DCT
4:23-cv-03905
5G IP Holdings LLC v. Apple Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: 5G IP Holdings LLC (Texas)
- Defendant: Apple, Inc. (California)
- Plaintiff’s Counsel: Fisch Sigler LLP
- Case Identification: 5:23-cv-03905, N.D. Cal., 08/04/2023
- Venue Allegations: Venue is alleged to be proper in the Northern District of California as it is Defendant Apple’s principal place of business. The complaint further alleges that employees at this location engage in research, development, and standardization activities related to the 5G Standard and the accused products.
- Core Dispute: Plaintiff alleges that Defendant’s 5G-capable iPhones and iPads infringe three patents, declared essential to the 5G wireless communication standard, related to connection management and power-saving communication protocols.
- Technical Context: The patents relate to methods for managing device connections and power consumption in 5G wireless networks, technologies critical for ensuring the performance and battery life of mobile devices.
- Key Procedural History: The complaint details extensive pre-suit licensing negotiations, beginning with a notice letter from Plaintiff on March 16, 2022. It references a prior settlement and license agreement between Plaintiff's predecessor-in-interest and Samsung. The complaint also alleges that Apple asserted for the first time on April 20, 2023, that it was licensed through agreements with Foxconn Technology Group, a claim Plaintiff asserts is meritless.
Case Timeline
| Date | Event |
|---|---|
| 2017-01-30 | U.S. Patent No. 10,624,150 Priority Date |
| 2017-08-11 | U.S. Patent No. 10,531,385 Priority Date |
| 2017-09-28 | U.S. Patent No. 10,813,163 Priority Date |
| 2019-05-21 | '163 Patent declared as a Standard Essential Patent (SEP) by FGI |
| 2020-01-07 | U.S. Patent No. 10,531,385 Issues |
| 2020-04-13 | '163 and '385 Patents declared as SEPs by FGI |
| 2020-04-14 | U.S. Patent No. 10,624,150 Issues |
| 2020-06-18 | '150 Patent declared as a SEP by FGI |
| 2020-10-20 | U.S. Patent No. 10,813,163 Issues |
| 2022-03-16 | Plaintiff sends notice letter with claim charts to Defendant |
| 2022-07-29 | Defendant provides substantive response to notice letter |
| 2022-12-16 | Defendant provides a non-FRAND counteroffer |
| 2023-04-20 | Defendant asserts it is licensed via Foxconn agreements |
| 2023-08-04 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,624,150, "Radio Resource Control Connection Resume Method of Wireless Communication System," issued April 14, 2020.
The Invention Explained
- Problem Addressed: In mobile networks, particularly for low-power Internet of Things (IoT) devices, frequent cell selection and reselection can be power-inefficient. When a device moves, re-establishing a full connection can introduce latency and overhead (’150 Patent, col. 2:35-44).
- The Patented Solution: The patent describes a method to efficiently resume a suspended connection. A user equipment (UE) receives a "suspend" message from a first base station, which includes information about a potential "target" cell. The UE can then use this information to perform a streamlined "resume" procedure with the second (target) base station, which can fetch the UE's context from the first station, thereby reducing the latency and overhead of establishing a new connection (’150 Patent, Abstract; Fig. 3).
- Technical Importance: This suspend-and-resume mechanism is aimed at improving mobility management and power efficiency for devices moving between network cells, a foundational requirement for reliable 5G service, especially for battery-constrained IoT devices (’150 Patent, col. 1:23-2:43).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶40).
- Claim 1 requires a method at a user equipment comprising the steps of:
- receiving an RRC suspend message from a first base station, where the message comprises target cell information and target radio access technology information comprising numerology information
- performing an RRC resume procedure with a second base station in response to the message
- receiving an RRC resume response from the second base station
- The complaint reserves the right to assert additional claims (Compl. ¶40).
U.S. Patent No. 10,813,163, "Devices and Methods for Controlling Discontinuous Reception in New Radio," issued October 20, 2020.
The Invention Explained
- Problem Addressed: To save power, mobile devices use Discontinuous Reception (DRX), where the device's receiver is turned off periodically. However, legacy DRX systems were not designed for the flexible frame structures of 5G New Radio (NR), where the timing of data slots can be variable, making it difficult to efficiently schedule the "wake-up" times for the receiver (’163 Patent, col. 1:24-1:48).
- The Patented Solution: The invention provides a method for a UE to more flexibly control DRX. The UE receives a Radio Resource Control (RRC) message containing two key parameters: a "DRX Start Offset" and a "DRX Slot Offset". The UE uses these parameters to calculate the precise start subframe and the specific starting time within that subframe to activate its receiver (the "DRX On-Duration Timer"). This allows DRX to adapt to the more dynamic scheduling of 5G NR (’163 Patent, Abstract; Fig. 6).
- Technical Importance: This method enhances power-saving DRX operations by accommodating the variable data transmission schedules of 5G, which is critical for maintaining long battery life in devices that must remain connected to the network (’163 Patent, col. 14:14-20).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶56).
