DCT
1:17-cv-05204
Encoditech LLC v. Motorola Mobility LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Encoditech LLC (Texas)
- Defendant: Motorola Mobility, LLC (Delaware)
- Plaintiff’s Counsel: Andreou & Casson, Ltd.; Chaudhari Law, PLLC
- Case Identification: 1:17-cv-05204, N.D. Ill., 07/14/2017
- Venue Allegations: Venue is alleged to be proper because Defendant is a non-corporation residing in the district and has a regular and established place of business there, where acts of infringement have allegedly occurred.
- Core Dispute: Plaintiff alleges that Defendant’s Moto 360 smartwatch, when operating with another mobile device via the Bluetooth protocol, infringes a patent related to establishing direct, secure wireless communications between mobile devices.
- Technical Context: The technology concerns methods for two or more mobile devices to establish a direct, peer-to-peer communication link without relying on centralized infrastructure like cellular base stations.
- Key Procedural History: A Certificate of Correction for the patent-in-suit was issued on May 23, 2017, less than two months before this complaint was filed. This certificate materially altered the scope of asserted claim 7 by adding numerous limitations related to establishing a secure communication session using public-key encryption. The complaint asserts infringement of this corrected, narrower version of the claim.
Case Timeline
| Date | Event |
|---|---|
| 1999-03-26 | Priority Date (U.S. Patent No. 6,321,095) |
| 2001-11-20 | Issue Date (U.S. Patent No. 6,321,095) |
| 2017-05-23 | Certificate of Correction Issued (U.S. Patent No. 6,321,095) |
| 2017-07-14 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,321,095 - "Wireless Communications Approach"
- Patent Identification: U.S. Patent No. 6,321,095, "Wireless Communications Approach", issued November 20, 2001.
The Invention Explained
- Problem Addressed: The patent describes drawbacks of prior art wireless systems. Two-way radios are noted as typically being half-duplex (only one person can talk at a time) and not private, while cellular systems require expensive, fixed network infrastructure, limiting their use in remote areas (’095 Patent, col. 1:21-50).
- The Patented Solution: The invention provides a method for establishing a "direct, wireless, digital link" between mobile stations without needing intermediary devices like base stations ('095 Patent, col. 4:56-59). As illustrated in Figure 1, a first mobile station (102) communicates directly with a second mobile station (104) over a link (106). This is achieved by having one device send a request signal on a selected radio frequency, the second device sending an acknowledge signal, and then establishing a communication session, which can be secured using encryption ('095 Patent, Abstract; col. 15:23-col. 16:41).
- Technical Importance: The described approach sought to combine the infrastructure-free mobility of two-way radios with the advanced features and security of digital cellular systems ('095 Patent, col. 4:56-61).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 7 (Compl. ¶9). The text of Claim 7 was substantially amended by a Certificate of Correction issued May 23, 2017.
- The essential elements of the corrected independent claim 7 are:
- A wireless communication system comprising a first mobile station and a second mobile station.
- The first mobile station is configured to select a portion of an RF band.
- The first mobile station transmits a request signal directly to the second mobile station.
- A direct communication link is established in response to receiving an acknowledge signal from the second mobile station.
- The system receives a public encryption key from the second mobile station.
- The system generates a message containing a common encryption key (Ckey).
- The system encrypts the message using the public key to create an encrypted message.
- The system provides the encrypted message to the second mobile station for decryption to extract the Ckey.
- Messages exchanged between the stations are encrypted using the Ckey.
- The second mobile station is configured to transmit the acknowledge signal in response to the request signal.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is a wireless communication system formed by the "Moto 360 smartwatch ('the accused product') ... along with another mobile station (e.g., phone tablet, or other mobile device)" (Compl. ¶9).
Functionality and Market Context
- The complaint alleges that the accused smartwatch and a second mobile device are "meant to communicate with each other via the Bluetooth v4.0 protocol" (Compl. ¶10). The system is alleged to use the 2.4 GHz ISM band for communications (Compl. ¶11). The alleged infringing functionality involves the process of establishing a Bluetooth connection, including transmitting a "Connect_Req signal" on an "advertising channel" (Compl. ¶12), establishing a direct link, and exchanging encrypted data packets (Compl. ¶13-¶14). The complaint does not contain allegations regarding the product's specific commercial importance or market position.
