DCT
1:18-cv-01840
Uniloc 2017 LLC v. Motorola Mobility LLC
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Uniloc 2017 LLC (Delaware)
- Defendant: Motorola Mobility, LLC (Delaware)
- Plaintiff’s Counsel: O'KELLY ERNST & JOYCE, LLC; Prince Lobel Tye LLP
- Case Identification: [Uniloc 2017 LLC](https://ai-lab.exparte.com/party/uniloc-2017-llc) v. Motorola Mobility LLC, 1:18-cv-01840, D. Del., 11/20/2018
- Venue Allegations: Venue is based on Defendant being a Delaware corporation with a registered agent in the state, and allegations that it sells the accused products to customers in Delaware.
- Core Dispute: Plaintiff alleges that Defendant’s electronic devices utilizing Bluetooth Low Energy (BLE) technology infringe a patent related to a method for a primary device to poll secondary devices in a wireless communication system.
- Technical Context: The technology concerns power-efficient communication protocols for short-range wireless networks, a critical area for battery-operated consumer electronics and Internet of Things (IoT) devices.
- Key Procedural History: Subsequent to the filing of this complaint, the asserted patent was the subject of three Inter Partes Review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB). In a certificate issued September 28, 2021, the PTAB confirmed the cancellation of claims 11 and 12. As the complaint asserts claim 11, this part of the infringement allegation is now moot.
Case Timeline
| Date | Event |
|---|---|
| 2000-06-26 | '049 Patent Priority Date |
| 2006-01-31 | '049 Patent Issue Date |
| 2018-11-12 | IPR Petition Filed (IPR2019-00251) |
| 2018-11-20 | Complaint Filing Date |
| 2019-05-06 | IPR Petition Filed (IPR2019-01026) |
| 2019-08-22 | IPR Petition Filed (IPR2019-01530) |
| 2021-09-28 | IPR Certificate Issued (Claims 11-12 Cancelled) |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,993,049 - "COMMUNICATION SYSTEM"
- Patent Identification: U.S. Patent No. 6,993,049, "COMMUNICATION SYSTEM", issued January 31, 2006.
The Invention Explained
- Problem Addressed: The patent addresses inefficiencies in establishing wireless connections for devices like keyboards or mice (Human Interface Devices or HIDs) using protocols such as Bluetooth. Standard procedures to discover and connect devices ("inquiry" and "page") can introduce significant delays, harming user experience. Maintaining a constant connection to avoid this delay consumes significant battery power, which is problematic for portable, battery-operated devices ('049 Patent, col. 1:33-41, col. 2:3-18).
- The Patented Solution: The invention proposes modifying the standard device discovery process. A primary station (e.g., a host computer) broadcasts standard "inquiry messages" but appends an "additional data field" to them. This extra field acts as a "poll," which can be directed to a specific secondary device. A secondary device can listen for these modified inquiry messages and, upon detecting a poll addressed to it, can respond immediately if it has data to transmit. This is intended to provide a responsive connection without the power drain of a continuously active link ('049 Patent, Abstract; col. 2:22-35; Fig. 5).
- Technical Importance: This method was designed to provide a responsive, low-latency link for HIDs while allowing them to remain in a low-power "sleep" state during periods of inactivity, thereby conserving battery life ('049 Patent, col. 2:18-21).
Key Claims at a Glance
- The complaint asserts independent claims 1, 8, and 11, and dependent claims 2-6 and 9 (Compl. ¶20). Note: Claim 11 has since been cancelled by the USPTO.
- Independent Claim 1 (System Claim):
- A communications system with a primary station and at least one secondary station;
- The primary station has "means for broadcasting a series of inquiry messages" and "means for adding to an inquiry message... an additional data field for polling" a secondary station;
- The secondary station has means to determine when the additional field has been added, determine if it has been polled, and respond to the poll.
- Independent Claim 8 (Apparatus Claim):
- A secondary station for use in a communication system;
- It includes "means for receiving an inquiry message" that has an "additional data field for polling" added to it;
- It also includes means to determine when the field is present, determine if it has been polled, and respond accordingly.
III. The Accused Instrumentality
Product Identification
- The complaint accuses "electronic devices that utilize Bluetooth Low Energy version 4.0 and above," including various Motorola smartphones (e.g., Moto Z, Moto G, Moto X series) and other devices (e.g., Motorola XOOM LTE, Motorola XBOARD) (Compl. ¶11, ¶23).
Functionality and Market Context
- The complaint alleges the accused devices implement the Bluetooth LE protocol. In this protocol, a device can act as a "primary station" that "broadcasts advertising message packets over pre-defined advertising channels" (Compl. ¶13). Other devices can act as "secondary stations" by entering a "scanning state" to receive these packets (Compl. ¶14).
- These advertising packets contain predetermined fields, including a "PDU header" and a "PDU payload" (Compl. ¶15). The complaint alleges that the payload contains data and that the header's "PDU type field" indicates whether a scanning device can respond to the advertising event (Compl. ¶16). A connectable message type, "ADV_IND," allegedly allows a scanning device to respond with a "scan request (SCAN_REQ)" (Compl. ¶17).
