Uniloc USA Inc v. Apple Inc

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 Name: Uniloc USA, Inc. v. Apple Inc.
• Case Identification: 1:18-cv-00164, W.D. Tex., 05/30/2018
• Venue Allegations: Plaintiff alleges venue is proper in the Western District of Texas because Defendant Apple Inc. maintains regular and established places of business within the district.
• Core Dispute: Plaintiff alleges that Defendant’s electronic devices utilizing the Bluetooth Low Energy protocol infringe a patent related to a communication system for efficiently polling secondary devices.
• Technical Context: The technology concerns low-power wireless communication, specifically methods for a primary device to query peripheral devices without maintaining a constantly active and power-draining connection.
• Key Procedural History: The operative complaint is a First Amended Complaint. Subsequent to its filing, the asserted patent was the subject of multiple Inter Partes Review (IPR) proceedings before the U.S. Patent and Trademark Office. An IPR certificate issued on September 28, 2021, cancelled claims 11 and 12 of the patent. This is significant as the complaint asserts claim 11.

Case Timeline

Date	Event
2000-06-26	'049 Patent Priority Date
2006-01-31	'049 Patent Issue Date
2018-5-30	First Amended Complaint Filing Date
2018-11-12	IPR2019-00251 Filing Date
2019-05-06	IPR2019-01026 Filing Date
2019-08-22	IPR2019-01530 Filing Date
2021-09-28	IPR Certificate Issued (Claims 11-12 cancelled)

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 6,993,049 - "COMMUNICATION SYSTEM"

• Patent Identification: U.S. Patent No. 6,993,049, "COMMUNICATION SYSTEM", issued January 31, 2006.

The Invention Explained

• Problem Addressed: The patent describes the challenge of connecting wireless Human Interface Devices (HIDs), such as a mouse or keyboard, to a host system using protocols like Bluetooth. It notes that the standard 'inquiry' process to establish a connection can be slow, potentially taking "half a minute or more," which degrades the user experience. Conversely, maintaining a constantly active link to ensure responsiveness is not feasible for battery-operated HIDs. (’049 Patent, col. 5:9-17, 63-65).
• The Patented Solution: The invention proposes a method where a primary station (e.g., a host computer) "piggy-backs" a polling message onto its standard 'inquiry' message broadcasts. It does this by adding an "additional data field" to the inquiry message. A secondary station (e.g., a HID) can then listen for these modified inquiry messages, determine from the additional field that it has been polled, and respond if it has data to transmit. (’049 Patent, Abstract; col. 5:23-35; col. 6:15-18). This system is designed to provide a rapid response time without requiring a permanent communication link. (’049 Patent, col. 5:18-21).
• Technical Importance: The described technique aimed to resolve a fundamental tension in early wireless peripheral design between responsiveness and power consumption, making battery-powered devices like wireless mice more practical. (’049 Patent, col. 5:18-21).

Key Claims at a Glance

• The complaint asserts independent claims 1 (a system claim), 8 (a secondary station claim), and 11 (a method claim), along with dependent claims 2, 4, and 9 (Compl. ¶14).
• It should be noted that claim 11 was subsequently cancelled in an IPR proceeding.
• The essential elements of independent claim 1 include:
  • A communications system with a primary station and at least one secondary station.
  • The primary station has "means for broadcasting a series of inquiry messages," where each message has a plurality of predetermined data fields according to a first communications protocol.
  • The primary station also has "means for adding to an inquiry message prior to transmission an additional data field for polling at least one secondary station."
  • The polled secondary station has means for determining when the additional field has been added, determining if it has been polled, and responding to the poll if it has data to transmit.
• The complaint explicitly reserves the right to assert additional claims (Compl. ¶14).

III. The Accused Instrumentality

Product Identification

• The complaint names a wide array of Apple products as the "Accused Infringing Devices," including iPhones, iPads, MacBooks, Apple Watches, AirPods, and Magic series peripherals, specifically identifying those that "utilize Bluetooth Low Energy version 4.0 and above" (Compl. ¶12).

Functionality and Market Context

• The complaint alleges that the accused devices implement the Bluetooth Low Energy (BLE) communications protocol, which allows devices to act as a "central" (primary station) or a "peripheral" (secondary station) (Compl. ¶15, ¶22).
• The core accused functionality is the BLE "advertising" and "discovery" process. A peripheral device broadcasts "advertising packets" to announce its presence. A central device can "scan" for these packets and initiate a connection (Compl. ¶22). One of Apple’s developer documents, referenced as a visual in the complaint, describes this process where "a central can scan and listen for any peripheral device that is advertising." (Compl. p. 18, Figure 1-2).
• The complaint alleges these advertising packets are the claimed "inquiry messages" and that the variable "PDU Payload" within these packets constitutes the "additional data field for polling" (Compl. ¶16-17).

IV. Analysis of Infringement Allegations

The complaint provides an illustrative infringement analysis for Claim 1 of the ’049 Patent.

