DCT

1:15-cv-00546

Evolved Wireless LLC v. ZTE Corp

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:15-cv-00546, D. Del., 06/25/2015
  • Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendant ZTE Solutions Inc. is a Delaware corporation and the ZTE entities conduct substantial business in the district, including selling the accused products. Plaintiff Evolved Wireless is also incorporated in Delaware.
  • Core Dispute: Plaintiff alleges that Defendant’s Long Term Evolution (LTE) capable cellular devices infringe a portfolio of five patents declared essential to the LTE telecommunications standard.
  • Technical Context: The technology concerns fundamental aspects of the LTE wireless communication standard, which governs high-speed data transmission for mobile phones and other data terminals.
  • Key Procedural History: The complaint alleges that the patents-in-suit, originally assigned by LG Electronics, are essential to the 3GPP LTE standard. Plaintiff asserts that it made multiple offers to license this standard-essential patent (SEP) portfolio to Defendant on Fair, Reasonable, and Non-Discriminatory (FRAND) terms, but Defendant did not respond. Subsequent to the filing of this complaint, Inter Partes Review (IPR) proceedings at the U.S. Patent and Trademark Office resulted in the cancellation of all asserted claims of U.S. Patent Nos. 7,746,916 and 7,881,236, and some asserted claims of U.S. Patent No. 7,768,965.

Case Timeline

Date Event
2005-10-31 U.S. Patent No. 7,809,373 Priority Date
2005-11-28 U.S. Patent No. 7,746,916 Priority Date
2006-06-09 U.S. Patent No. 8,218,481 Priority Date
2006-10-27 U.S. Patent No. 7,768,965 Priority Date
2008-08-11 U.S. Patent No. 7,881,236 Priority Date
2010-06-29 U.S. Patent No. 7,746,916 Issued
2010-08-03 U.S. Patent No. 7,768,965 Issued
2010-10-05 U.S. Patent No. 7,809,373 Issued
2011-02-01 U.S. Patent No. 7,881,236 Issued
2012-07-10 U.S. Patent No. 8,218,481 Issued
2015-05-04 Plaintiff sends first licensing offer letter to Defendant
2015-06-03 Plaintiff sends second licensing offer letter to Defendant
2015-06-25 Complaint Filed

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

U.S. Patent No. 7,746,916 - "Method and Apparatus for Generating and Transmitting Code Sequence in a Wireless Communication System"

  • Issued: June 29, 2010

The Invention Explained

  • Problem Addressed: The patent and complaint describe that prior art 3G systems had a limited number of available code sequences used for signals like preambles and pilot signals. This limitation could either increase interference between devices or restrict the number of devices a base station could serve (Compl. ¶32; ’916 Patent, col. 1:31-34).
  • The Patented Solution: The invention proposes a method to generate code sequences of a desired, arbitrary length. This is achieved by first generating a base sequence of a different, often standardized length (e.g., a prime number length for CAZAC codes), and then modifying it by either discarding elements (truncating) or inserting null elements (padding) to achieve the exact length required by the system (’916 Patent, Abstract; col. 2:5-17).
  • Technical Importance: This technique provides flexibility in generating reference signals and is described as "fundamental to the operation of LTE" for random access preambles and uplink reference signals (Compl. ¶31).

Key Claims at a Glance

  • The complaint alleges infringement of "one or more claims" but does not identify any specific independent claims (Compl. ¶73).

U.S. Patent No. 7,768,965 - "Method for Transmitting and Receiving Signals Based on Segmented Access Scheme and Method for Allocating Sequence for the Same"

  • Issued: August 3, 2010

The Invention Explained

  • Problem Addressed: In wireless cells, particularly large ones, prior art systems required all mobile devices to use long random access preambles to account for the maximum possible signal delay. This created unnecessary overhead for devices close to the cell tower and increased the probability of signal collisions as more devices tried to access the network (Compl. ¶39, ¶41).
  • The Patented Solution: The invention provides a method where mobile devices use preambles of different lengths based on their location within the cell. Devices in the center of a cell can use a short sequence, while devices at the edge use a long sequence, thereby reducing system overhead and the likelihood of collisions (Compl. ¶40; ’965 Patent, col. 3:40-52).
  • Technical Importance: This "segmented access scheme" allows for more efficient allocation and use of random access channel (RACH) resources, which is critical for system performance in LTE networks with varying cell sizes (Compl. ¶40).

Key Claims at a Glance

  • The complaint alleges infringement of "one or more claims" but does not identify any specific independent claims (Compl. ¶84).

U.S. Patent No. 7,809,373 ("the '373 Patent") - "Method of Transmitting and Receiving Radio Access Information in a Wireless Mobile Communication"

  • Issued: October 5, 2010

Technology Synopsis

The patent addresses the process of "handover," where a mobile device moves from one base station's coverage area to another. The described problem is the risk of signal collision when multiple devices simultaneously attempt to contact the new (target) base station using a limited set of random access preambles (Compl. ¶46). The proposed solution is for the target base station to provide a dedicated, collision-free preamble to the mobile device in advance, via the original (source) base station, reducing handover delays (Compl. ¶47, ¶49).

Asserted Claims

  • General allegation of infringement of one or more claims (Compl. ¶95).

