DCT

1:17-cv-00155

BlackBerry Ltd v. Nokia Corp

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:17-cv-00155, D. Del., 02/14/2017
  • Venue Allegations: Venue is alleged to be proper based on Nokia entities being incorporated in Delaware, transacting business in Delaware, and having previously availed themselves of the forum for patent litigation.
  • Core Dispute: Plaintiff alleges that Defendant’s mobile network infrastructure products and services that comply with 3G and 4G (LTE and UMTS/UTRAN) telecommunications standards infringe eleven of its patents related to wireless communication technology.
  • Technical Context: The technology concerns fundamental aspects of modern mobile networks, including how data is transmitted efficiently, how network performance is estimated, and how devices manage power and network transitions.
  • Key Procedural History: The complaint alleges that Nokia had extensive pre-suit knowledge of the asserted patents and their relevance to LTE standards. This alleged knowledge stems from three primary sources: Nokia’s citation of the patents-in-suit (or their family members) during the prosecution of its own patents; Nokia’s due diligence in a 2009 bid to acquire a patent portfolio from Nortel Networks that included many of the patents-in-suit; and BlackBerry and its predecessor’s public declarations to the European Telecommunications Standards Institute (ETSI) that the patents may be essential to practicing LTE and UMTS/UTRAN standards.

Case Timeline

Date Event
2000-10-27 U.S. Patent No. 7,529,305 Priority Date
2000-12-29 U.S. Patent No. 6,996,418 Priority Date
2001-10-17 U.S. Patent No. 8,254,246 Priority Date
2003-03-11 U.S. Patent No. 9,125,202 Priority Date
2006-02-07 U.S. Patent No. 6,996,418 Issued
2006-05-17 U.S. Patent No. 8,644,829 Priority Date
2007-08-07 U.S. Patent No. 8,494,090 Priority Date
2007-09-14 U.S. Patent No. 8,897,192 Priority Date
2007-11-13 U.S. Patent No. 8,243,683 Priority Date
2009-05-05 U.S. Patent No. 7,529,305 Issued
2009-06-16 U.S. Patent Nos. 8,861,433 & 9,426,697 Priority Date
2009-06-19 Alleged date Nokia knew of Nortel-owned patents via due diligence
2009-09-25 U.S. Patent No. 9,253,772 Priority Date
2012-08-14 U.S. Patent No. 8,243,683 Issued
2012-08-28 U.S. Patent No. 8,254,246 Issued
2013-07-23 U.S. Patent No. 8,494,090 Issued
2014-02-04 U.S. Patent No. 8,644,829 Issued
2014-10-14 U.S. Patent No. 8,861,433 Issued
2014-11-25 U.S. Patent No. 8,897,192 Issued
2015-09-01 U.S. Patent No. 9,125,202 Issued
2016-02-02 U.S. Patent No. 9,253,772 Issued
2016-08-23 U.S. Patent No. 9,426,697 Issued
2017-02-14 Complaint Filing Date

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

U.S. Patent No. 6,996,418 - "Apparatus and Method for OFDM Data Communications", Issued February 7, 2006

The Invention Explained

  • Problem Addressed: The patent addresses the challenge in Orthogonal Frequency Division Multiplexed (OFDM) systems where using a single, wide omni-directional beam to transmit both general "service" information (like pilot and signaling channels) and high-rate "data" traffic to a specific user is inefficient (Compl. ¶¶112-113; ’418 Patent, col. 1:60-2:6). This approach requires high power to ensure the data reaches its target, which is expensive and increases the potential for interference with adjacent cells (Compl. ¶113; ’418 Patent, col. 1:63-2:6).
  • The Patented Solution: The invention proposes a system where a base station uses two different types of transmission beams. It transmits service information, needed by all mobile terminals in a coverage area, on a broad or omni-directional beam. Simultaneously, it transmits data traffic, intended for a specific target terminal, using a separate, focused "directional transmission beam." This ensures sufficient power is directed at the target for data-intensive traffic without broadcasting that high-power signal across the entire sector (Compl. ¶114; ’418 Patent, col. 2:33-37, Abstract). Figure 5 of the patent, reproduced in the complaint, illustrates this concept with a wide service beam (89) covering all terminals and a narrow, directional data beam (88) aimed at a target terminal (54) (Compl. p. 31; ’418 Patent, Fig. 5).
  • Technical Importance: This method enhances power efficiency and reduces interference in OFDM-based wireless networks, which were foundational for 4G technologies. (Compl. ¶¶113-114).

