DCT
1:18-cv-01841
Uniloc 2017 LLC v. Motorola Mobility LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Uniloc 2017 LLC (Delaware)
- Defendant: Motorola Mobility, LLC (Delaware)
- Plaintiff’s Counsel: Prince Lobel Tye LLP
- Case Identification: 1:18-cv-01841, D. Del., 03/12/2019
- Venue Allegations: The complaint does not contain specific allegations regarding venue. Both parties are incorporated in Delaware, the district where the suit was filed.
- Core Dispute: Plaintiff alleges that Defendant’s electronic devices that operate in accordance with LTE standards infringe a patent related to re-transmitting service requests in a radio communication system until an acknowledgement is received.
- Technical Context: The technology concerns managing uplink signaling in wireless communication systems, where a mobile device requests network resources from a base station, a fundamental process for initiating data or voice sessions.
- Key Procedural History: The asserted patent, U.S. Patent No. 6,868,079, was the subject of an Inter Partes Review (IPR) proceeding (IPR2019-00510), which was initiated prior to the filing of this Amended Complaint. An IPR certificate issued on August 16, 2021, reflects that Claim 17, the sole claim asserted in this action, has been cancelled.
Case Timeline
| Date | Event |
|---|---|
| 1998-12-10 | ’079 Patent Priority Date |
| 2005-03-15 | ’079 Patent Issue Date |
| 2019-01-10 | IPR2019-00510 Filed against ’079 Patent |
| 2019-03-12 | Complaint Filing Date |
| 2021-08-16 | IPR Certificate Issued; Claim 17 of the ’079 Patent cancelled |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,868,079 - Radio Communication System with Request Re-transmission Until Acknowledged
- Patent Identification: U.S. Patent No. 6,868,079, issued March 15, 2005.
The Invention Explained
- Problem Addressed: The patent describes challenges in conventional uplink signaling, where a mobile station (MS) sends a service request to a base station (BS). In systems like GSM, if a request is not acknowledged, the MS must wait a predetermined period before retransmitting, which introduces delay and inefficiency, particularly in high-demand networks like the emerging UMTS standard. (’079 Patent, col. 1:16-54).
- The Patented Solution: The invention proposes a system where a secondary station (e.g., a mobile device) is allocated a dedicated time slot to send a service request. Instead of waiting, the secondary station continuously re-transmits the request in every subsequent allocated time slot until it receives an acknowledgement from the primary station (e.g., a base station). This persistence allows the primary station to use techniques like signal combining over multiple slots to more reliably detect a weak request signal, improving the overall robustness and speed of the connection process. (’079 Patent, col. 2:1-24; Fig. 3).
- Technical Importance: This approach aimed to improve the reliability and reduce the latency of establishing an uplink channel compared to prior art methods that relied on random access protocols or long waiting periods before re-transmission. (’079 Patent, col. 4:8-18).
Key Claims at a Glance
- The complaint asserts independent claim 17. (Compl. ¶13).
- Claim 17 (Method):
- Allocating respective time slots in an uplink channel to a plurality of respective secondary stations.
- Transmitting a respective request for services from at least one secondary station to a primary station in the respective time slots.
- The secondary station re-transmits the same request in consecutive allocated time slots without waiting for an acknowledgement until one is received from the primary station.
- The primary station determines if a request was transmitted by determining whether a signal strength of the transmitted request exceeds a threshold value.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
The "Accused Infringing Devices" are identified as electronic devices sold by Motorola that operate in accordance with Long-Term Evolution (LTE) standards. (Compl. ¶8).
Functionality and Market Context
- The complaint alleges the accused devices use a physical uplink control channel (PUCCH) to transmit information between devices (secondary stations) and base stations (primary stations). (Compl. ¶10).
- Specifically, the functionality at issue is the transmission of a scheduling request (SR) from a secondary device. The complaint alleges this SR is "repeated until the primary device transmits a resource allocation acknowledgement." (Compl. ¶11). The primary device is alleged to detect this SR "by the presence of a certain energy level on the PUCCH." (Compl. ¶11).
