DCT

5:24-cv-04097

Universal Connectivity Tech Inc v. HP Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:23-cv-01177, W.D. Tex., 09/28/2023
  • Venue Allegations: Plaintiff alleges venue is proper because HP is registered to do business in Texas, has transacted business in the district, and maintains regular and established places of business in the district.
  • Core Dispute: Plaintiff alleges that Defendant’s laptops, desktops, monitors, and docking stations supporting industry-standard connectivity protocols like DisplayPort and USB infringe eight patents related to data communication and device connectivity.
  • Technical Context: The technologies at issue relate to methods for data transmission, protocol management, and power delivery over widely adopted digital interfaces that connect computers and peripherals.
  • Key Procedural History: The complaint alleges that Plaintiff’s parent company, WiLAN, sent notice letters to HP on June 30, 2022, and October 6, 2022, identifying alleged infringement and offering to discuss a license, to which HP allegedly did not respond. The complaint also includes a count for declaratory judgment concerning Plaintiff's compliance with intellectual property rights policies of the Video Electronics Standards Association (VESA) and the USB Implementers Forum (USB-IF), suggesting the patents may be considered standard-essential.

Case Timeline

Date Event
2000-11-22 Priority Date for U.S. Patent Nos. 7,154,905 and 7,746,798
2003-06-12 Priority Date for U.S. Patent No. 7,187,307
2006-12-26 U.S. Patent No. 7,154,905 Issued
2007-03-06 U.S. Patent No. 7,187,307 Issued
2008-01-04 Priority Date for U.S. Patent Nos. 7,856,520 and 7,921,231
2009-12-11 Priority Date for U.S. Patent No. 8,680,712
2010-06-29 U.S. Patent No. 7,746,798 Issued
2010-12-21 U.S. Patent No. 7,856,520 Issued
2011-04-05 U.S. Patent No. 7,921,231 Issued
2012-03-29 Priority Date for U.S. Patent No. 9,232,265
2014-03-25 U.S. Patent No. 8,680,712 Issued
2014-04-14 Priority Date for U.S. Patent No. 9,852,103
2016-01-05 U.S. Patent No. 9,232,265 Issued
2017-12-26 U.S. Patent No. 9,852,103 Issued
2022-06-30 Plaintiff's parent company (WiLAN) sent pre-suit notice letter to HP
2022-10-06 WiLAN sent follow-up letter to HP
2023-09-28 Complaint Filed

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

U.S. Patent No. 7,154,905

  • Patent Identification: U.S. Patent No. 7,154,905, "Method and system for nesting of communications packets," issued December 26, 2006. (Compl. ¶8).

The Invention Explained

  • Problem Addressed: The patent describes the inefficiency of contemporary communication protocols, such as Fibre Channel, when transmitting large blocks of data typical in storage applications. These large blocks must be divided into many smaller packets, creating significant overhead from redundant header information and processing. (’905 Patent, col. 2:33-44). This can create bottlenecks, especially in storage area networks.
  • The Patented Solution: The invention proposes a method for "packet nesting," where the transmission of a large, lower-priority data packet can be preempted (i.e., paused) to allow for the transmission of a smaller, higher-priority control packet. ('905 Patent, col. 5:1-16). After the high-priority packet is sent, a "continue" primitive is transmitted, and the transmission of the original data packet resumes. ('905 Patent, FIG. 13). This allows urgent control information to be sent without waiting for a lengthy data transfer to complete.
  • Technical Importance: This preemption mechanism improves the responsiveness and efficiency of serial communication systems by ensuring that time-sensitive control messages are not delayed by large data transfers. ('905 Patent, col. 20:1-12).

Key Claims at a Glance

  • The complaint asserts at least independent claim 21. (Compl. ¶10).
  • The complaint does not provide the full text of the asserted claim or the referenced claim chart exhibit, preventing a detailed breakdown of the claim elements.
  • The complaint reserves the right to assert additional claims.

U.S. Patent No. 7,187,307

  • Patent Identification: U.S. Patent No. 7,187,307, "Method and system for encapsulation of multiple levels of communication protocol functionality within line codes," issued March 6, 2007. (Compl. ¶19).

The Invention Explained

  • Problem Addressed: Traditional communication architectures are based on a layered model (e.g., the OSI model), where each layer performs distinct functions. The patent notes that this strict separation can be inefficient, as functions at one layer may benefit from information typically siloed in another. (’307 Patent, col. 1:21-30).
  • The Patented Solution: The invention describes a method to "encapsulate" functionality from multiple protocol layers into the physical layer's line code. ('307 Patent, Abstract). Instead of a simple data payload, a transmitted "cell" contains both application data and various control bits that correspond to different protocol layers, such as link-level flow control, network-level addressing, or application-level priority. ('307 Patent, FIG. 2; col. 6:3-14). This allows a single transmitted block to carry information for the physical, link, network, and application layers simultaneously.
  • Technical Importance: By collapsing multiple protocol functions into the line code, this method aims to reduce overhead and latency, creating a more efficient and integrated communication system. ('307 Patent, col. 9:12-22).