Key Claims at a Glance

  • The complaint asserts independent Claim 1 (Compl. ¶116).
  • Claim 1 requires an OFDM base station with:
    • A processing apparatus to receive and process service and data traffic information.
    • A transmission apparatus to transmit the processed service information on a first set of carriers to mobile terminals within a coverage area using "at least one first transmission beam."
    • The transmission apparatus also transmits the processed data traffic information on a second set of carriers to a target mobile terminal using "at least one second transmission beam."
    • The second transmission beam is specified as being a "directional transmission beam."
  • The complaint also asserts dependent claims 2, 4, and 5 (Compl. ¶116).

U.S. Patent No. 8,254,246 - "Scattered Pilot Pattern and Channel Estimation Method for MIMO-OFDM Systems", Issued August 28, 2012

The Invention Explained

  • Problem Addressed: The patent identifies a problem in Multiple-Input Multiple-Output (MIMO) OFDM systems, particularly with mobile applications where the channel characteristics change rapidly (Compl. ¶128; ’246 Patent, col. 3:41-45). To perform accurate "channel estimation," receivers rely on known "pilot symbols" embedded in the signal. However, increasing the number of pilot symbols to track a rapidly changing channel reduces the data transmission rate (Compl. ¶127; ’246 Patent, col. 2:18-20). The problem is minimizing pilot symbol overhead while maximizing the accuracy of channel estimation (Compl. ¶128; ’246 Patent, col. 3:48-55).
  • The Patented Solution: The invention discloses a method for inserting "scattered pilot symbols" into OFDM frames. For a base station with multiple antennas, the pilot symbols are inserted in an identical pattern for each antenna. Crucially, this pattern is "offset" from the pattern used by an adjacent base station (Compl. ¶125; ’246 Patent, Claim 1). This arrangement allows for fewer pilot symbols to be used within each OFDM symbol while still enabling accurate interpolation of the channel response, thereby improving the overall data rate (Compl. ¶129; ’246 Patent, col. 4:23-26). Figure 5 of the patent depicts an exemplary "diamond lattice structure" for these pilot symbols (Compl. p. 36; ’246 Patent, Fig. 5).
  • Technical Importance: This technique for arranging pilot signals improves the efficiency and data throughput of MIMO-OFDM systems, a core technology for 4G LTE networks. (Compl. ¶¶128-129).

Key Claims at a Glance

  • The complaint asserts independent Claims 1 and 15 (Compl. ¶131).
  • Claim 1 requires a method at an OFDM base station with multiple antennas, comprising:
    • For each antenna, inserting scattered pilot symbols in an identical scattered pattern in time-frequency.
    • The scattered patterns are offset from those of an adjacent OFDM base station.
  • Claim 15 requires an OFDM base station with:
    • An OFDM frame generator that inserts pilot symbols into OFDM frames.
    • For each antenna, scattered pilot symbols are inserted in an identical scattered pattern.
    • The scattered patterns are offset from the adjacent OFDM base station.
  • The complaint also asserts dependent claims 3, 8-10, 17, 22, and 23 (Compl. ¶131).

