Koninklijke Philips NV v. Telit Wireless Solutions Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Koninklijke Philips N.V. (The Netherlands)
  • Defendant: Telit Wireless Solutions, Inc. (Delaware); Telit Communications PLC (United Kingdom); CalAmp Corp. (Delaware)
  • Plaintiff’s Counsel: Young Conaway Stargatt & Taylor, LLP; Foley & Lardner LLP
• Case Identification: 1:20-cv-01711, D. Del., 12/17/2020
• Venue Allegations: Venue is alleged to be proper as Defendants Telit Wireless and CalAmp are incorporated in Delaware, and Defendant Telit Communications is a foreign corporation that has allegedly committed acts of infringement giving rise to the action within the district.
• Core Dispute: Plaintiff alleges that Defendants’ cellular communication modules, and products containing them, infringe four patents related to technologies for managing data prioritization, control channel allocation, and power control in 3G and 4G wireless networks.
• Technical Context: The technology at issue involves foundational techniques for managing data traffic and device behavior in modern cellular networks, which are critical for the functionality of Internet of Things (IoT) devices.
• Key Procedural History: Plaintiff notes the contemporaneous filing of a complaint at the International Trade Commission (ITC) asserting the same patents against the same Defendants, which may lead to a stay of this district court action. The complaint also alleges a history of licensing negotiations, including notice letters sent to Telit in 2015 and CalAmp in 2020, and raises issues related to Defendants’ Fair, Reasonable, and Non-Discriminatory (FRAND) licensing obligations under European Telecommunications Standards Institute (ETSI) policies.

Case Timeline

Date	Event
2002-02-08	Priority Date for ’943 and ’711 Patents
2003-08-11	Priority Date for ’271 Patent
2005-11-04	Priority Date for ’935 Patent
2009-06-30	U.S. Patent No. 7,554,943 Issues
2010-11-09	U.S. Patent No. 7,831,271 Issues
2011-05-17	U.S. Patent No. 7,944,935 Issues
2012-06-12	U.S. Patent No. 8,199,711 Issues
2015-07-06	Plaintiff allegedly put Defendant Telit on notice of asserted patents
2020-10-19	Plaintiff allegedly put Defendant CalAmp on notice of asserted patents
2020-12-17	Complaint Filed

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

U.S. Patent No. 7,944,935 - "Method for Priority Based Queuing and Assembling of Packets"

The Invention Explained

• Problem Addressed: In wireless systems like UMTS, strictly prioritizing the transmission of high-priority data packets can indefinitely delay, or "starve," lower-priority packets (Compl. ¶42). This rigid approach is often too inflexible to satisfy diverse Quality of Service (QoS) requirements for different data flows, such as minimum bit rates or maximum delays (’935 Patent, col. 1:35-47).
• The Patented Solution: The patent describes a method for assembling a large transmission packet (e.g., a MAC-e PDU) by dividing it into at least two portions. The first portion is populated with data packets according to a first rule, such as selecting from the highest-priority queue. The second portion is populated according to a second, different rule, such as selecting packets from lower-priority queues that have experienced a delay exceeding a threshold (’935 Patent, Abstract; col. 2:10-16). The relative size of these portions can be dynamically adapted to balance the needs of different data flows (Compl. ¶43; ’935 Patent, col. 2:17-30).
• Technical Importance: This two-part multiplexing scheme provided a more flexible and efficient use of transmission capacity, allowing network operators to better handle mixed-priority traffic while helping to guarantee bit-rates and prevent data starvation for lower-priority services (’935 Patent, col. 1:60-66).

Key Claims at a Glance

• The complaint asserts independent claims 1 (a method) and 9 (an apparatus) (Compl. ¶¶83, 91).
• The essential elements of independent claim 1 include:
  • A method of multiplexing data packets having different assigned priorities;
  • receiving data packets;
  • operating a queue for each different priority of data packet;
  • assembling a group of data packets wherein a first portion is populated with packets selected according to a first rule, and a second portion is populated with packets selected according to a second rule;
  • transmitting the group, wherein the size of the first and second portions is adapted according to the delay experienced by data in each queue relative to a delay criterion for the respective queue.
• The complaint also asserts dependent claims 2-4, 10-12, and apparatus claim 17 (Compl. ¶82).

