DCT
1:25-cv-01106
Nokia Of America Corp v. Acer Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Nokia Of America Corp (Delaware)
- Defendant: Acer Inc. (Taiwan)
- Plaintiff’s Counsel: Farnan LLP; Alston & Bird LLP
- Case Identification: 1:25-cv-01106, D. Del., 09/03/2025
- Venue Allegations: Venue is asserted on the basis that Defendant is a foreign corporation not resident in the United States and because Defendant sent letters asserting infringement into the district.
- Core Dispute: Plaintiff seeks a declaratory judgment that its 4G and 5G base station equipment does not infringe nine of Defendant's patents, which Defendant has allegedly asserted are essential to the 4G LTE-A and 5G standards and has used as the basis for threatening letters sent to Plaintiff's customers.
- Technical Context: The technology at issue involves foundational methods for managing data transmission, error correction, and power control in 4G LTE-A and 5G cellular networks.
- Key Procedural History: The complaint alleges that after years of licensing negotiations, and shortly after Plaintiff initiated its own patent litigation against Defendant, Defendant sent "Threat Letters" to Plaintiff's major customers (Verizon, T-Mobile, AT&T). These letters allegedly accused the customers of infringing Defendant’s patents by using Plaintiff's base station equipment. Defendant has also allegedly declared the patents-in-suit as potentially essential to European Telecommunications Standards Institute (ETSI) standards, implicating Fair, Reasonable, and Non-Discriminatory (FRAND) licensing obligations. Several of the patents-in-suit have reportedly been asserted in prior litigation against other companies.
Case Timeline
| Date | Event |
|---|---|
| 2006-08-31 | U.S. Patent No. 7,797,615 Priority Date |
| 2010-09-14 | U.S. Patent No. 7,797,615 Issued |
| 2010-11-08 | U.S. Patent No. 8,737,333 Priority Date |
| 2011-06-20 | U.S. Patent No. 8,787,304 Priority Date |
| 2011-09-19 | U.S. Patent No. 8,798,663 Priority Date |
| 2013-03-14 | U.S. Patent No. 9,807,746 Priority Date |
| 2014-03-27 | U.S. Patent No. 10,237,791 Priority Date |
| 2014-05-27 | U.S. Patent No. 8,737,333 Issued |
| 2014-07-22 | U.S. Patent No. 8,787,304 Issued |
| 2014-08-05 | U.S. Patent No. 8,798,663 Issued |
| 2017-09-20 | U.S. Patent No. 9,999,097 Priority Date |
| 2017-10-31 | U.S. Patent No. 9,807,746 Issued |
| 2018-01-31 | U.S. Patent No. 11,252,641 Priority Date |
| 2018-01-01 | Alleged start of licensing discussions (approx.) |
| 2018-06-12 | U.S. Patent No. 9,999,097 Issued |
| 2018-06-15 | U.S. Patent No. 11,044,053 Priority Date |
| 2019-03-19 | U.S. Patent No. 10,237,791 Issued |
| 2021-06-22 | U.S. Patent No. 11,044,053 Issued |
| 2022-02-15 | U.S. Patent No. 11,252,641 Issued |
| 2025-04-01 | Nokia initiates proceedings against Acer (approx.) |
| 2025-07-10 | Acer sends "Threat Letters" to Nokia's customers |
| 2025-09-03 | Complaint for Declaratory Judgment Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,252,641 - "Method of system information transmission and acquisition"
The Invention Explained
- Problem Addressed: The patent addresses the inefficiency in wireless communication systems where all system information (SI) is broadcast with a fixed schedule and resource allocation, which may not be necessary for all devices and can consume significant radio resources (US 11,252,641 B2, col. 1:41-54).
- The Patented Solution: The invention proposes a hierarchical system for broadcasting information. "Essential minimum SI" is broadcast on a fixed channel, and this essential information includes scheduling details for "non-essential minimum SI." The non-essential information is then broadcast on a dynamically scheduled shared channel, allowing for more flexible and efficient use of network resources. The essential SI also includes an "availability information" flag to indicate whether the cell is broadcasting the non-essential SI at all (US 11,252,641 B2, col. 2:1-15; Abstract).
- Technical Importance: This approach allows a network to conserve resources by only broadcasting less critical system information when needed, while ensuring mobile devices can still acquire all necessary information to operate on the network.
Key Claims at a Glance
- The complaint identifies independent method claim 1 as being in controversy (Compl. ¶70).
- Claim 1 Elements:
- Broadcasting essential minimum SI with fixed scheduling, where the essential SI includes scheduling information for non-essential minimum SI.
- Broadcasting the non-essential minimum SI with dynamic scheduling on a shared channel according to the availability information.
- Allowing a mobile device to use the scheduling information to obtain the non-essential SI and determine whether the cell broadcasts remaining parts of it.
