DCT
8:19-cv-00705
Rembrandt Wireless Tech LP v. Qualcomm Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Rembrandt Wireless Technologies, LP (Virginia)
- Defendant: Qualcomm Inc. (Delaware)
- Plaintiff’s Counsel: Greenberg Gross LLP; Heim, Payne & Chorush LLP
- Case Identification: 8:19-cv-00705, C.D. Cal., 04/15/2019
- Venue Allegations: Plaintiff alleges venue is proper based on Defendant having regular and established places of business within the Central District of California, including a specific office in Irvine.
- Core Dispute: Plaintiff alleges that Defendant’s Bluetooth products supporting Enhanced Data Rate (EDR) infringe patents related to communication systems that use at least two different modulation methods.
- Technical Context: The technology addresses interoperability in wireless networks, specifically enabling a master device to communicate with multiple slave devices that may use different, otherwise incompatible, data modulation schemes.
- Key Procedural History: The complaint asserts a significant litigation history for the patents-in-suit, including a prior lawsuit against Samsung resulting in a jury verdict of infringement and validity, which was affirmed by the U.S. Court of Appeals for the Federal Circuit. The complaint also notes that after inter partes review (IPR) proceedings were instituted against the patents, the asserted claims were subsequently confirmed as valid in later ex parte reexamination proceedings at the U.S. Patent & Trademark Office. Both Samsung and BlackBerry are alleged to have taken licenses to the patents.
Case Timeline
| Date | Event |
|---|---|
| 1997-12-05 | Priority date for U.S. Patent Nos. 8,457,228 and 8,023,580 |
| 2011-09-20 | U.S. Patent No. 8,023,580 ('580 Patent) issued |
| 2013-06-04 | U.S. Patent No. 8,457,228 ('228 Patent) issued |
| 2013-12-03 | Qualcomm allegedly served with subpoena in prior Samsung litigation |
| 2014-12-04 | Rembrandt disclaimed certain claims of the '580 Patent |
| 2018-08-27 | Samsung allegedly licensed the patents-in-suit |
| 2018-12-04 | '228 and '580 Patents expired |
| 2019-04-15 | Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,457,228 - "System and Method of Communication Using at Least Two Modulation Methods," issued June 4, 2013
The Invention Explained
- Problem Addressed: The patent describes a problem in prior art master/slave communication systems where all devices on a network were required to use a single, common modulation method (e.g., amplitude modulation). This limited the network's flexibility and made it costly to integrate newer, higher-performance devices that used different modulation schemes alongside older, lower-cost devices. (Compl. ¶9; ’228 Patent, col. 1:26-30, col. 2:1-19).
- The Patented Solution: The invention proposes a system where a master transceiver can manage communications with slave devices that use different modulation types. It achieves this by sending a message that contains two parts: a first part, modulated with a common "first" modulation method, which can include a notification of an impending switch to a "second" modulation method; and a second part (the data payload), which is then modulated using that second method. This allows the master to communicate seamlessly with different types of slaves on the same network. (Compl. ¶¶ 11, 15; ’228 Patent, col. 8:18-51).
- Technical Importance: This approach allowed for the creation of more flexible, backward-compatible, and cost-efficient networks by enabling devices with disparate capabilities and modulation schemes to coexist and interoperate. (Compl. ¶19; ’228 Patent, col. 2:1-18).
Key Claims at a Glance
- The complaint asserts independent claim 21.
- The complaint’s infringement theory for claim 21 relies on the elements of independent claim 1, on which claim 21 ultimately depends. The essential elements of claim 1 include:
- A master communication device configured to transmit a "first message" comprising first and second information, both modulated according to a first modulation method.
- The master communication device also configured to transmit a "second message" comprising third and fourth information.
- The "third information" is modulated according to the first modulation method and is "indicative of an impending change in modulation to a second modulation method."
- The "fourth information" is transmitted after the third information and is modulated according to the second modulation method.
- The complaint reserves the right to assert additional claims. (Compl. ¶30).
U.S. Patent No. 8,023,580 - "System and Method of Communication Using at Least Two Modulation Methods," issued September 20, 2011
The Invention Explained
- Problem Addressed: The '580 Patent shares its specification with the '228 Patent and addresses the same technical problem of enabling communication between devices that use incompatible modulation methods in a master/slave network. (Compl. ¶34; ’580 Patent, col. 1:26-30).
