DCT
3:19-cv-01905
Uniloc 2017 LLC v. Apple Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Uniloc 2017 LLC (Delaware)
- Defendant: Apple Inc. (California)
- Plaintiff’s Counsel: Prince Lobel Tye LLP; Nelson Bumgardner Albritton P.C.
- Case Identification: 3:19-cv-01905, W.D. Tex., 11/17/2018
- Venue Allegations: Venue is asserted based on Defendant Apple Inc. having regular and established places of business in the Western District of Texas.
- Core Dispute: Plaintiff alleges that a wide range of Apple’s cellular-enabled products, including iPhones, iPads, and Apple Watches, infringe a patent related to the automatic configuration of a telephone for service on a data network using a central server.
- Technical Context: The technology concerns methods for simplifying the setup of data-network-based telephones (e.g., VoIP or cellular devices), allowing a device to automatically retrieve its specific service provider settings upon connecting to a network.
- Key Procedural History: The complaint alleges that Apple will have had notice of the patent-in-suit at the latest upon service of a complaint in a prior case, 1:18-cv-00851, which may be relevant to the allegation of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2000-02-29 | U.S. Patent No. 6,856,616 Priority Date |
| 2005-02-15 | U.S. Patent No. 6,856,616 Issued |
| 2018-11-17 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 6,856,616, SYSTEM AND METHOD FOR PROVIDING SERVICE PROVIDER CONFIGURATIONS FOR TELEPHONES USING A CENTRAL SERVER IN A DATA NETWORK TELEPHONY SYSTEM, issued February 15, 2005.
The Invention Explained
- Problem Addressed: In the transition from traditional telephone networks to data networks (like the internet), configuring new devices for a specific service provider was a challenge. The patent describes a need to move beyond "dumb" terminals and avoid elaborate pre-programming at the manufacturing stage, which could burden manufacturers and limit consumer choice. (’616 Patent, col. 2:56-61, col. 3:35-52).
- The Patented Solution: The patent proposes a system where a new data network telephone, upon its first connection to a network, automatically contacts a default "telephone configuration server." (’616 Patent, col. 6:3-6). The telephone sends a unique "telephone part number," such as its serial number, to this server. (’616 Patent, Abstract). The server uses this number to look up the appropriate service provider configuration (e.g., a proxy address) in a database and sends it back to the telephone, which then uses this information to register for service. (’616 Patent, Fig. 6A, steps 484-488).
- Technical Importance: This approach decouples the device's manufacturing from its service provider, creating a streamlined process for activating new devices on various data telephony networks. (’616 Patent, col. 3:52-59).
Key Claims at a Glance
- The complaint asserts independent claims 1 (system), 6 (telephone), 10 (server), and 13 (method), as well as various dependent claims. (Compl. ¶13).
- Independent Claim 1 (System) requires:
- A data network.
- At least one data network telephone connected to the network.
- A "telephone configuration server" connected to the network, which contains at least one "service provider configuration."
- A "telephone part number" that the server can associate with a specific service provider configuration, which includes a "service provider proxy address."
- The server provides the proxy address to the telephone in response to receiving the telephone's part number.
III. The Accused Instrumentality
Product Identification
- The "Accused Infringing Devices" are numerous Apple products with telephone functionality, including various models of the iPhone, iPad, and Apple Watch. (Compl. ¶8).
Functionality and Market Context
- The complaint alleges that these devices connect to data networks, such as the AT&T 4G LTE network, and include interfaces for detecting the network (e.g., LTE transceivers and WiFi/Bluetooth modules). (Compl. ¶8-9).
