DCT
8:18-cv-02224
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-02224, C.D. Cal., 12/14/2018
- Venue Allegations: Venue is alleged to be proper based on Microsoft maintaining regular and established places of business within the Central District of California.
- Core Dispute: Plaintiff alleges that Defendant’s Bluetooth pairing feature, known as "Swift Pair," infringes a patent related to broadcasting data using modified wireless inquiry messages.
- Technical Context: The technology concerns methods for enabling low-power, short-range wireless devices to broadcast information to nearby devices without requiring a full, time-consuming connection process, a key function for modern peripherals.
- Key Procedural History: The patent-in-suit was subject to two Inter Partes Review (IPR) proceedings filed after this complaint (IPR2019-00965 and IPR2019-01188). These proceedings resulted in the cancellation of all asserted claims (1 and 14), as memorialized in an IPR Certificate issued August 30, 2021. While the claims were presumptively valid at the time of filing, their subsequent cancellation is a dispositive event for the litigation.
Case Timeline
| Date | Event |
|---|---|
| 2000-06-26 | '891 Patent Priority Date |
| 2003-12-16 | U.S. Patent No. 6,664,891 Issues |
| 2018-01-30 | Microsoft blog post detailing Swift Pair functionality |
| 2018-12-14 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,664,891 - “Data Delivery Through Portable Devices,” issued December 16, 2003
The Invention Explained
- Problem Addressed: The patent addresses the drawbacks of the then-current Bluetooth protocol for "Context-Aware" (CA) applications, where one device needs to broadcast information to others nearby. Establishing a standard two-way Bluetooth connection was described as time-consuming (10-30 seconds), power-intensive for the listening device, and required the listening device to reveal its identity, posing a privacy risk (’891 Patent, col. 2:17-34).
- The Patented Solution: The invention proposes a method to piggyback a one-way broadcast channel onto the existing Bluetooth "inquiry" phase. Instead of a full handshake, a broadcasting device adds an "additional data field" to its standard inquiry messages. Suitably configured receiving devices can then listen for these modified inquiry messages and read the broadcast data from the additional field without having to respond or establish a full connection (’891 Patent, Abstract; col. 2:57-64). This creates a connectionless, one-way data broadcast using the protocol's discovery mechanism.
- Technical Importance: This approach provided a technical pathway for enabling low-power, anonymous, "push" notifications between devices in proximity, bypassing the heavier-weight protocols designed for persistent, two-way communication (’891 Patent, col. 8:34-40).
Key Claims at a Glance
- The complaint asserts independent claims 1 (a system claim) and 14 (a method claim) (Compl. ¶13).
- The essential elements of independent claim 1 include:
- A communications system with at least one first portable transmitting device and at least one second portable receiving device.
- The first device is arranged to broadcast a series of "inquiry messages" according to a first communications protocol.
- The first device is further arranged to "add...an additional data field" to each inquiry message before transmission.
- The second device is arranged to receive the transmitted inquiry messages and "read data from said additional data field."
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are electronic communication systems that include Microsoft's "Swift Pair" feature (Compl. ¶9). This includes peripherals like the Microsoft Surface Keyboard, Surface Headphones, Surface Dial, and Precision Mouse (the "first portable device") when pairing with a host computer like a Surface Pro running Windows 10 (the "second portable device") (Compl. ¶9, ¶14).
Functionality and Market Context
Swift Pair is a feature introduced in Windows 10 that streamlines the Bluetooth pairing process (Compl. p. 5). When a Swift Pair-enabled peripheral is placed in pairing mode near a Windows 10 PC, it broadcasts Bluetooth Low Energy (LE) "advertisements" (Compl. ¶16). The complaint alleges these advertisements contain a specific Microsoft vendor-defined payload that identifies the device as Swift Pair capable (Compl. ¶19). The Windows PC detects this broadcast and displays a notification to the user, allowing for a one-click pairing process without navigating through settings menus (Compl. ¶20). Microsoft’s marketing materials describe this as "Hassle-free pairing," as shown in a screenshot from its Surface Headphones product page (Compl. p. 5).