- Setting the availability information to a first value if the cell broadcasts non-essential SI and a second value if it does not.
- The complaint does not explicitly reserve the right to address dependent claims for this patent.
U.S. Patent No. 11,044,053 - "Device and method of handling code block group-based communication operation"
The Invention Explained
- Problem Addressed: In advanced wireless systems, data packets (transport blocks) can be very large. If an error occurs during transmission, re-transmitting the entire packet is inefficient. The patent notes that it was "still unknown how to acknowledge the received CBGs [Code Block Groups]" under emerging standards (US 11,044,053 B2, col. 1:60-63).
- The Patented Solution: The invention describes a system for Code Block Group (CBG)-based communication, a more granular approach to error correction. A data packet is divided into smaller CBGs. The network (e.g., a base station) transmits an indication to a mobile device to configure this mode of operation, including sending a "maximum number of CBGs" in a given transport block. This allows the mobile device to provide feedback on a per-CBG basis, so only the specific parts of the data packet with errors need to be retransmitted (US 11,044,053 B2, col. 2:20-32; Abstract).
- Technical Importance: CBG-based retransmission significantly improves spectral efficiency and reduces latency by minimizing the amount of data that needs to be re-sent when errors occur.
Key Claims at a Glance
- The complaint identifies independent claim 22 (directed to a network device/base station) as being in controversy (Compl. ¶¶82-85).
- Claim 22 Elements:
- Transmitting an indication configuring at least one CBG-based communication operation.
- Transmitting a maximum limit number of CBGs in a transport block for the operation.
- Obtaining a size of a CBG field according to the maximum limit number.
- Transmitting the CBG field in downlink control information (DCI), where the field indicates at least one transmitted CBG.
- Performing the CBG-based communication operation according to the maximum limit number and the CBG field.
- The complaint does not explicitly reserve the right to address dependent claims for this patent.
U.S. Patent No. 10,237,791 - "Method of updating network detection and selection information and traffic routing information"
Technology Synopsis
The patent addresses the problem of keeping a mobile device's network selection and traffic routing rules up to date, particularly when it moves between different cells or networks which may have different policies or conditions (US 10,237,791 B2, col. 2:9-21). The solution involves updating this information through various network procedures, such as handover, area updates, or cell reselection, using messages that contain "RAN assistance information/RAN rules" to guide the device's behavior (US 10,237,791 B2, Abstract).
Asserted Claims
- Claims 8 and 14 are identified as being in controversy (Compl. ¶96).
- Accused Features: Nokia's 4G/5G base station equipment is accused in Acer's threat letters, but Nokia denies that its equipment is capable of practicing the claimed steps of transmitting specific "service region change accept" or "connection reconfiguration" messages containing the required RAN assistance parameters (Compl. ¶96).
U.S. Patent No. 9,999,097 - "Method of radio bearer establishment in dual connectivity"
Technology Synopsis
This patent relates to dual connectivity, where a mobile device is simultaneously connected to two different base stations (a master and a secondary). The technology addresses the process by which the master base station establishes or releases a radio bearer (a data pathway) on the secondary base station. This involves the master node determining the need for a change, sending a request message to the secondary node, and receiving a response indicating acceptance or rejection (US 9,999,097 B2, Abstract).
Asserted Claims
- Claims 1 and 8 are identified as being in controversy (Compl. ¶¶107-109).
- Accused Features: Nokia denies that its base station equipment practices the claimed steps of determining whether to establish/release a radio bearer on a second base station, transmitting a request message for it, or receiving a specific response message as recited in the claims (Compl. ¶¶107-109).
U.S. Patent No. 8,737,333 - "Method of power reporting and communication device thereof"
Technology Synopsis
The patent describes a method for managing power reporting from a mobile device to the network. The invention involves determining when to start or stop reporting the maximum output power for an uplink carrier based on characteristics of the mobile device or the network. This allows the network to receive power reports only when necessary, optimizing signaling overhead (US 8,737,333 B2, Abstract).
Asserted Claims
- Claims 17 and 21 are identified as being in controversy (Compl. ¶120).
- Accused Features: Nokia's non-infringement argument is that its base station equipment is not configured or configurable to perform the claimed steps of determining whether to start or stop maximum output power reporting based on a "characteristic associated to the mobile device or the network" (Compl. ¶120).
U.S. Patent No. 9,807,746 - "Method of handling hybrid automatic repeat request feedback and related communication device"
Technology Synopsis
The technology addresses the handling of HARQ (error correction) feedback in complex scenarios where two communicating devices have different uplink/downlink (UL/DL) configurations. The method involves determining whether HARQ feedback is scheduled to exist in a specific physical channel (PHICH) based on the differing configurations and arranging the feedback or other control information accordingly (US 9,807,746 B2, Abstract).