- The core accused functionality involves the devices' ability to automatically configure for service. The complaint alleges that when a device with an AT&T-specific SIM card connects to the network, it establishes a connection with AT&T's servers. (Compl. ¶11). These servers allegedly recognize a "unique identifier" from the device and provide a "proxy server address" that allows the telephone's service to be established. (Compl. ¶12). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
'616 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a data network to provide data connectivity... | The AT&T 4G LTE network. | ¶8 | col. 5:36-44 |
| at least one data network telephone connected to the data network, the data network telephone operable to communicate voice signals as data packets on a voice over data channel... | Apple's iPhones, iPads, and Apple Watches, which are capable of sending and receiving digitized voice signals in data packets. | ¶8, ¶10 | col. 6:40-45 |
| a telephone configuration server connected to the data network, the telephone configuration server comprising at least one service provider configuration... | AT&T's servers, which provide configuration of service when an Accused Infringing Device connects to the AT&T 4G LTE network. | ¶11-12 | col. 6:3-6 |
| a telephone part number... the telephone configuration server being operable to associate the telephone part number with a selected one of the at least one service provider configurations, wherein the selected one of the at least one service provider configuration includes a service provider proxy address... and wherein the telephone configuration server provides the service provider proxy address to the at least one data network telephone in response to receiving the telephone part number from the data network telephone. | A "unique identifier" associated with the device (e.g., via an AT&T-specific SIM card) is recognized by AT&T's servers, which in response provide a "proxy server address" to the device to establish service configuration. | ¶11, ¶12 | col. 6:7-17 |
- Identified Points of Contention:
- Scope Questions: The infringement theory may depend on whether the claimed "telephone part number" can be interpreted to cover an identifier stored on a carrier-specific, removable SIM card. The patent specification frequently describes the "telephone part number" as a device-specific "serial number" (’616 Patent, Abstract; col. 11:4-5), raising the question of whether the claimed term is limited to an identifier permanently associated with the telephone hardware itself, as opposed to one provided by a third-party SIM card.
- Technical Questions: A potential issue is whether the distributed architecture of a modern cellular carrier like AT&T embodies the claimed "telephone configuration server." The patent's figures depict a single, discrete server performing the lookup function (’616 Patent, Fig. 1, item 50), whereas the complaint refers more generally to "AT&T's servers." (Compl. ¶12). The case may require evidence on how the accused configuration process is architected and whether it meets the claim limitations.
V. Key Claim Terms for Construction
The Term: "telephone part number"
Context and Importance: This term's construction is central because it defines the identifier used to trigger the automatic configuration. The dispute will likely focus on whether this term is broad enough to read on an identifier from a carrier's SIM card, as alleged, or if it is limited to an identifier integral to the phone hardware itself.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The body of Claim 1 defines the term functionally as "any combination of alphanumeric characters" that the server can associate with a configuration. (’616 Patent, col. 22:27-28). Plaintiff may argue this broad language controls.
- Evidence for a Narrower Interpretation: The patent’s Abstract and detailed description repeatedly use "serial number" as the primary and often sole example of a "telephone part number." (’616 Patent, Abstract; col. 11:4-5; col. 18:61-63). Defendant may argue these specific embodiments limit the claim scope to a manufacturer-assigned hardware identifier.
The Term: "telephone configuration server"
Context and Importance: Practitioners may focus on this term because the patent appears to describe a standalone server dedicated to mapping part numbers to service providers. The defense may argue that the accused network functionality, which is likely distributed across multiple network elements, does not meet this limitation.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims define the server functionally: it must be "operable to associate the telephone part number with a selected one of the at least one service provider configurations." (’616 Patent, col. 22:29-32). Plaintiff may contend that any server or system of servers performing this function meets the limitation, regardless of its specific architecture.
- Evidence for a Narrower Interpretation: The specification and figures consistently depict a discrete server entity separate from the service provider's main servers. (’616 Patent, Fig. 1, item 50; Fig. 2A, item 50). Defendant may argue this context implies a specific architecture that is distinct from the integrated systems used in modern cellular networks.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement by asserting that Apple instructs its customers to use the accused devices in an infringing manner through materials like user guides and support websites. (Compl. ¶14). It further alleges that components of the accused devices are "especially made, or especially adapted for, use in infringement" and are not staple articles of commerce, a basis for contributory infringement. (Compl. ¶15).
- Willful Infringement: Willfulness is alleged based on Apple’s purported knowledge of the ’616 Patent from at least the time of a prior lawsuit (1:18-cv-00851), and from the filing of the present complaint. (Compl. ¶16).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this case may turn on two central questions for the court:
- A core issue will be one of definitional scope: Can the term "telephone part number", which the patent repeatedly exemplifies as a device "serial number," be construed to cover a "unique identifier" supplied by a network carrier’s removable SIM card?
- A key question will be one of structural correspondence: Does the distributed server architecture of a modern mobile network, as allegedly used by Apple and AT&T, constitute the "telephone configuration server" recited in the claims, or does the patent's disclosure limit that term to a more centralized, discrete entity as depicted in its figures?