DCT
8:19-cv-00428
Uniloc 2017 LLC v. Microsoft
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: 8:19-cv-00428, C.D. Cal., 03/05/2019
- Venue Allegations: Plaintiff alleges venue is proper in the Central District of California because Defendant has committed acts of infringement and maintains multiple regular and established places of business within the district.
- Core Dispute: Plaintiff alleges that Defendant’s Microsoft Surface Pro with LTE devices, which operate in compliance with the HSUPA wireless standard, infringe a patent related to selecting data transmission formats while maintaining a minimum quality of service.
- Technical Context: The technology at issue addresses methods for managing data transmission in 3G wireless networks to ensure that services with different quality-of-service needs (e.g., voice vs. data) are handled efficiently.
- Key Procedural History: The complaint alleges Defendant had notice of the patent as of July 24, 2018. Subsequent to the filing of this complaint, the U.S. Patent and Trademark Office instituted Inter Partes Review (IPR) proceedings against the patent-in-suit. On August 16, 2021, an IPR certificate was issued cancelling claims 1-6 and 11-13, which includes the sole claim asserted in this complaint, Claim 12.
Case Timeline
| Date | Event |
|---|---|
| 2001-05-21 | ’487 Patent Priority Date |
| 2007-01-23 | ’487 Patent Issue Date |
| 2017-12-01 | Approximate Accused Product Launch (Surface Pro with LTE) |
| 2018-07-24 | Alleged Pre-Suit Notice of Infringement |
| 2019-03-05 | Complaint Filing Date |
| 2021-08-16 | USPTO IPR Certificate Cancels Asserted Claim 12 |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,167,487 - “Network With Logic Channels and Transport Channels,” Issued Jan. 23, 2007
The Invention Explained
- Problem Addressed: The patent describes a challenge in wireless communication systems like 3G/WCDMA, where various applications (e.g., voice, data) with different quality of service (QoS) requirements compete for limited network resources. Specifically, the patent identifies a need to optimize the selection of "transport format combinations" (TFCs)—which define how data is packaged for transmission—while also satisfying application-specific requirements like a "guaranteed minimum bit rate" ('487 Patent, col. 1:8-10, col. 2:2-6).
- The Patented Solution: The invention integrates the minimum bit rate requirement directly into the TFC selection algorithm at the Medium Access Control (MAC) layer of the network protocol stack ('487 Patent, Fig. 2). Instead of treating QoS compliance as a separate function, the patented method proposes selecting a transport format for various data channels in a way that explicitly "maintain[s] a minimum bit rate applicable to the respective logic channel" during the selection process itself ('487 Patent, Abstract; col. 2:44-48).
- Technical Importance: By integrating QoS considerations into the lower-level MAC layer's scheduling logic, the invention aimed to provide a more accurate and efficient mechanism for managing radio resources compared to handling QoS at higher, application-level layers ('487 Patent, col. 2:56-64).
Key Claims at a Glance
- The complaint asserts independent claim 12 (Compl. ¶¶ 15, 21-23).
- The essential elements of independent claim 12 are:
- A terminal for a network with a plurality of logic channels associated with a plurality of transport channels.
- The terminal is designed for transmitting transport blocks formed from packet units of the logic channels.
- A number of valid transport format combinations is allocated to the transport channels, indicating the transport blocks for transmission.
- A selection algorithm is provided for selecting the transport format combinations.
- The selection is carried out "while taking into account a minimum bit rate obtaining for the respective logic channel."
III. The Accused Instrumentality
Product Identification
The "Accused Infringing Devices" are identified as "Microsoft Surface Pro with LTE devices" that operate in compliance with the HSUPA/HSUPA+ standard (UMTS 3GPP Release 6 and above) and include a Qualcomm Snapdragon X16 LTE modem (Compl. ¶¶ 13-14).
Functionality and Market Context
- The complaint alleges that the accused devices are convertible tablet/laptops providing cellular wireless connectivity (Compl. p. 5).
- The relevant technical functionality is the devices' implementation of the HSUPA standard for uplink data transmission. Specifically, the complaint focuses on the "E-TFC Selection" (Enhanced Transport Format Combination Selection) process, which is alleged to be an algorithm for choosing how to format data for transmission (Compl. ¶¶ 18, 20).
- The complaint alleges this E-TFC selection process considers a "Guaranteed bit rate (GBR)," which it equates to the "minimum bit rate" required by the patent's claims, to satisfy Quality of Service (QoS) criteria for certain logical channels (Compl. ¶20). A screenshot from a ZDNet article is included to identify the accused product and its modem technology (Compl. p. 5).