U.S. Patent No. 8,494,090 - "Detecting the Number of Transmit Antennas in a Base Station", Issued July 23, 2013

  • Technology Synopsis: The patent addresses the problem of a mobile device incorrectly decoding a broadcast channel because it has assumed the wrong number of transmit antennas are being used by the base station (Compl. ¶147). The solution involves scrambling broadcast data with a "predetermined scrambling sequence" that is unique to the number of transmit antennas being used, allowing the device to correctly identify the antenna configuration (Compl. ¶¶144, 148).
  • Asserted Claims: The complaint asserts all claims of the patent (Compl. ¶149).
  • Accused Features: The accused functionality is the scrambling of transmitted bits in Nokia's LTE-compliant products with a predetermined mask that is a function of the number of transmit antenna ports at the base station, as specified in 3GPP standards (Compl. ¶150). The complaint includes Table 5.3.1.1-1 from the 3GPP specification showing different CRC masks for different numbers of antenna ports (Compl. p. 44).

U.S. Patent No. 7,529,305 - "Combination of Space-Time Coding and Spatial Multiplexing, and the Use of Orthogonal Transformation in Space-Time Coding", Issued May 5, 2009

  • Technology Synopsis: The patent addresses the need for a layered space-time coding structure that provides not only improved spectral efficiency but also improved signal-to-noise ratio (SNR) performance (Compl. ¶159). The solution involves a transmitter that uses a "delay arrangement" to ensure that representations of an input symbol are transmitted at different times across multiple space-time coded streams (Compl. ¶158). This is illustrated in Figure 4 of the patent, which shows delay blocks (32m-1, 32M-1) applied after an orthogonal transformation block (30) (Compl. p. 48).
  • Asserted Claims: The complaint asserts Claims 1-4 and 8-9 (Compl. ¶162).
  • Accused Features: The accused functionality is the implementation of "open loop spatial multiplexing" and "Large Delay Cyclic Delay Diversity (CDD)" in Transmission Mode 3 (TM3) of the LTE Standards in Nokia's products (Compl. ¶¶163-164).

U.S. Patent No. 8,861,433 - "Method for Accessing a Service Unavailable through a Network Cell", Issued October 14, 2014

  • Technology Synopsis: The patent relates to methods for enabling a user device (UE) to access a service (like a circuit-switched voice call) that is unavailable in its current network cell (e.g., a 4G LTE cell) by falling back to a different network (e.g., a 2G/3G network) (Compl. ¶173). The patented method involves the access device identifying and sending a message to the UE that lists a "plurality of second network cells" that can provide the service, including their system information and location areas (Compl. ¶172).
  • Asserted Claims: The complaint asserts "the claims of the '433 patent" (Compl. ¶175).
  • Accused Features: The accused features are Nokia's products that implement the circuit-switched fallback (CSFB) methods specified in the LTE Standards, which enable 4G operators to provide voice services via 2G and 3G networks (Compl. ¶176).

U.S. Patent No. 9,426,697 - "Method for Accessing a Service Unavailable through a Network Cell", Issued August 23, 2016

  • Technology Synopsis: This patent is related to the '433 patent and is also directed to methods for enabling a UE to obtain a service unavailable in its current network cell through a circuit-switched fallback procedure (Compl. ¶¶186-187). The access device identifies for the UE a plurality of second network cells that provide the service, including their system information and location areas (Compl. ¶186).
  • Asserted Claims: The complaint asserts "the claims of the '697 patent" (Compl. ¶189).
  • Accused Features: The accused features are Nokia's products that implement the CSFB methods described in the 3GPP LTE standards for providing voice services over 2G/3G networks (Compl. ¶190).

U.S. Patent No. 9,253,772 - "System and Method for Multi-Carrier Network Operation", Issued February 2, 2016

  • Technology Synopsis: The patent addresses existing standards' failure to describe how multiple component carriers (CCs) are assigned and activated for a UE in a multi-carrier network (Compl. ¶203). The invention provides for a base station to transmit a "component carrier assignment message" that identifies a second component carrier and includes its physical cell identity (PCI) and antenna configuration, with control channel signals on the first carrier providing assignment information for the second carrier (Compl. ¶200).
  • Asserted Claims: The complaint asserts Claims 5-17 (Compl. ¶205).
  • Accused Features: The accused features are Nokia's LTE-compliant products that implement carrier aggregation with cross-carrier scheduling, where a control channel on one carrier allocates resources on another carrier for data transmission (Compl. ¶¶206, 211).

