DCT

1:17-cv-01656

Uniloc USA Inc v. Wink Labs Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:17-cv-01656, D. Del., 11/15/2017
  • Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendant is a Delaware corporation and offers its products for sale to customers located in the district.
  • Core Dispute: Plaintiff alleges that Defendant’s smart home hubs, sensors, controllers, and associated software infringe a patent related to using a portable device to wirelessly control remote appliances.
  • Technical Context: The lawsuit concerns the smart home technology sector, where interoperability and centralized control of disparate devices via wireless protocols are of significant market importance.
  • Key Procedural History: The provided documents indicate that subsequent to the filing of this complaint, Inter Partes Review (IPR) proceedings were initiated against the patent-in-suit (IPR2018-00394 and IPR2018-00395). An IPR certificate issued on October 26, 2021, states that all claims of the patent, including all asserted claims, have been cancelled. This event is dispositive of the infringement claims, pending any appeal.

Case Timeline

Date Event
2000-04-24 U.S. Patent No. 6,622,018 Priority Date (Application Filing)
2003-09-16 U.S. Patent No. 6,622,018 Issued
2017-11-15 Complaint Filed
2017-12-22 IPR Proceedings Initiated Against U.S. Patent No. 6,622,018
2021-10-26 IPR Certificate Issued Cancelling All Claims of U.S. Patent No. 6,622,018

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

U.S. Patent No. 6,622,018 - "PORTABLE DEVICE CONTROL CONSOLE WITH WIRELESS CONNECTION"

  • Patent Identification: U.S. Patent No. 6,622,018, "PORTABLE DEVICE CONTROL CONSOLE WITH WIRELESS CONNECTION", issued September 16, 2003.

The Invention Explained

  • Problem Addressed: The patent’s background section identifies the inconvenience of managing multiple, device-specific remote controls, the functional limitations of early universal remotes, and the line-of-sight constraints of infrared (IR) technology. It also notes that wired, computer-based central control systems were cumbersome, expensive to install in existing homes, and not portable. (’018 Patent, col. 1:16-64).
  • The Patented Solution: The invention proposes using a portable, handheld computer system (e.g., a Palmtop or PDA) equipped with a short-range radio transceiver (such as Bluetooth) to act as a universal, non-line-of-sight remote control. The system discovers nearby compliant devices, displays them on its screen, and allows a user to send commands by making contact with the screen or a separate input pad, for example with a stylus. (’018 Patent, Abstract; col. 2:25-41).
  • Technical Importance: The technology aimed to provide a user-friendly, portable, and easily implemented solution for central control of various home and business appliances, anticipating the need for interoperability in an environment of increasingly numerous electronic devices. (’018 Patent, col. 2:9-17).

Key Claims at a Glance

  • The complaint asserts independent claim 1 and dependent claims 6, 7, and 9. (Compl. ¶11).
  • Independent Claim 1 recites a method with the following essential elements:
    • Establishing a wireless connection between a transceiver and a remote device by broadcasting a message and receiving a response.
    • Manifesting the remote device on a display device.
    • Registering a position where contact is made with a surface of an input device.
    • Translating the particular position on the input device into a particular command for controlling the remote device.
    • Transmitting the command to the remote device over the wireless connection.
  • The complaint reserves the right to assert other claims. (Compl. ¶11).

III. The Accused Instrumentality

Product Identification

The "Accused Infringing Devices" are identified as the "Wink Hub, Wink Hub 2, Wink Replay Touchscreen Controller, Wink Motion Sensor, Wink Door/Window Sensor, Wink Siren and Chime and Wink Smart Home app." (Compl. ¶10).

Functionality and Market Context

The complaint alleges these products form a system that communicates with, controls, and connects different smart home products from third parties that would otherwise be incompatible. (Compl. ¶10). The system is alleged to use various wireless protocols, including WiFi, Bluetooth, Z-Wave, and Zigbee, to create a unified smart home network controlled by a central hub and application. (Compl. ¶10). The complaint asserts these devices perform the function of a first device remotely controlling a second device over a wireless connection. (Compl. ¶12). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint pleads infringement at a high level without providing a detailed element-by-element mapping of the accused products to the claim limitations. The following chart summarizes the allegations for the lead independent claim based on the general theory presented in the complaint.

