1:22-cv-00256
Motorola Mobility LLC v. Maxell Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Motorola Mobility LLC (Delaware)
- Defendant: Maxell, Ltd. (Japan)
- Plaintiff’s Counsel: DLA Piper LLP (US)
- Case Identification: 1:22-cv-00256, N.D. Ill., 01/14/2022
- Venue Allegations: Plaintiff Motorola Mobility alleges venue is proper in the Northern District of Illinois because Defendant Maxell conducts business in the district, its products are sold there through major retailers, and it has purposefully directed enforcement activities, including legal correspondence and a prior lawsuit, toward Motorola at its Chicago headquarters. As Maxell is a foreign corporation, Motorola asserts that venue is proper in any judicial district where personal jurisdiction is established.
- Core Dispute: Plaintiff seeks a declaratory judgment that its mobile device products do not infringe eight patents asserted by Defendant, which relate to technologies in smartphone location services, camera image processing, power management, and audio/video decoding.
- Technical Context: The patents-in-suit cover a range of technologies fundamental to the functionality of modern smartphones, a market characterized by intense competition and frequent patent litigation.
- Key Procedural History: This declaratory judgment action was filed by Motorola in response to a patent infringement lawsuit initiated by Maxell against Motorola on November 12, 2021, in the Western District of Texas. Motorola contends that venue was improper in the Texas court and that the Northern District of Illinois is the appropriate forum for adjudicating the dispute.
Case Timeline
| Date | Event |
|---|---|
| 1998-11-04 | ’695 Patent Priority Date |
| 2000-01-11 | ’177 Patent Priority Date |
| 2001-03-19 | ’292 Patent Priority Date |
| 2001-07-24 | ’673 Patent Priority Date |
| 2002-02-27 | ’821 Patent Priority Date |
| 2002-04-03 | ’417 Patent Priority Date |
| 2005-08-09 | ’292 Patent Issue Date |
| 2005-11-24 | ’645 Patent Priority Date |
| 2006-07-04 | ’673 Patent Issue Date |
| 2007-04-03 | ’821 Patent Issue Date |
| 2007-11-28 | ’212 Patent Priority Date |
| 2009-08-18 | ’417 Patent Issue Date |
| 2011-05-31 | ’645 Patent Issue Date |
| 2011-11-15 | ’177 Patent Issue Date |
| 2012-01-17 | ’695 Patent Issue Date |
| 2016-08-16 | ’212 Patent Issue Date |
| 2018-05-17 | Maxell sends letter to Motorola |
| 2021-11-12 | Maxell files suit in W.D. Texas |
| 2022-01-14 | Motorola files DJ Complaint in N.D. Illinois |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,928,292 - "Mobile Handset with Position Calculation Function", Issued August 9, 2005
The Invention Explained
- Problem Addressed: The patent addresses the limitations of then-current mobile positioning technologies, noting that Global Positioning System (GPS) signals are often unreliable indoors or in urban canyons, while positioning based on cellular network signals can be inaccurate in rural areas with sparse base station coverage (’292 Patent, col. 1:29-58).
- The Patented Solution: The invention proposes a hybrid system within a single mobile handset that calculates position using both GPS and cellular signals independently. It then calculates a "reliability" value for each position result, based on factors like signal quality. These two results are combined into a final, more accurate position using a weighted mean derived from their respective reliability scores (’292 Patent, Abstract; col. 2:1-18; Fig. 1).
- Technical Importance: This hybrid approach was designed to create more robust and continuously available location services on mobile devices by using the strengths of each technology to compensate for the other's weaknesses (’292 Patent, col. 2:5-18).
Key Claims at a Glance
- The complaint asserts non-infringement of independent claim 1 (Compl. ¶23).
