Uniloc 2017 LLC v. Microsoft Corp

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Uniloc 2017 LLC (Delaware)
  • Defendant: Microsoft Corporation (Washington)
  • Plaintiff’s Counsel: Feinberg Day Alberti Lim & Belloli LLP
• Case Identification: 8:18-cv-02053, C.D. Cal., 11/17/2018
• Venue Allegations: Plaintiff alleges venue is proper because Defendant Microsoft Corporation has committed acts of infringement and maintains multiple regular and established places of business within the Central District of California.
• Core Dispute: Plaintiff alleges that Defendant’s Microsoft Surface products, which manage coexistent Wi-Fi and Bluetooth communications and operate on cellular networks, and its Microsoft Office 365 software distribution system infringe four patents related to wireless communication protocols and digital asset management.
• Technical Context: The technologies at issue address managing radio interference between different wireless standards operating in the same frequency band, improving data re-transmission efficiency in cellular networks, and tracking licensed digital assets as they are transferred between users and devices.
• Key Procedural History: Post-filing Inter Partes Review (IPR) proceedings resulted in the cancellation of all asserted claims for two of the four patents-in-suit. Specifically, an IPR certificate issued on September 1, 2021, canceled claim 1 of the ’676 Patent, which is the sole claim asserted in Count I of the complaint. A separate IPR certificate, also issued September 1, 2021, canceled claim 10 of the ’917 Patent, the sole claim asserted in Count II. Ex Parte Reexamination certificates for the ’636 Patent (issued September 9, 2022) and the ’856 Patent (issued June 10, 2022) confirmed the patentability of the asserted claims in Counts III and IV.

Case Timeline

Date	Event
2000-10-11	’917 Patent Priority Date
2001-08-08	’676 Patent Priority Date
2001-12-10	’636 and ’856 Patents Priority Date
2006-03-21	’676 Patent Issue Date
2006-07-11	’917 Patent Issue Date
2013-12-10	’856 Patent Issue Date
2014-04-22	’636 Patent Issue Date
2018-07-24	Plaintiff sent notice letter to Defendant regarding ’676 Patent
2018-08-10	Plaintiff sent notice letters to Defendant regarding ’917, ’636, and ’856 Patents
2018-11-17	Complaint Filing Date

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

U.S. Patent No. 7,016,676 - "Method, Network and Control Station For The Two-Way Alternate Control of Radio Systems Of Different Standards In the Same Frequency Band"

• Patent Identification: U.S. Patent No. 7,016,676, "Method, Network and Control Station For The Two-Way Alternate Control of Radio Systems Of Different Standards In the Same Frequency Band," issued March 21, 2006.

The Invention Explained

• Problem Addressed: The patent describes the problem of inefficient use of radio channels and interference when two different wireless communication standards, such as IEEE 802.11a and the European HiperLAN/2, operate in the same frequency band (Compl. ¶12; ’676 Patent, col. 1:12-23, col. 2:1-10). Prior art methods for managing this interference were seen as having significant drawbacks, such as not making optimal use of the radio channels (Compl. ¶12; ’676 Patent, col. 1:65-2:10).
• The Patented Solution: The invention proposes an "interface control protocol method" where a central control station manages access to the shared frequency band (’676 Patent, col. 2:15-22). The method gives one radio interface standard priority and "renders the frequency band available" for the second standard only when stations using the first standard "do not request access to the frequency band" (’676 Patent, col. 6:29-36). This allows for adaptive and more efficient use of the shared spectrum (Compl. ¶13; ’676 Patent, col. 2:58-62).
• Technical Importance: The technology addresses the challenge of spectrum crowding, which became more prevalent as multiple unlicensed wireless technologies, like Wi-Fi and Bluetooth, began operating in the same frequency bands (Compl. ¶14).

