DCT

1:18-cv-01844

Uniloc 2017 LLC v. Motorola Mobility LLC

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:18-cv-01844, D. Del., 11/20/2018
  • Venue Allegations: The complaint does not contain a separate section on venue, but notes that Defendant is a Delaware corporation, which provides a basis for venue in the District of Delaware.
  • Core Dispute: Plaintiff alleges that Defendant’s mobile devices, which incorporate screen lock and automatic locking features, infringe a patent related to time-based anti-theft protection for radiotelephony devices.
  • Technical Context: The technology concerns methods to automatically disable a mobile phone after a period of inactivity to prevent unauthorized use, even if a thief possesses the device with its correct SIM card.
  • Key Procedural History: The complaint alleges that Defendant had pre-suit knowledge of the patent-in-suit because a patent issued to Defendant in 2013 cited it as a reference. The complaint also references a prior case (1:18-cv-01230-LPS) as providing notice to Defendant. Subsequent to the filing of this complaint, the patent-in-suit, U.S. Patent No. 6,836,654, survived two Inter Partes Review (IPR) proceedings (IPR2019-01471 and IPR2020-00701), which resulted in the cancellation of claims 10-20 but left the asserted claims (1, 3-5, 7) intact.

Case Timeline

Date Event
1999-12-21 ’654 Patent Priority Date
2004-12-28 ’654 Patent Issue Date
2013-04-02 U.S. Patent No. 8,412,270 issues to Motorola, citing the ’654 Patent
2018-11-20 Complaint Filing Date
2021-11-09 Inter Partes Review Certificate Issued for ’654 Patent

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

U.S. Patent No. 6,836,654 - ANTI-THEFT PROTECTION FOR A RADIOTELEPHONY DEVICE

Issued December 28, 2004

The Invention Explained

  • Problem Addressed: The patent describes a scenario where a mobile phone is lost or stolen along with its linked user identification module (e.g., a SIM card). In such cases, a thief could use the phone to make calls at the owner's expense until the owner reports the theft and the network operator blocks the module, which may involve a delay (’654 Patent, col. 1:30-35).
  • The Patented Solution: The invention proposes a device-centric, time-based security layer. Even with the correct identification module installed, the device monitors itself for a "period of inactivity" (’654 Patent, col. 2:40-43). If the device remains inactive for a defined time (e.g., "of the order of several minutes"), it enters a blocked state that prevents normal operation, such as making outgoing calls. To restore full functionality, a user must supply a "deblocking code" (e.g., a PIN) (’654 Patent, col. 2:43-52). The flowchart in Figure 3 illustrates this logic, where a check for an inactivity period 'T' (K10) triggers a second blocking state (K11) that requires user input to exit (’654 Patent, col. 4:32-51).
  • Technical Importance: This approach aims to render a stolen device unusable more quickly and automatically, independent of any action by the network operator, thereby mitigating the risk of fraudulent use (’654 Patent, col. 2:58-63).

Key Claims at a Glance

  • The complaint asserts independent claim 1 and dependent claims 3-5 and 7 (Compl. ¶10).
  • Independent Claim 1 requires:
    • A mobile radiotelephony device comprising:
    • blocking means for preventing a normal operation of the device, where normal operation includes processing outgoing calls;
    • timing means for activating the blocking means if the device is inactive for a defined period of time after a linked user identification module is mounted; and
    • deblocking means for permitting normal operation in response to a deblocking code supplied after the defined period of inactivity has passed.

III. The Accused Instrumentality

Product Identification

  • The complaint identifies a wide range of Motorola mobile devices, including the Moto G, E, X, and Z series, Droid series, and others, collectively termed the "Accused Infringing Devices" (Compl. ¶8).

Functionality and Market Context

  • The complaint alleges that the accused devices incorporate "antitheft technology that utilizes timing and identification codes to block and unblock normal operation" (Compl. ¶9). The specific accused functionality appears to be the standard screen lock feature. A provided screenshot from a user guide describes an "Automatically lock" setting that locks the phone "after sleep" and requires a PIN, password, or pattern to unlock (Compl. p. 4). This screenshot details "Screen Lock Options" such as PIN or password and an "Automatically lock" feature that locks the phone after a set period of sleep (Compl. p. 4). The complaint does not provide detail on the market positioning of the devices beyond listing numerous product families (Compl. ¶8).

IV. Analysis of Infringement Allegations

The complaint references a claim chart in "Exhibit B" that was not provided with the filed document (Compl. ¶10). The infringement theory can be summarized from the complaint's narrative and visual evidence.