’018 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a) establishing said wireless connection between a transceiver and said remote device by: broadcasting a message...and receiving a response from said remote device; The complaint does not provide specific details, but alleges the accused system uses wireless protocols (e.g., Bluetooth, WiFi) to communicate with and control remote smart home products, which would necessarily involve establishing a connection. (Compl. ¶10). ¶10, ¶12 col. 11:7-13
b) manifesting said remote device on a display device; The complaint does not detail this step, but the function of the Wink Smart Home app would involve displaying representations of connected devices on a smartphone or tablet screen for user control. ¶10 col. 11:14-15
c) registering a position where contact is made with a surface of an input device, wherein a particular position on said input device is translated into a particular command for controlling said remote device; and The complaint does not specify the mechanism. Infringement would presumably be based on a user touching a command icon on a smartphone’s or tablet's touchscreen (the "input device"), with the device's operating system "registering" the touch position and the app "translating" that input into a command. ¶10, ¶12 col. 11:16-21
d) transmitting a command to said remote device over said wireless connection. The complaint alleges the accused system uses "wireless commands to cause the second device to perform a selected function." (Compl. ¶12). This implies the transmission of commands from the controller (e.g., the app/hub) to the target smart home device. ¶12 col. 11:22-24
  • Identified Points of Contention:
    • Scope Questions: A primary dispute would concern whether the claim term "input device", described in the patent in the context of a 2000-era PDA with a stylus and a digitizer pad (’018 Patent, col. 6:21-31), can be construed to read on a modern multi-touch smartphone screen running a software application.
    • Technical Questions: What evidence does the complaint provide that the accused software app performs the specific step of "registering a position where contact is made" and "translat[ing]" that position into a command, as opposed to simply recognizing a user interface event (e.g., a button press) within the application's software logic? The complaint's lack of technical detail on this point raises questions about how Plaintiff would prove this element is met.

V. Key Claim Terms for Construction

  • The Term: "input device"
  • Context and Importance: This term is critical because the patent’s embodiments consistently show a physical handheld computer with a stylus and a dedicated input area or digitizer. (’018 Patent, Figs. 3, 7-10). The accused system relies on a software application on general-purpose smartphones. The construction of "input device" will determine whether the claims can reach modern touchscreen-and-app-based systems or are limited to the specific hardware configurations disclosed.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim language itself does not restrict the "input device" to a specific type. The specification refers to an "on-screen cursor control device" and an "input device 106" that can be a "stroke or character recognition pad," but does not explicitly state these are the only possibilities. (’018 Patent, col. 6:21-26, 6:60-61).
    • Evidence for a Narrower Interpretation: A defendant would likely argue that the patent repeatedly and consistently describes the input device in the context of a PDA-style device and stylus. (’018 Patent, col. 2:31-33; col. 6:25-31). The detailed descriptions of registering stylus contact and movement could be used to argue the term implicitly requires a digitizer-like hardware component distinct from a general-purpose touchscreen managed by a modern operating system.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement of infringement, stating that Defendant "instructs its customers to infringe through training videos, demonstrations, brochures, installation and/or user guides" available on its websites. (Compl. ¶13).
  • Contributory Infringement: It also pleads contributory infringement, alleging the accused devices are a "material part of the invention" and not a "staple article of commerce." (Compl. ¶14).
  • Willful Infringement: Willfulness is alleged based on notice of the patent provided by the service of the complaint itself, indicating an intent to prove post-filing willfulness. (Compl. ¶15).

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

  1. Jurisdictional Impact of IPR: The primary and likely final question for this case is the legal effect of the post-filing IPR proceedings, which resulted in the cancellation of all claims of the '018 patent. As the basis for the lawsuit has been invalidated by the USPTO, the infringement action is likely moot.

  2. Definitional and Technological Scope: Assuming the patent had remained valid, a core issue would have been one of claim scope: whether the term "input device" and the method of "registering a position" on it—as described in a patent from the PDA era—could be construed broadly enough to cover the fundamentally different technological paradigm of a software application running on a modern, multi-touch smartphone.

  3. Evidentiary Sufficiency: A key question would have been one of proof: given the complaint's high-level and non-technical allegations, could the Plaintiff produce sufficient evidence to map the specific operations of the accused Wink software and hardware to the discrete method steps recited in the claims, particularly the "registering a position" and "translating" limitations.