5:15-cv-05008
Conversant Wireless Licensing SARL v. Apple Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Core Wireless Licensing S.A.R.L. (Luxembourg)
- Defendant: Apple Inc. (California)
- Plaintiff’s Counsel: Bunsow, De Mory, Smith & Allison LLP
- Case Identification: 6:14-cv-00752, E.D. Tex., 09/10/2014
- Venue Allegations: Venue is alleged based on Apple committing acts of infringement, including offering for sale and selling the accused products, within the Eastern District of Texas.
- Core Dispute: Plaintiff alleges that Defendant’s standard-compliant wireless devices (iPhones and iPads) infringe five patents essential to various mobile communication standards, and further alleges Defendant has breached its contractual obligations to negotiate a license for these patents on Fair, Reasonable, and Non-Discriminatory (FRAND) terms.
- Technical Context: The patents relate to fundamental technologies for managing communications, data transmission, and network selection in 2G (GSM/GPRS), 3G (UMTS), and 4G (LTE) cellular networks, which are foundational to the modern mobile device market.
- Key Procedural History: The patents-in-suit, originally owned by Nokia, were declared essential to the European Telecommunications Standards Institute (ETSI), creating a FRAND licensing obligation for implementers of the standards. Plaintiff alleges a multi-year history of failed licensing negotiations with Defendant. A related case between the parties involving other standard-essential patents was pending at the time of filing. Post-filing, claims 1-3, 6, and 7 of the '634 patent were cancelled as a result of an Inter Partes Review (IPR) proceeding and subsequently disclaimed.
Case Timeline
| Date | Event |
|---|---|
| 1996-09-17 | U.S. Patent No. 6,633,536 Priority Date |
| 1997-01-02 | U.S. Patent No. 5,946,634 Priority Date |
| 1997-11-11 | U.S. Patent No. 6,477,151 Priority Date |
| 1999-06-16 | U.S. Patent No. RE44,828 Priority Date |
| 1999-08-31 | U.S. Patent No. 5,946,634 Issued |
| 2000-05-22 | U.S. Patent No. 7,782,818 Priority Date |
| 2002-11-05 | U.S. Patent No. 6,477,151 Issued |
| 2003-10-14 | U.S. Patent No. 6,633,536 Issued |
| 2009-01-01 | Licensing negotiations alleged to begin (approximate) |
| 2010-08-24 | U.S. Patent No. 7,782,818 Issued |
| 2011-09-01 | Core Wireless acquires patents-in-suit from Nokia (approximate) |
| 2014-04-08 | U.S. Patent No. RE44,828 Reissued |
| 2014-09-10 | Complaint Filed |
| 2018-02-13 | IPR Certificate issued cancelling claims of '634 Patent |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 5,946,634 - “Mobile Communications”
Issued August 31, 1999
The Invention Explained
- Problem Addressed: The patent describes a world with multiple, incompatible mobile communication standards (e.g., GSM, D-AMPS), where a device built for one standard cannot operate on another. As new network types emerge, creating hardware or network-level converters for every possible combination becomes increasingly complex and inefficient (’634 Patent, col. 1:5-18, col. 2:6-9).
- The Patented Solution: The invention is a mobile terminal designed for flexibility. It operates on a common low-level radio protocol but can store and select from multiple different high-level protocol stacks (e.g., for GSM or B-ISDN). The terminal can detect the type of network it is in via a broadcast signal and, if it encounters a network for which it lacks the appropriate protocol software, it can download a new protocol stack directly from the network, allowing it to adapt to new or unforeseen standards (’634 Patent, Abstract; Fig. 10; col. 2:55-65).
- Technical Importance: This technology provides a forward-looking architecture for universal mobile devices capable of operating across different and evolving network standards, a foundational concept for global roaming and multi-mode phones (’634 Patent, col. 1:44-51).
Key Claims at a Glance
- The complaint asserts one or more claims without specification (Compl. ¶65). Independent claim 4 is representative of the remaining claims after IPR.
- Independent Claim 4 Elements: A user terminal with a control unit operable for:
- receiving a type signal indicative of a type of high level protocols; and
- selecting one of said high level protocols for application based on said received type signal.
- The complaint reserves the right to assert other claims, though several have been cancelled (Compl. ¶65).
U.S. Patent No. 6,477,151 - “Packet Radio Telephone Services”
Issued November 5, 2002
The Invention Explained
- Problem Addressed: In packet data systems like GPRS, a mobile device must constantly adjust its transmission timing to compensate for signal propagation delay to the base station. Managing this timing advance (TAV) for every data channel allocated to a device creates significant signaling overhead, which consumes valuable and limited air interface resources (’151 Patent, col. 2:18-32; col. 3:1-11).
- The Patented Solution: The patent proposes a more efficient synchronization method where the network assigns a single timing advance index to a mobile station. This one index is then used by the mobile station to derive the correct timing advance value for all of its allocated data channels (both uplink and downlink). This consolidation dramatically reduces the amount of signaling required to keep the device synchronized with the network (’151 Patent, Abstract; col. 4:3-26).