- Essential elements of claim 1 include:
- A mobile handset comprising:
- GPS receiver means for receiving GPS signals;
- GPS position calculation means for calculating a GPS-based position;
- GPS reliability calculation means for calculating GPS positioning reliability;
- cellular receiver means for receiving cellular signals;
- cellular position calculation means for calculating a cellular-based position;
- cellular reliability calculation means for calculating cellular positioning reliability;
- GPS/cellular positioning results combining means for combining the two position results with their respective reliabilities;
- wherein the GPS and cellular receiver means are adapted to receive signals simultaneously.
U.S. Patent No. 7,072,673 - "Radio Handset and Position Location System", Issued July 4, 2006
The Invention Explained
- Problem Addressed: In CDMA cellular networks, base stations are identified by a PN offset value. The patent notes that in dense urban areas, different base stations may be assigned the same PN offset. If a handset receives signals from these stations at similar times, the signals can overlap, making it difficult to distinguish them and accurately measure propagation delays, which degrades positioning accuracy (’673 Patent, col. 1:11–2:16).
- The Patented Solution: The invention describes a method where a radio handset, upon creating a "delay profile" of received signals, identifies when signals from stations with the same PN offset are present and potentially overlapping. To avoid inaccurate calculations, the method involves "determining not to use" the signal from at least one of these conflicting stations when calculating the handset's position (’673 Patent, Abstract; col. 2:32-44).
- Technical Importance: The technology aimed to improve the accuracy of cellular-based location services in environments with high base station density, where PN offset reuse could introduce significant positioning errors (’673 Patent, col. 11:23-31).
Key Claims at a Glance
- The complaint asserts non-infringement of at least claim 12, which depends from independent claim 9 (Compl. ¶¶28, 30).
- Essential elements of independent claim 9 include:
- A method for calculating a position of a radio handset, comprising:
- storing radio station information and receiving signals;
- creating a plurality of delay profiles for the received signals;
- extracting signal reception timings from the delay profiles;
- selecting radio stations to be used for position calculation by determining not to use at least one of a radio station having a PN offset value same as another stored radio station; and
- calculating the position using timings from the selected radio stations.
U.S. Patent No. 7,199,821 - "Imaging Apparatus and Method for Controlling White Balance", Issued April 3, 2007
Technology Synopsis
The patent describes a method for adjusting white balance in a digital camera. The correction is based on a combination of three pieces of information: the brightness of the object, the distance to the object, and the camera's zoom value (Compl. ¶35).
Asserted Claims
At least claim 1 is at issue (Compl. ¶37).
Accused Features
The camera systems and white balance control functions within the accused Motorola products are implicated (Compl. ¶36).
U.S. Patent No. 7,577,417 - "Mobile Terminal", Issued August 18, 2009
Technology Synopsis
The patent relates to power management in a mobile terminal by controlling the processor's clock frequency. It discloses changing to a lower frequency when the terminal is in a "closed condition" (e.g., a flip phone is closed) and to a higher frequency when "open" or when a specific processing task is executed, even if closed (Compl. ¶42).
Asserted Claims
At least claims 1 and 5 are at issue (Compl. ¶44).
Accused Features
The power management systems that control processor clock speed in the accused Motorola products are implicated (Compl. ¶43).
U.S. Patent No. 7,952,645 - "Video Processing Apparatus and Mobile Terminal Apparatus", Issued May 31, 2011
Technology Synopsis
The patent describes a video processing apparatus that can detect "pattern portions," such as wallpaper or letterbox bars, within a video signal. A controller then ensures that a video "corrector" does not apply corrections to these pattern portions, reserving them for the main video content (Compl. ¶49).
Asserted Claims
Claims 1-3 are at issue (Compl. ¶50).
Accused Features
The image signal processor (ISP) or CPU in the accused products, particularly when operating in modes like "Portrait mode" or "document scanning" (Compl. ¶53).
U.S. Patent No. 8,059,177 - "Electric Camera", Issued November 15, 2011
Technology Synopsis
The patent discloses an electric camera with a high-resolution image sensor (N vertical pixels, where N is ≥3 times the display's scanning lines M). It uses selectable driver modes to "vertically mix or cull" signal charges from groups of pixels to produce an output signal that matches the display resolution (Compl. ¶57).
