DCT
8:19-cv-00781
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: 8:19-cv-00781, C.D. Cal., 04/29/2019
- Venue Allegations: Plaintiff alleges venue is proper because Defendant has committed acts of infringement in the district and maintains multiple regular and established places of business within the Central District of California.
- Core Dispute: Plaintiff alleges that Defendant’s Microsoft Surface Pro and Go products with LTE, along with the Windows 10 operating system, infringe patents related to device-level anti-theft protection and hierarchical methods for determining a mobile device's geographic location.
- Technical Context: The technologies at issue concern on-device security features and location services, which are foundational to the functionality and safety of modern cellular-enabled mobile computers.
- Key Procedural History: Subsequent to the filing of this complaint, the asserted claims of both patents-in-suit were cancelled in Inter Partes Review (IPR) proceedings before the U.S. Patent and Trademark Office. The asserted claim 10 of the ’654 Patent was cancelled in IPRs filed in August 2019 and March 2020. The asserted claim 1 of the ’362 Patent was cancelled in an IPR filed in July 2019. These cancellations raise a threshold question as to the viability of the infringement claims as pleaded.
Case Timeline
| Date | Event |
|---|---|
| 1999-12-21 | U.S. Patent No. 6,836,654 Priority Date |
| 2004-12-28 | U.S. Patent No. 6,836,654 Issued |
| 2013-03-01 | U.S. Patent No. 9,869,362 Priority Date |
| 2017-12-01 | Approximate launch of Microsoft Surface Pro with LTE |
| 2018-01-16 | U.S. Patent No. 9,869,362 Issued |
| 2019-04-29 | Complaint Filing Date |
| 2019-07-31 | IPR Filed Against U.S. Patent No. 9,869,362 |
| 2019-08-09 | IPR Filed Against U.S. Patent No. 6,836,654 |
| 2021-09-24 | IPR Certificate Issued, Cancelling Claims 1-12 of the ’362 Patent |
| 2021-11-09 | IPR Certificate Issued, Cancelling Claims 10-20 of the ’654 Patent |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,836,654 - "Anti-Theft Protection For A Radiotelephony Device," issued Dec. 28, 2004
The Invention Explained
- Problem Addressed: The patent addresses the risk of a mobile radiotelephony device being used by an unauthorized party after it is lost or stolen, particularly in the time before the legitimate owner can have the associated identification module (e.g., SIM card) blocked at the network level (’654 Patent, col. 1:16-35).
- The Patented Solution: The invention describes an on-device, time-based security mechanism. Even when a valid, linked identification module is present, the device enters a blocked state if it remains inactive for a pre-defined period. In this state, normal operation, such as making outgoing calls, is prevented until a deblocking code is supplied (’654 Patent, Abstract; col. 2:40-59). The logic for this timeout-based blocking is illustrated in the patent's flow chart, specifically the sequence of steps K10, Y10, and K11 (’654 Patent, Fig. 3).
- Technical Importance: This method provides an immediate, device-centric layer of security that functions independently of the carrier network, making a stolen device unusable more quickly than relying on network-level blocking alone (’654 Patent, col. 2:60-64).
Key Claims at a Glance
- The complaint asserts independent claim 10 (’Compl. ¶14).
- The essential elements of claim 10 are:
- verifying a user identification module mounted inside the mobile radiotelephony device is linked to the mobile radiotelephony device;
- detecting a period of inactivity of the mobile radiotelephony device during a normal operation of the mobile radiotelephony device, wherein the normal operation includes a processing of all outgoing calls;
- preventing the normal operation of the mobile radiotelephony device in response to the verification of the linked user identification module and in response to the detection of the period of inactivity of the mobile radiotelephony device.
- The complaint's prayer for relief seeks judgment on "one or more claims," suggesting the potential assertion of other claims (’Compl. p. 29, ¶a).
U.S. Patent No. 9,869,362 - "Mobile Device Monitoring And Analysis," issued Jan. 16, 2018
The Invention Explained
- Problem Addressed: The patent identifies a need for methods to monitor and analyze pedestrian traffic for applications like urban planning and emergency services, while using location data from mobile devices in a reliable and efficient manner (’362 Patent, col. 1:12-24).
- The Patented Solution: The invention describes a hierarchical, multi-tiered method for a mobile device to determine its location. The device first attempts to use a satellite-based system (GPS). If that fails, it attempts to use triangulation from cellular base stations. If that also fails, it determines if it is near a wireless device (e.g., a Wi-Fi access point) with a known location and, if so, reports the wireless device's location as its own (’362 Patent, Abstract; Fig. 4). The system can also estimate the location of that wireless access point based on location data reported by other devices that previously connected to it (’362 Patent, col. 9:52-59).
