DCT
3:18-cv-00360
Uniloc USA Inc v. Apple Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Uniloc USA, Inc. (Texas) and Uniloc Luxembourg, S.A. (Luxembourg)
- Defendant: Apple Inc. (California)
- Plaintiff’s Counsel: Prince Lobel Tye LLP; Nelson Bumgardner PC
- Case Identification: 2:17-cv-00457, E.D. Tex., 05/26/2017
- Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Apple is deemed to reside there, has committed acts of infringement, and has purposely transacted business in the district.
- Core Dispute: Plaintiff alleges that Defendant’s iPhones and iPads, through features that allow a user to initiate a phone call on one device (e.g., an iPad) that is then executed by another (e.g., an iPhone), infringe a patent related to wirelessly auto-dialing a telephone.
- Technical Context: The technology addresses using a non-telephony handheld device, such as a Personal Digital Assistant (PDA), to wirelessly control a separate mobile phone to dial a selected number, thereby integrating contact management and voice communication functions between two distinct devices.
- Key Procedural History: Post-filing, the asserted patent was subject to two Inter Partes Review (IPR) proceedings (IPR2018-00199 and IPR2018-00282) before the Patent Trial and Appeal Board. An IPR certificate issued on January 20, 2022, confirms that all claims of the patent, 1-16, have been cancelled. The cancellation of all claims is a dispositive event for this litigation.
Case Timeline
| Date | Event |
|---|---|
| 2000-11-30 | '671 Patent Priority Date (Filing Date) |
| 2006-08-15 | '671 Patent Issue Date |
| 2017-05-26 | Complaint Filing Date |
| 2017-12-06 | IPR2018-00282 Filed |
| 2017-12-11 | IPR2018-00199 Filed |
| 2022-01-20 | IPR Certificate Issued, Cancelling All Claims |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,092,671 - METHOD AND SYSTEM FOR WIRELESSLY AUTODIALING A TELEPHONE NUMBER FROM A RECORD STORED ON A PERSONAL INFORMATION DEVICE
- Patent Identification: U.S. Patent No. 7,092,671, "METHOD AND SYSTEM FOR WIRELESSLY AUTODIALING A TELEPHONE NUMBER FROM A RECORD STORED ON A PERSONAL INFORMATION DEVICE," issued August 15, 2006. (’671 Patent).
The Invention Explained
- Problem Addressed: The patent describes the difficulty and error-prone nature of manually dialing a lengthy telephone number on a cellphone’s small keypad after looking it up on a separate Personal Information Device (PID), such as a PalmPilot. (’671 Patent, col. 1:56 - col. 2:2).
- The Patented Solution: The invention is a system where a PID establishes a short-range wireless link (e.g., Bluetooth or IrDA) with a mobile telephone. An application on the PID allows a user to select a contact from a list, and the PID then wirelessly transmits the number to the phone and instructs the phone to dial it, automating the entire process. (’671 Patent, Abstract; col. 2:40-54).
- Technical Importance: This approach aimed to create a seamless user experience by linking the robust information management capabilities of PIDs with the communication function of early mobile phones, a significant usability improvement at the time. (’671 Patent, col. 2:11-21).
Key Claims at a Glance
- The complaint asserts claims 1-11 and 13-31, which includes independent claims 1 (a system claim) and 9 (a method claim). (Compl. ¶14).
- Independent Claim 1 recites an automated telephone dialing system comprising:
- A telephone with a wireless port for short-range data transfer.
- A handheld computer system with a corresponding wireless port.
- Wherein a telephone number is selectable from a list on the handheld computer.
- Wherein the handheld computer is operable to transfer the number to the telephone wirelessly.
- And wherein the handheld computer is configured to control the telephone to dial the number.
- Independent Claim 9 recites a corresponding method with steps for:
- Establishing a wireless link between the telephone and handheld computer.
- Receiving user input selecting a number from a list on the computer.
- Transferring the number to the telephone.
- Controlling the telephone to dial the number.
- The complaint reserves the right to assert other claims, including dependent claims. (Compl. ¶14).
III. The Accused Instrumentality
Product Identification
- Apple iPhones and iPads, and the software enabling their interaction. (Compl. ¶¶10, 13).
Functionality and Market Context
- The complaint alleges that iPads can display stored telephone numbers and, upon a user's selection, "transfer a telephone number wirelessly to a nearby iPhone which dials the selected number." (Compl. ¶13). This functionality is alleged to be enabled by wireless communication capabilities like Wi-Fi and Bluetooth present in both devices. (Compl. ¶11). This describes a feature within Apple's "Continuity" ecosystem, which allows tasks to be handed off between a user's devices.