Accused Features

  • ZTE's LTE devices that perform handover procedures between base stations (Compl. ¶95).

U.S. Patent No. 7,881,236 ("the '236 Patent") - "Data Transmission Method and User Equipment for the Same"

  • Issued: February 1, 2011

Technology Synopsis

The patent relates to handling data transmission from a specific buffer in a mobile device known as the "Msg3 buffer," which is used during the random access procedure. The complaint alleges that problems arise from transmission errors when data stored in this buffer is transmitted "regardless of the reception mode of the Uplink Grant signal" (Compl. ¶52). The invention provides a method to solve this problem, ensuring more reliable data transmission during this critical phase of establishing a connection (Compl. ¶53).

Asserted Claims

  • General allegation of infringement of one or more claims (Compl. ¶106).

Accused Features

  • ZTE's LTE devices that manage data transmission from the Msg3 buffer in response to uplink grant signals (Compl. ¶106).

U.S. Patent No. 8,218,481 ("the '481 Patent") - "Method of Transmitting Data in a Mobile Communication System"

  • Issued: July 10, 2012

Technology Synopsis

This patent addresses the creation of preamble signals for random access. Prior art systems used preambles of a fixed length, which limited flexibility across different cell sizes and made them susceptible to "noise or channel change" (Compl. ¶56). The patented solution involves creating a more robust preamble by repeating a specific sequence multiple times and adding a cyclic prefix, which improves the probability of successful reception by the base station (Compl. ¶56).

Asserted Claims

  • General allegation of infringement of one or more claims (Compl. ¶117).

Accused Features

  • ZTE's LTE devices that generate and transmit preambles for random access signals (Compl. ¶117).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are ZTE's cellular telephones, smartphones, and other wireless devices with LTE capabilities, including but not limited to those listed in the complaint's Appendix A (Compl. ¶64, ¶73).

Functionality and Market Context

  • The complaint alleges that the accused products are sold, manufactured, and marketed as being compliant with the LTE standards established by ETSI and 3GPP, specifically including technical specifications TS 36.211, .300, .321, .331, and .423 (Compl. ¶65, ¶73). The core of the infringement allegation is that by practicing these standards, the accused products necessarily perform the methods and embody the apparatuses claimed by the patents-in-suit, which are alleged to be essential to those standards (Compl. ¶75, ¶86). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint does not assert specific claims for any of the patents-in-suit or provide detailed claim charts. The infringement theory is based on the allegation that the patents are essential to the LTE standard (Compl. ¶18, ¶75). The narrative allegation is that because the accused ZTE products practice the LTE standard to function, they inherently infringe the patents. For each patent, the complaint alleges that ZTE's LTE devices perform the functions covered by the patent claims by virtue of their compliance with the relevant 3GPP technical specifications (Compl. ¶¶ 73, 84, 95, 106, 117).

  • Identified Points of Contention:
    • Essentiality Questions: A primary point of dispute will be whether the patents-in-suit are, in fact, essential to mandatory, non-optional portions of the cited LTE standards. A defendant in such a case may argue that its products can comply with the standard without infringing the asserted claims, or that the claims read on optional parts of the standard that it does not implement.
    • Validity Questions: The subsequent cancellation of many asserted claims by the USPTO in IPR proceedings suggests that validity will be a central issue. The analysis will question whether the claims, as they existed at the time of the alleged infringement, were valid over the prior art.

V. Key Claim Terms for Construction

The complaint does not provide sufficient detail for analysis of key claim terms. Its allegations are directed at the patents and technology areas as a whole rather than focusing on the specific language of any particular claim, making it premature to identify terms that will be central to a construction dispute.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges both induced and contributory infringement for all five patents.
    • Inducement is alleged based on ZTE marketing and selling LTE-compliant devices with the intent that its customers use them in an infringing manner (e.g., Compl. ¶74, ¶85).
    • Contributory infringement is alleged on the basis that the patents are essential to the LTE standards, making ZTE's devices "especially made to infringe" and lacking substantial non-infringing uses (e.g., Compl. ¶75, ¶86).
  • Willful Infringement: Willfulness is alleged based on notice provided "At least as early as the service of this Complaint" (e.g., Compl. ¶80, ¶91). The complaint also establishes a potential basis for pre-suit willfulness by documenting two unanswered letters sent in May and June 2015 offering to license the patent portfolio (Compl. ¶68-69).

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

This case appears to be a quintessential dispute over Standard-Essential Patents (SEPs). The central questions for the court will likely be:

  1. Essentiality and Infringement: A core technical and factual question is whether the asserted patent claims read on mandatory implementations of the LTE standard. Can ZTE demonstrate that its products comply with the standard via non-infringing alternatives, or are the patents truly essential as alleged?
  2. Validity: Given the subsequent cancellation of many asserted claims in IPR proceedings, a dispositive issue will be the validity of the remaining claims. The dispute will likely involve extensive prior art analysis to determine if the claimed inventions were novel and non-obvious.
  3. FRAND Obligations: As an SEP case, the parties' duties to negotiate a license on Fair, Reasonable, and Non-Discriminatory (FRAND) terms will be a critical issue, impacting potential remedies. A key question will be whether the Plaintiff's licensing offers constituted a genuine FRAND offer and whether Defendant's lack of response constituted a failure to negotiate in good faith.