Key Claims at a Glance

• The complaint asserts independent claim 1 (Compl. ¶17).
• The essential elements of claim 1 are:
  • An interface-control protocol method for a radio system with at least one common frequency band for alternate use by a first and a second radio interface standard.
  • The system comprises stations operating under one or both standards and a control station for the alternate use of the frequency band.
  • The control station controls access for stations using the first radio interface standard.
  • The control station renders the frequency band available for access by stations using the second radio interface standard if stations using the first standard do not request access.
• The complaint does not explicitly reserve the right to assert other claims for this patent.

U.S. Patent No. 7,075,917 - "Wireless Network With A Data Exchange According to the ARQ Method"

• Patent Identification: U.S. Patent No. 7,075,917, "Wireless Network With A Data Exchange According to the ARQ Method," issued July 11, 2006.

The Invention Explained

• Problem Addressed: The patent identifies inefficiencies in wireless systems using hybrid Automatic Repeat Request (ARQ) methods for error correction (’917 Patent, col. 1:10-14). When a data packet is received with errors, it must be buffered for extended periods until incremental redundancy data can be requested and received for successful decoding, which increases memory requirements and reduces communication rates (Compl. ¶33; ’917 Patent, col. 1:42-50).
• The Patented Solution: The invention proposes a system where the physical layer of a receiving device can more rapidly inform the transmitting device of a correct or error-affected transmission via a "back channel" (’917 Patent, col. 2:28-36). This allows for quicker re-transmission of necessary data, reducing the time that error-affected data blocks must be buffered (’917 Patent, col. 2:36-44). The system also uses "abbreviated sequence numbers" whose length depends on the number of transport blocks to be stored, which reduces the amount of control information that must be transmitted (’917 Patent, col. 2:45-49).
• Technical Importance: This approach seeks to improve the speed, efficiency, and memory usage of data re-transmission protocols in error-prone wireless environments, a critical component of high-speed cellular data standards (Compl. ¶35).

Key Claims at a Glance

• The complaint asserts independent claim 10 (Compl. ¶38).
• The essential elements of claim 10 are:
  • A terminal in a wireless network for exchanging data.
  • A physical layer of the terminal arranged as a transmitting side for:
    • Storing coded transport blocks containing a packet data unit identified by a sequence number.
    • Storing abbreviated sequence numbers whose length depends on the maximum number of blocks to be stored and which can be "shown unambiguously" in the packet data unit sequence number.
    • Transmitting the coded transport blocks with the abbreviated sequence numbers to a radio network controller.
  • A physical layer of the terminal arranged as a receiving side for:
    • Testing correct reception of a transport block from the controller.
    • Sending a positive acknowledge command (ACK) for correct reception or a negative acknowledge command (NACK) for error-affected reception over a back channel.
• The complaint does not explicitly reserve the right to assert other claims for this patent.

U.S. Patent No. 8,706,636 - "System and Method For Unique Digital Asset Identification and Transaction Management"

• Patent Identification: U.S. Patent No. 8,706,636, "System and Method For Unique Digital Asset Identification and Transaction Management," issued April 22, 2014.
• Technology Synopsis: The patent addresses challenges in tracking the distribution of digital assets. The described solution involves marking a digital asset with a unique serial number when it is first introduced into a system and, crucially, marking it with a new unique serial number each time it is transacted, allowing for detailed tracking of transfers in a peer-to-peer or networked environment (Compl. ¶¶ 68-69).
• Asserted Claims: The complaint asserts independent claim 1 (Compl. ¶73).
• Accused Features: The complaint alleges that Microsoft Office 365, distributed via a Content Delivery Network (CDN), infringes. The system is alleged to manage software licenses by creating unique identifiers (such as a device ID) for each installation, tracking transfers to new devices, and debiting a user's account or license count for each transfer (Compl. ¶¶ 72, 77, 80, 85). A screenshot in the complaint shows a user's account management page displaying which devices are using an install (Compl. p. 40, ¶85).