The complaint alleges that the lock-screen functionalities of the Accused Infringing Devices meet the elements of the asserted claims (Compl. ¶¶ 9, 12). The "Automatically lock" feature, which activates after a user-defined "period of time after sleep," is alleged to function as the claimed "timing means" (Compl. p. 4). A screenshot from a Motorola user guide illustrates the lock screen, from which a user must swipe or enter credentials to proceed (Compl. p. 4). The requirement to enter a PIN, password, or pattern to unlock the device is alleged to constitute the claimed "deblocking means" (Compl. p. 4). The complaint alleges that by implementing a screen lock, which prevents a user from making a call, the devices practice the claimed "blocking means" (Compl. ¶9).

  • Identified Points of Contention:
    • Scope Questions: A primary question will be whether a general-purpose screen lock, which prevents access to the entire user interface, constitutes the "blocking means for preventing a normal operation... wherein the normal operation includes a processing of outgoing calls" as claimed. The patent specification describes a more nuanced blocking state that specifically targets outgoing calls while permitting incoming ones (’654 Patent, col. 4:44-48), raising the question of whether the accused functionality matches the claimed invention's operation.
    • Technical Questions: The complaint does not provide evidence showing how the accused "Automatically lock" feature is technically linked to the "mounting of a linked user identification module" as required by claim 1. A potential dispute is whether the accused feature is a generic security function independent of the SIM card's status, or if its operation is contingent on the SIM card in the manner described by the patent.

V. Key Claim Terms for Construction

  • The Term: "preventing a normal operation... wherein the normal operation includes a processing of outgoing calls"

    • Context and Importance: The infringement theory relies on mapping this limitation to a device's general screen lock. The construction of this term will determine whether a feature that blocks all user interaction can meet a limitation that specifies a particular type of operation (processing outgoing calls).
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: A party could argue that the term "includes" means that blocking outgoing calls is merely one necessary consequence of the "preventing a normal operation." Therefore, a total screen lock, which by necessity prevents outgoing calls, would fall within the claim's scope.
      • Evidence for a Narrower Interpretation: The specification describes a "second blocking state" where "the device only processes incoming calls (box K13) and, possibly... emergency numbers (box K14)" but not other outgoing calls (’654 Patent, col. 4:44-48). This could support an argument that the claimed "blocking means" must perform this selective function, rather than implementing a total device lock.

  • The Term: "inactive... for a defined period of time"

    • Context and Importance: Practitioners may focus on this term because the accused functionality is tied to the screen's "sleep" state (Compl. p. 4), while the patent appears to contemplate a longer period associated with theft or loss.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The claim language itself does not specify a duration, leaving "defined period" open to encompass short, user-configurable screen timeout intervals.
      • Evidence for a Narrower Interpretation: The Summary of the Invention states the device "has most probably been inactive for a period of time that is sufficiently long for its normal operation to be blocked (advantageously, the inactive time after which the blocking means are activated is of the order of several minutes)" (’654 Patent, col. 2:53-57). This language could support a narrower construction requiring a multi-minute period of inactivity.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges induced infringement, stating that Motorola "intentionally instructs its customers to use the Accused Infringing Devices in a manner that causes the devices to infringe" through materials like "user guides" (Compl. ¶¶ 12-13). The screenshots of user documentation are provided as evidence of these instructions (Compl. p. 4).
  • Willful Infringement: The complaint alleges willfulness based on both pre- and post-suit knowledge. Pre-suit knowledge is alleged to stem from U.S. Patent No. 8,412,270, a patent issued to Motorola in 2013 that cites the ’654 Patent as a reference (Compl. ¶17). Post-suit knowledge is alleged based on service in a prior lawsuit, Case No. 1:18-cv-01230-LPS (Compl. ¶15).

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

  • A core issue will be one of claim scope versus accused functionality: Can the patent’s specific, time-based anti-theft system, which contemplates a multi-minute inactivity period to selectively block outgoing calls, be construed to cover the accused devices' general-purpose screen lock, which typically activates after a brief "sleep" period and blocks all user interaction?
  • A key evidentiary question will be one of technical implementation: What evidence will be presented to establish that the accused screen lock feature operates "subsequent to a mounting of a linked user identification module" in the specific manner required by claim 1, as opposed to being a security feature that functions independently of the SIM card's status?
  • A third pivotal issue will be the impact of the patent's IPR history. With the asserted claims having survived two IPR challenges, a central question is how this strengthened presumption of validity will influence claim construction arguments and narrow the scope of Defendant's available non-infringement and invalidity defenses.