- Claim 1 requires a method at a user equipment comprising the steps of:
- receiving an RRC message having a DRX Start Offset and a DRX Slot Offset
- determining a start subframe based on the DRX Start Offset
- determining a starting time of a DRX On-Duration Timer in the start subframe based on the DRX Slot Offset, where the DRX Slot Offset has an actual time unit
- The complaint reserves the right to assert additional claims (Compl. ¶56).
Multi-Patent Capsule: U.S. Patent No. 10,531,385, "Devices and Methods for Discontinuous Reception in New Radio," issued January 7, 2020.
- Technology Synopsis: This patent also addresses flexible Discontinuous Reception (DRX) in 5G New Radio. It describes a method where a device receives an RRC configuration with DRX parameters that have different types of time units: one parameter has a fixed unit (e.g., millisecond) while another has a scalable unit (e.g., slot or symbol). This two-tiered approach allows for both coarse, stable DRX cycles and fine-grained, adaptable DRX timing based on the dynamic network conditions, improving data scheduling flexibility and power efficiency (’385 Patent, Abstract; col. 1:24-1:52).
- Asserted Claims: At least independent claim 1 is asserted (Compl. ¶72).
- Accused Features: The complaint alleges that Apple's 5G devices, by implementing the 5G standard, use a method for configuring transport channels where the device receives downlink control information (DCI) that indicates transport block reception on a specific bandwidth part (BWP), thereby infringing the patent (Compl. ¶74).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are "Apple's 5G iPhones and iPads" (Compl. ¶9). The complaint provides a non-limiting list including the iPhone 14, 13, and 12 series, the iPhone SE (3rd generation), and various models of the iPad Pro, iPad Air, iPad mini, and iPad (Compl. ¶9).
Functionality and Market Context
- The relevant functionality of the accused products is their implementation of and compliance with the 3GPP 5G Standard, including technical specifications TS 38.331, 38.321, and others (Compl. ¶10). This compliance allegedly causes the devices to perform the patented methods for RRC connection management and DRX control (Compl. ¶42, ¶58, ¶74). The complaint presents a marketing image for the iPhone 14 advertising "Superspeedy !!!5G!!!" to establish that Apple promotes the 5G capabilities of its products (Compl. p. 12). A similar marketing image is provided for the iPad Pro, which states, "With 5G capabilities, you can connect to the fastest wireless networks" (Compl. p. 16).
IV. Analysis of Infringement Allegations
10,624,150 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| receiving, by a user equipment (UE), an RRC suspend message from a first base station... | Apple's 5G devices, by complying with the 5G Standard (e.g., 3GPP TS 38.331), are capable of receiving RRC suspend messages from a base station to transition to an RRC_INACTIVE state. | ¶42, ¶58 | col. 10:45-50 |
| wherein the RRC suspend message comprises: a) target cell information... | The RRC suspend message, as defined in the 5G standard and allegedly used by Apple's devices, is capable of containing information about a target cell for connection resumption. | ¶39 | col. 6:2-5 |
| and b) target radio access technology information comprising numerology information | The RRC suspend message in the 5G standard allegedly includes information relating to the radio access technology of the target cell, such as its numerology (e.g., subcarrier spacing). | ¶39 | col. 6:6-9 |
| performing, by the UE, an RRC resume procedure with a second base station... | When moving to a new cell, Apple's 5G devices are alleged to initiate an RRC resume procedure with the new (second) base station to re-establish the connection without a full setup. A diagram in the complaint illustrates this procedure. (Compl. p. 10). | ¶42 | col. 10:51-54 |
| receiving, by the UE, an RRC resume response from the second base station. | Apple's 5G devices, upon a successful resume procedure, receive an RRC resume response from the new base station to confirm the connection has been re-established. | ¶39 | col. 10:55-57 |
- Identified Points of Contention:
- Scope Questions: The ’150 patent's description is heavily focused on "Narrow-Band Internet of Things" (NB-IoT) (Compl. ¶39; ’150 Patent, Title, Background). A key question will be whether the claims, particularly the term "numerology information," are limited to the specific context of NB-IoT, or if they are broad enough to read on the general 5G New Radio (NR) protocols implemented in Apple's consumer-grade iPhones and iPads.
- Technical Questions: The infringement theory rests on the accused devices' compliance with the 3GPP standard. The case may require a detailed technical comparison to determine if the procedures as defined in the 5G standard are coextensive with the specific steps and information content (e.g., "target cell information") required by the claim language.