IV. Analysis of Infringement Allegations
’487 Patent Infringement Allegations
| Claim Element (from Independent Claim 12) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A terminal for a network with a first plurality of logic channels with which is associated a second plurality of transport channels, | The Accused Infringing Devices operate on WCDMA networks and use a standardized mapping of logical channels to transport channels for data transmission. A diagram from the 3GPP standard illustrates this mapping (Compl. p. 6, Fig. 4). | ¶16 | col. 1:11-14 |
| wherein the terminal is designed for transmitting transport blocks formed from packet units of the logic channels, | The devices include a Medium Access Control (MAC) layer that receives packet units on logical channels and multiplexes them into transport blocks for transmission over the physical layer. | ¶17 | col. 1:14-17 |
| wherein a number of valid transport format combinations is allocated to the transport channels... | The network signals to the accused devices a set of valid transport format combinations (TFCs) that can be used. For the enhanced uplink, this is a table of "E-TFCs" that defines parameters like transport block size. | ¶¶18-19 | col. 1:18-22 |
| wherein a selection algorithm is provided for selecting the transport format combinations, | The accused devices employ an "E-TFC selection" algorithm, as defined in the relevant 3GPP standards, to select the transport format for uplink data transmission. | ¶20 | col. 1:23-24 |
| and wherein...the selection...is carried out while taking into account a minimum bit rate obtaining for the respective logic channel. | The E-TFC selection algorithm allegedly considers a "Guaranteed Bit Rate" (GBR) for logical channels. The complaint alleges that the use of "non-scheduled grants" to meet this GBR is part of the selection process (Compl. p. 13). | ¶20 | col. 1:25-28 |
Identified Points of Contention
- Procedural Question: The most significant issue is the legal status of the lawsuit following the USPTO's cancellation of the sole asserted claim. A court would need to determine if a cause of action can be maintained on a claim that has been retroactively nullified by an IPR proceeding that began after the suit was filed.
- Scope Question: Assuming the claim were valid, a central dispute would concern the construction of "taking into account a minimum bit rate". The question would be whether this phrase covers the accused HSUPA standard's use of pre-configured "non-scheduled grants" to meet a GBR, or if it is limited to a more integrated, dynamic calculation within the selection algorithm itself, as detailed in the patent's specification.
- Technical Question: An evidentiary dispute would likely focus on whether the accused "E-TFC selection" algorithm actually performs the selection while taking into account the minimum bit rate, or if satisfying the GBR is a functionally separate, antecedent constraint on the selection process, creating a technical mismatch with the claim language.
V. Key Claim Terms for Construction
The Term: "taking into account a minimum bit rate"
- Context and Importance: This phrase is the inventive core of the asserted claim. The outcome of the infringement analysis would hinge on its construction. Practitioners may focus on this term because its scope determines whether the accused HSUPA standard's method for handling Guaranteed Bit Rate (GBR) services falls within the claim.
- Intrinsic Evidence for a Broader Interpretation: The claim language itself is general. The patent's abstract similarly states the selection is "carried out while maintaining a minimum bit rate," which could support a broad functional interpretation ('487 Patent, Abstract).
- Intrinsic Evidence for a Narrower Interpretation: The specification discloses a detailed, multi-step iterative algorithm for performing the selection, which involves calculating and comparing against "Nmin(L)" (the lowest number of blocks to meet the minimum bit rate) ('487 Patent, col. 8:15-56). A party could argue this detailed disclosure limits the claim term to this specific implementation or a close equivalent.
The Term: "selection algorithm"
- Context and Importance: The definition of this term is critical for determining what technical process in the accused devices is measured against the claim limitations. Practitioners may focus on this term because the plaintiff's case relies on the "E-TFC selection" process of the HSUPA standard qualifying as the claimed "selection algorithm."
- Intrinsic Evidence for a Broader Interpretation: The claim uses the general term "selection algorithm" without further qualification, suggesting it could cover any algorithm that performs the function of selecting from among TFCs ('487 Patent, col. 2:41-43).
- Intrinsic Evidence for a Narrower Interpretation: The specification describes a specific, preferred "selection algorithm" in great detail ('487 Patent, col. 8:15 - col. 10:65). An argument could be made that this detailed embodiment implicitly defines and limits the scope of the term as used in the claims.
VI. Other Allegations
Indirect Infringement
The complaint alleges inducement based on Microsoft’s "training videos, demonstrations, brochures, support resources and user guides," which allegedly instruct customers on how to use the infringing functionality of the accused devices (Compl. ¶22). It also alleges contributory infringement, stating the HSUPA circuitry is especially made for infringement and is not a staple article of commerce (Compl. ¶23).
Willful Infringement
Willfulness is alleged based on pre-suit knowledge of the ’487 patent since July 24, 2018, as well as continued infringement after the complaint was filed (Compl. ¶24).
VII. Analyst’s Conclusion: Key Questions for the Case
- A threshold issue will be one of case viability: given that the sole asserted claim has been cancelled by the USPTO in an IPR proceeding that concluded after the filing of the complaint, can the lawsuit continue, or is the entire action rendered moot?
- Should the case proceed, a core issue will be one of definitional scope: can the claim term "taking into account a minimum bit rate," which is described in the patent specification via a specific iterative algorithm, be construed broadly enough to read on the accused HSUPA standard's method of using pre-configured "non-scheduled grants" to satisfy a guaranteed bit rate?
- A key evidentiary question will be one of technical operation: does the accused "E-TFC selection" algorithm, as implemented in the accused devices, integrate the minimum bit rate requirement into its selection logic in the manner claimed, or is the handling of the guaranteed bit rate a functionally distinct process, creating a mismatch with the patented invention?