U.S. Patent No. 7,554,943 - "Radio Communication System"

The Invention Explained

• Problem Addressed: In High-Speed Downlink Packet Access (HSDPA) systems, informing a mobile device which control channel to monitor for incoming data presents a dilemma. Using a dedicated "indicator signal" is complex and power-intensive, while assigning each device a permanent control channel restricts scheduling flexibility and can degrade performance if multiple active devices are assigned to the same channel (’943 Patent, col. 1:42-60; Compl. ¶51).
• The Patented Solution: To avoid these drawbacks, the invention proposes dynamically changing the control channel allocated to a mobile device over time according to a defined, pseudo-random sequence that is known to both the network (primary station) and the device (secondary station) (’943 Patent, Abstract; col. 2:6-12). The device simply monitors the specific control channel dictated by the sequence at any given time, eliminating the need for an indicator signal while preventing the performance bottlenecks of a static assignment (Compl. ¶52).
• Technical Importance: This "shuffling" of control channel allocations enhanced system performance in worst-case scenarios and reduced device complexity without sacrificing the ability to schedule data transmissions flexibly (’943 Patent, col. 2:13-16).

Key Claims at a Glance

• The complaint asserts independent claims 12 (a secondary station) and 15 (a method) (Compl. ¶117).
• The essential elements of independent claim 12 include:
  • A secondary station for use in a radio communication system with a data channel and a plurality of control channels;
  • means for determining which of the control channels is allocated to the secondary station, where the allocated control channel is changed according to a defined sequence known to both the primary and secondary station;
  • means for monitoring the currently allocated control channel to determine information about packet transmissions;
  • wherein the defined sequence is configured to reduce the probability of an allocation collision to 1/N, where N is the total number of control channels.
• The complaint does not explicitly assert any dependent claims for this patent.

Multi-Patent Capsule: U.S. Patent No. 8,199,711 - "Radio Communication System"

• Technology Synopsis: Sharing a common specification with the ’943 Patent, this patent also addresses inefficient control channel allocation in wireless systems (Compl. ¶59). The invention discloses a system where control channels are allocated to a plurality of secondary stations according to a corresponding plurality of different defined sequences, ensuring that different devices follow different channel-hopping patterns to further reduce the likelihood of collision and improve overall system efficiency (Compl. ¶¶65, 141, 145).
• Asserted Claims: Independent claims 9 (a secondary station) and 12 (a method) (Compl. ¶137).
• Accused Features: The accused products, as LTE-compliant devices, are alleged to use different control channel monitoring sequences based on their unique device identifiers (RNTIs), thereby practicing the claimed method (Compl. ¶¶150-151).

Multi-Patent Capsule: U.S. Patent No. 7,831,271 - "Communication System and Method of Operating the Communicating System"

• Technology Synopsis: The patent addresses the problem that arises when a mobile terminal, while already transmitting, must send an additional, simultaneous signal (e.g., an ACK/NACK) that would cause it to exceed its maximum power limit (Compl. ¶69). The patented solution is to proactively scale down the power of the first signal by an amount that accounts for the greatest possible power requirement of any potential additional signal, thereby ensuring the power limit is never breached without requiring a last-minute power adjustment after the nature of the additional signal is known (Compl. ¶¶70-71).
• Asserted Claims: Independent claims 1 (a method) and 5 (a communication station) (Compl. ¶156).
• Accused Features: The accused products are alleged to infringe by implementing 3G UMTS power control procedures, where the power of uplink DPCCH/DPDCH signals is scaled to accommodate the transmission of an ACK or NACK signal based on the largest potential power offset (Compl. ¶¶171, 175-176).

III. The Accused Instrumentality

• Product Identification: The complaint identifies cellular communication modules sold by Telit (e.g., models in the xE910, LE910, LM940, and other series) and downstream IoT products sold by CalAmp (e.g., model LMU-3640LAB) that incorporate those modules (Compl. ¶¶36, 38, 79). The complaint provides photos of the Telit LE910-NA V2 module and the CalAmp LMU-3640LAB device, which are representative of the accused instrumentalities (Compl. ¶¶37-38).
• Functionality and Market Context: The accused products are hardware modules that provide devices with connectivity to cellular networks, including 3G UMTS and 4G LTE (Compl. ¶¶21, 39, 100). The complaint alleges these modules are compliant with 3GPP technical standards, which allegedly implement the patented technologies (Compl. ¶¶100, 127). These modules are alleged to be fundamental components for the IoT market and are certified for use on major U.S. carrier networks like AT&T and Verizon (Compl. ¶¶21, 39).