Asserted Claims
At least claim 1 is at issue (Compl. ¶58).
Accused Features
The image sensors and associated driver methods in the camera systems of the accused Motorola products are implicated (Compl. ¶60).
U.S. Patent No. 8,098,695 - "Multiplexed Audio Data Decoding Apparatus and Receiver Apparatus", Issued January 17, 2012
Technology Synopsis
The patent describes an apparatus for decoding multiplexed audio data where a "user" can designate a specific audio data sequence from a group of packets. The apparatus then extracts and decodes the user-designated sequence, with a controller that can download new decoding algorithms if the compression method changes (Compl. ¶64).
Asserted Claims
At least claim 1 is at issue (Compl. ¶66).
Accused Features
The audio decoding functionality in the accused Motorola products. Motorola alleges its products select the data sequence automatically, not by user designation (Compl. ¶67).
U.S. Patent No. 9,420,212 - "Display Apparatus and Video Processing Apparatus", Issued August 16, 2016
Technology Synopsis
The patent describes a display apparatus with two distinct radio communication units. A control unit manages their connection assignments and transmission rates, enabling the first unit to receive high-rate digital video while the second unit simultaneously maintains a connection to the internet or a home network (Compl. ¶71).
Asserted Claims
At least claim 1 is at issue (Compl. ¶72).
Accused Features
The simultaneous use of Bluetooth and cellular radios in the accused Motorola products (Compl. ¶74).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are numerous smartphone models sold by Motorola Mobility under its Moto E, Moto Edge, Moto G, Moto One, Moto Razr, and Moto Z family brands (Compl. ¶18).
Functionality and Market Context
The accused products are smartphones incorporating integrated systems for location services (GPS and cellular), digital photography with image processing, processor power management, audio/video playback, and multi-radio wireless communications (Compl. ¶¶ 24, 31, 38, 45, 53, 60, 67, 74). The complaint positions Motorola as a "leading designer and manufacturer" of such devices, suggesting the products have significant market presence (Compl. ¶1).
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint, a declaratory judgment action for non-infringement, does not contain detailed infringement allegations or claim charts from Maxell. Instead, it identifies claim limitations that Motorola asserts its products do not meet. The following charts summarize these points of non-infringement as framed by the complaint.
’292 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| GPS reliability calculation means for calculating GPS positioning reliability based on the GPS-based position result | The complaint asserts that the accused products do not practice this limitation but provides no specific details regarding the accused functionality. | ¶24 | col. 3:42-50 |
| cellular reliability calculation means for calculating cellular positioning reliability based on the cellular-based position result | The complaint asserts that the accused products do not practice this limitation but provides no specific details regarding the accused functionality. | ¶24 | col. 4:21-36 |
| GPS/cellular positioning results combining means for combining the GPS-based position result and the cellular-based position result with the GPS positioning reliability and the cellular positioning reliability... | The complaint asserts that the accused products do not practice this limitation but provides no specific details regarding the accused functionality. | ¶24 | col. 4:37-43 |
| wherein said GPS and cellular receiver means are adapted to receive GPS and cellular-oriented signals simultaneously | The complaint asserts that the accused products do not practice this limitation but provides no specific details regarding the accused functionality. | ¶24 | col. 6:18-21 |
’673 Patent Infringement Allegations
| Claim Element (from Independent Claim 9) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| creating a plurality of delay profiles for said plurality of received signals | The complaint alleges non-infringement but does not specify the accused functionality related to delay profiles. | ¶¶28, 30 | col. 12:36-39 |
| selecting radio stations to be used for position calculation by determining not to use at least one of a radio station having a PN offset value same as another radio station... | The complaint alleges non-infringement but does not specify how the accused products select or de-select base stations for positioning. | ¶¶28, 30 | col. 12:43-47 |
| calculating the position of said radio handset using said extracted signal reception timings corresponding to said selected radio stations | The complaint alleges non-infringement of dependent claim 12, which requires the position calculation be performed by the handset itself. | ¶31 | col. 12:50-52 |
Identified Points of Contention
- ’292 Patent: The dispute may center on whether the architecture of Motorola's location services constitutes the structures corresponding to the claimed "means" for calculating and combining reliability scores. As these are means-plus-function limitations, their scope is tied to the patent's specification. A key question for the court will be whether the software and hardware in Motorola's phones perform the specific functions disclosed in the patent—calculating distinct reliability scores for both GPS and cellular results and then combining them using a weighted average—or if they use a technically different method.