- Technical Importance: By reducing control-related signaling, the invention increases the overall efficiency of the radio interface, allowing more users and more data to be handled within the same amount of spectrum (’151 Patent, col. 4:30-39).
Key Claims at a Glance
- The complaint asserts one or more claims without specification (Compl. ¶77). Independent claim 1 is representative.
- Independent Claim 1 Elements: A method of synchronizing comprising:
- At a base station, allocating to a mobile station a single timing advance index identifying specific frames for timing bursts and updates.
- At the base station, allocating an idle frame slot number identifying the specific time slot for these transmissions.
- Transmitting the index and slot number to the mobile station.
- At the mobile station, using the index and slot number to determine timing advance values for all its allocated user data channels.
- The complaint reserves the right to assert other claims (Compl. ¶77).
U.S. Patent No. 6,633,536 - "Signalling In A Digital Mobile Communications System"
Issued October 14, 2003
Technology Synopsis
The patent describes a method for sending signaling messages (e.g., control commands) within a channel normally dedicated to user data (e.g., speech). The technique involves intentionally marking a data frame as "bad," for example by using an incorrect checksum, and inserting the signaling message's bit pattern into that frame. This allows the receiver to identify the frame as carrying a message rather than corrupted data, enabling in-band signaling without a separate channel (’536 Patent, Abstract; col. 7:46-67).
Asserted Claims
The complaint does not identify specific asserted claims (Compl. ¶89).
Accused Features
The complaint alleges that Apple's standard-compliant products utilize this in-band signaling method as part of their operation on cellular networks (Compl. ¶88).
U.S. Patent No. 7,782,818 - "System And Method For Providing A Connection In A Communication Network"
Issued August 24, 2010
Technology Synopsis
The patent addresses the challenge of selecting a serving node (like an SGSN in a GPRS network) when multiple nodes are available to serve the same geographic area. The invention proposes using a centralized network element, such as a DNS server, that stores a list of available serving nodes for a given routing area. A radio network controller can query this server with a location identifier to receive a list of appropriate nodes, enabling functions like load balancing, failover, and efficient handovers (’818 Patent, Abstract).
Asserted Claims
The complaint does not identify specific asserted claims (Compl. ¶101).
Accused Features
Apple’s products are accused of participating in network connection procedures that rely on this dynamic serving-node selection mechanism (Compl. ¶100).
U.S. Reissue Patent No. RE44,828 - "Method and Arrangement For Choosing A Channel Coding And Interleaving Scheme For Certain Types of Packet Data Connections"
Issued April 8, 2014
Technology Synopsis
The patent discloses a method for selecting an appropriate channel coding and interleaving scheme based on the type of data being transmitted. The system maps different Quality of Service (QoS) profiles—which define requirements for delay, reliability, etc.—to specific, predefined coding schemes. A mobile device requests a connection using a particular QoS profile (e.g., one for real-time voice vs. one for file download), and a network entity uses this request to apply the corresponding optimal coding scheme for that data type (’828 Patent, Abstract).
Asserted Claims
The complaint does not identify specific asserted claims (Compl. ¶113).
Accused Features
Apple’s products are accused of infringing by using these QoS-based procedures to manage data connections on packet-switched mobile networks (Compl. ¶112).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are "Apple Standard-Compliant Products," which include a wide range of Apple's mobile devices, such as the "iPhone, iPhone 3G, iPhone 3GS, iPhone 4, iPhone 4S, iPhone 5, iPhone 5C, iPhone 5S, iPhone 6, iPhone 6 Plus, iPad, iPad 2, third and fourth generation iPads, iPad Mini, second generation iPad Mini, and iPad Air" (Compl. ¶22).
Functionality and Market Context
The complaint alleges that these products implement the GSM/GPRS, UMTS, and/or LTE mobile communication standards (Compl. ¶22). The infringement allegations are predicated on the belief that compliance with these standards necessitates the practice of the inventions claimed in the patents-in-suit (Compl. ¶64, ¶76, ¶88, ¶100, ¶112). The accused products constitute a highly successful and significant share of the global smartphone and tablet markets.
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint does not provide claim charts or detailed infringement contentions, instead basing its allegations on the products' compliance with cellular standards.