U.S. Patent No. 8,606,856 - "Digital Media Asset Identification System and Method"

• Patent Identification: U.S. Patent No. 8,606,856, "Digital Media Asset Identification System and Method," issued December 10, 2013.
• Technology Synopsis: This patent, related to the ’636 Patent, also concerns the distribution and tracking of digital assets. The invention involves embedding a customer identification and an asset identification into the first instance of a digital asset. For each subsequent transfer, a new unique identifier is embedded in the new instance of the asset, and transaction records are modified to reflect the transfer and debit a customer account (Compl. ¶¶ 95-96, 98).
• Asserted Claims: The complaint asserts independent claim 1 (Compl. ¶100).
• Accused Features: The accused instrumentality is again Microsoft Office 365 and its CDN. The system is alleged to infringe by embedding customer identification (via the user's Microsoft account) and asset identification (via a product key or serial number) into software instances, creating unique device IDs for new installations, and modifying transaction records to track license usage and debit user accounts (Compl. ¶¶ 99, 103, 106, 108).

III. The Accused Instrumentality

Product Identification

• The accused instrumentalities are (1) Microsoft Surface products containing combined Bluetooth/Wi-Fi chips, such as the Marvell Avastar 88W8897; (2) Microsoft Surface Pro with LTE devices operating in compliance with HSUPA/HSUPA+ standards and containing modems such as the Qualcomm Snapdragon X16; and (3) the Microsoft Office 365 software distribution system, including its Content Delivery Network (CDN) servers (Compl. ¶¶ 2, 16, 37, 72, 99).

Functionality and Market Context

• Wi-Fi/Bluetooth Coexistence: The complaint alleges that chips within Microsoft Surface products, such as the Marvell Avastar 88W8897, implement a "Packet Traffic Arbiter (PTA)" (Compl. ¶21). This hardware block allegedly controls access to the shared antenna and radio medium for Wi-Fi and Bluetooth communications, using pre-programmed priorities and "handshakes" to partition airtime and optimize throughput for both standards, which operate in the same 2.4 GHz frequency band (Compl. ¶¶ 18, 21, 23).
• Cellular Data Transmission: The complaint alleges that Microsoft Surface Pro with LTE devices operate on cellular networks compliant with the UMTS 3GPP standards for HSUPA/HSUPA+ (Compl. ¶¶ 37, 40). These standards define a multi-layer protocol architecture for transmitting data. Data from the Radio Link Control (RLC) layer is packaged into transport blocks at the Medium Access Control (MAC) layer and coded with Hybrid ARQ (HARQ) at the physical layer for transmission. A high-speed control channel is used to send ACK/NACK feedback for received blocks to manage re-transmissions (Compl. ¶¶ 42-43, 55, 57-58).
• Digital Asset Management: Microsoft Office 365 is a software product distributed to users via a CDN (Compl. ¶¶ 74, 101). A user's license is tied to their Microsoft account and allows for a limited number of active installations on different devices. When a user installs the software on a new device, the system generates a unique identifier tied to that device (Compl. ¶¶ 77, 80). The user's account management page tracks the devices on which the software is installed, and if a user reaches their install limit, they must deactivate an existing device before activating a new one (Compl. ¶¶ 80, 83, 85). This process is alleged to constitute the management and tracking of digital asset transfers.

IV. Analysis of Infringement Allegations

7,016,676 Patent Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
An interface-control protocol method for a radio system which has at least one common frequency band that is provided for alternate use by a first and a second radio interface standard...	Microsoft Surface products include chips like the Marvell Avastar 88W8897 that provide for alternate use of the 2.4 GHz frequency band by a first (Bluetooth) and second (Wi-Fi) interface standard.	¶¶ 18-19	col. 2:15-19
a control station which controls the alternate use of the frequency band,	The accused devices include a control station, such as circuitry within the Marvell Avastar chip and related software, that controls the alternate use of the 2.4 GHz frequency band.	¶21	col. 2:20-22
wherein the control station controls the access to the common frequency band for stations working in accordance with the first radio interface standard...	The control station (e.g., Marvell circuitry) controls access to the 2.4 GHz band for stations working in accordance with the first standard (Bluetooth), such as mice, pens, and keyboards.	¶23	col. 6:29-32
and renders the frequency band available for access by the stations working in accordance with the second radio interface standard if stations working in accordance with the first radio interface standard do not request access to the frequency band.	The controller in the Marvell radio employs a coexistence strategy that makes the shared 2.4 GHz band available to Wi-Fi stations only when Bluetooth stations are not requesting access to the band. This is allegedly accomplished by partitioning airtime and using trigger frames to control traffic.	¶23	col. 6:32-36