10,813,163 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| receiving...a Radio Resource Control (RRC) message having a DRX Start Offset...and a DRX Slot Offset... | Apple's 5G devices allegedly implement the DRX functionality of the 5G standard (3GPP TS 38.321), which involves receiving RRC messages that configure DRX parameters, including offsets for timing the DRX cycle. (Compl. p. 15). | ¶58 | col. 15:5-10 |
| determining...a start subframe based on the drx-StartOffset... | By implementing the standard, Apple's devices are alleged to use the drx-StartOffset parameter to calculate the specific subframe in which a DRX cycle begins. |
¶55 | col. 16:6-14 |
| determining...a starting time of a DRX On-Duration Timer in the start subframe based on the drxStartOffset_slot... | The accused devices allegedly use the drx-SlotOffset parameter (referred to as drxStartOffset_slot in the patent) to calculate the precise time within the determined subframe to "wake up" the receiver and begin the drx-onDurationTimer. |
¶55 | col. 16:15-22 |
| wherein the drxStartOffset_slot has an actual time unit. | The complaint alleges the 5G standard provides for DRX parameters that allow for a frame structure without a fixed time unit, which may support the "actual time unit" limitation. (Compl. ¶55). | ¶55 | col. 15:53-57 |
- Identified Points of Contention:
- Scope Questions: The central dispute may turn on the construction of "actual time unit." Practitioners will question whether the unit defined by the 3GPP standard for the
drx-SlotOffsetparameter (which may be based on a number of slots or symbols) meets the specific meaning of "actual time unit" as used and defined within the context of the ’163 patent. - Technical Questions: Evidence will be required to show that the DRX calculations performed by Apple's devices, pursuant to the 5G standard, map directly onto the three distinct steps recited in claim 1, and that the function of the standard's
drx-SlotOffsetis identical to that of the claimeddrxStartOffset_slot.
- Scope Questions: The central dispute may turn on the construction of "actual time unit." Practitioners will question whether the unit defined by the 3GPP standard for the
V. Key Claim Terms for Construction
Patent: U.S. 10,624,150
- The Term: "numerology information"
- Context and Importance: This term is part of the information required in the "RRC suspend message." The validity of the infringement allegation depends on whether the information transmitted in the 5G standard's RRC messages qualifies as "numerology information." Practitioners may focus on this term because its scope will determine if the patent applies broadly to 5G NR or is confined to a narrower technology like NB-IoT.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states that different numerologies can be realized by different radio access technologies, suggesting the term is not limited to one specific technology (’150 Patent, col. 5:48-55).
- Evidence for a Narrower Interpretation: The term is consistently used in the context of a "narrow-band-Internet-of-Things numerology" throughout the detailed description, which could support an interpretation limiting the term to the specific configurations of NB-IoT systems (’150 Patent, col. 5:53-55).
Patent: U.S. 10,813,163
- The Term: "actual time unit"
- Context and Importance: Claim 1 requires that the
drxStartOffset_slothas an "actual time unit." The infringement case hinges on whether the units used in the 5G standard for the corresponding DRX parameter meet this definition. The dispute will likely center on whether this term implies a fixed, absolute time value (e.g., milliseconds) or if it can encompass scalable, relative units (e.g., a number of symbols or slots). - Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent contrasts its invention with legacy systems using "psf" (PDCCH subframe) and introduces its parameters in the context of flexible 5G systems, suggesting "actual time unit" is meant to be flexible and could include units like milliseconds or fractions thereof (’163 Patent, col. 8:12-20, col. 15:53-57).
- Evidence for a Narrower Interpretation: The specification repeatedly defines its flexible timers in terms of "ms" (milliseconds) when providing examples, which could be argued to limit the scope of "actual time unit" to absolute time measurements rather than scalable, symbol-based ones (’163 Patent, Table II).
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Apple knowingly and intentionally induces infringement by its customers, resellers, and end-users. This is based on the argument that by making, selling, and promoting 5G-capable devices, Apple encourages others to use them in an infringing manner that practices the patented methods (Compl. ¶40, ¶56, ¶72).
- Willful Infringement: Willfulness is alleged based on Apple's purported actual and constructive knowledge. The complaint asserts actual knowledge since at least the March 16, 2022 notice letter, which included exemplary claim charts (Compl. ¶45, ¶61, ¶77). It also alleges constructive knowledge dating back to the 2019-2020 public declarations of the patents as essential to the 5G standard, in which Apple was allegedly heavily involved in developing (Compl. ¶46, ¶62, ¶78).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of Standard Essentiality and Scope: Do the claims of the asserted patents, when properly construed, read on the mandatory portions of the 3GPP 5G standard? The case will likely require determining whether there are material differences between the standard's implementation and the specific technical limitations recited in the patents, such as the "Narrow-Band Internet of Things" context in the '150 patent.
- A second key question will be one of Definitional Interpretation: The dispute will likely turn on claim construction, particularly for the terms "numerology information" ('150 patent) and "actual time unit" ('163 patent). The outcome will depend on whether these terms are interpreted broadly to cover the flexible, scalable parameters of the 5G standard, or are narrowed to the specific embodiments and absolute time values detailed in the patent specifications.
- A final dispositive question relates to FRAND Obligations and Licensing: Separate from technical infringement, the litigation will involve complex issues surrounding the parties' conduct during licensing negotiations for these alleged Standard Essential Patents. The court may need to evaluate whether Plaintiff's offers were consistent with FRAND obligations and whether Defendant's negotiation conduct makes it an "unwilling licensee," potentially impacting remedies.