Asserted Claims
- Claim 9 is identified as being in controversy (Compl. ¶¶131-133).
- Accused Features: Nokia denies its equipment practices the claimed steps, including "determining whether the HARQ feedback is scheduled to exist in a...PHICH...according to the first UL/DL configuration...and the second UL/DL configuration" where the two configurations are different (Compl. ¶131).
U.S. Patent No. 8,798,663 - "Method of performing power headroom reporting and communication device thereof"
Technology Synopsis
This patent concerns power headroom reporting, where a mobile device informs the network how much additional transmission power it has available. The invention specifically relates to scenarios with multiple uplink carriers, disclosing a method where the network transmits mapping information between power amplifiers and the uplink carriers to the device in a configuration message (US 8,798,663 B2, Abstract).
Asserted Claims
- Claims 9 and 19 are identified as being in controversy (Compl. ¶144).
- Accused Features: Nokia asserts its base station equipment does not infringe because it does not practice the step of "transmitting mapping information between the power amplifier and the uplink component carriers with a message for component carrier configuration" (Compl. ¶144).
U.S. Patent No. 8,787,304 - "Method for reference signal pattern allocation and related communication device"
Technology Synopsis
The patent describes a method for allocating reference signal patterns, which are used for channel estimation, in a wireless system. The invention involves mapping a plurality of reference signal patterns, which are based on orthogonal cover codes (OCC), to physical resource blocks (PRBs) according to a specific mapping rule that dictates their placement across time and frequency domains (US 8,787,304 B2, Abstract).
Asserted Claims
- Claims 1 and 19 are identified as being in controversy (Compl. ¶155).
- Accused Features: Nokia denies practicing the specific mapping steps recited in the claims, which require mapping reference signal patterns multiplied with a demodulation reference signal according to a particular OCC mapping rule (Compl. ¶155).
U.S. Patent No. 7,797,615 - "Utilizing variable-length inputs in an inter-sequence permutation turbo code system"
Technology Synopsis
This patent relates to turbo codes, a powerful type of error-correcting code. The invention addresses the processing of variable-length input data by using a "bit-adding means" to process the received information bit sequence before it undergoes subsequent processing in the encoder, such as inter-sequence permutation (US 7,797,615 B2, Abstract).
Asserted Claims
- Claims 1 and 23 are identified as being in controversy (Compl. ¶166).
- Accused Features: Nokia denies that its equipment practices the claimed step of "a bit-adding means...processing the received information bit sequence input prior to any subsequent processing" in the encoder (Compl. ¶166).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are Nokia’s 4G LTE-A and 5G base station equipment (Compl. ¶¶1, 26).
Functionality and Market Context
The complaint alleges that this equipment is sold to major U.S. wireless carriers, including Verizon, T-Mobile, and AT&T, and that it supports the 4G LTE-A and 5G standards (Compl. ¶¶3, 27). The core functionality at issue is the equipment's role in managing wireless communications with mobile devices in accordance with these standards. Acer’s alleged theory of infringement is predicated entirely on the operation of this base station equipment (Compl. ¶26, 32).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
U.S. Patent No. 11,252,641 - Infringement Allegations
| Claim Element (from Independent Claim 1) | Nokia's Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| broadcasting the non-essential minimum SI with dynamically scheduled on a downlink shared channel according to the availability information... | Nokia and its base station equipment do not practice and are not capable of practicing this step. | ¶70 | col. 10:1-12 |
| ...such that a mobile device...is able to obtain the non-essential minimum SI...to determine whether the cell broadcasts remaining parts of the non-essential minimum SI according to a second scheduling information...and to obtain the remaining parts... | Nokia and its base station equipment do not practice and are not capable of practicing this step. | ¶70 | col. 10:13-24 |
| wherein the availability information is set to a first value for indicating that the cell broadcasts the non-essential minimum SI, and is set to a second value for indicating that the cell does not broadcast the non-essential minimum SI | Nokia and its base station equipment do not practice and are not capable of practicing this step. | ¶71 | col. 10:25-29 |
- Identified Points of Contention:
- Technical Questions: A primary factual question will be whether Nokia’s standards-compliant base stations perform the specific two-tiered SI broadcasting method recited in claim 1. The dispute may focus on whether the information Nokia's equipment broadcasts qualifies as "non-essential minimum SI" and whether it is "dynamically scheduled" in the manner claimed.
- Scope Questions: The case may raise the question of whether standard 4G/5G SI broadcasting methods, which Nokia's equipment necessarily performs, fall within the scope of the claim term "dynamically scheduled on a downlink shared channel."
