DCT

1:20-cv-00656

Sisvel Intl SA v. VeriFone Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:20-cv-00656, D. Del., 05/15/2020
  • Venue Allegations: Venue is alleged to be proper in the District of Delaware on the basis that Defendant is a Delaware corporation.
  • Core Dispute: Plaintiff alleges that Defendant’s 3G and 4G-compliant payment terminals infringe nine patents described as essential to cellular communication standards.
  • Technical Context: The patents relate to foundational technologies for managing data transmission, network connection, and resource allocation in 3G and 4G mobile communication networks.
  • Key Procedural History: The complaint alleges a multi-year history of pre-suit licensing negotiations, beginning in December 2016, during which Plaintiff allegedly provided Defendant with notice of infringement for at least U.S. Patent No. 7,979,070, including claim charts. Subsequent to the filing of this complaint, Inter Partes Review (IPR) proceedings resulted in the cancellation of all asserted claims for U.S. Patent Nos. 8,600,383; 8,189,611; 7,215,653; 7,551,625; and 8,971,279.

Case Timeline

Date Event
2000-10-13 U.S. Patent No. 7,979,070 Priority Date
2002-02-11 U.S. Patent No. 7,215,653 Priority Date
2003-02-13 U.S. Patent No. 7,319,718 Priority Date
2004-06-01 U.S. Patent No. 7,580,388 Priority Date
2004-08-18 U.S. Patent No. 8,600,383 Priority Date
2005-03-31 U.S. Patent No. 7,551,625 Priority Date
2005-11-04 U.S. Patent No. 8,189,611 Priority Date
2006-01-05 U.S. Patent No. 7,869,396 Priority Date
2007-05-08 U.S. Patent No. 7,215,653 Issues
2008-01-15 U.S. Patent No. 7,319,718 Issues
2008-11-13 U.S. Patent No. 8,971,279 Priority Date
2009-06-23 U.S. Patent No. 7,551,625 Issues
2009-08-25 U.S. Patent No. 7,580,388 Issues
2011-01-11 U.S. Patent No. 7,869,396 Issues
2011-07-12 U.S. Patent No. 7,979,070 Issues
2012-05-29 U.S. Patent No. 8,189,611 Issues
2013-12-03 U.S. Patent No. 8,600,383 Issues
2015-03-03 U.S. Patent No. 8,971,279 Issues
2016-12-15 Plaintiff first sends licensing letter to Defendant
2017-10-04 Plaintiff sends letter identifying ’070 Patent and attaching claim charts
2020-05-15 Complaint Filed

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

U.S. Patent No. 7,979,070 - Mobile Equipment for Sending an Attach Request to a Network, issued July 12, 2011

The Invention Explained

  • Problem Addressed: In packet-switched mobile networks (e.g., GPRS, UMTS), a mobile device must first perform an "attach" procedure to connect to the network. Subsequently, if the user wishes to send or receive data, a separate "communication channel establishment" process (e.g., PDP context activation) is required. The patent background notes that this two-step process involves significant signaling, which creates a load on the network and introduces a delay for the user before data transmission can begin (’070 Patent, col. 1:25-42).
  • The Patented Solution: The invention proposes a combined procedure where a single "attach request" message from the mobile device can initiate both the network attachment and the default communication channel establishment simultaneously (’070 Patent, Abstract). As depicted in Figure 3, the attach request message can include a specific "ATTACH TYPE" field that signals the network to perform a "combined PS [Packet Switched]+DEFAULT PDP CONT. ACT." This is designed to reduce the total number of signaling messages required and decrease connection latency (’070 Patent, col. 3:55-67; Fig. 4).
  • Technical Importance: By streamlining the initial connection process, this method aims to reduce network signaling overhead and improve the user experience by enabling faster access to data services after the device powers on or enters a new network area (’070 Patent, col. 1:40-42).

Key Claims at a Glance

  • The complaint asserts independent claim 1 and dependent claims 2 and/or 5 (Compl. ¶37).
  • Independent Claim 1 recites an apparatus (user equipment) with elements configured to:
    • send an attach request to a network, wherein the attach request is configured to trigger a create communication connection default procedure with a gateway device;
    • receive a radio bearer establishment request; and
    • generate a bearer establishment response.