'049 Patent Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
a communications system comprising a primary station and at least one secondary station	The Accused Infringing Devices implement the Bluetooth Low Energy (BLE) protocol and can operate as either primary ("central") or secondary ("peripheral") stations.	¶15	col. 5:22-25
the primary station has means for broadcasting a series of inquiry messages, each in the form of a plurality of predetermined data fields arranged according to a first communications protocol	The devices broadcast BLE "advertising message packets," which are alleged to be the "inquiry messages." These packets contain predetermined fields such as a Preamble, Access address, and PDU header, as shown in a packet structure diagram from the Bluetooth specification.	¶16, p. 6	col. 5:25-29
and means for adding to an inquiry message prior to transmission an additional data field for polling at least one secondary station	The devices add a variable "PDU Payload" field to the advertising packets. This field, containing advertising data, is alleged to be the "additional data field for polling," as a receiving device may respond to it.	¶17	col. 5:29-31
and wherein the at least one polled secondary station has means for determining when an additional data field has been added... for determining whether it has been polled... and for responding to a poll when it has data for transmission...	A receiving device reads the "Length" and "PDU Type" fields in the packet header to determine the presence of the payload and to know if the message is one that can be responded to (e.g., a "connectable undirected" event), thereby allowing it to respond with a scan or connection request.	¶18, ¶15	col. 5:31-35

Identified Points of Contention

• Scope Questions: A primary dispute may arise over whether a standard BLE "advertising packet" constitutes an "inquiry message" as the term is used in the patent. The patent's specification describes the formal "inquiry" procedure of an older Bluetooth standard (’049 Patent, col. 6:21-29), raising the question of whether the claim term is limited to that specific context or can be read more broadly to cover the modern BLE advertising mechanism.
• Technical Questions: The analysis raises the question of whether the "PDU Payload" in a BLE packet is truly an "additional data field" that is "added" to a base message, as the claim requires. A counterargument may be that the payload is an integral and standard component of an advertising packet, not a separate addition to a distinct "inquiry message." Further, it is a question for the court whether a general broadcast advertising packet, which any device can receive, performs the function of "polling at least one secondary station" in the manner contemplated by the patent.

V. Key Claim Terms for Construction

The Term: "inquiry message"

• Context and Importance: The interpretation of this term is fundamental to the infringement case. The complaint equates BLE "advertising message packets" with the patent's "inquiry message." Practitioners may focus on this term because the patent was written based on an older version of the Bluetooth protocol, and the viability of the case depends on mapping that older terminology to the modern, accused BLE protocol.
• Intrinsic Evidence for a Broader Interpretation: The patent states its applicability to a "range of other communication systems" beyond the specific Bluetooth example, which may support a functional definition of "inquiry message" as any broadcast used to discover or elicit a response from other devices (’049 Patent, col. 5:6-8).
• Intrinsic Evidence for a Narrower Interpretation: The detailed description repeatedly references the specific "Inquiry procedures" of the Bluetooth standard, including the use of "General Inquiry Access Code (GIAC)" and "Dedicated Inquiry Access Codes (DIAC)," suggesting "inquiry message" could be construed as a term of art limited to that specific, formal procedure (’049 Patent, col. 6:21-29).

The Term: "adding... an additional data field for polling"

• Context and Importance: Infringement requires not just a data field, but one that is "additional" and serves the purpose of "polling." The complaint identifies the PDU Payload as this field. The dispute will center on whether the payload is functionally "additional" and whether its purpose is "polling."
• Intrinsic Evidence for a Broader Interpretation: The Abstract states the primary station "adds to some or all of the inquiry messages an additional data field," which could imply flexibility in how the field is incorporated and used to invite a response from a secondary device (’049 Patent, Abstract).
• Intrinsic Evidence for a Narrower Interpretation: The specification discusses appending an "extra field" to a standard packet and using it to carry the "address of the HID being polled," which could support a narrower definition requiring the modification of a standard message to target a specific device, rather than a general broadcast with a standard payload field (’049 Patent, col. 5:2-3; col. 6:61-63).

VI. Other Allegations

Indirect Infringement

• The complaint alleges active inducement, stating that Apple intentionally designed its devices to operate in the accused manner and instructs customers on how to use the functionality through materials like developer guidelines and product specification sheets (Compl. ¶¶20-22). The complaint provides a screenshot from Apple’s developer website as purported evidence of these instructions (Compl. p. 18).

Willful Infringement

• The willfulness claim is based on alleged knowledge of the ’049 Patent and the infringement allegations from, at the latest, the date of service of the original complaint. The complaint alleges that Apple's continued infringement despite this notice is willful (Compl. ¶19, ¶26).

VII. Analyst’s Conclusion: Key Questions for the Case

• A core issue will be one of definitional scope: can the term "inquiry message," rooted in the patent's description of classic Bluetooth protocols, be construed to cover the standard "advertising packets" used in the modern and structurally different Bluetooth Low Energy protocol?
• A key evidentiary question will be one of functional equivalence: does a general-purpose BLE advertising broadcast, which is not directed to a specific recipient, perform the same function as the patent's "polling" of a secondary station, or is there a fundamental mismatch in technical operation?
• A significant procedural issue will be the impact of the IPR cancellation of asserted method claim 11. This will likely require the plaintiff to refocus its arguments on the surviving system and apparatus claims and may influence the scope of discovery, expert testimony, and potential damages.