U.S. Patent No. 11,044,053 - Infringement Allegations
| Claim Element (from Independent Claim 22) | Nokia's Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| transmitting an indication configuring at least one CBG-based communication operation to a communication device... | Nokia equipment is not configured or configurable to transmit such an indication. | ¶82 | col. 14:57-59 |
| transmitting a maximum limit number of CBGs in a transport block (TB) for the at least one CBG-based communication operation... | Nokia equipment is not configured or configurable to transmit a maximum limit number of CBGs. | ¶83 | col. 14:60-62 |
| obtaining a size of a CBG field according to the maximum limit number of CBGs... | Nokia equipment is not configured or configurable to obtain a CBG field size in this manner. | ¶84 | col. 14:63-64 |
| transmitting the CBG field with the size of the CBG field in a first DL control information (DCI) to the communication device... | Nokia equipment is not configured or configurable to transmit the CBG field in a DCI. | ¶85 | col. 14:65-67 |
- Identified Points of Contention:
- Technical Questions: The central dispute appears to be a direct factual disagreement over whether Nokia's equipment performs the specific configuration and signaling steps required for CBG-based operations as claimed. Evidence will likely focus on the precise control signaling implemented in Nokia's base stations.
- Scope Questions: A key question for the court may be what constitutes "transmitting an indication configuring" a CBG-based operation. Nokia's position suggests that its equipment may enable such operations without performing the explicit configuration steps recited in the claim.
V. Key Claim Terms for Construction
For the ’641 Patent:
- The Term: "non-essential minimum SI"
- Context and Importance: The scope of this term is fundamental to the dispute. Its definition determines what type of system information falls within the claimed method. A narrow definition limited to specific information types might exclude Nokia's implementation, while a broader one could cover a wider range of standard system information.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent states that non-essential minimum SI "is organized into one or more system information blocks (SIBs)" (US 11,252,641 B2, col. 1:35-38), suggesting it could encompass any information structured as an SIB beyond the most essential data.
- Evidence for a Narrower Interpretation: The patent contrasts it with "essential minimum system information, which is fixed scheduled" (US 11,252,641 B2, col. 1:30-32). Parties may argue this contrast implies "non-essential" has a specific, limited technical meaning within the standard, tied to information that is not required for initial cell access.
For the ’053 Patent:
- The Term: "CBG-based communication operation"
- Context and Importance: Nokia's central denial is that its equipment is not configured to perform this "operation." The definition of this term—whether it requires all the subsequent transmitting and obtaining steps recited in the claim or can be interpreted more broadly—will be critical to the non-infringement analysis.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The background describes the operation generally as a way "to improve (re)transmission efficiency...by grouping a number of code block(s) into a CBG" (US 11,044,053 B2, col. 1:52-55). This broad purpose could be cited to argue the term covers any implementation achieving that goal.
- Evidence for a Narrower Interpretation: Claim 22 itself links the "operation" to a series of specific steps, such as transmitting a "maximum limit number of CBGs" and a "CBG field." A defendant would argue that the term must be construed in light of these specific, enumerated steps, and an accused product must perform them to be infringing.
VI. Other Allegations
- Indirect Infringement: The complaint does not contain direct allegations of indirect infringement. However, the factual predicate for the suit—Acer's letters to Nokia's customers—suggests that Acer's underlying infringement theory against Nokia would likely involve claims of induced or contributory infringement, as Nokia supplies the equipment used by the direct infringers (the carriers) (Compl. ¶¶3, 23, 26).
- Willful Infringement: The complaint alleges that Acer's "Threat Letters" warned Nokia's customers that a failure to respond and obtain a license "will result in a claim of willful infringement based upon [their] knowing and intentional infringement of Acer's rights" (Compl. ¶29). This allegation is used to establish the existence of a concrete legal controversy justifying the declaratory judgment action.
VII. Analyst’s Conclusion: Key Questions for the Case
- Standard Compliance vs. Claim Scope: A central issue will be whether Nokia’s implementation of the 4G/5G standards inherently practices the specific methods recited in Acer’s patent claims. Acer's declaration of these patents as standard-essential will be contrasted with Nokia's denials of practicing specific claim limitations, raising the question of whether a gap exists between what the standard requires and what the patents specifically claim.
- Evidentiary Proof of Operation: The case will likely turn on detailed technical evidence regarding the actual operation of Nokia's base station equipment. For each patent, the key question will be whether Nokia's hardware and software, in fact, perform the discrete steps recited in the asserted claims, such as transmitting a "maximum limit number of CBGs" ('053 Patent) or dynamically scheduling "non-essential" system information ('641 Patent).
- FRAND Obligations and Licensing Conduct: The complaint frames the patent dispute within a larger context of failed good-faith negotiations and Acer's alleged breach of its FRAND commitments (Count X). The court's examination of the parties' licensing conduct may influence its view of the case and potential remedies, creating a parallel legal battle over contractual duties alongside the technical patent dispute.