• Identified Points of Contention:
  • Scope Questions: A central question is whether the patent’s framework, which appears to contemplate one centrally-controlled standard (like HiperLAN/2) having priority over another, can be read on the accused system where both Bluetooth and Wi-Fi are largely contention-based standards. The complaint's visual evidence, such as the diagram depicting PS-Poll and WMM Trigger frames, illustrates a time-division or arbitration scheme (Compl. p. 14). The court may need to determine if such a time-sharing mechanism meets the specific claim limitation of "renders the frequency band available... if stations... do not request access."
  • Technical Questions: What evidence does the complaint provide that the alleged "coexistence strategy" functions based on the explicit condition of the first standard not requesting access? The infringement theory appears to rely on interpreting the partitioning of airtime as fulfilling this conditional requirement, which raises the question of whether there is a fundamental mismatch in technical operation between the claimed priority-based release mechanism and the accused arbitration-based coexistence mechanism.

7,075,917 Patent Infringement Allegations

Claim Element (from Independent Claim 10)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
a physical layer of the terminal... as a transmitting side for storing coded transport blocks in a memory, which blocks contain at least a packet data unit which is delivered by an assigned radio link control layer and can be identified by a packet data unit sequence number,	Accused devices store MAC-es Protocol Data Units (PDUs), which are equated to "transport blocks," after HARQ coding. These blocks contain at least one Acknowledged Mode Data (AMD) Radio Link Control (RLC) PDU, which is equated to a "packet data unit," and each AMD RLC PDU has a 12-bit sequence number.	¶43	col. 10:4-9
storing abbreviated sequence numbers whose length depends on the maximum number of coded transport blocks to be stored and which can be shown unambiguously in a packet data unit sequence number,	Each MAC-es PDU has a 6-bit Transmission Sequence Number (TSN), which is alleged to be the "abbreviated sequence number." The complaint asserts the TSN length (6 bits) is shorter than the RLC PDU sequence number (12 bits) and that its length depends on the maximum number of blocks that can be stored in the reordering buffer.	¶¶ 48-49	col. 10:9-14
and for transmitting coded transport blocks to the radio network controller having at least an assigned abbreviated sequence number...	The MAC-es PDUs, including their 6-bit TSNs, are transmitted to the serving radio network controller (SRNC).	¶48	col. 10:15-18
a physical layer of the terminal... as a receiving side for testing the correct reception of a coded transport block... and for sending a positive acknowledge command... or a negative acknowledge command... over a back channel...	The physical layer of the accused devices receives HARQ coded blocks over a downlink channel, checks for errors, and sends an ACK or NACK command over a high-speed control channel (HS-PDCCH), which is alleged to be the "back channel."	¶¶ 55, 58	col. 10:19-27

• Identified Points of Contention:
  • Scope Questions: A primary dispute may center on the term "abbreviated sequence number." The complaint alleges the 6-bit MAC-layer TSN is an "abbreviation" of the 12-bit RLC-layer sequence number because it is shorter (Compl. ¶¶ 48, 50). The question for the court will be whether this relationship satisfies the claim requirement that the abbreviated number "can be shown unambiguously in a packet data unit sequence number." The analysis may turn on whether the two numbering schemes, which operate at different protocol layers as shown in the complaint's diagram of the radio interface protocol architecture (Compl. p. 22), are merely independent counters or if the TSN is functionally dependent on and traceable to the RLC sequence number as the claim requires.
  • Technical Questions: Does the length of the 6-bit TSN truly "depend on the maximum number of coded transport blocks to be stored" in the manner contemplated by the patent? The complaint cites a 3GPP standard stating the TSN length of 6 bits provides for values from 0 to 63 (Compl. ¶¶ 49-50), but the connection between this fixed length and a variable maximum storage capacity as described in the patent may be a point of technical dispute.