Key Claims at a Glance

  • The complaint asserts at least independent claims 53 and 68. (Compl. ¶22).
  • The complaint does not provide the full text of the asserted claims or the referenced claim chart exhibit, preventing a detailed breakdown of the claim elements.
  • The complaint reserves the right to assert additional claims.
    No probative visual evidence provided in complaint.

Multi-Patent Capsule: U.S. Patent No. 7,746,798

  • Patent Identification: U.S. Patent No. 7,746,798, "Method and system for integrating packet type information with synchronization symbols," issued June 29, 2010. (Compl. ¶30).
  • Technology Synopsis: The patent describes a method to encode the type of a data packet (e.g., "control" or "data") into the synchronization symbols that precede the packet's transmission. This allows a receiving device's link layer to immediately identify the packet type and handle it appropriately without needing to first parse the packet header, thereby improving processing speed. (’798 Patent, col. 14:48-61).
  • Asserted Claims: At least independent claim 19. (Compl. ¶32).
  • Accused Features: HP products that support USB 3.0 and later. (Compl. ¶31).

Multi-Patent Capsule: U.S. Patent No. 9,232,265

  • Patent Identification: U.S. Patent No. 9,232,265, "Method, apparatus and system for transitioning an audio/video device between a source mode and a sink mode," issued January 5, 2016. (Compl. ¶41).
  • Technology Synopsis: The patent discloses a method for an audio/video (A/V) device to transition between operating as a "source" (transmitting A/V data) and a "sink" (receiving A/V data). The device defaults to a safe "sink" mode on power-up and then determines its proper role by detecting connectivity characteristics, such as the presence of a supply voltage or specific impedances on the connector pins, preventing electrical conflicts. (’265 Patent, Abstract; col. 1:49-67).
  • Asserted Claims: At least independent claim 8. (Compl. ¶43).
  • Accused Features: HP products that support USB-C Revision 1.0 and later. (Compl. ¶42).

Multi-Patent Capsule: U.S. Patent No. 8,680,712

  • Patent Identification: U.S. Patent No. 8,680,712, "Power delivery over digital interaction interface for video and audio (DiiVA)," issued March 25, 2014. (Compl. ¶52).
  • Technology Synopsis: The patent describes a system for delivering power over the same differential pair wires used for transmitting high-speed digital video and audio data. The system uses filters (HPF and LPF) to separate the DC power from the high-frequency AC data signals, allowing a single cable to handle both power and data transmission. (’712 Patent, Abstract).
  • Asserted Claims: At least independent claim 1. (Compl. ¶54).
  • Accused Features: HP products, including power adapters, that support USB-C Version 1.0 and later. (Compl. ¶53).

Multi-Patent Capsule: U.S. Patent No. 7,856,520

  • Patent Identification: U.S. Patent No. 7,856,520, "Control bus for connection of electronic devices," issued December 21, 2010. (Compl. ¶63).
  • Technology Synopsis: The patent discloses a bi-directional, single-line control bus for connecting electronic devices. To manage multiple types of control signals over this single line, standard control signals (e.g., for DDC or CEC in HDMI) are converted into data packets for transmission, with the packet header identifying the control type. (’520 Patent, Abstract; col. 2:53-62).
  • Asserted Claims: At least independent claim 12. (Compl. ¶65).
  • Accused Features: HP products that support DisplayPort Alt Mode or HDMI Alt Mode over USB-C. (Compl. ¶64).

Multi-Patent Capsule: U.S. Patent No. 7,921,231

  • Patent Identification: U.S. Patent No. 7,921,231, "Discovery of electronic devices utilizing a control bus," issued April 5, 2011. (Compl. ¶73).
  • Technology Synopsis: The patent describes a method for devices connected via a control bus to discover each other's type (e.g., a standard device vs. a mobile device). A device transitions between states by detecting signals on the control bus and power bus, such as a +5V power signal indicating a standard device or a signal pulse on the control bus indicating a mobile device. (’231 Patent, Abstract; col. 4:5-14).
  • Asserted Claims: At least independent claim 10. (Compl. ¶75).
  • Accused Features: HP products that support DisplayPort Alt Mode on USB Type-C Version 1.0 and later. (Compl. ¶74).

Multi-Patent Capsule: U.S. Patent No. 9,852,103

  • Patent Identification: U.S. Patent No. 9,852,103, "Bidirectional transmission of USB data using audio/video data channel," issued December 26, 2017. (Compl. ¶83).
  • Technology Synopsis: The patent discloses a system for half-duplex, bidirectional transmission of USB data over a physical channel primarily used for A/V data, such as an MHL or HDMI link. The system uses Time Division Multiplexing (TDM) to create distinct time slots for forward USB data (source to sink) and backward USB data (sink to source) to share the same high-speed channel. (’103 Patent, Abstract).
  • Asserted Claims: At least independent claim 21. (Compl. ¶85).
  • Accused Features: HP products that support USB 4 Version 1.0 and later. (Compl. ¶84).