- ’673 Patent: The analysis will likely focus on the "selecting...by determining not to use" limitation. A primary technical question is whether Motorola's products, when confronted with ambiguous signals from base stations with identical PN offsets, perform the specific exclusionary step required by the claim. The dispute may involve whether the accused devices use an alternative method for resolving ambiguity, such as signal averaging or weighting, that does not involve an affirmative "determination not to use" a particular station's signal.
V. Key Claim Terms for Construction
Term (from ’292 Patent, Claim 1): "reliability calculation means"
- Context and Importance: This is a means-plus-function term governed by 35 U.S.C. § 112(f). Its scope is not its plain meaning but is limited to the specific structures (e.g., algorithms, hardware configurations) described in the patent's specification that perform the stated function, and their equivalents. The outcome of the infringement analysis for the ’292 patent will depend heavily on the court's construction of the corresponding structure for this function.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue the function is simply "calculating reliability" and that the term should cover any disclosed method of assessing signal quality as the corresponding structure (’292 Patent, col. 3:42-44).
- Evidence for a Narrower Interpretation: The specification provides specific examples of inputs for the reliability calculation, such as "the number of GPS satellites used" and "the received signal quality (such as a signal-to-noise ratio in decibels)" (’292 Patent, col. 3:50-64). A party may argue that the "structure" corresponding to the function must incorporate these specific disclosed inputs or algorithms.
Term (from ’673 Patent, Claim 9): "determining not to use at least one of a radio station"
- Context and Importance: This phrase describes the core inventive step of active exclusion. Practitioners may focus on this term because the infringement question may turn on whether the accused method performs this specific exclusionary decision or instead handles signal ambiguity through a different, non-exclusive technique (e.g., averaging all signals).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue the term covers any process that ultimately results in a signal from a problematic station being disregarded or given zero weight in the final position calculation (’673 Patent, col. 2:39-44).
- Evidence for a Narrower Interpretation: The specification discloses specific exclusionary rules, such as deciding "not to use the base stations having an identical PN offset" at all, or a more nuanced rule of selecting only the nearest station among a group with the same PN offset (’673 Patent, col. 12:61-65; col. 13:23-41). A party could argue that the scope of "determining not to use" is limited to these explicitly described decision-making processes.
VI. Other Allegations
- Indirect Infringement: The complaint makes a general denial of any indirect infringement but does not provide specific facts or allegations related to inducement or contributory infringement (Compl. ¶23).
VII. Analyst’s Conclusion: Key Questions for the Case
- A threshold procedural question will be one of venue. Before the technical merits are reached, the court must resolve Motorola’s challenge to the propriety of Maxell's initial lawsuit in the Western District of Texas, which will turn on an analysis of Maxell's business and enforcement contacts with the Northern District of Illinois.
- For patents with means-plus-function claims, such as the ’292 patent, a core issue will be one of structural correspondence. The court will need to determine whether the integrated software and hardware in Motorola’s modern smartphones contain discrete components that perform the specific functions recited in the claims (e.g., separate reliability calculators and a weighted-average combiner) or if they achieve a similar outcome through a fundamentally different architecture that is not structurally equivalent to that disclosed in the patent.
- For method patents like the ’673 patent, a key evidentiary question will be one of algorithmic identity. The case will likely examine whether the process by which Motorola’s devices handle signal ambiguity from co-located base stations literally meets the claimed step of "determining not to use" a station's signal, or if it employs a different technical approach, such as signal weighting or averaging, that falls outside the claim's scope.