U.S. Patent No. 8,897,192 - "System and Method for Discontinuous Reception Control Start Time", Issued November 25, 2014

  • Technology Synopsis: The patent relates to discontinuous reception (DRX) control, a method for reducing a mobile device's battery consumption by allowing its receiver to switch off during "sleep periods" and turn on during "awake periods" (Compl. ¶221). The invention involves a base station transmitting a DRX control parameter that indicates the first of the DRX awake periods, thereby configuring the mobile device's DRX mode (Compl. ¶219).
  • Asserted Claims: The complaint asserts Claims 8-9, 12-16, and 19-21 (Compl. ¶222).
  • Accused Features: The accused features are Nokia's products that implement the DRX feature of the LTE standards, which uses an "onDurationTimer" and a "DRX Cycle" to control when a UE monitors the control channel (Compl. ¶¶223-224).

U.S. Patent No. 9,125,202 - "Multi-Beam Cellular Communication System", Issued September 1, 2015

  • Technology Synopsis: The patent addresses the need to increase capacity in cellular systems by replacing a single wide beam with multiple narrower beams (Compl. ¶¶234-235). The invention describes a method where a common pilot signal is transmitted across a sector using a first set of orthogonal resources (e.g., tones in an OFDM system), while first and second user data are transmitted on spatially-separable signals using a second set of orthogonal resources within the same timeslot (Compl. ¶233).
  • Asserted Claims: The complaint asserts Claims 1-7 and 10-15 (Compl. ¶240).
  • Accused Features: The accused features are Nokia products that use Downlink Multi-user MIMO (DL MU-MIMO) in compliance with LTE standards, where a common cell-specific reference signal is transmitted in all subframes, and orthogonal resources are used to send data to two or more users (Compl. ¶¶241-243).

U.S. Patent No. 8,243,683 - "Method and Apparatus for State/Mode Transitioning", Issued August 14, 2012

  • Technology Synopsis: The patent addresses problems in UMTS networks where a device remains in a high-power state longer than necessary after a data transaction, wasting battery life and network resources (Compl. ¶257). The solution involves the network sending a system message with an "inhibit transition indication," which allows the device to then send a "signaling connection release indication" message (with a cause like "UE Requested PS Data session end") to request a transition to a more battery-efficient state (Compl. ¶256).
  • Asserted Claims: The complaint asserts Claims 1-23 (Compl. ¶260).
  • Accused Features: The accused features are Nokia's products offering the "Fast Dormancy" feature, which complies with UMTS/UTRAN standards and utilizes an inhibit transition indication to allow a device to quickly transition to a power-saving state (Compl. ¶261).

U.S. Patent No. 8,644,829 - "Method and Apparatus for Signaling Release Cause Indication in a UMTS Network", Issued February 4, 2014

  • Technology Synopsis: This patent addresses the issue where a network might treat a device's request to release a signaling connection as an alarm, leading to inefficient monitoring (Compl. ¶271). The invention provides for the device to include a "cause" in its release indication message, such as "no more data is expected," which allows the network to distinguish a normal request for a state transition from a true alarm condition (Compl. ¶¶269, 273).
  • Asserted Claims: The complaint asserts Claims 17-19, 21, 23-24, 41-42, 44-46, and 48-49 (Compl. ¶276).
  • Accused Features: The accused features are Nokia's products that implement the "fast dormancy" feature according to UMTS/UTRAN standards, where a UE can set the cause for a signaling connection release to "UE Requested PS Data session end" (Compl. ¶¶277, 279).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are Nokia’s "Flexi line" of mobile network infrastructure products, including the Flexi Multiradio and Multiradio 10 base stations, Flexi Zone Micro and Pico base stations, Femtocell base stations, Flexi Network Server, radio network controllers, and associated software such as the Nokia Liquid Radio Software Suite (Compl. ¶¶6, 66).