- Technical Importance: This approach creates a robust location-reporting system by defining a clear fallback cascade, allowing a device to provide a location estimate even in environments where primary methods like GPS are unavailable, such as indoors (’362 Patent, col. 2:42-50).
Key Claims at a Glance
- The complaint asserts independent claim 1 (’Compl. ¶29).
- The essential elements of claim 1 are:
- attempting to determine the location of the mobile computing device using a satellite based global positioning system;
- determining that the location determination using the satellite-based global positioning system failed;
- in response to the GPS failure, attempting to determine the location by triangulating from two or more wireless telephone network base stations;
- determining that the location determination by triangulating failed;
- in response to the triangulation failure, determining that the mobile computing device is sufficiently near a wireless device with a known location;
- in response to proximity, reporting the location of the wireless device as the location of the mobile computing device; and
- estimating the location of the wireless device from locations reported by other mobile devices.
- The complaint's prayer for relief seeks judgment on "one or more claims," suggesting the potential assertion of other claims (’Compl. p. 29, ¶b).
III. The Accused Instrumentality
Product Identification
The complaint names the Microsoft Surface Pro and Go products equipped with LTE, the Windows 10 operating system, and the Windows 10 location service as the "Accused Infringing Devices" (Compl. ¶¶17-18, 28).
Functionality and Market Context
- The complaint describes the accused Surface devices as convertible tablet/laptops that feature cellular connectivity through an integrated Qualcomm modem and a SIM card slot (Compl. ¶¶15-16). A screenshot from a Microsoft support page shows instructions for inserting a SIM card to use a cellular data plan (Compl. p. 7).
- The devices run the Windows 10 operating system, which provides core functionalities alleged to infringe. These include power-saving "Sleep and hibernation" modes that activate after a period of user inactivity and lock the screen (Compl. p. 10).
- Windows 10 also includes a "location service" that, according to Microsoft documentation cited in the complaint, uses a "combination of global positioning service (GPS), nearby wireless access points, cell towers, and your IP address" to determine device location for use by applications (Compl. ¶30, p. 14). The complaint includes a screenshot of the Windows Maps application requesting permission to access the device's location, illustrating the operation of this service (Compl. p. 17).
IV. Analysis of Infringement Allegations
’654 Patent Infringement Allegations
| Claim Element (from Independent Claim 10) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| verfying a user identification module mounted inside the mobile radiotelephony device is linked to the mobile radiotelephony device; | The Accused Infringing Devices require a SIM card for cellular functionality and verify the presence of the SIM card to connect to a cellular network. | ¶16 | col. 5:1-10 |
| detecting a period of inactivity of the mobile radiotelephony device during a normal operation of the mobile radiotelephony device... | The Accused Infringing Devices detect a period of inactivity and, in response, enter a "sleep" or "hibernation" state, which enables a timeout screen lock. | ¶17 | col. 5:32-40 |
| preventing the normal operation of the mobile radiotelephony device in response to the verification... and in response to the detection... | Subsequent to inactivity, the screen lock functionality blocks access to the device, including the ability to make phone and/or Skype calls, until the user provides credentials to unlock it. | ¶17 | col. 5:16-22 |
- Identified Points of Contention:
- Scope Questions: A central question is whether the claim term "preventing the normal operation," in the context of an anti-theft patent, can be construed to read on a general-purpose, user-configurable operating system screen lock. The defense may argue the patent describes a specific, automatic anti-theft function, not a conventional security feature like a password lock.
- Technical Questions: Does the accused devices' sleep/lock function operate "in response to the verification of the linked user identification module" as required by the claim? The complaint alleges the lock activates after inactivity, but does not specify how this is tied to the verification of the SIM card, beyond both being features of the same device.