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
’671 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a telephone having a wireless port for short range wireless data transfer | Apple iPhones incorporate one or more wireless communication ports such as Wi-Fi and Bluetooth. | ¶11 | col. 2:40-42 |
| a handheld computer system having a wireless port for communication with the wireless port on the telephone | Apple iPads incorporate one or more wireless communication ports such as Wi-Fi and Bluetooth. | ¶11 | col. 2:43-45 |
| wherein a specific telephone number is selectable from a list displayed on the handheld computer system | iPads incorporate software that allows for a display of stored contact telephone numbers on the iPad screen. | ¶12 | col. 2:50-54 |
| and wherein the handheld computer system is operable to transfer the specific telephone number to the telephone using a wireless communication | iPads incorporate software that causes an iPad, in response to a user’s selection, to transfer a telephone number wirelessly to a nearby iPhone. | ¶13 | col. 10:60-63 |
| and wherein the handheld computer system is configured to control the telephone via the wireless communication such that the telephone dials the specific telephone number | The iPad software causes the nearby iPhone to dial the selected number. | ¶13 | col. 10:63-65 |
Identified Points of Contention
- Scope Questions: A potential dispute may arise over whether a modern tablet like an iPad, which has its own telephony functions (e.g., VoIP), qualifies as the "handheld computer system" contemplated by the patent, which depicts a device primarily for information management distinct from a telephone used for communication. (’671 Patent, col. 1:53-58).
- Technical Questions: The complaint alleges the iPad "causes" the iPhone to dial. (Compl. ¶13). A central technical question is whether this interaction meets the claim requirement that the handheld computer is "configured to control the telephone." (’671 Patent, cl. 1). The analysis may turn on whether the iPad sends an explicit command that the iPhone must obey (control), or if it merely passes call information that the iPhone's own operating system then acts upon (cooperation or handoff).
V. Key Claim Terms for Construction
The Term: "control the telephone"
Context and Importance: This term is central to the infringement theory. The case may depend on whether the interaction between the iPad and iPhone constitutes "control" as required by the claim, or a different type of interaction. Practitioners may focus on this term because the distinction between a master-slave "control" architecture and a peer-to-peer "handoff" protocol is technically and legally significant.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent's abstract and summary use broad, functional language, stating the PID is "configured to control the telephone...such that the telephone dials a telephone number," which could be read to cover any implementation achieving that result. (’671 Patent, Abstract).
- Evidence for a Narrower Interpretation: The patent’s flowchart for the dialing process shows a distinct step where the PID "[c]ontrol[s] the telephone to dial the specific number," suggesting a direct, imperative command from the PID to the telephone, which may imply a master-slave relationship. (’671 Patent, Fig. 8, step 806).
The Term: "handheld computer system"
Context and Importance: The definition of this term determines whether an iPad is the type of device covered by the patent. The patent was filed in 2000, and its examples are of that era.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification uses the term interchangeably with "Personal Information Device" (PID) and provides a non-exhaustive list of examples including "computers, personal digital assistants and electronic organizers." (’671 Patent, col. 1:13-17). This suggests the term was intended to be a broad category.
- Evidence for a Narrower Interpretation: The background consistently frames the problem as bridging two functionally distinct devices: one for information management (the PID) and one for communication (the cellphone). (’671 Patent, col. 1:53-62). An argument could be made that a modern iPad, with integrated communication capabilities, does not fit this dichotomous model and thus is not the "handheld computer system" envisioned.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement, asserting that Apple's "training videos, demonstrations, brochures, installation and/or user guides" instruct customers on how to use the accused functionality. (Compl. ¶16). It also alleges contributory infringement on the basis that the accused software is a material component of the invention that is not a staple article of commerce suitable for substantial non-infringing use. (Compl. ¶¶17-18).
- Willful Infringement: Willfulness is pleaded based on post-suit knowledge. The complaint alleges that Apple will be on notice of the patent "at the latest, the service of this complaint," and that continued infringement thereafter would be willful. (Compl. ¶19).
VII. Analyst’s Conclusion: Key Questions for the Case
A threshold, and likely case-dispositive, issue is procedural and existential: Given that all asserted claims of the '671 patent were cancelled in a post-filing Inter Partes Review, the primary question is whether any basis for the lawsuit remains. The cancellation of all claims effectively invalidates the patent, which should lead to the termination of the case.
Setting aside the patent's invalidity, a central dispute would be one of technical mechanism: Does the accused Apple ecosystem function via a "control" relationship, where the iPad acts as a master device issuing a command that the iPhone slave must execute, as required by the claim? Or does it operate as a peer-to-peer "handoff," where the iPad merely presents information that the iPhone’s independent software decides how to process, potentially falling outside the claim's scope?
A further question would concern definitional scope: Can the term "handheld computer system," conceived in the 2000-era context of non-telephony PDAs, be construed to cover a modern, multi-function tablet like an iPad that possesses its own significant communication functionalities?