Nitetek Licensing LLC v. Ingeteam Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Nitetek Licensing LLC (Texas)
  • Defendant: Ingeteam Inc. (Delaware)
  • Plaintiff’s Counsel: Chong Law Firm, P.A.
• Case Identification: 1:20-cv-00716, D. Del., 05/28/2020
• Venue Allegations: Venue is alleged to be proper in the District of Delaware because the Defendant is a Delaware corporation.
• Core Dispute: Plaintiff alleges that Defendant’s electric vehicle charging stations infringe two patents related to methods for managing resource allocation and communication codes in TDMA and CDMA wireless networks.
• Technical Context: The patents address efficiency in established cellular communication protocols (GSM/GPRS and CDMA) by optimizing how network resources are used during certain types of data transmission.
• Key Procedural History: The complaint does not mention any prior litigation, inter partes review proceedings, or licensing history related to the patents-in-suit.

Case Timeline

Date	Event
1998-03-10	'783 Patent Priority Date
2003-04-02	'105 Patent Priority Date
2003-12-09	'783 Patent Issue Date
2006-03-28	'105 Patent Issue Date
2020-05-28	Complaint Filing Date

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

U.S. Patent No. 7,020,105, DYNAMIC RESOURCE ALLOCATION IN PACKET DATA TRANSFER, issued March 28, 2006

The Invention Explained

• Problem Addressed: In Time Division Multiple Access (TDMA) systems like GPRS, mobile devices must periodically pause transmissions to measure signal strength from neighboring cells and to switch between receiving and transmitting (turnaround time) (ʼ105 Patent, col. 2:16-28). The patent states that fixed rules for allocating time slots for these activities can create conflicts, especially when many slots are in use, which "reduce[s] the availability of slots for uplink transmissions" and limits data flow (ʼ105 Patent, col. 2:32-35).
• The Patented Solution: The invention proposes a dynamic method for allocating measurement and turnaround periods to avoid these conflicts. It establishes a conditional rule: if the number of allocated communication slots is below a certain threshold, one set of timing rules applies for measurements. If the number of slots is at or above that threshold (creating a potential conflict), a different set of timing rules is used to ensure sufficient time for measurements before transmission (ʼ105 Patent, col. 6:16-43). This adaptability is intended to prevent the loss of usable communication slots.
• Technical Importance: The method sought to improve data throughput and operational flexibility in GPRS networks by more intelligently scheduling mandatory, non-data activities around active data transmissions (ʼ105 Patent, col. 2:47-52).

Key Claims at a Glance

• The complaint asserts infringement of claims 1-24, focusing on independent Claim 1 (Compl. ¶15).
• Essential elements of independent Claim 1 include:
  • A communication method in a mobile station apparatus using a TDMA frame of eight slots with a specified uplink/downlink timing offset.
  • Receiving on a downlink slot and transmitting on an uplink slot.
  • Performing adjacent cell signal level measurement.
  • A conditional step wherein: (i) if the number of transmission slots is below a predetermined number, a two-slot allocation is applied for measurement and preparing to receive; and (ii) if the number of transmission slots is at the predetermined number, a two-slot allocation is applied for measurement and preparing to transmit.

U.S. Patent No. 6,661,783, CDMA TRANSMISSION APPARATUS, issued December 9, 2003

The Invention Explained

• Problem Addressed: In CDMA systems, communications are often asymmetric, with more data flowing in one direction than the other (e.g., high uplink, low downlink) (ʼ783 Patent, col. 3:48-58). The patent explains that performing essential functions like closed-loop power control requires dedicating a downlink spreading code, even if no other data is being sent on the downlink. This can lead to a "shortage of spreading codes," limiting the overall capacity of the cell (ʼ783 Patent, col. 4:1-5).
• The Patented Solution: The invention proposes a method for selecting a special type of spreading code for asymmetric communications. It uses a "hierarchic orthogonal type spreading code" that has a longer code length than codes used for normal symmetric communications (ʼ783 Patent, Abstract). This allows the system to handle the necessary low-rate downlink signals (e.g., power control bits) without consuming a valuable standard-length spreading code from the primary set, thereby preserving resources for other users (ʼ783 Patent, col. 8:20-29).
• Technical Importance: This code selection strategy aimed to increase the user capacity of CDMA systems, particularly as they began to support more data-intensive applications with asymmetric traffic patterns (ʼ783 Patent, col. 3:11-14).

Key Claims at a Glance

• The complaint asserts infringement of at least claims 3 and 4, focusing on independent Claim 3 (Compl. ¶20).
• Essential elements of independent Claim 3 include:
  • A spreading code selection method for asymmetric communications.
  • The method selects a "hierarchic orthogonal type spreading code."
  • This selected code belongs to a hierarchy containing spreading codes of a "longer length" than those used for symmetric communication lines.
  • The selected code is "orthogonal to spreading codes used for other asymmetric communication lines."

III. The Accused Instrumentality

Product Identification

• The "Ingerev® Garage Basic," described as a wall-mountable charging station for electric vehicles (Compl. ¶¶ 5-6).

Functionality and Market Context

• The complaint alleges the product provides charging for both fleet and residential purposes (Compl. ¶6). The infringement allegations are based on the product’s alleged ability to "communicate via a GSM cellular connection" and its alleged implementation of the UMTS-FDD standard (Compl. ¶¶ 7, 14). The technical basis of the suit centers on the communication protocols the device allegedly uses, not its function as a vehicle charger.

