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-01843, D. Del., 03/12/2019
• Venue Allegations: Venue is predicated on Defendant being a Delaware corporation.
• Core Dispute: Plaintiff alleges that Defendant’s mobile devices, which comply with certain wireless communication standards, infringe a patent related to methods for managing data transmission to ensure quality of service.
• Technical Context: The technology addresses resource allocation in wireless networks (e.g., 3G) by creating an efficient algorithm for selecting data transmission formats while guaranteeing a minimum bit rate for different applications.
• Key Procedural History: The complaint is an Amended Complaint. Subsequent to its filing, the United States Patent and Trademark Office (USPTO) conducted an Inter Partes Review (IPR) of the patent-in-suit. The IPR resulted in a certificate, issued August 16, 2021, cancelling all asserted claims, a development that fundamentally alters the posture of the litigation.

Case Timeline

Date	Event
2001-05-21	'487 Patent Priority Date
2007-01-23	'487 Patent Issue Date
2019-03-12	Amended Complaint Filing Date
2021-08-16	IPR Certificate issued, cancelling asserted claims

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

U.S. Patent No. 7,167,487 - NETWORK WITH LOGIC CHANNELS AND TRANSPORT CHANNELS, issued January 23, 2007

The Invention Explained

• Problem Addressed: In wireless communication systems like UMTS, a component known as the MAC (Medium Access Control) layer must select an appropriate Transport Format Combination (TFC) to package and transmit data. The patent identifies the need for an "optimized selection process" that can efficiently perform this function while also adhering to Quality of Service (QoS) requirements, such as maintaining a minimum bit rate for an application like a voice call ('487 Patent, col. 1:31-34, col. 1:63-65).
• The Patented Solution: The invention proposes integrating the minimum bit rate requirement directly into the selection algorithm used by the MAC layer to choose TFCs ('487 Patent, col. 1:45-49). By embedding this QoS consideration into the low-level selection logic, the system can more accurately and efficiently guarantee performance compared to monitoring compliance at higher, less-informed protocol layers ('487 Patent, col. 2:55-64). The process is described as a multi-stage allocation sequence that first satisfies minimum bit rates before allocating any remaining transmission capacity ('487 Patent, col. 4:6-15).
• Technical Importance: This approach aimed to improve the reliability of services with strict performance demands (e.g., voice over IP) over shared, power-constrained wireless networks by making the resource allocation process itself QoS-aware.

Key Claims at a Glance

• The complaint asserts infringement of independent claim 1 ('Compl. ¶10).
• The essential elements of Claim 1 are:
  • A network with a first plurality of logic channels associated with a second plurality of transport channels.
  • The transport channels are for transmitting transport blocks formed from packet units of the logic channels.
  • A plurality of valid transport format combinations is allocated to the transport channels.
  • A selection algorithm is provided for selecting the transport format combinations.
  • The selection algorithm uses a minimum bit rate criteria applicable to the respective logic channel.
• The complaint does not explicitly reserve the right to assert other claims.

III. The Accused Instrumentality

Product Identification

The complaint identifies the accused instrumentalities as "electronic devices that operate in compliance with HSPA/HSPA+ standardized in UMTS 3GPP Release 6 and above" (collectively, the "Accused Infringing Devices") (Compl. ¶8). A specific list of devices was allegedly provided in an Exhibit B, which is not attached to the amended complaint document (Compl. ¶8).

Functionality and Market Context

The complaint alleges that by complying with the HSPA/HSPA+ standard, the Accused Infringing Devices necessarily implement networks featuring a "first plurality of logic channels and a second plurality of transport channels associated by the MAC layer" (Compl. ¶9). The core of the functionality allegation is that these devices send and receive packet units "using a minimum bit rate criteria" as dictated by the standard (Compl. ¶9). The complaint does not provide further technical detail on the operation of the devices beyond their compliance with the named standard.

IV. Analysis of Infringement Allegations

The complaint states that a claim chart demonstrating how the Accused Infringing Devices incorporate each limitation of claim 1 was provided as Exhibit C to the Amended Complaint (Compl. ¶10). This exhibit was not included with the provided court filing. Therefore, the infringement theory is summarized below based on the complaint's narrative allegations.

