Stormborn Tech LLC v. Thales USA Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Stormborn Technologies LLC (Texas)
  • Defendant: Thales USA, Inc. (Delaware)
  • Plaintiff’s Counsel: Sand, Sebolt & Wernow Co., LPA
• Case Identification: 0:22-cv-61807, S.D. Fla., 09/26/2022
• Venue Allegations: Plaintiff alleges venue is proper because Defendant maintains a regular and established place of business in the Southern District of Florida.
• Core Dispute: Plaintiff alleges that Defendant’s wireless communication modules infringe a patent related to dynamically adjusting data transmission rates based on measured error rates at the receiver.
• Technical Context: The technology concerns adaptive data rate control in spread-spectrum communication systems, a foundational technique for maintaining reliable connections in variable wireless environments like cellular and IoT networks.
• Key Procedural History: The patent-in-suit, RE44,199, is a reissue of U.S. Patent No. 7,613,247, which traces its priority back to an application filed in 2000. The complaint notes that in prior litigation (Stormborn Technologies, LLC v. TopCon Positioning Systems, Inc.), a court held that representative Claim 11 was not directed to an abstract idea and described a specific technological solution, a finding Plaintiff may leverage to preempt certain invalidity arguments.

Case Timeline

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

U.S. Reissue Patent No. RE44,199 - "Variable throughput reduction communications system and method," issued May 7, 2013

The Invention Explained

• Problem Addressed: In wireless spread-spectrum systems, especially multi-cell networks, a remote device near the edge of a cell can experience significant interference from adjacent cells, which degrades the signal and increases the error rate (’199 Patent, col. 1:50-57). Prior methods to combat this interference, such as increasing the system's processing gain, had the negative side effect of reducing the data rate and requiring complex architectural changes to the receiver hardware (’199 Patent, col. 1:58-66).
• The Patented Solution: The invention proposes a closed-loop feedback system where the receiver actively manages the transmission data rate. The receiver decodes the incoming data, calculates an error rate (e.g., from a "syndrome signal" generated by an FEC decoder), and uses a "command processor" to generate a "data-rate control signal" based on this measured error rate (’199 Patent, col. 4:57-65). This control signal is sent back to the transmitter, instructing it to adjust its data rate—for example, by changing how it allocates data across parallel channels—to maintain a desired quality of service without altering the fundamental receiver architecture (’199 Patent, Fig. 5; col. 8:7-14).
• Technical Importance: This approach allows a communication system to dynamically adapt to changing channel conditions, improving reliability and efficiency by using just enough power and bandwidth to meet performance targets, a key principle in modern wireless protocol design.

Key Claims at a Glance

• The complaint asserts independent claims 11 (a receiver) and 13 (a method) (Compl. ¶¶19, 21).
• Independent Claim 11 (receiver) includes these essential elements:
  • "demodulator circuitry" for detecting transmitted signals.
  • "decoder circuitry" for FEC decoding and de-interleaving, providing a multiplicity of decoded channels, "each having an error rate".
  • "command processor circuitry" responsive to the "error rate" of the decoded channels for generating a "data-rate control signal" to be sent to the transmitter.
  • "transmitting circuitry" for conveying the control signal back to the transmitter.
  • "multiplexer circuitry" for combining the decoded channels into a single data stream.
• Independent Claim 13 (method) includes these essential steps:
  • "detecting" the transmitted signals.
  • "FEC decoding and de-interleaving" the channels, providing a multiplicity of decoded channels, "each having an error rate".
  • "using command processor circuitry" responsive to the "error rate" to generate a "data-rate control signal".
  • "transmitting" the control signal back to the transmitter.
  • "multiplexing" the decoded channels into a single data stream.
• The complaint also asserts dependent claim 14 and reserves the right to assert others (Compl. ¶¶22, 73).

III. The Accused Instrumentality

Product Identification

The Thales "PLS63-W series" of wireless communication solutions (the "Accused Product") (Compl. ¶57).