Functionality and Market Context

  • The complaint alleges these products are key components of Nokia’s mobile network offerings in the United States and are designed to be compliant with 3G and 4G wireless communication standards, including LTE and UMTS/UTRAN (Compl. ¶¶66, 68). Their function is to provide the core infrastructure for mobile communication networks, implementing the technical specifications set forth by the 3rd Generation Partnership Project (3GPP) (Compl. ¶66). The complaint alleges that customers in the United States, such as T-Mobile and AT&T, purchase, deploy, and use these products to operate their mobile networks (Compl. ¶¶68-69).

IV. Analysis of Infringement Allegations

U.S. Patent No. 6,996,418 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
An Orthogonal Frequency Division Multiplexed (OFDM) base transceiver station (BTS) arranged to communicate with...at least one target mobile terminal... The Infringing Products are base stations (e.g., Flexi Multiradio) that are compliant with LTE standards, which are based on OFDM technology, and are designed to communicate with mobile terminals. ¶¶66, 117 col. 1:19-24
a processing apparatus that operates to receive and process service and data traffic information The Infringing Products are alleged to process both service information (e.g., control signals) and data traffic information for transmission. ¶119 col. 1:25-33
a transmission apparatus that operates...to transmit the processed service information on a first set of carriers...with at least one first transmission beam The Infringing Products, when operating in certain LTE transmission modes, are alleged to transmit service information to all mobile stations in the coverage area via a transmission beam. ¶117 col. 2:65-3:2
and to transmit the processed data traffic information on a second set of carriers to the target mobile terminal on at least one second transmission beam... The Infringing Products are alleged to transmit data traffic to specific mobile stations in a narrow coverage area. ¶117 col. 2:65-3:2
the second transmission beam being a directional transmission beam. The complaint alleges this element is met by LTE Transmission Mode 4, in which data traffic is sent via a directional transmission beam. The complaint includes Figure 5 from the patent, which depicts a directional data traffic beam (88) and a sector omni-directional service beam (89) (Compl. p. 31). ¶¶114, 117 col. 3:2-4
  • Identified Points of Contention:
    • Scope Questions: A central question may be whether the beam structures used in the accused LTE transmission modes, such as TM4, fall within the scope of the claimed "first transmission beam" and "directional...second transmission beam." The analysis may explore if the beams used in the standard for service and data information function in the same way as those described in the patent.
    • Technical Questions: What evidence does the complaint provide that the accused products separate "service information" and "data traffic information" onto distinct "sets of carriers" and distinct "beams" in a manner that maps onto the claim limitations?

U.S. Patent No. 8,254,246 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A method...at an OFDM base station having a plurality of transmitting antennas, with an adjacent OFDM base station having a plurality of transmitting antennas... The Infringing Products are base stations (designated eNBs) designed for use in an E-UTRAN (LTE) network architecture, which by definition includes multiple adjacent base stations, each with multiple transmit antennas (Compl. p. 38, Fig. 4-1). ¶¶132, 135 col. 3:48-55
for each antenna, inserting scattered pilot symbols in an identical scattered pattern in time-frequency... The complaint alleges that the "pilot signals" of the patent are referred to as "reference signals" in the 3GPP LTE specification (Compl. ¶134). These reference signals are inserted into an OFDM frame in scattered patterns, as depicted in Figure 6.10.1.2-1 from the 3GPP specification, which shows the mapping of downlink reference signals for various antenna ports (Compl. p. 38). ¶¶134, 136 col. 2:20-25
wherein the scattered patterns are offset from the adjacent OFDM base station. The complaint alleges that the patterns of pilot symbols implemented in the Infringing Products are offset in frequency and/or time from those in adjacent base stations, as set forth in the 3GPP TS 36.211 specification (Compl. ¶136). ¶136 col. 10:13-17
  • Identified Points of Contention:
    • Scope Questions: A key dispute may arise over whether the "reference signals" defined in the 3GPP LTE standard constitute "scattered pilot symbols" as that term is used and defined in the patent. The analysis will likely focus on the technical purpose and structure of both types of signals.
    • Technical Questions: Does the "offset" between reference signal patterns in adjacent LTE base stations, as implemented by Nokia, serve the same technical purpose of enabling accurate channel interpolation with reduced overhead, as described in the '246 Patent?