The plaintiff's infringement theory appears to be grounded in a standards-essentiality argument. It alleges that because Motorola’s devices comply with the HSPA/HSPA+ standard (as defined in UMTS 3GPP Release 6 and above), they inherently practice the method claimed in the ’487 Patent (Compl. ¶¶ 8-9). The complaint asserts that these standardized devices implement the requisite channel structure and that their process for handling data packets employs a "minimum bit rate criteria," thereby meeting the final limitation of asserted claim 1 (Compl. ¶9). The central contention is that compliance with the standard equals infringement of the claim.

No probative visual evidence provided in complaint.

• Identified Points of Contention:
  • Technical Questions: A central question for the court would be whether compliance with the HSPA/HSPA+ standard, as a factual matter, requires practicing every element of claim 1 as construed. For instance, does the standard mandate a "selection algorithm" that operates in the specific manner described and claimed in the patent, or could a device comply with the standard using a different, non-infringing logic?
  • Legal Questions: The cancellation of the asserted claim by the USPTO raises a dispositive legal question: can a plaintiff maintain an action for past monetary damages on a claim that has been retroactively deemed unpatentable?

V. Key Claim Terms for Construction

• The Term: "selection algorithm"

  • Context and Importance: The existence and nature of the "selection algorithm" is a core element of the claim. Infringement depends on whether the accused devices use a process that falls within the scope of this term. Practitioners may focus on this term because the patent discloses a detailed, multi-iteration algorithm, and the dispute would likely center on whether the standard requires this specific type of algorithm or if any TFC selection process suffices.
  • Intrinsic Evidence for a Broader Interpretation: The specification introduces the concept broadly, stating the MAC layer "has the function of selecting suitable transport format combinations (TFC)" ('487 Patent, col. 1:24-26).
  • Intrinsic Evidence for a Narrower Interpretation: The detailed description outlines a specific, multi-step process with distinct allocation sequences, criteria, and iterations ('487 Patent, col. 9:16-col. 10:54). A party could argue that "selection algorithm" is implicitly limited to this more complex, disclosed embodiment.

• The Term: "minimum bit rate criteria"

  • Context and Importance: This term captures the purported inventive concept. The dispute would hinge on whether the method of managing bit rates in the HSPA/HSPA+ standard constitutes the claimed "criteria."
  • Intrinsic Evidence for a Broader Interpretation: The patent abstractly describes the invention as carrying out selection "while maintaining a minimum bit rate applicable to the respective logic channel" ('487 Patent, Abstract). This could support a broad interpretation covering any rule that considers a minimum bit rate.
  • Intrinsic Evidence for a Narrower Interpretation: The specification defines the bit rate calculation in a specific way, using a "moving measurement window" of a certain size (e.g., 5 TTIs) and specific formulas to determine the number of transport blocks needed to meet the minimum rate ('487 Patent, col. 2:23-54, col. 9:1-13). This could support a narrower construction requiring this specific computational method.

VI. Other Allegations

• Indirect Infringement: The complaint alleges that Motorola knowingly provides software "especially written or especially adapted" for infringement that is not a "staple article... or suitable for substantial non-infringing use," which are factual predicates for a claim of contributory infringement (Compl. ¶12). It further alleges Motorola had knowledge of the patent and intended for its devices to be used in an infringing manner, supporting a claim for induced infringement (Compl. ¶¶ 13-14).
• Willful Infringement: The complaint bases its willfulness allegation on Motorola having notice of the ’487 Patent "since, at the latest, the service of the original complaint upon it" (Compl. ¶13). This frames the allegation as one of post-filing willfulness.

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

The subsequent cancellation of all asserted claims during IPR proceedings eclipses all other issues in this case. The key questions are therefore not focused on technical infringement but on legal viability.

• A core issue will be one of legal survival: can the plaintiff’s claim for past monetary damages proceed based on infringement of a patent claim that the USPTO has declared invalid and cancelled? This question implicates the retroactive effect of IPR decisions and is the primary hurdle for the case.
• A secondary, and likely moot, question is one of technical-standards mapping: would evidence show that compliance with the HSPA/HSPA+ standard necessarily and unambiguously requires the performance of every limitation of claim 1, including the specific "selection algorithm" and "minimum bit rate criteria" as they would likely be construed in light of the patent's specification?