DCT
1:18-cv-00472
Modern Telecom Systems LLC v. Brother Intl Corp
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Modern Telecom Systems, LLC (Delaware)
- Defendant: Brother International Corporation (Delaware) and Brother Industries (U.S.A.), Inc. (Delaware)
- Plaintiff’s Counsel: Klehr Harrison Harvey Branzburg LLP
- Case Identification: 1:18-cv-00472, D. Del., 03/28/2018
- Venue Allegations: Plaintiff alleges venue is proper in the District of Delaware because Defendants are incorporated in Delaware, conduct substantial business in the district through established distribution channels, and have previously conceded to venue in the district in a separate patent case.
- Core Dispute: Plaintiff alleges that Defendants’ printers and other devices that operate pursuant to the Wi-Fi standard infringe a patent related to dynamically configuring communication signals for assessing channel impairments.
- Technical Context: The technology concerns methods used in data communication systems, like modems, to test or "probe" a communication line to optimize data transmission, a process often performed during an initial "handshaking" procedure.
- Key Procedural History: The complaint alleges a chain of ownership of the patent-in-suit, originating with Conexant Systems, Inc. and passing through multiple entities to the Plaintiff. Plaintiff also alleges it sent letters to the CEO of Brother International Corporation in 2016 and 2017, providing notice of the patent and its alleged use in Wi-Fi-enabled products.
Case Timeline
| Date | Event |
|---|---|
| 1997-09-03 | Earliest Patent Priority Date ('886 Patent) |
| 2003-01-07 | Issue Date, U.S. Patent No. 6,504,886 |
| 2016 (unspecified) | Plaintiff sent first notice letter to Defendant |
| 2017-03 | Plaintiff sent second notice letter to Defendant |
| 2018-03-28 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,504,886 - Communication of an Impairment Learning Sequence According to an Impairment Learning Sequence Descriptor
- Patent Identification: U.S. Patent No. 6504886, "Communication of an Impairment Learning Sequence According to an Impairment Learning Sequence Descriptor," issued January 7, 2003.
The Invention Explained
- Problem Addressed: The patent describes a problem in data communications where the "line probing" or "impairment learning" signals used to test a channel are rigidly configured. A learning signal that is effective for one receiver's design might be unsatisfactory for another, leading to suboptimal performance, particularly as technology and standards evolve (’886 Patent, col. 1:46-54).
- The Patented Solution: The invention proposes a programmable system where a receiving modem can request a specifically formatted learning signal from a transmitting modem. The receiving modem sends a "learning sequence descriptor" containing parameters that define the desired signal (’886 Patent, col. 2:48-60). The transmitting modem then constructs and sends a learning signal according to this descriptor, allowing the receiving modem to more effectively determine the channel’s characteristics and select an optimal set of signal points for subsequent data transmission (’886 Patent, Abstract; col. 2:41-47).
- Technical Importance: This approach allows for flexible and adaptive communication protocols, enabling devices with different hardware designs and from different manufacturers to optimize their connection for higher performance (’886 Patent, col. 2:26-29).
Key Claims at a Glance
- The complaint asserts independent claim 18 (Compl. ¶20).
- The essential elements of independent claim 18, a communication device, are:
- A transmitter; and
- A processor in communication with the transmitter;
- Wherein the processor is capable of providing a first, second, and third parameter to the transmitter, which is capable of transmitting them;
- The first parameter specifies a number of segments in a learning sequence;
- The second parameter specifies a sign pattern of each segment; and
- The third parameter specifies a training pattern indicating an ordering of a reference symbol and a training symbol in each segment.
- The complaint reserves the right to assert additional claims during litigation (Compl. ¶20, n.1).
III. The Accused Instrumentality
Product Identification
- The complaint names "all Brother printers and other devices that operate pursuant to Part 11: Wireless LAN Medium Access Control (MAC) and Physical Layer (PHY) Specifications of IEEE Std 802.11TM -2012 and IEEE Std 802.11TM -2009 (collectively, the relevant 'Wi-Fi Standard')" (Compl. ¶19). The Brother Multi-Function Printer MFC-J4320DW is identified as an exemplary product (Compl. ¶19).
Functionality and Market Context
- The accused functionality is the devices' operation pursuant to the Wi-Fi standard, which enables them to connect to a wireless network (Compl. ¶19, ¶21).
- The complaint alleges that to connect to a Wi-Fi network, the accused products "needs to operate pursuant to the Wi-Fi Standard and the required portions of the Wi-Fi Standard necessarily practice at least claim 18 of the '886 Patent" (Compl. ¶21). The complaint further alleges that the functionality of the exemplary MFC-J4320DW is representative of all accused products, including Brother's Color Laser/LED printers and Multi-Function Copiers (Compl. ¶22).
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint incorporates a claim chart by reference as Exhibit 2, but this exhibit was not filed with the complaint (Compl. ¶20). The infringement theory is based on the allegation that any device compliant with the specified Wi-Fi standards necessarily infringes claim 18 of the ’886 patent (Compl. ¶21).