U.S. Patent No. 8,600,383 - Apparatus and Method for Making Measurements in Mobile Telecommunications System User Equipment, issued December 3, 2013

The Invention Explained

  • Problem Addressed: The patent describes challenges in dual-mode (e.g., UMTS and GSM) mobile devices during cell reselection. When a device operating on one network type (e.g., UMTS) identifies a potential cell from another network type (e.g., GSM) as having the strongest signal, it will attempt to switch to it. If this attempt fails because the target cell is unavailable or unsuitable, the device may repeatedly try to connect to this known-bad cell, resulting in service interruptions and excessive battery consumption (’383 Patent, col. 2:30-41).
  • The Patented Solution: The invention provides a method for the user equipment to manage its neighboring cell list more intelligently. When a cell is identified as unsuitable for selection, the device "flags" that cell and does not consider it as a candidate for reselection for a defined period of time (’383 Patent, Abstract; Fig. 2). This prevents the device from making repeated, wasteful attempts to connect to a cell that it has already determined to be unavailable, thereby conserving power and improving service stability (’383 Patent, col. 3:20-31).
  • Technical Importance: This method enhances the efficiency and reliability of cell reselection in multi-technology network environments, leading to improved battery life and a more stable user connection by avoiding redundant failed handovers (’383 Patent, col. 2:38-41).

Key Claims at a Glance

  • The complaint asserts claims 1, 9, 17, 25, 49, 58, 66, 74, 82, and/or 90, all of which were subsequently cancelled in an IPR proceeding (Compl. ¶50; ’383 Patent, IPR Certificate).
  • Cancelled Independent Claim 1 recited a method of cell reselection comprising:
    • When camped on a cell of a first Radio Access Technology (RAT), determining if a cell of a second RAT is suitable for camping; and
    • not considering said cell of the second RAT as a candidate for reselection for a time period if said cell of the second RAT is not suitable for camping.
      Multi-Patent Capsule: U.S. Patent No. 8,189,611
  • Patent Identification: U.S. Patent No. 8,189,611, System and Method for Resolving Contention Among Applications Requiring Data Connections Between a Mobile Communications Device and a Wireless Network, issued May 29, 2012 (Compl. ¶58).
  • Technology Synopsis: The patent addresses situations where multiple applications on a mobile device require a data connection, but the network or device limits the number of simultaneous connections. The invention provides a system with a "contention manager" that selects an existing data connection to release in order to establish a new one for a requesting application, based on parameters like application priority or data traffic (’611 Patent, Abstract).
  • Asserted Claims: Claims 1, 7, and/or 8 (Compl. ¶62). All asserted claims were subsequently cancelled in an IPR proceeding (’611 Patent, IPR Certificate).
  • Accused Features: The complaint alleges that Defendant's 4G Capable Accused Instrumentalities necessarily infringe by complying with the 4G cellular standard (Compl. ¶60).

Multi-Patent Capsule: U.S. Patent No. 7,215,653

  • Patent Identification: U.S. Patent No. 7,215,653, Controlling Data Transmission Rate on the Reverse Link for Each Mobile Station in a Dedicated Manner, issued May 8, 2007 (Compl. ¶70).
  • Technology Synopsis: The patent describes a method for a base station to control the reverse link (uplink) data transmission rate for each mobile station individually. This is achieved by comparing the interference level at the base station with the transmission energy required for each mobile, and sending dedicated rate control commands to each mobile to maximize overall data throughput (’653 Patent, Abstract).
  • Asserted Claims: Claims 34 and/or 37 (Compl. ¶74). All asserted claims were subsequently cancelled in an IPR proceeding (’653 Patent, IPR Certificate).
  • Accused Features: The complaint alleges that Defendant's 3G Capable Accused Instrumentalities necessarily infringe by complying with the 3G cellular standard (Compl. ¶72).

Multi-Patent Capsule: U.S. Patent No. 7,319,718

  • Patent Identification: U.S. Patent No. 7,319,718, CQI Coding Method for HS-DPCCH, issued January 15, 2008 (Compl. ¶82).
  • Technology Synopsis: The patent discloses a specific coding method for the Channel Quality Information (CQI) transmitted on the High-Speed Dedicated Physical Control Channel (HS-DPCCH). The method creates codewords for CQI information in a way that is designed to maximize system throughput in an HSDPA system (’718 Patent, Abstract).
  • Asserted Claims: Claims 15 and/or 16 (Compl. ¶86).
  • Accused Features: The complaint alleges that Defendant's 3G Capable Accused Instrumentalities necessarily infringe by complying with the 3G cellular standard (Compl. ¶84).

