1:18-cv-01842
Uniloc 2017 LLC v. Motorola Mobility
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-01842, D. Del., 03/12/2019
- Venue Allegations: The complaint does not contain an explicit section on venue, but appears to base it on Defendant being a Delaware corporation.
- Core Dispute: Plaintiff alleges that Defendant’s electronic devices implementing the Bluetooth 3.0 + HS standard infringe a patent related to managing communications in a multi-mode wireless system.
- Technical Context: The technology addresses methods for efficiently combining different wireless communication standards (e.g., a low-power, low-rate standard and a high-power, high-rate standard) on a single device.
- Key Procedural History: An Inter Partes Review (IPR) proceeding (IPR2019-00219) was initiated against the patent-in-suit. The IPR concluded with the cancellation of claims 15, 17, and 18. The complaint, filed prior to the IPR's conclusion, exclusively asserts infringement of the now-cancelled claim 15.
Case Timeline
| Date | Event |
|---|---|
| 2000-08-10 | ’106 Patent Priority Date |
| 2006-03-28 | ’106 Patent Issue Date |
| 2018-11-12 | IPR against ’106 Patent Filed (IPR2019-00219) |
| 2019-03-12 | Amended Complaint Filing Date |
| 2022-08-22 | IPR Certificate Issued, Cancelling Claim 15 |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,020,106 - RADIO COMMUNICATION SYSTEM
The Invention Explained
- Problem Addressed: The patent's background describes the inefficiency of conventional wireless systems when handling asymmetric data traffic, such as web browsing, where download volume far exceeds upload volume (e.g., ’106 Patent, col. 1:7-17). It also notes that building multi-mode devices with complete, independent transceivers for multiple communication standards is expensive and consumes significant power (’106 Patent, col. 1:55-65).
- The Patented Solution: The invention proposes a multi-mode communication system where a device operates with at least two modes. The first mode is a conventional two-way communication link. The second mode, however, is asymmetrical, having only one channel (e.g., a high-speed downlink) while its corresponding channel (e.g., the uplink) is absent (’106 Patent, col. 2:15-26). To compensate, the system is designed to transmit data that would normally be sent over the absent channel of the second mode via a corresponding channel of the first mode (’106 Patent, col. 4:30-35).
- Technical Importance: This design sought to enable devices to leverage high-speed data standards (like HIPERLAN/2) for tasks like video downloading while avoiding the cost and power drain of a full transmitter for that standard, instead relying on a more common, lower-power standard (like UMTS or Bluetooth) for control signals and uploads (’106 Patent, col. 4:20-29).
Key Claims at a Glance
- The complaint asserts independent claim 15 (’106 Patent, col. 12:24-44; Compl. ¶13).
- The essential elements of independent claim 15 are:
- A communication station comprising a first transceiver for a first communication mode and at least one of a transmitter and receiver for a second communication mode.
- The first transceiver is configured to transmit/receive information over first and second communication links in the first mode.
- The second mode device is configured to transmit/receive information over a third communication link in the second mode.
- A condition wherein if the first or second communication link (first mode) is "not available," information is communicated via the third communication link (second mode).
- The station is configured for "transmitting specification information about a radio interface specification defining said second mode" to another station via the first mode's communication link.
III. The Accused Instrumentality
Product Identification
"numerous electronic devices implementing Bluetooth version 3.0 + HS and above" sold by Motorola (Compl. ¶8).
Functionality and Market Context
The complaint alleges the accused devices use a Bluetooth Basic Rate/Enhanced Data Rate (BR/EDR) radio for initial discovery, association, and connection establishment (Compl. ¶10). This corresponds to the "first mode" of communication.
Once a BR/EDR link is established, a device can discover if the other device supports a common Alternate MAC/PHY (AMP) link, such as one based on IEEE 802.11 (WiFi) (Compl. ¶¶11-12). If a common AMP is found, high-volume data traffic can be "moved from BR/EDR to AMP controllers" to take advantage of the higher speed of the AMP link (Compl. ¶11). This corresponds to the "second mode."