- The Patented Solution: Similar to the '228 Patent, the invention describes a master device capable of transmitting messages structured to manage different modulation types. The key concept involves using a first part of a transmission to signal which modulation method will be used for the subsequent data payload. (Compl. ¶34; ’580 Patent, Abstract).
- Technical Importance: As with the '228 Patent, this solution provided a method for building more adaptable and cost-effective communication networks. (Compl. ¶34; ’580 Patent, col. 2:51-55).
Key Claims at a Glance
- The complaint asserts claims 2 and 59.
- Claim 2 depends on independent claim 1, whose essential elements include:
- A master communication device for sending transmissions using at least a first and a second modulation method.
- Each transmission comprises a group of sequences structured with a first portion and a payload portion.
- The first portion includes a "first sequence" modulated via the first method, which "indicates an impending change" to the second method.
- The payload portion includes a "second sequence" modulated via the second method and transmitted after the first sequence.
- Claim 59 depends on independent claim 58, whose essential elements include:
- A master transceiver that transmits messages with a "first sequence" and a "second sequence."
- The first sequence is modulated using a first modulation method and "indicates at least which of the first modulation method and the second modulation method is used for modulating" the second sequence.
- The second sequence is modulated according to the method indicated by the first sequence.
- The complaint reserves the right to assert additional claims. (Compl. ¶37).
III. The Accused Instrumentality
Product Identification
The complaint identifies the accused instrumentalities as "Qualcomm Bluetooth EDR Products." These are products, such as semiconductor chips, that support Bluetooth specifications incorporating Enhanced Data Rate (EDR), including but not limited to versions 2.0 + EDR through version 5. (Compl. ¶¶ 27-28).
Functionality and Market Context
The complaint alleges that the accused products function as "master communication devices" in master-slave networks. (Compl. ¶29). Their core accused functionality is the ability to transmit using at least two different modulation methods: a "first" Gaussian Frequency Shift Keying (GFSK) modulation method for Basic Rate communications and a "second" Differential Phase Shift Keying (DPSK) modulation method for Enhanced Rate communications. (Compl. ¶29). The complaint alleges that an Enhanced Rate packet uses a GFSK header followed by a DPSK payload, which is asserted to map onto the patented method of signaling and switching modulation types. (Compl. ¶29).
IV. Analysis of Infringement Allegations
'228 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A master communication device configured to... transmit a first message... [with] second information... modulated according to a first modulation method... | Qualcomm's Bluetooth EDR Product operating as a master transmits a Basic Rate packet, where the payload (second information) is modulated using GFSK (first modulation method). | ¶29 | col. 8:23-32 |
| and... transmit a second message... [with] third information modulated according to the first modulation method... indicative of an impending change... to a second modulation method... | The device transmits an Enhanced Rate packet, where the access code/header (third information) is modulated using GFSK and indicates that the payload will use a different modulation. The complaint’s annotated Figure 8 illustrates this concept. (Compl. ¶14). | ¶29 | col. 8:36-44 |
| and fourth information... modulated according to the second modulation method... | The payload of the Enhanced Rate packet (fourth information) is modulated using DPSK (second modulation method). | ¶29 | col. 8:45-48 |
'580 Patent Infringement Allegations
| Claim Element (from Independent Claim 58) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a transceiver, in the role of the master... capable of transmitting... messages with: a first sequence, in the first modulation method... | Qualcomm’s Bluetooth EDR product operates as a master and transmits packets having an access code/header (first sequence) modulated using GFSK (first modulation method). The complaint's annotated Figure 4 shows a master communicating with different slave types. (Compl. ¶13). | ¶36 | col. 12:50-55 |
| that indicates at least which of the first modulation method and the second modulation method is used for modulating a second sequence... | The access code/header contains fields, such as "LT_ADDR" and "TYPE", which allegedly indicate whether the subsequent payload (second sequence) will be modulated using GFSK or DPSK. | ¶36 | col. 12:56-59 |
| and the second sequence, modulated in accordance with the modulation method indicated by the first sequence and... transmitted after the first sequence. | The packet payload (second sequence) is transmitted after the header and is modulated with either GFSK (for a Basic Rate packet) or DPSK (for an Enhanced Rate packet), as indicated by the header. | ¶36 | col. 12:60-64 |
Identified Points of Contention
- Scope Questions: A likely point of dispute is whether the standardized fields within a Bluetooth EDR packet header (e.g., "TYPE" field) constitute the claimed "information that is indicative of an impending change" ('228 Patent) or the sequence that "indicates" the modulation method ('580 Patent). The defense may argue that the patent specification describes a more explicit, purpose-built notification or training sequence, raising the question of whether the functionality of a standard packet header meets these limitations.