IV. Analysis of Infringement Allegations

’935 Patent Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
a method of multiplexing data packets having different assigned priorities	The Accused Products perform a microprocessor-based method of multiplexing by complying with 3GPP LTE standards.	¶101	col. 1:1-3
receiving data packets	Packets are received from higher layers of the protocol stack.	¶102	col. 2:51-52
operating a queue for each different priority of data packet	Products maintain a queue for each logical channel, with scheduling controlled by a "priority" parameter signaled by the network.	¶103	col. 2:52-53
assembling a group of the data packets wherein a first portion of the group is populated with data packets selected from one or more of the queues according to a first rule and a second portion of the group is populated with data packets selected from one or more of the queues according to a second rule	The 3GPP Logical Channel Prioritization procedure is alleged to be a two-rule process: a "first rule" (Step 1) serves channels with a positive "bucket" value (Bj > 0), and a "second rule" (Step 3) serves all remaining channels in strict priority order.	¶104	col. 2:54-59
transmitting the group, wherein the size of the first and second portions is adapted according to the delay experienced by data in each queue relative to a delay criterion for the respective queue	The size of the portions is allegedly adapted via a "bucket" variable "Bj" for each queue. This variable is incremented based on a "prioritisedBitRate" (PBR) and a "bucketSizeDuration" (BSD), which the complaint alleges functions as a proxy for delay. The complaint includes a table from a 3GPP standard showing these configuration parameters (Compl. ¶107).	¶¶106, 110	col. 2:63-66

• Identified Points of Contention:
  • Scope Question: A central question will be whether the token-bucket mechanism described in the 3GPP standard (based on "prioritisedBitRate" and a "bucketSizeDuration") meets the claim limitation of adapting portion sizes "according to the delay experienced by data in each queue." The analysis may turn on whether this rate-based credit system can be construed as a "delay criterion."
  • Technical Question: Does the accused two-step prioritization procedure constitute assembling two distinct "portions" whose "size" is "adapted"? A court may need to determine if the 3GPP procedure, which prioritizes which queues get served, is functionally equivalent to a mechanism that explicitly partitions a data group and adapts the size of those partitions.

’943 Patent Infringement Allegations

Claim Element (from Independent Claim 12)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
A secondary station for use in a radio communication system... having a data channel... and a plurality of control channels...	The Accused Products are secondary stations (UEs) in an LTE system, which has a data channel (PDSCH) and multiple physical downlink control channels (PDCCHs).	¶¶128, 130	col. 2:1-6
means are provided for determining which of the control channels is allocated to the secondary station, the allocated control channel being changed according to a defined sequence known to both the primary station and the secondary station...	The UE determines its allocated control channels by monitoring a set of PDCCH "candidates." The location of these candidates in the system's resources changes each subframe according to a sequence ("Yk") that is a function of the slot number and the UE's unique identifier (RNTI). This sequence is a known linear congruential generator.	¶¶131, 140, 141	col. 2:6-10
...and for monitoring the currently allocated control channel to determine information about packet transmissions.	The UE monitors its assigned set of PDCCH candidates in every non-DRX subframe to attempt to decode control information.	¶¶131, 140	col. 2:10-12
...wherein the defined sequence is configured to reduce probability of an allocation collision to 1/N, where N is a total number of the control channels.	The use of a pseudo-random sequence based on a unique RNTI for each UE is alleged to distribute the control channel search spaces, thereby reducing the probability of collision between UEs.	¶¶121, 126, 131	col. 7:35-40

• Identified Points of Contention:
  • Scope Question: Does the LTE mechanism of monitoring a shifting "search space" containing multiple candidate control channels satisfy the claim limitation of a single "allocated control channel being changed"? The claim language may suggest a one-to-one allocation that hops, whereas the accused standard describes a moving window of potential allocations.
  • Technical Question: What evidence does the complaint provide that the "Yk" sequence generator is specifically "configured to reduce probability of an allocation collision to 1/N" as claimed? While the complaint asserts this is the functional result, the court may require analysis on whether the standard's mechanism was designed to meet this specific probabilistic goal, as opposed to generally de-correlating UE search spaces.