The complaint does not provide specific details on the market positioning of the accused devices beyond alleging that Motorola imports and sells them (Compl. ¶8). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
’106 Patent Infringement Allegations
| Claim Element (from Independent Claim 15) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a communication station for communication with a further station, said communication station comprising: a first transceiver configured to at least one of transmit first information over a first communication link in a first mode, and receive second information over a second communication link in said first mode; | The Accused Infringing Devices use a BR/EDR radio to establish a two-way connection for discovery and association. | ¶¶9-10 | col. 12:24-30 |
| at least one of a transmitter and receiver configured to at least one of transmit and receive third information over a third communication link in a second mode; | The Accused Infringing Devices use an Alternate MAC/PHY (AMP) link, such as one based on WiFi, to communicate wirelessly. | ¶12 | col. 12:31-34 |
| wherein when at least one of said first communication link and said second communication link is not available, then at least one of said first information and said second information is communicated to said communication station via said third communication link in said second mode... | The complaint does not directly address the "not available" limitation. It alleges that data traffic is "moved" from the BR/EDR link to the AMP link after connection establishment. | ¶11 | col. 12:35-39 |
| ...wherein at least one of said first transceiver and said transmitter is configured for transmitting specification information about a radio interface specification defining said second mode, said specification information being transmitted to said further station via at least one of said first communication link... | After a BR/EDR connection is established, the first device discovers whether the second device has a common AMP. | ¶11 | col. 12:40-44 |
Identified Points of Contention
- Claim Validity: The primary and likely dispositive issue is that the sole asserted claim, Claim 15, was cancelled in an IPR proceeding that concluded after the complaint was filed. As pleaded, the infringement claim cannot proceed.
- Scope Questions: If the claim were still valid, a key dispute would concern the meaning of "not available." The court would need to determine if this requires the first mode link to be inoperative, or if it can be read to cover a scenario where traffic is simply offloaded from one active link to another, as the complaint alleges (Compl. ¶11).
- Technical Questions: A central technical question would be whether the Bluetooth protocol's discovery of a "common AMP" (Compl. ¶11) meets the claim's requirement of "transmitting specification information about a radio interface specification defining said second mode." The patent specification discusses downloading entire software modules, suggesting the claim may require a more substantial transmission than a capability check (’106 Patent, col. 10:1-12).
V. Key Claim Terms for Construction
"not available"
Context and Importance: This term is critical because the complaint's infringement theory rests on the idea of moving traffic between two functioning links (BR/EDR and AMP), not on one link failing. The interpretation of "not available" could therefore determine whether the accused functionality falls within the claim scope.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not explicitly define the term. A plaintiff might argue that "not available" could mean "not available for a specific high-data-rate task," even if the link is active for control signals.
- Evidence for a Narrower Interpretation: A defendant would likely argue for the plain meaning: the link is inoperative, out of range, or otherwise non-functional. The lack of a special definition in the specification may support adhering to this narrower, ordinary meaning.
"transmitting specification information about a radio interface specification defining said second mode"
Context and Importance: The complaint alleges that discovering a "common AMP" satisfies this limitation (Compl. ¶11). The viability of this allegation depends entirely on how broadly this lengthy term is construed.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A plaintiff could argue that any information that defines the second mode for the purpose of establishing a connection, such as its type and capabilities, constitutes "specification information."
- Evidence for a Narrower Interpretation: The specification discloses an embodiment where "software modules to implement" a radio interface are downloaded (’106 Patent, col. 10:1-12). This language suggests the term requires transmitting the actual specification or code, a much higher bar than the capability-check alleged in the complaint.
VI. Other Allegations
Indirect Infringement
The complaint alleges induced infringement based on Motorola's "marketing, promotional, and instructional materials," which allegedly instruct customers on using the infringing Bluetooth functionality (Compl. ¶15). It also alleges contributory infringement, stating the software for this functionality is especially adapted for infringement and not a staple article of commerce (Compl. ¶16).
Willful Infringement
Willfulness is alleged based on post-suit knowledge. The complaint asserts that Motorola has had knowledge of the ’106 Patent since, at the latest, the service of the original complaint and has refused to discontinue its infringing acts (Compl. ¶17).
VII. Analyst’s Conclusion: Key Questions for the Case
The Dispositive Procedural Question: The central issue is one of case viability. With the sole asserted claim, Claim 15, having been cancelled by the USPTO, can the plaintiff amend its complaint to substitute a surviving claim (e.g., Claim 16), and if so, can it construct a plausible infringement theory under that new claim's distinct limitations?
The Core Definitional Question (Hypothetical): Had Claim 15 survived, a key question would be one of scope: does the term "not available" require a link to be inoperative, or can it be construed to cover the voluntary offloading of traffic from one active link to another for performance reasons, as the Bluetooth 3.0 + HS standard implements?
The Key Evidentiary Question (Hypothetical): The case would also have presented a question of technical mapping: does the exchange of capability information in the Bluetooth AMP discovery protocol constitute "transmitting specification information about a radio interface specification" as required by the claim, or does the patent's disclosure of downloadable software modules necessitate a more demanding interpretation?