'634 Patent Infringement Allegations
| Claim Element (from Independent Claim 4) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A user terminal, comprising: a control unit ... operable for receiving a type signal (102) indicative of a type of high level protocols, | Apple's devices receive signals from cellular base stations that identify the available network technology (e.g., LTE, UMTS, GSM), which corresponds to receiving a signal indicating a protocol type. | ¶64 | col. 5:29-31 |
| and for selecting one of said high level protocols for application based on said received type signal. | Based on the detected network technology, the device's baseband processor selects and activates the corresponding software protocol stack required to communicate with that network. | ¶64 | col. 2:34-38 |
'151 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| at the base station subsystem, allocating to the mobile station a single timing advance index, which index identifies one idle frame in a multiframe structure in which the mobile station should transmit a timing access burst... | The cellular network allocates a single index to an Apple device to manage synchronization, a process in which the device participates as part of its standards-compliant operation. | ¶76 | col. 4:6-14 |
| at the base station subsystem, allocating to the mobile station an idle frame slot number, said slot number identifying the time slot in said idle frames when said timing access burst and said timing advance values should be transmitted; | The network allocates a specific slot number for timing-related transmissions, and the accused Apple device is configured to use this allocation. | ¶76 | col. 4:15-21 |
| transmitting said timing advance index and said idle frame slot number to the mobile station; | The network transmits this index and slot number to the accused Apple device over the air interface. | ¶76 | col. 4:22-23 |
| and at the mobile station, subsequently using said timing advance index and said idle frame slot number to determine timing advance values for all user data channels allocated to the mobile station. | The accused Apple device uses the single received index and slot number to calculate and apply the correct timing advance for all of its uplink and downlink data channels, as required by the standard. | ¶76 | col. 4:23-26 |
Identified Points of Contention
- Scope Questions: A primary question for all asserted patents will be whether the claims, drafted with terminology from the 2G/3G era (e.g., "B-ISDN network," specific GPRS frame structures), can be construed to read on the different and more complex architectures of modern 4G/LTE networks.
- Technical Questions: The complaint's theory of infringement rests on the assertion that practicing the standards is practicing the claims. The key technical question is whether the relevant ETSI standards (GSM, UMTS, LTE) actually mandate every limitation of the asserted claims. This will require expert analysis of the standards documents themselves, which are not part of the complaint.
V. Key Claim Terms for Construction
Patent: '634 Patent
The Term: "high level signalling protocols"
Context and Importance
The definition of this term is critical for determining the scope of the invention. Infringement depends on whether the software stacks used in modern iPhones to manage communications over different network types (e.g., LTE vs. UMTS) fall within this definition.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The specification provides "GSM networks" and "broadband ISDN (B-ISDN) networks" as examples, suggesting the term is meant to encompass entire, distinct, and technologically incompatible communication systems (’634 Patent, col. 2:38-41).
- Evidence for a Narrower Interpretation: The specific examples used are from the late 1990s. A party could argue the term is limited to the specific protocol layers and architectures explicitly described (e.g., Fig. 6), and does not cover the fundamentally different protocol arrangements of modern LTE systems.
Patent: '151 Patent
The Term: "single timing advance index"
Context and Importance
The novelty of the asserted claims appears to hinge on the use of a "single" index to manage timing for "all user data channels" of a mobile station. Practitioners may focus on this term because infringement will depend on whether the accused devices, when operating under the relevant standards, use one common index in this manner.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The patent presents this concept as a general improvement for packet radio services like GPRS, intended to apply to both uplink and downlink channels to reduce overhead, suggesting a broad functional meaning (’151 Patent, col. 4:3-9).
- Evidence for a Narrower Interpretation: The claim is tied to a specific method involving "idle frame[s] in a multiframe structure" and "timing access burst[s]" (’151 Patent, col. 4:10-14). An argument could be made that the term is limited to this specific structural context and does not read on different timing synchronization mechanisms that may be used in later standards.
VI. Other Allegations
Indirect Infringement
The complaint alleges Apple induces infringement by providing instructional materials and user manuals that direct end-users to operate the accused products on cellular networks in an infringing manner (Compl. ¶67, ¶79). It also alleges contributory infringement on the basis that Apple provides hardware and software components that are especially made to practice the patented inventions and are not staple articles of commerce (Compl. ¶69, ¶81).
Willful Infringement
Willfulness is alleged based on pre-suit knowledge of the patents. The complaint claims Apple was aware of the patents and their infringement "at least as early as 2009" due to licensing discussions with the original patent owner, Nokia (Compl. ¶71, ¶83, ¶95, ¶107, ¶118).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be the enforceability of standard-essential patents (SEPs) and the nature of FRAND negotiations. The case appears to be driven as much by the parties' dispute over licensing terms as by technical infringement. A court will have to consider whether Core Wireless has made a FRAND offer and whether Apple has negotiated in good faith, which may determine whether an injunction is available or how damages are calculated.
- A key evidentiary question will be one of infringement by standard. The complaint's allegations are conclusory and lack specific evidence mapping product functionality to claim limitations. The case will likely depend on a technical battle between experts over whether the GSM, UMTS, and LTE standards, as implemented by Apple, require the performance of every step of the asserted claims.
- A dispositive legal question will be one of claim scope versus evolving technology. Can claims drafted and prosecuted in the late 1990s and early 2000s, using the terminology of that era, be interpreted to cover the substantially different and more advanced technologies implemented in modern 4G/LTE networks and devices?