V. Key Claim Terms for Construction

• Term from ’935 Patent: "delay experienced by data"

  • Context and Importance: Plaintiff’s infringement theory for the '935 Patent hinges on this term encompassing the 3GPP standard's rate-based "bucket" mechanism. The case may turn on whether this mechanism, which grants transmission credits over time, is legally and technically equivalent to a measure of "delay."
  • Evidence for a Broader Interpretation: The specification discusses adapting based on "the delay experienced by data in each queue relative to a delay criterion for the respective queue" (’935 Patent, col. 2:25-27) but does not mandate a specific method for measuring delay, which may support a functional interpretation that includes the accused token-bucket system as a type of delay criterion.
  • Evidence for a Narrower Interpretation: The patent also describes selecting packets from queues that have "experienced a delay longer than a threshold delay" or from queues with "more data awaiting than a threshold amount" (’935 Patent, col. 2:10-14), suggesting that "delay" and "amount of data" are distinct concepts. This could support an argument that "delay" refers to a direct temporal measurement (e.g., time-since-arrival) and not a rate-based credit system.

• Term from ’943 Patent: "the allocated control channel"

  • Context and Importance: Plaintiff alleges that the LTE system of changing the location of a "search space" of control channel candidates meets this limitation. The dispute will likely focus on whether a "search space" can be considered a single "allocated control channel."
  • Evidence for a Broader Interpretation: The purpose of the invention is to move away from static assignments (’943 Patent, col. 1:53-57). An argument could be made that any dynamic assignment scheme that tells a device where to look for control information falls within the spirit of the invention, and "the allocated control channel" could refer functionally to the resource block(s) the UE must monitor.
  • Evidence for a Narrower Interpretation: The claim uses the singular form "the allocated control channel," which is then "changed." The specification reinforces this, describing the allocation of "one of the control channels" which is subsequently changed (’943 Patent, col. 2:8-10). This language may support a narrower construction requiring a one-to-one channel assignment at any given time, rather than the one-to-many relationship of monitoring a search space of candidates.

VI. Other Allegations

• Indirect Infringement: The complaint alleges both induced and contributory infringement. Inducement is based on allegations that Defendants had pre-suit knowledge of the patents via notice letters and provided user manuals and marketing materials that encourage end-users to operate the products in an infringing manner (Compl. ¶¶80, 115, 135, 154). Contributory infringement is based on the allegation that the accused modules are a material part of the invention, are especially adapted for infringement by being compliant with the relevant standards, and have no substantial non-infringing use (Compl. ¶¶81, 116, 136, 155).
• Willful Infringement: Willfulness is alleged based on pre-suit knowledge from notice letters sent to Telit in July 2015 and CalAmp in October 2020 (Compl. ¶¶32, 34). The complaint characterizes Defendants' continued alleged infringement and refusal to take a license as a "path of willful and wonton infringement" and an "'efficient infringement' tactical approach" (Compl. ¶33).

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

• A core issue will be one of standards-to-claim mapping: Across all four patents, the infringement theories rely on mapping the complex, multi-faceted operations of 3GPP standards onto specific, and arguably simpler, claim language. Key questions for the court will be (1) whether the rate-based token bucket in the LTE standard can be construed as a measure of "delay experienced by data" under the '935 patent, and (2) whether monitoring a shifting "search space" of control channel candidates is equivalent to changing a single "allocated control channel" as required by the '943 and '711 patents.
• A second central question will be the interplay of willfulness and FRAND obligations. Given that the patents are asserted as essential to industry standards, the court will have to analyze the parties' negotiation history. The key determination will be whether Defendants' alleged refusal to accept a license constitutes willful infringement, as Plaintiff claims, or a legitimate part of a good-faith dispute over what constitutes a Fair, Reasonable, and Non-Discriminatory (FRAND) royalty for a license to Plaintiff's portfolio.