V. Key Claim Terms for Construction

For the ’418 Patent:

  • The Term: "directional transmission beam"
  • Context and Importance: The infringement theory for the ’418 Patent depends on this term covering the transmission beams used for data traffic in LTE standards. Practitioners may focus on this term because its construction will determine whether standardized technology falls within the claim scope.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes the beam as one that helps "to ensure sufficient power is directed at the target mobile terminal(s)" (’418 Patent, col. 2:33-35). This functional language could support a broader definition covering any beam that focuses energy toward a target.
    • Evidence for a Narrower Interpretation: Specific embodiments describe a "rotating directional beam" (’418 Patent, col. 2:37) and antenna arrays that generate the beam by adjusting phases (’418 Patent, col. 7:45-50), which could be argued to limit the term to those specific implementations.

For the ’246 Patent:

  • The Term: "scattered pilot symbols"
  • Context and Importance: The definition of this term is critical because the infringement allegation equates it with the "reference signals" used in the LTE standard. A narrow construction limited to the patent's specific embodiments could present a challenge to the infringement case.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification states that "pilot symbols are scattered amongst the data symbols to provide as complete a range as possible of channel response over time and frequency" (’246 Patent, col. 2:20-23). This suggests a broad functional definition covering any non-contiguous arrangement of pilots.
    • Evidence for a Narrower Interpretation: The patent repeatedly illustrates the invention using a "diamond lattice structure" (Compl. p. 36, Fig. 5; ’246 Patent, col. 9:60-65). This specific embodiment could be used to argue that "scattered pilot symbols" should be construed more narrowly to require such a specific pattern.

VI. Other Allegations

Indirect Infringement

  • The complaint alleges that Nokia actively induces infringement by providing the accused products to customers like AT&T and T-Mobile and instructing them on how to deploy and operate LTE and UMTS networks, knowing that this intended use will infringe the asserted patents (Compl. ¶¶69, 118, 121, 137, 140). The basis for contributory infringement is that the products are specially made to practice the LTE standards and have no substantial non-infringing uses (Compl. ¶¶122, 138).

Willful Infringement

  • The complaint alleges willful infringement based on extensive pre-suit knowledge. The allegations include: (1) a notice letter sent by BlackBerry prior to the suit (Compl. ¶72); (2) Nokia's actual knowledge of the patents or their direct family members from citing them during the prosecution of Nokia's own patent applications (Compl. ¶¶74-90); and (3) Nokia's knowledge of many of the patents from its 2009 due diligence related to an attempted acquisition of the Nortel Networks patent portfolio, which BlackBerry later acquired (Compl. ¶¶91-109).

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

  • A central issue will be one of standards implementation and claim scope: Can BlackBerry’s patent claims, which largely pre-date the finalization of the accused 3GPP standards, be construed to cover features that are mandatory for Nokia to implement in its LTE and UMTS/UTRAN-compliant products? The case will likely involve detailed analysis of the patent specifications versus the technical standards.
  • A key evidentiary question will be one of pre-suit knowledge and willfulness: The complaint presents detailed allegations that Nokia knew about the asserted patents and their relevance to LTE for years before the lawsuit from multiple independent sources (its own patent prosecution and its due diligence on the Nortel portfolio). A central question for the court will be whether this evidence is sufficient to establish that Nokia's alleged infringement was willful, which could expose it to enhanced damages.
  • A fundamental technical question will be one of functional and terminological equivalence: Does Nokia's implementation of standardized "reference signals," "transmission modes," and "circuit-switched fallback" perform substantially the same function, in the same way, to achieve the same result as the claimed "pilot symbols," "directional beams," and "methods for accessing a service" described in the asserted patents? The outcome may depend on whether the terminology of the standards can be mapped directly onto the language of the claims.