IV. Analysis of Infringement Allegations

The complaint incorporates by reference Exhibits C and D, described as non-limiting claim charts, which were not included with the filed document (Compl. ¶5). The analysis below is based on the narrative allegations in the complaint.

’105 Patent Infringement Allegations

The complaint’s infringement theory is that the Accused Product practices the method of Claim 1 by virtue of adhering to the 3GPP TS 45.002 V6.12.0 (2005-11) standard for GSM communication (Compl. ¶7). The complaint alleges that this standard dictates the core elements of the claim, including the use of an eight-slot TDMA frame, a three-slot uplink delay, and the processes of receiving, transmitting, and performing adjacent cell signal measurements (Compl. ¶¶ 8-11). The complaint further alleges the standard provides for the conditional logic recited in the final two "wherein" clauses of Claim 1 concerning the allocation of slots for measurement based on the number of transmission slots in use (Compl. ¶12).

’783 Patent Infringement Allegations

The infringement theory for the ’783 Patent is also based on the implementation of a communication standard. The complaint alleges the Accused Product is equipped with UMTS capabilities, including the UMTS-FDD variant (Compl. ¶14). It alleges that in practicing asymmetric communications, the product uses Orthogonal Variable Spreading Factor (OVSF) codes as channelization codes, and that these OVSF codes are the "hierarchic orthogonal type spreading code" recited in Claim 3 (Compl. ¶13). The complaint alleges these codes are longer than those for symmetric lines and are orthogonal to codes used by other users, thereby meeting the limitations of Claim 3 (Compl. ¶¶ 13-14).

No probative visual evidence provided in complaint.

• Identified Points of Contention:
  • Scope Questions: A primary issue for the ’105 Patent may be whether the term "mobile station apparatus," as used in the patent, can be construed to read on a stationary electric vehicle charging station. The complaint alleges it is a "mobile station apparatus (e.g. mobile station)" (Compl. ¶8), but its stationary nature raises a potential question of claim scope.
  • Technical Questions: The case appears to rest on a standards-essentiality argument. A key question will be whether mere compliance with the 3GPP and UMTS-FDD standards necessarily requires the Accused Product to perform the specific conditional logic of Claim 1 of the ’105 Patent and the specific code selection method of Claim 3 of the ’783 Patent in all or infringing modes of operation. It raises the question of whether the accused functionalities are mandatory parts of the standard or optional features that a compliant device may or may not implement.

V. Key Claim Terms for Construction

The Term: "mobile station apparatus" (’105 Patent, Claim 1)

Context and Importance

This term is foundational to the infringement analysis for the ’105 Patent. Practitioners may focus on this term because the Accused Product is a typically stationary EV charger, while the term "mobile station" is commonly associated with portable devices like cell phones. The case may depend on whether the term is defined by its physical mobility or its role within the architecture of a cellular network.

Intrinsic Evidence for Interpretation

• Evidence for a Broader Interpretation: The patent itself does not appear to contain an explicit definition limiting the apparatus to something that must be physically portable. An argument could be made that any end-user device communicating with the network as a "station" fits the term, regardless of its mobility.
• Evidence for a Narrower Interpretation: The patent consistently uses the term "mobile station" (ʼ105 Patent, col. 2:10, 2:19, etc.), a term of art that, at the time of invention, strongly implied portability. The related ’783 Patent explicitly references "digital car telephones and portable telephones" as the context for the technology (’783 Patent, col. 1:8-10).

The Term: "asymmetric communications" (’783 Patent, Claim 3)

Context and Importance

Infringement of the ’783 Patent is predicated on the Accused Product engaging in "asymmetric communications." The construction of this term will determine what modes of the product's operation are relevant to the infringement analysis.

Intrinsic Evidence for Interpretation

• Evidence for a Broader Interpretation: The specification defines these as "communications whose information rate is asymmetric between the uplink and downlink, for example when information is only sent from the mobile station side" (’783 Patent, col. 3:51-55). This could be interpreted broadly to cover any communication that is not perfectly balanced in its data rate.
• Evidence for a Narrower Interpretation: The patent contrasts the term with "symmetric communications" typical of voice calls (’783 Patent, col. 3:48-58). A narrower construction might limit the term to specific, defined data-centric services rather than encompassing all incidental, low-data-rate network communications like status updates or keep-alive signals.

VI. Other Allegations

• Indirect Infringement: The complaint makes allegations of direct infringement under 35 U.S.C. §271 but does not plead specific facts to support claims for indirect infringement (e.g., inducement or contributory infringement).
• Willful Infringement: The complaint alleges that Defendant had knowledge of infringement for both patents "at least as of the service of the present Complaint" (Compl. ¶¶ 18, 26). This allegation could support a claim for post-suit willful infringement. The complaint does not allege any pre-suit knowledge.

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

• A core issue will be one of definitional scope: can the term "mobile station apparatus," rooted in the patent’s context of GPRS mobile communications, be construed to cover a stationary device like an electric vehicle charging station? The answer to this claim construction question may be dispositive for the ’105 patent.
• A key evidentiary question will be one of operational proof: does the allegation that the Accused Product complies with the GSM and UMTS standards suffice to establish infringement, or must Plaintiff provide direct evidence that the product, during its actual operation, performs the specific conditional resource allocation and hierarchical code selection methods recited in the asserted claims? The case may turn on whether the accused methods are mandatory, unavoidable functions of the standards or optional features.