Functionality and Market Context

The complaint alleges the Accused Product is a wireless module that practices a method for recovering wireless data transmitted over different sub-channels (Compl. ¶57). The allegations describe a system that detects transmitted signals, performs FEC decoding to produce decoded channels with an error rate, uses processor circuitry to generate a rate control signal based on that error rate, and transmits that signal back to a transmitter to control the data rate (Compl. ¶¶59-62). These products are typically integrated into other devices to provide cellular connectivity for Internet of Things (IoT) or machine-to-machine (M2M) applications.

IV. Analysis of Infringement Allegations

The complaint provides a narrative infringement theory for method claim 13. While it references a claim chart in Exhibit C, that exhibit is not included in the provided filing. The following table summarizes the allegations from the body of the complaint.

RE44,199 Infringement Allegations

No probative visual evidence provided in complaint.

Identified Points of Contention

• Technical Questions: A primary factual question will be whether the Accused Product's rate adaptation mechanism is, in fact, "responsive to the error rate of the decoded channels" as required by the claim (Compl. ¶61). The complaint itself distinguishes the patented method from systems that control data rate based on a pilot signal (Compl. ¶47). The defense may argue that the Accused Product uses a different metric, such as signal-to-noise ratio (SNR), received signal strength (RSSI), or another channel quality indicator that is not the specific "error rate" generated after FEC decoding, as described in the patent.
• Scope Questions: The dispute may center on the definition of "error rate of the decoded channels." Does this require a discrete error rate calculation for each individual sub-channel, or can an aggregate error rate for a group of channels suffice? The claim language "each having an error rate" could be interpreted to require the former, more specific implementation.

V. Key Claim Terms for Construction

• The Term: "command processor circuitry responsive to the error rate of the decoded channels"
• Context and Importance: This term is the central inventive concept of the asserted claims, defining the specific feedback mechanism that distinguishes the invention from prior art. The outcome of the case may depend on whether the Accused Product's functionality falls within the court's construction of this phrase. Practitioners may focus on this term because the Plaintiff's infringement theory hinges on the Accused Product's processor using the specific metric of "error rate" from decoded channels, rather than a more general channel quality metric.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification describes the general object of the invention as setting the throughput "based on a required error rate at a spread-spectrum receiver" (’199 Patent, col. 2:13-15). This language could support a construction where any processor that uses any form of error rate information to generate a control signal meets the limitation.
  • Evidence for a Narrower Interpretation: The detailed description repeatedly links the "command processor" to the "syndrome signal" generated by the "FEC decoder" (’199 Patent, col. 2:63-64; col. 4:57-61). A party could argue this ties the term to a specific implementation where the error rate is derived directly from the output of the Forward Error Correction decoding process, as opposed to being measured by other means. Figure 5, for instance, shows the "Command Processor" (59) receiving a "Syndrome" input directly from the "FEC Decoder" (56).

VI. Other Allegations

• Indirect Infringement: The complaint alleges induced infringement, stating that Defendant encourages its customers' direct infringement and that the Accused Products are not staple articles of commerce suitable for substantial non-infringing use (Compl. ¶¶75-76). The basis for inducement is that Defendant sells the products for use in a manner that allegedly infringes the patent claims (Compl. ¶76).
• Willful Infringement: The complaint alleges Defendant had knowledge of its infringement at least as of the date the complaint was served (Compl. ¶68). While no facts supporting pre-suit knowledge are alleged, this allegation, combined with the prayer for enhanced damages under 35 U.S.C. § 285, preserves a claim for post-suit willful infringement (Compl., Prayer for Relief ¶f).

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

The resolution of this case will likely depend on the answers to two central questions:

1. A core issue will be one of claim scope and construction: How narrowly will the court define the phrase "responsive to the error rate of the decoded channels"? Will it be limited to systems that use a specific "syndrome signal" from an FEC decoder, as detailed in the specification's embodiments, or will it be construed more broadly to cover any system that uses a metric correlated with post-decoding error?

2. A key evidentiary question will be one of technical mechanism: What specific metric does the Thales PLS63-W series actually use to trigger data rate adjustments? Discovery will focus on whether its processor relies on the specific "error rate of the decoded channels" as claimed, or on a different, non-infringing channel quality indicator such as pre-detection signal-to-noise ratio.