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
'049 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a communications system comprising a primary station and at least one secondary station | The system consists of Accused Infringing Devices, which can operate as a "primary station" that broadcasts or a "secondary station" that scans for messages. | ¶12-13 | col. 2:23-25 |
| the primary station has means for broadcasting a series of inquiry messages, each in the form of a plurality of predetermined data fields arranged according to a first communications protocol | A primary device broadcasts Bluetooth LE "advertising message packets" over advertising channels. These packets contain predetermined fields such as a Preamble, Access address, and PDU header. | ¶13, ¶15 | col. 2:25-29 |
| and means for adding to an inquiry message prior to transmission an additional data field for polling at least one secondary station | The primary device broadcasts messages, which include data, to "poll the second or secondary device." The PDU Payload is alleged to contain this advertising payload data. | ¶12, ¶17 | col. 2:29-31 |
| the or each polled secondary station has means for... determining whether it has been polled... and for responding to a poll when it has data for transmission... | A scanning device reads the "PDU type field" in the packet header to know if it can respond. For certain message types ("ADV_IND"), the device may respond by sending a scan request ("SCAN_REQ"). | ¶16-17 | col. 2:31-35 |
- Identified Points of Contention:
- Scope Questions: A central dispute may arise over whether a standard Bluetooth LE "advertising packet" is equivalent to the patent's "inquiry message." Further, it raises the question of whether the standard "PDU Payload" of a BLE packet constitutes an "additional data field" that is "added... for polling," as the patent seems to describe appending a new field to a pre-existing message format ('049 Patent, Fig. 5).
- Technical Questions: The complaint alleges that the accused devices "poll" a secondary device (Compl. ¶12), but the described functionality is the broadcasting of "advertising message packets" (Compl. ¶13). This raises the technical question of whether the general broadcast mechanism of BLE advertising performs the specific function of the targeted "poll" described in the patent, which contemplates addressing a specific device ('049 Patent, col. 5:2-3).
V. Key Claim Terms for Construction
- The Term: "inquiry message"
- Context and Importance: The plaintiff's infringement theory appears to equate the accused Bluetooth LE "advertising packet" with the claimed "inquiry message." The viability of the infringement case may depend on whether this term is construed broadly to cover any device discovery broadcast or narrowly to mean the specific "inquiry" procedure known in the Bluetooth art at the time of the invention.
- Intrinsic Evidence for a Broader Interpretation: The patent states that the invention, though described with reference to Bluetooth, "is applicable to a range of other communication systems" ('049 Patent, col. 1:6-8), which could support a construction not strictly limited to the Bluetooth "inquiry" protocol.
- Intrinsic Evidence for a Narrower Interpretation: The specification is heavily grounded in the specific terminology of the contemporary Bluetooth standard, repeatedly referencing "inquiry" procedures, the "inquiry substate," and specific "Inquiry Access Codes (GIAC/DIAC)" ('049 Patent, col. 6:11-28). This context may support a narrower definition tied to that specific protocol.
- The Term: "adding... an additional data field for polling"
- Context and Importance: This term describes the core inventive step. The dispute will likely focus on whether using a standard payload field within a standard BLE advertising packet meets this limitation, or if the claim requires modifying a standard packet by appending a new, distinct field.
- Intrinsic Evidence for a Broader Interpretation: A party could argue that from a structural perspective, any packet comprising a header and a data-carrying payload involves "adding" the payload to the header information.
- Intrinsic Evidence for a Narrower Interpretation: The specification suggests a specific modification, describing how the "extra data field 504 [is] appended" to the standard inquiry packet ('049 Patent, col. 6:58-63). Figure 5 explicitly depicts a standard "ID PKT" (502) followed by a separate "HID POLL" field (504). This visual and textual evidence points toward appending a non-standard field to a standard packet.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement based on Motorola's "marketing, promotional and/or instructional materials," including user guides and web pages, which allegedly instruct customers on how to use the infringing Bluetooth functionality (Compl. ¶22-23). It also pleads contributory infringement, alleging the accused devices are "especially made or especially adapted" for infringement and are not staple articles of commerce (Compl. ¶24).
- Willful Infringement: The complaint alleges willful infringement based on post-suit conduct. It asserts that Motorola has had notice of the '049 Patent and its infringement since, at the latest, the service of the complaint, and that continued infringement thereafter is willful (Compl. ¶25-26).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can a standard Bluetooth LE "advertising packet" be construed as the patent's "inquiry message," and can its standard "PDU Payload" be considered an "additional data field for polling" that has been "added" in the manner required by the claims?
- A key technical question will be one of functional equivalence: does the general broadcast function of the accused BLE advertising system perform the same function as the targeted "polling" mechanism described in the patent, which appears to contemplate addressing specific devices?
- A significant procedural issue is the impact of the IPR proceedings: with method claim 11 now cancelled, the case will proceed only on the asserted system and apparatus claims (1-6, 8-9). The arguments and findings from the PTAB proceedings, though not provided here, may influence claim construction and invalidity arguments for these surviving claims.