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
’079 Patent Infringement Allegations
| Claim Element (from Independent Claim 17) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| allocating respective time slots in an uplink channel to a plurality of respective secondary stations; | Accused devices operate in systems where a primary device allocates time slots to one or more secondary devices. | ¶9 | col. 6:2-4 |
| and transmitting a respective request for services...from at least one of the plurality of respective secondary stations to a primary station in the respective time slots; | A secondary device transmits scheduling request (SR) information to the primary device in its respective time slots using PUCCH format 1. | ¶11 | col. 6:5-9 |
| wherein the at least one of the plurality of respective secondary stations re-transmits the same respective request in consecutive allocated time slots without waiting for an acknowledgement... | The SR is repeated until the primary device transmits a resource allocation acknowledgement. | ¶11 | col. 8:25-30 |
| wherein the primary station determines whether a request for services has been transmitted...by determining whether a signal strength of the respective transmitted request...exceeds a threshold value. | The primary device detects the incoming SR by the presence of a certain energy level on the PUCCH. | ¶11 | col. 8:31-38 |
- Identified Points of Contention:
- Scope Questions: A central question may be whether the LTE standard's process for sending a "scheduling request (SR)" (Compl. ¶11) constitutes transmitting "the same respective request" as required by the claim. The defense could argue that each SR transmission under the LTE protocol is a new, distinct signal instance, not a "re-transmit" of "the same" request as contemplated by the patent.
- Technical Questions: The complaint alleges the primary device detects an SR "by the presence of a certain energy level" (Compl. ¶11). A key technical question will be whether this operational description meets the claim limitation of "determining whether a signal strength of the respective transmitted request...exceeds a threshold value." The analysis may turn on evidence of how an LTE base station actually processes an incoming SR signal and whether that involves a specific signal strength comparison to a defined threshold.
V. Key Claim Terms for Construction
The Term: "re-transmits the same respective request"
- Context and Importance: This term is critical because the core of the alleged infringement is the repetition of the Scheduling Request (SR) until acknowledgement. (Compl. ¶11). Practitioners may focus on this term to dispute whether the accused LTE protocol, which may generate a new signal for each transmission opportunity, is technically "re-transmitting the same" request, or merely sending a new request for the same purpose.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent’s summary states the secondary station is "re-transmitting the request in at least a majority of its allocated time slots," which could suggest the identity of the request is less important than the act of repetition for the same purpose. (’079 Patent, col. 2:21-22).
- Evidence for a Narrower Interpretation: The patent describes a process where "Requests 304 continue to be made in successive allocated time slots," and in a CDMA context, this is done by "transmitting a predetermined code sequence." (’079 Patent, col. 4:58-62). This could support a narrower reading that requires the re-transmission of an identical signal or code.
The Term: "determining whether a signal strength...exceeds a threshold value"
- Context and Importance: This limitation defines how the primary station detects a request. The complaint's allegation that detection occurs via "the presence of a certain energy level" (Compl. ¶11) creates a potential point of dispute.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent discusses improving detection of weak signals and mentions the "level of the signal" in simulations, potentially supporting a general interpretation that any energy or level detection meets the limitation. (’079 Patent, col. 4:51-54).
- Evidence for a Narrower Interpretation: The patent describes a specific simulation where the "magnitude of the filter output vector 402 is compared to a threshold value." (’079 Patent, col. 4:55-58). This specific embodiment could be used to argue for a narrower construction requiring a direct numerical comparison against a pre-set threshold, which may differ from how an LTE system detects the "presence" of an energy level.
VI. Other Allegations
- Indirect Infringement: The complaint alleges Motorola knowingly incorporates components and software to enable the infringing operation and knows the devices are "especially made or especially adapted for use" to infringe, suggesting induced and contributory infringement. (Compl. ¶14-15).
- Willful Infringement: The complaint alleges post-suit willfulness, stating Motorola was on notice of the ’079 patent "at the latest, the service of the original complaint" and has "refused to discontinue its infringing acts." (Compl. ¶16).
VII. Analyst’s Conclusion: Key Questions for the Case
Given the subsequent cancellation of the asserted claim, the viability of the case itself is the primary issue. However, based on the allegations as filed, the dispute would likely have centered on the following:
- A core issue would have been one of procedural viability: can a claim for infringement of a patent claim that was cancelled during an Inter Partes Review proceeding be maintained?
- A key evidentiary question would have been one of technical implementation: does the accused LTE standard's method for signaling a scheduling request (SR) involve "re-transmit[ting] the same respective request," or does it generate a new, distinct request at each interval, creating a mismatch with the claim language?
- A second key question would have been one of functional scope: does an LTE base station's method of detecting an incoming SR "by the presence of a certain energy level" perform the specific function of "determining whether a signal strength...exceeds a threshold value" as required by the claim, or is there a material difference in the technical operation?