V. Key Claim Terms for Construction

’676 Patent

• The Term: "renders the frequency band available ... if stations working in accordance with the first radio interface standard do not request access"
• Context and Importance: This phrase defines the core conditional logic of the invention. The outcome of the case may depend on whether this language requires an explicit priority-and-release mechanism, where the second standard can only access the channel after the first standard is confirmed to be idle, or if it can also cover modern coexistence schemes that use dynamic, pre-set time-sharing or arbitration to partition access between two active standards.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: Language in the specification discusses the goal of making "efficient use of radio transmission channels" and enabling adaptive protocols where the allocation can vary based on demand, which might support construing the term to cover any method that intelligently allocates unused time to a second standard (’676 Patent, col. 2:12-13, 2:58-62).
  • Evidence for a Narrower Interpretation: The summary of the invention and the language of the claim itself frame the process as the control station first "control[ling] the access" for the first standard and then conditionally "render[ing] the frequency band available" to the second. This could be interpreted to require a specific two-step, priority-based logic rather than a continuous, parallel arbitration process (’676 Patent, col. 6:29-36).

’917 Patent

• The Term: "abbreviated sequence numbers ... which can be shown unambiguously in a packet data unit sequence number"
• Context and Importance: This term is central to the infringement allegation, which equates a 6-bit MAC-layer TSN with an "abbreviation" of a 12-bit RLC-layer sequence number. Practitioners may focus on this term because its construction will determine whether two distinct sequence numbers at different protocol layers can satisfy the claim, or if a more direct mapping or derivational relationship is required.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification's objective is to reduce the amount of information required to manage transport blocks (’917 Patent, col. 2:45-49). This purpose could support an interpretation where any shorter, correlated number used at a lower layer for the same data serves the claimed "abbreviating" function, even without a direct mathematical link.
  • Evidence for a Narrower Interpretation: The phrase "can be shown unambiguously in" suggests a clear, non-ambiguous mapping must exist between the full sequence number and its abbreviated counterpart. This could support a narrower construction requiring that one number be derivable from the other, or that a one-to-one correspondence can be established, which may not be the case for independent counters at different protocol layers.

VI. Other Allegations

• Indirect Infringement: The complaint alleges inducement of infringement for all four patents, stating that Microsoft provides training videos, demonstrations, brochures, and user guides on its websites that instruct customers on how to use the accused products in an infringing manner (Compl. ¶¶ 25, 60, 87, 111). The complaint also pleads contributory infringement, alleging Microsoft knows the accused products are especially made for use in an infringing manner and are not staple articles of commerce (Compl. ¶¶ 26, 61, 88, 112).
• Willful Infringement: Willfulness is alleged for all four patents based on pre-suit knowledge. The complaint asserts that Microsoft was put on notice of its infringement via letters from Uniloc dated July 24, 2018 (for the ’676 Patent) and August 10, 2018 (for the ’917, ’636, and ’856 Patents) (Compl. ¶¶ 27, 62, 89, 113).

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

• A threshold issue is the viability of the litigation on the ’676 and ’917 Patents. Given that the specific claims asserted in Counts I and II were canceled in post-filing IPR proceedings, a primary question is how the court will address these now-moot infringement allegations, which could narrow the case to focus solely on the digital asset management patents.
• A central question for the remaining patents will be one of definitional scope: Does Microsoft’s system of tying a software license to a user account and device ID, and managing the number of active installations, meet the specific claim requirements of creating a "new unique serial number" or "unique identifier" for each "new instance" of the digital asset upon each "transfer"?
• An underlying issue is one of claim construction versus technical evolution: Can claim terms drafted in the context of specific early-2000s technologies (e.g., HiperLAN/2, early UMTS) be construed to read on the distinct technical implementations found in modern, evolved standards (e.g., Wi-Fi/Bluetooth coexistence, HSUPA+, cloud-based software licensing) as alleged in the complaint?