’362 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| attempting to determine the location... using a satellite based global positioning system; | The Windows 10 location service utilizes GPS to determine the device’s location, as shown in a product testing screenshot of the "FollowMee" app obtaining a GPS location. | ¶31, ¶32, p. 21 | col. 9:6-9 |
| determining that the location determination using the satellite-based global positioning system failed; | GPS is alleged to fail when the device is indoors without a line of sight to satellites. | ¶33 | col. 9:8-9 |
| in response... attempting to determine the location... by triangulating respective measured distances... from two or more wireless telephone network base stations; | When GPS fails, the location service allegedly attempts to determine location via the cellular (LTE) network, as shown in a product test log indicating a "Network Loc." | ¶34, p. 22 | col. 9:10-16 |
| determining that the location determination by triangulating failed; | Triangulation is alleged to fail when LTE data services are turned off by the user. | ¶37 | col. 9:41-43 |
| in response... determining that the mobile computing device is sufficiently near a wireless device with a known location...; | When both GPS and cellular fail, the location service is alleged to use a nearby Wi-Fi access point, as shown in a product test log indicating a "Wifi loc." | ¶37, p. 24 | col. 9:43-47 |
| in response... reporting the location of the wireless device as the location of the mobile computing device... | The location service uses the identified Wi-Fi access point's location to determine the device's own location. | ¶38 | col. 9:48-51 |
| estimating the location of the wireless device from locations of one or more other mobile computing devices... | Microsoft is alleged to build a database of Wi-Fi access point locations by collecting BSSID and GPS data from other Windows devices that connect to those access points. | ¶39, p. 26 | col. 9:52-59 |
- Identified Points of Contention:
- Technical Questions: The complaint presents evidence of the accused system using GPS, cellular, and Wi-Fi for location. However, a key question is whether the system follows the strict, sequential, failure-driven cascade required by claim 1. Microsoft's documentation describes using a "combination" of sources (Compl. ¶30, p. 14), which may suggest a parallel or blended data fusion model, rather than the patent's rigid hierarchy of "attempt, fail, then attempt next."
- Scope Questions: Does a user manually turning off LTE data (Compl. ¶37) constitute "determining that the location determination by triangulating failed" as the claim requires? A court may need to decide if the claim covers user-induced failures or only automatic system-level failures.
V. Key Claim Terms for Construction
U.S. Patent No. 6,836,654
- The Term: "preventing the normal operation"
- Context and Importance: This term is the functional core of the asserted claim. The entire infringement theory for the ’654 patent rests on equating this claimed anti-theft action with the accused devices' standard screen lock functionality. Practitioners may focus on this term because its construction will determine if a common, user-configurable security feature falls within the scope of a specific, time-activated anti-theft method.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself is broad and does not explicitly limit the "preventing" step to a specific implementation beyond blocking "normal operation," which includes outgoing calls.
- Evidence for a Narrower Interpretation: The specification describes the blocking state as one where the device "only processes incoming calls (box K13) and, possibly, the outgoing calls that correspond to emergency numbers (box K14)" (’654 Patent, col. 5:44-47). This may support a narrower construction limited to a mode that specifically permits incoming calls while blocking outgoing ones, which is functionally distinct from a typical screen lock that blocks all interaction.
U.S. Patent No. 9,869,362
- The Term: "determining that the location determination... failed"
- Context and Importance: This phrase appears twice in claim 1 and establishes the required sequential logic of the invention. The infringement case depends on showing that the accused system performs discrete "failure" determinations at the GPS and cellular triangulation stages before proceeding to the next fallback option. Practitioners may focus on this term because it dictates the operational flow that Plaintiff must prove.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not define "failed" in detail, which could allow for an interpretation that includes any condition where a valid location is not returned from a source, including lack of signal or a feature being disabled by the user.
- Evidence for a Narrower Interpretation: The claim structure implies a rigid, step-by-step process (A fails, then B; B fails, then C). Microsoft documentation cited in the complaint states its service uses a "combination" of sources (’Compl. p. 14), which could support an interpretation that the accused system does not make binary "failure" determinations but rather fuses data from multiple available sources simultaneously, which would not align with the claim's sequential logic.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement for both patents, asserting that Microsoft's user guides, support websites, and product brochures instruct customers to use the accused devices in a manner that performs the claimed methods (e.g., using sleep/lock features, SIM cards, Skype, and location services) (Compl. ¶¶19, 41).
- Willful Infringement: Willfulness is alleged for both patents based on Microsoft having notice of the patents as of the complaint's filing date, April 29, 2019. This constitutes an allegation of post-suit willfulness (Compl. ¶¶21, 43).
VII. Analyst’s Conclusion: Key Questions for the Case
Threshold Viability: The foremost issue is the legal status of the case itself. Given that the specific independent claims asserted against Microsoft (’654 claim 10, ’362 claim 1) were cancelled in IPR proceedings after the suit was filed, a dispositive question will be whether the complaint can proceed or is rendered moot by the absence of valid asserted claims.
Functional Mismatch (’654 Patent): Should the case proceed, a core issue will be one of functional scope: can the term "preventing the normal operation," described in the patent as a specific anti-theft measure, be construed to cover the general-purpose, user-configurable screen lock feature of the Windows 10 operating system, or is there a fundamental mismatch in function and purpose?
Operational Logic Mismatch (’362 Patent): A key evidentiary question will be one of operational equivalence: does the Windows 10 location service operate according to the strict, sequential failure-and-fallback cascade mandated by Claim 1, or does its use of a "combination" of location sources represent a different, more integrated technical approach that does not map onto the claim's rigid logical structure?