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
'095 Patent Infringement Allegations
| Claim Element (from Independent Claim 7, as corrected) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a first mobile station; and a second mobile station | The system comprises a first mobile station (the accused product) and a second mobile station (e.g., phone, tablet, or other mobile device). | ¶10 | col. 23:6-8 |
| wherein the first mobile station is configured to select a first portion of a radio frequency (RF) band to carry communications | The accused product is configured to select a first portion of an RF band (2.4 GHz-2.4835 GHz of ISM Band) to carry communications via Bluetooth V4.0 protocol. | ¶11 | col. 23:9-12 |
| transmit a first request signal on a first sub-portion of the first portion of the RF band directly to the second mobile station | The accused product transmits a first request signal (Connect_Req signal) on a first sub-portion (advertising channel 37 at 2.402 GHz) directly to the second mobile station. | ¶12 | col. 23:13-15 |
| establish, in response to receiving a first acknowledge signal...a direct communication link | The accused product establishes a direct communication link in response to receiving a first acknowledge signal from the second mobile station. | ¶13 | Certificate of Correction |
| encrypt the message using the public encryption key to generate an encrypted message... [and subsequent encryption/decryption steps] | The accused product encrypts the message using the public encryption key, provides it to the second mobile station, which decrypts it using a private key to extract a common key (Ckey), and subsequent messages are encrypted with the Ckey. | ¶14 | Certificate of Correction |
| Wherein the second mobile station is configured to transmit...the first acknowledge signal on a second sub-portion of the first portion of the RF band | The second mobile station transmits a first acknowledgement signal on a second sub-portion (data channels) of the RF band to acknowledge the request signal. | ¶15 | Certificate of Correction |
- Identified Points of Contention:
- Scope Questions: A central question may be whether the term "mobile station," as described in the patent's context of peer-to-peer handsets ('095 Patent, col. 4:1-5), can be construed to read on a system comprising a peripheral smartwatch and a host smartphone as alleged by the complaint (Compl. ¶10).
- Technical Questions: The complaint alleges that the standard Bluetooth v4.0 protocol performs the specific multi-step encryption and key-exchange process required by the corrected claim 7 (Compl. ¶14). A key point of contention will likely be whether the actual operation of the Bluetooth protocol in the Moto 360 maps precisely to the claimed sequence of generating a Ckey, encrypting it with a public key, transmitting it, and then using that Ckey for subsequent communication. The complaint's allegations on this point are conclusory and recite the claim language.
V. Key Claim Terms for Construction
The Term: "mobile station"
Context and Importance: The entire infringement theory depends on construing both the Moto 360 smartwatch and a paired device (e.g., a phone) as separate "mobile stations" under the patent. Practitioners may focus on this term because its interpretation determines whether the accused system architecture falls within the scope of the claims.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term itself is not explicitly limited in the claims. The patent states that "the term 'mobile station' refers to a mobile communication device, for example a handset" ('095 Patent, col. 4:1-3), which suggests a handset is an example, not an exclusive definition.
- Evidence for a Narrower Interpretation: The patent’s background section repeatedly contrasts the invention with "two-way radios" and "cellular telephone systems," suggesting the invention is a self-contained communication device, not a peripheral accessory reliant on a host device ('095 Patent, col. 1:12-29).
The Term: "direct communication link"
Context and Importance: The patent distinguishes its invention from systems that require "intermediary devices such as switches or base stations" ('095 Patent, col. 4:56-59). The meaning of "direct" is therefore critical. The infringement allegation rests on the Bluetooth link between the smartwatch and phone being "direct" (Compl. ¶13).
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term could be interpreted broadly to mean any communication that does not pass through a wide-area network controller like a cellular base station, which would likely cover a standard Bluetooth link.
- Evidence for a Narrower Interpretation: A defendant might argue that the complex software stack and protocol layers that manage a Bluetooth connection constitute "intermediary" elements in a software sense, and that the patent envisioned a more fundamental, hardware-level direct link between two equal peers.
VI. Other Allegations
- Indirect Infringement: The complaint does not contain a separate count for indirect infringement and does not allege specific facts, such as referencing user manuals or advertising, that would typically support a claim for inducement to infringe.
- Willful Infringement: The complaint alleges that Defendant’s infringement is willful but bases this claim on notice being provided "at least as early as the date of the filing of this Complaint" (Prayer for Relief, ¶3). This asserts a claim for post-suit willfulness only.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "mobile station", which is described in the patent's context of standalone handsets, be construed to cover the host-peripheral relationship of a smartphone and a connected smartwatch?
- A key evidentiary question will be one of technical mapping: does the operational sequence of the Bluetooth v4.0 protocol, as implemented in the accused products, perform the specific, multi-step public key/private key exchange process for distributing a common key ("Ckey") as recited in the detailed limitations added to Claim 7 by the 2017 Certificate of Correction?
- A final question relates to the sufficiency of the allegations: given the conclusory nature of the infringement allegations for the complex encryption steps (Compl. ¶14), a court may need to determine whether the complaint provides enough factual detail to support a plausible claim of infringement under modern pleading standards.