III. The Accused Instrumentality

  • Product Identification: The complaint identifies a broad category of HP products, including laptops, desktops, monitors, docking stations, and adapters. (Compl. ¶¶9, 20, 31, 42, 53, 64, 74, 84). Representative examples cited include the "E24 G4 FHD Monitor," "EliteDesk 805 G6 Small Form Factor PC," and "EliteBook 655 G9 Notebook PC." (Compl. ¶9).
  • Functionality and Market Context: The infringement allegations target the products' implementation of industry-standard communication protocols. The accused functionality is tied to support for specific versions of these standards: DisplayPort 1.0 or later ('307 Patent), DisplayPort 1.2 or later ('905 Patent), USB 3.0 or later ('798 Patent), USB-C Revision 1.0 or later ('265, '712 Patents), DisplayPort/HDMI Alt Mode on USB-C ('520, '231 Patents), and USB 4 Version 1.0 or later ('103 Patent). (Compl. ¶¶9, 20, 31, 42, 53, 64, 74, 84). The complaint alleges that by manufacturing and selling these widely-used products, HP engages in infringing activities. (Compl. ¶¶5, 9).

IV. Analysis of Infringement Allegations

The complaint references claim-chart exhibits for each asserted patent (e.g., Exhibit 2 for the '905 Patent, Exhibit 10 for the '307 Patent), but these exhibits were not provided with the complaint document. The following is a narrative summary of the infringement theories based on the complaint's allegations.

'905 Patent Infringement Allegations

The complaint alleges that HP products supporting the DisplayPort 1.2 standard (or later) directly infringe at least claim 21 of the ’905 Patent. (Compl. ¶¶9-10). The central infringement theory appears to be that the technical operation defined by the DisplayPort 1.2 standard inherently practices the patent's claimed method of "nesting of communications packets." This suggests Plaintiff's position is that the standard's mechanism for handling different data types, such as main link data and auxiliary (AUX) channel data, constitutes the claimed preemption and resumption of packet transmission.

  • Identified Points of Contention:
    • Scope Questions: A potential issue is whether the DisplayPort standard's method for transmitting auxiliary data falls within the scope of "nesting" or "preemption" as those terms are defined and used within the ’905 Patent and its prosecution history.
    • Technical Questions: A key question for the court may be whether the accused products' implementation of DisplayPort 1.2 involves the specific steps of interrupting a first packet transmission, sending a complete second packet, and then transmitting a "continue" primitive before resuming the first packet, as described in the patent's specification.

'307 Patent Infringement Allegations

The complaint alleges that HP products supporting DisplayPort Version 1.0 or later infringe at least claim 68 of the ’307 Patent. (Compl. ¶¶20-21). The infringement theory appears to contend that DisplayPort's micro-packet architecture, which packages video, audio, and control data into standardized structures for transmission, practices the patent's claimed method of "encapsulation of multiple levels of communication protocol functionality within line codes."

  • Identified Points of Contention:
    • Scope Questions: The dispute may turn on the construction of "line codes." The question is whether this term, as understood in the patent, can be read to cover the micro-packet structure used in the DisplayPort standard.
    • Technical Questions: An evidentiary question will be whether the different data fields within a DisplayPort micro-packet functionally correspond to the distinct protocol layers (e.g., link, network, application) whose functionalities are claimed to be encapsulated by the invention.

V. Key Claim Terms for Construction

The complaint does not provide the full text of the asserted independent claims for analysis.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges both induced and contributory infringement for all asserted patents. Inducement is based on allegations that HP, with knowledge of the patents since at least June 30, 2022, actively encourages infringement by providing user manuals and online instructions that guide customers to use the accused DisplayPort and USB functionalities. (Compl. ¶¶11-12, 22-23). Contributory infringement is based on allegations that the hardware and software components that support these standards are a material part of the inventions, are not staple articles of commerce, and are especially made or adapted for infringement. (Compl. ¶¶13, 24).
  • Willful Infringement: Willfulness is alleged for the '905, '307, '798, '265, and '712 patents. (Compl. p. 31, ¶c). The allegations are predicated on HP's purported knowledge of the patents and the alleged infringement, stemming from pre-suit notice letters sent in June and October 2022, and its subsequent continuation of the accused activities. (Compl. ¶¶16, 27). The complaint also asserts that infringement continues to be willful post-filing. (Compl. ¶16).

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

  • A central issue will be the patents' relationship to industry standards. Count IX’s request for a declaratory judgment regarding VESA and USB-IF IPR policies signals a likely dispute over whether the patents are essential to the DisplayPort and USB standards and, if so, whether Plaintiff has fulfilled any associated licensing obligations on fair, reasonable, and non-discriminatory (FRAND) terms.
  • A key evidentiary question will be one of technical implementation: do the specific architectures of the DisplayPort and USB standards, as implemented in HP's products, practice the precise methods claimed in the patents? This will necessitate a detailed technical comparison between the standards' operations and the patents' claims regarding, for example, "packet nesting," "protocol encapsulation," and "bidirectional transmission."
  • The question of willfulness will likely depend on the court's evaluation of HP's actions after receiving notice of the asserted patents on June 30, 2022. The complaint's allegation that HP failed to respond to licensing overtures may be a significant factor in determining whether any proven infringement was willful and deliberate.