Multi-Patent Capsule: U.S. Patent No. 7,551,625

  • Patent Identification: U.S. Patent No. 7,551,625, Method of Scheduling an Uplink Packet Transmission Channel in a Mobile Communication System, issued June 23, 2009 (Compl. ¶94).
  • Technology Synopsis: The patent presents a method for a base station to schedule uplink packet transmissions by determining the scope of user equipment (individual, a group, or all) that a scheduling assignment applies to. This determination is based on the overall reverse link load, such as the Rise over Thermal (RoT) value, allowing for more efficient traffic management (’625 Patent, Abstract; Fig. 3).
  • Asserted Claims: Claims 16 and/or 39 (Compl. ¶98). All asserted claims were subsequently cancelled in an IPR proceeding (’625 Patent, IPR Certificate).
  • Accused Features: The complaint alleges that Defendant's 3G Capable Accused Instrumentalities necessarily infringe by complying with the 3G cellular standard (Compl. ¶96).

Multi-Patent Capsule: U.S. Patent No. 7,580,388

  • Patent Identification: U.S. Patent No. 7,580,388, Method and Apparatus for Providing Enhanced Messages on Common Control Channel in Wireless Communication System, issued August 25, 2009 (Compl. ¶106).
  • Technology Synopsis: The patent discloses a method to transmit larger control messages than are normally allowed on a common control channel (CCCH). It does this by defining new, "extended" configurations and indicating their availability in a way that allows newer, compliant devices to use them while legacy devices ignore them, ensuring backward compatibility (’388 Patent, Abstract).
  • Asserted Claims: Claims 1 and/or 33 (Compl. ¶110).
  • Accused Features: The complaint alleges that Defendant's 3G Capable Accused Instrumentalities necessarily infringe by complying with the 3G cellular standard (Compl. ¶108).

Multi-Patent Capsule: U.S. Patent No. 7,869,396

  • Patent Identification: U.S. Patent No. 7,869,396, Data Transmission Method and Data Re-Transmission Method, issued January 11, 2011 (Compl. ¶118).
  • Technology Synopsis: The patent describes a data re-transmission method that integrates a low-level layer retransmission protocol (like HARQ) with a high-level layer protocol (like RLC ARQ). It allows status report information from the fast, low-level layer to more rapidly inform the high-level layer of reception failures, reducing data loss and latency (’396 Patent, Abstract).
  • Asserted Claims: Claims 1, 6 and/or 8 (Compl. ¶122).
  • Accused Features: The complaint alleges that Defendant's 4G Capable Accused Instrumentalities necessarily infringe by complying with the 4G cellular standard (Compl. ¶120).

Multi-Patent Capsule: U.S. Patent No. 8,971,279

  • Patent Identification: U.S. Patent No. 8,971,279, Method and Apparatus for Indicating Deactivation of Semi-Persistent Scheduling, issued March 3, 2015 (Compl. ¶130).
  • Technology Synopsis: The patent discloses a method for a base station to signal the deactivation of a semi-persistent scheduling (SPS) configuration. The deactivation is indicated when a specific binary field in the downlink control information, normally used for resource allocation, is entirely filled with the value '1' (’279 Patent, Abstract).
  • Asserted Claims: Claims 1 and/or 11 (Compl. ¶134). All asserted claims were subsequently cancelled in an IPR proceeding (’279 Patent, IPR Certificate).
  • Accused Features: The complaint alleges that Defendant's 4G Capable Accused Instrumentalities necessarily infringe by complying with the 4G cellular standard (Compl. ¶132).

III. The Accused Instrumentality

Product Identification

The accused products are the Verifone Carbon Mobile 5, V400m, VX680, and VX690 payment terminal devices (Compl. ¶14).

Functionality and Market Context

The complaint identifies the accused products as devices that incorporate cellular communication technology. It alleges that these products are advertised as being compliant with 3G and/or 4G cellular network standards (Compl. ¶15-18). Specifically, the Carbon Mobile 5 and V400m are identified as "4G Capable," while the VX680 and VX690 are identified as "3G Capable" (Compl. ¶15, ¶16, ¶17, ¶18). The complaint does not provide further details on the technical operation or market positioning of the devices beyond their alleged compliance with these standards. No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint does not contain element-by-element infringement allegations in its narrative sections. Instead, it asserts a theory of infringement based on the patents being essential to the 3G and 4G cellular standards. The complaint alleges that because the Accused Instrumentalities are advertised as compliant with these standards, they "necessarily" infringe the asserted patents (Compl. ¶34, ¶48, ¶60, et seq.). The complaint references claim charts that were allegedly provided to the Defendant pre-suit and attached to the complaint as exhibits; however, these exhibits were not available for this analysis (Compl. ¶27, ¶29). Accordingly, a claim chart summary table is omitted and the narrative infringement theory is summarized below.

