essential patents (SEPs), where the primary technical questions will involve mapping the language of the patent claims onto the complex operations of the 3GPP LTE standards.

  • A core issue will be one of technical correspondence: do the algorithms, tables, and signal structures defined in the 3GPP technical specifications (e.g., for PUCCH format 3 or the cell search procedure) fall within the scope of the patent claims? The outcome will likely depend on a granular, element-by-element comparison between the asserted claims and the relevant standards documents.
  • A key legal question will be one of definitional scope: can terms like "mapped one-to-one" (’337 Patent) and "sequence index... is the same" (’168 Patent) be construed broadly enough to read on the specific, and often nuanced, implementations found in the LTE standards, or is there a technical distinction that places the standards-compliant products outside the claims' boundaries?
  • Finally, the dispute is set against a backdrop of FRAND licensing obligations. While the infringement analysis is a separate technical inquiry, the context of the patents' inclusion in the Avanci licensing pool and the alleged refusal of a FRAND license will likely influence case strategy, potential remedies, and damages theories.