IV. Analysis of Infringement Allegations
'891 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a communications system comprising at least one first portable device capable of wireless message transmission and at least one second portable device capable of receiving such a message transmission | The system consists of a Microsoft peripheral (e.g., Surface Precision Mouse) and a host device (e.g., Surface Pro). | ¶9, ¶14 | col. 1:57-62 |
| wherein the at least one first portable device is arranged to broadcast a series of inquiry messages each in the form of a plurality of predetermined data fields arranged according to a first communications protocol | The peripheral broadcasts a series of Bluetooth Low Energy (LE) advertisements, which are alleged to be inquiry messages under the Bluetooth protocol. | ¶16 | col. 2:51-55 |
| wherein the at least one first portable device is further arranged to add to each inquiry message prior to transmission an additional data field | Microsoft’s Swift Pair protocol adds a broadcast message to the advertisement payload, specifically a Microsoft-defined vendor section including a "Microsoft Beacon ID." A diagram in the complaint illustrates this custom payload structure. | ¶19, p. 8 | col. 2:57-60 |
| and wherein the at least one second portable device is arranged to receive the transmitted inquiry messages and read data from said additional data field | The Surface Pro receives the LE advertisement, reads the Microsoft Beacon ID from the payload to identify the device, and in response displays a pairing notification to the user. A screenshot in the complaint shows the resulting "New Bluetooth mouse found" notification. | ¶20, p. 9 | col. 2:60-64 |
Identified Points of Contention
- Scope Questions: A primary question is whether a Bluetooth LE "advertisement," as used in Swift Pair, constitutes an "inquiry message" as that term is used in the patent. The patent was filed in 2000, before the finalization of the Bluetooth LE standard, and its specification discusses inquiry messages in the context of the original Bluetooth "inquiry substate" (’891 Patent, col. 9:8-12). The court would need to determine if the claimed term is broad enough to cover the later-developed LE advertising protocol.
- Technical Questions: The analysis may turn on whether populating a standardized, vendor-specific data section within a Bluetooth LE advertising packet (Compl. p. 8) meets the claim limitation of "add[ing]... an additional data field." Microsoft might argue it is not "adding" a field but rather using a pre-existing, optional field as intended by the Bluetooth LE protocol, whereas Uniloc alleges this constitutes the addition of a broadcast data field to a standard inquiry message.
V. Key Claim Terms for Construction
The Term: "inquiry message"
Context and Importance: This term's construction is central to whether the patent reads on the accused Swift Pair technology. The infringement theory depends on equating the Bluetooth LE "advertisements" used by Swift Pair with the "inquiry messages" of the claims. Practitioners may focus on this term because the patent's specification appears to ground its description in the "inquiry substate" of the classic Bluetooth protocol, which differs technically from the advertising channels and packets used in Bluetooth LE.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent speaks generally about discovering devices and broadcasting information, and a party could argue "inquiry message" should be construed functionally to mean any message sent for the purpose of device discovery and information broadcast in a connectionless manner (’891 Patent, col. 8:34-40).
- Evidence for a Narrower Interpretation: The patent repeatedly discusses the "inquiry procedure" and "inquiry substate," and specifically illustrates a transmission train for inquiry messages that is tied to the classic Bluetooth specification (’891 Patent, Fig. 4; col. 9:4-12). This could support a narrower construction limited to the specific inquiry mechanism of the older Bluetooth standard.
The Term: "add...an additional data field"
Context and Importance: This term is critical because the core of the invention is the modification of a standard message. Whether Swift Pair's use of a vendor-specific payload within an advertising packet constitutes "adding" a field will be a key dispute.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent abstract describes the invention as "add[ing] to each inquiry message prior to transmission an additional data field (BCD) carrying broadcast data." A broad reading would suggest any inclusion of broadcast data not originally part of a standard inquiry packet meets this limitation (’891 Patent, Abstract).
- Evidence for a Narrower Interpretation: Claim 1 requires "adding an additional data field" to an "inquiry message," which itself is composed of "a plurality of predetermined data fields." This language may suggest appending a new, distinct field rather than populating a pre-defined but optional payload section within the existing message structure, as Microsoft's technology appears to do (Compl. p. 8).
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement of claim 14, stating that Microsoft intentionally instructs its customers on how to use the infringing Swift Pair feature through user guides, demonstrations, and technical documentation available on its website (Compl. ¶22). Contributory infringement is also alleged, based on the claim that the Accused Infringing Devices are especially made or adapted for infringement and are not staple articles of commerce suitable for substantial noninfringing use (Compl. ¶23).
- Willful Infringement: Willfulness is alleged based on Microsoft's purported knowledge of the patent "by virtue of a letter from Uniloc to Microsoft dated December 14, 2018," the same day the complaint was filed (Compl. ¶24).
VII. Analyst’s Conclusion: Key Questions for the Case
While the subsequent cancellation of the asserted claims in IPR proceedings ultimately resolves the dispute, the core legal and technical questions at the time of filing were:
- A central issue is one of definitional scope: Can the term "inquiry message", which is rooted in the patent's description of the classic Bluetooth discovery protocol, be construed to cover the technically distinct "advertisement" packets used in the modern Bluetooth Low Energy standard implemented by the accused Swift Pair feature?
- A key technical question is one of functional interpretation: Does populating a standard, vendor-specific payload within a Bluetooth LE advertisement packet, as Swift Pair does, constitute "add[ing]... an additional data field" as required by the claims, or is it merely the intended use of a standard protocol's existing structure?