  • U.S. Patent No. 7,979,070 Infringement Allegations
    The complaint alleges that the '070 Patent is essential to the 4G cellular standard. It asserts that the Accused Instrumentalities that are compliant with the 4G standard (the "4G Capable Accused Instrumentalities") directly infringe at least claims 1, 2, and/or 5 of the patent (Compl. ¶34, ¶37).

  • U.S. Patent No. 8,600,383 Infringement Allegations
    The complaint alleges that the '383 Patent is essential to the 4G cellular standard. It asserts that the 4G Capable Accused Instrumentalities directly infringe at least claims 1, 9, 17, 25, 49, 58, 66, 74, 82, and/or 90 of the patent (Compl. ¶48, ¶50).

  • Identified Points of Contention:

    • Standard-Essentiality: A central issue will be whether the asserted patent claims are, in fact, essential to the mandatory portions of the relevant 3G and 4G technical standards. This will involve questions of claim construction and a technical mapping of the construed claims to the standard specifications.
    • Proof of Infringement: The complaint's theory of "necessary" infringement based on standard-compliance may be contested. A key question will be what evidence is required to prove that the accused products actually practice the standards in a manner that falls within the scope of the asserted claims.

V. Key Claim Terms for Construction

  • The Term: "attach request...configured to trigger a create communication connection default procedure" (from claim 1 of the ’070 Patent).
  • Context and Importance: This term is central to the inventive concept of the ’070 Patent, which combines two distinct network connection steps into one. The infringement dispute for this patent will likely hinge on whether the standard 4G network attachment process, as implemented by the accused devices, performs this specific "triggering" function as described in the patent.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent specification describes the invention in general terms as a "combined attach and communication channel establishment procedure" designed to decrease signaling (’070 Patent, col. 2:27-31). This language may support a construction that covers any attach request that results in the establishment of a default data context, regardless of the specific signaling mechanism.
    • Evidence for a Narrower Interpretation: The patent's detailed description and Figure 3 illustrate a specific embodiment where the attach request message contains an "ATTACH TYPE" field explicitly set to "PS+DEFAULT PDP CONT. ACT." to initiate the combined procedure (’070 Patent, col. 3:55-67). This suggests the possibility that the claim requires a specific, designated message format to perform the triggering function.

VI. Other Allegations

  • Indirect Infringement: For all nine asserted patents, the complaint alleges induced infringement under 35 U.S.C. § 271(b) based on Defendant's advertising, distribution, and provision of instructional materials for the accused products (Compl. ¶40-41, ¶52-53, et seq.). It also alleges contributory infringement under 35 U.S.C. § 271(c), asserting the products are a material component especially made for infringement and not a staple article of commerce (Compl. ¶43, ¶55, et seq.).
  • Willful Infringement: The complaint explicitly alleges willful infringement only for the ’070 Patent. This allegation is based on pre-suit knowledge allegedly established by correspondence sent to Defendant on October 4, 2017, which identified the patent and included claim charts (Compl. ¶35, ¶38). For the other eight patents, knowledge for the purpose of inducement is alleged to begin no earlier than the filing date of the complaint (e.g., Compl. ¶49, ¶61, ¶73).

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

  • A core issue will be one of claim validity and enforceability: for at least five of the nine asserted patents, all asserted claims were cancelled in IPR proceedings that concluded after the complaint was filed. The case will require an early determination of whether any asserted claims remain viable for adjudication.
  • A second central question is one of standard-essentiality: assuming any claims survive, the case will hinge on whether Plaintiff can prove that the asserted patent claims are essential to the mandatory portions of the 3G and 4G standards, and that Defendant's products practice those standards in an infringing way.
  • A key evidentiary question will be one of pre-suit knowledge: for the ’070 Patent, the sufficiency of the October 4, 2017 notice will be critical to the allegation of willful infringement and any potential for enhanced damages. The court will have to analyze whether the pre-suit communications were specific enough to establish the requisite knowledge and intent.