- Technical Questions: What evidence does the complaint provide that the Bluetooth EDR "TYPE" field functions to "indicate" the modulation method in the manner claimed, as opposed to its primary standardized function of defining the packet type for logistical purposes? The analysis may turn on whether signaling the packet type is functionally equivalent to signaling the modulation method for the payload as envisioned by the inventor.
V. Key Claim Terms for Construction
The Term: "information that is indicative of an impending change in modulation to a second modulation method" (’228 Patent, claim 1)
Context and Importance
This term is central to the infringement theory for the '228 Patent. The case may depend on whether an implicit signal, such as the type of packet being sent in a Bluetooth EDR system, satisfies this limitation, or if a more explicit notification is required. Practitioners may focus on this term because the accused product does not appear to send a separate, explicit "change notification" signal as depicted in some patent embodiments.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The specification's goal is to enable "seamless" communication with "incompatible modulation methods," which could support construing the term to cover any mechanism, including implicit ones, that achieves this result. (e.g., ’228 Patent, Abstract; col. 2:24-30).
- Evidence for a Narrower Interpretation: The specification describes specific embodiments where the master "transmits a training sequence 106 to type A tribs 66a in which these tribs are notified of an impending change to type B modulation," suggesting a more direct and explicit notification. (’228 Patent, col. 6:4-7).
The Term: "first sequence... that indicates at least which of the first modulation method and the second modulation method is used for modulating a second sequence" (’580 Patent, claim 58)
Context and Importance
The infringement reading for the '580 Patent hinges on whether the Bluetooth EDR packet header functions as this "first sequence." The construction of "indicates" will be critical. If construed to mean "explicitly signals for the purpose of," it may pose a challenge to the plaintiff's theory. If construed as "provides information from which one can determine," it may favor the plaintiff.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The patent abstract states that "Information in the first portion may... indicate an impending change to a second modulation method," framing the indication as a possibility or a piece of information contained within the first part of the transmission, which could support a broader reading. (’580 Patent, Abstract).
- Evidence for a Narrower Interpretation: The detailed description repeatedly refers to a "training sequence" that serves multiple purposes, including addressing and establishing communication parameters, which might be argued to be a more specific structure than a standard packet header. (e.g., ’580 Patent, col. 4:14-26).
VI. Other Allegations
Indirect Infringement
The complaint alleges inducement of infringement under 35 U.S.C. § 271(b). The factual basis includes allegations that Qualcomm sells the accused products to its customers, markets their infringing capabilities, and provides instructions and technical support, thereby encouraging and facilitating direct infringement by end-users. (Compl. ¶¶ 30, 37).
Willful Infringement
The complaint alleges willful infringement based on pre-suit knowledge. It specifically alleges that Qualcomm knew of the patents and their relevance to Bluetooth EDR technology at least as early as December 3, 2013, when it was served with a subpoena in the Rembrandt v. Samsung litigation that identified the patents. Knowledge is also alleged based on press coverage of that litigation and Qualcomm's relationships with licensees. (Compl. ¶¶ 15, 17, 32, 39).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim scope and construction: can the patent claims, which describe a system for actively "indicating" or "notifying" of a modulation change, be construed to cover the standardized packet structure of Bluetooth EDR, where the modulation type is an inherent property of the packet type rather than the subject of a separate, explicit notification?
- A second key question will center on willfulness and damages: given the extensive litigation history, including a Federal Circuit affirmance against a similar technology and Qualcomm's alleged knowledge of the patents since 2013, the court will have to determine whether Qualcomm's continued activities constitute willful infringement, which could significantly impact any potential damages award.