'886 Patent Infringement Allegations
| Claim Element (from Independent Claim 18) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A communication device...comprising: a transmitter; and a processor in communication with said transmitter; | The accused Brother devices are alleged to contain processors and Wi-Fi transmitters that operate pursuant to the Wi-Fi standard. | ¶19, ¶21 | col. 12:50-55 |
| wherein said processor is capable of providing a first parameter, a second parameter and a third parameter to said transmitter capable of transmitting said parameters, | The complaint alleges that operating pursuant to the Wi-Fi standard requires the device's processor to provide parameters defining a learning sequence to its transmitter. | ¶20, ¶21 | col. 14:35-40 |
| wherein said first parameter specifies a number of segments in said learning sequence, | The complaint's theory suggests that the Wi-Fi standard mandates the use of a parameter specifying the number of segments in a training or learning sequence. | ¶20, ¶21 | col. 14:61-62 |
| said second parameter specifies a sign pattern of each of said segments, | The complaint's theory suggests that the Wi-Fi standard mandates the use of a parameter specifying the sign pattern (+/-) of symbols within the learning sequence. | ¶20, ¶21 | col. 14:63-65 |
| and said third parameter specifies a training pattern of each of said segments, wherein said training pattern is indicative of an ordering of a reference symbol and a training symbol in each of said segments. | The complaint's theory suggests that the Wi-Fi standard mandates the use of a parameter defining a specific pattern composed of "reference" and "training" symbols. | ¶20, ¶21 | col. 15:1-6 |
- Identified Points of Contention:
- Scope Questions: A central question is whether compliance with the IEEE 802.11 standard necessarily requires practicing every element of claim 18. The dispute may focus on whether the standard mandates the specific three-parameter structure for defining a learning sequence as claimed, or if the standard allows for non-infringing alternative methods of channel training.
- Technical Questions: The complaint does not provide specific evidence of how the accused Brother products internally operate. A key technical question will be whether the accused devices' processors and firmware actually generate and transmit training signals by using the three distinct parameters recited in the claim, or if they use a different, functionally distinct methodology that is still compliant with the Wi-Fi standard.
V. Key Claim Terms for Construction
The Term: "learning sequence descriptor"
Context and Importance: This term appears in the patent’s title and is foundational to the invention. The infringement case rests on mapping messages within the Wi-Fi protocol to this term. Practitioners may focus on this term because its scope will determine whether the accused standard-compliant communications fall within the claims.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent suggests the descriptor is broadly "information indicative of a particular learning sequence descriptor" transmitted from one modem to another (col. 16:55-58). This could support an argument that any message defining a future training signal qualifies.
- Evidence for a Narrower Interpretation: The patent repeatedly defines the descriptor by referencing a specific list of parameters: "N" (number of segments), "L" (length), "SP" (sign pattern), "TP" (training pattern), and "TO" (training order) (’886 Patent, col. 14:59-65; col. 15:1-5). This could support a narrower definition requiring the presence of these specific types of information.
The Term: "training pattern...indicative of an ordering of a reference symbol and a training symbol"
Context and Importance: This limitation defines a specific structure for the learning signal, requiring two distinct types of symbols. The infringement analysis must show that the Wi-Fi standard requires not just any training signal, but one with this particular two-part compositional structure.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not explicitly define "reference symbol" or "training symbol" in a glossary, which may leave room for arguing that various signal types used in Wi-Fi training fulfill these roles.
- Evidence for a Narrower Interpretation: The specification provides detailed examples where the "reference symbol A" is repeated throughout the learning signal, while "training symbols" B, C, and D are tested against it (’886 Patent, col. 15:37-56; Fig. 5). This suggests a specific, non-interchangeable role for each symbol type, potentially narrowing the term's scope to sequences with a similar fixed-versus-variable structure.
VI. Other Allegations
- Indirect Infringement: The complaint alleges Defendants induce infringement. This is based on allegations that Defendants provide users with instructions on how to connect their products to a Wi-Fi network, an act which allegedly causes the products to perform the infringing method (Compl. ¶21, ¶24).
- Willful Infringement: The complaint alleges willful infringement based on pre-suit knowledge. It states that the CEO of Brother International Corporation received letters in 2016 and March 2017 notifying the company that the ’886 Patent was "being used in WiFi-enabled products that were being used, offered for sale and sold by Brother" (Compl. ¶24).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of standards mapping: Can Plaintiff demonstrate that the IEEE 802.11 standards, as implemented in the accused printers, mandate the use of a "learning sequence descriptor" that is defined by the three specific and distinct parameters recited in claim 18, or does the standard allow for implementation without this claimed structure?
- A key evidentiary question will be one of technical proof: Beyond the bare allegation of standard-compliance, what evidence can Plaintiff provide from the accused products' actual operation to show that their processors generate learning signals using the claimed multi-parameter method, particularly the specific "reference symbol" and "training symbol" pattern?
- The case may also turn on a question of claim construction: Can the term "learning sequence descriptor," which is tied to specific parameters in the patent's embodiments, be construed broadly enough to read on the signaling and frame-negotiation protocols defined in the complex IEEE 802.11 standard?