DCT
1:22-cv-00256
Motorola Mobility LLC v. Maxell Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Motorola Mobility LLC (Delaware / Illinois)
- Defendant: Maxell, Ltd. (Japan)
- Plaintiff’s Counsel: DLA Piper LLP (US)
- Case Identification: 1:22-cv-00256, N.D. Ill., 03/04/2022
- Venue Allegations: Plaintiff Motorola Mobility alleges that venue is proper in the Northern District of Illinois because Defendant Maxell conducts business within the district and has purposefully directed patent enforcement activities, including correspondence and prior litigation, toward Motorola Mobility's headquarters in Chicago.
- Core Dispute: Plaintiff seeks a declaratory judgment that its smartphones and mobile devices do not infringe eight of Defendant's patents related to a range of mobile handset technologies, including position calculation, camera white balance, power management, and video processing.
- Technical Context: The patents-in-suit cover various foundational technologies implemented in smartphones, a highly competitive and litigious market where functionalities such as location services, camera performance, and power efficiency are key differentiators.
- Key Procedural History: The complaint states that this declaratory judgment action follows prior enforcement activities by Maxell, including a letter sent to Motorola Mobility in May 2018 and a patent infringement lawsuit filed by Maxell against Motorola Mobility in the Western District of Texas in November 2021, which Motorola alleges was an improper venue.
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 | ’209 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 |
| 2007-11-28 | ’212 Patent Priority Date |
| 2009-06-23 | ’209 Patent Issue 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’s counsel sends letter to Motorola Mobility |
| 2021-11-12 | Maxell files lawsuit against Motorola Mobility in W.D. Tex. |
| 2022-03-04 | Complaint Filing Date |
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 respective weaknesses of the two primary positioning methods for mobile devices at the time: GPS signals are weak and unreliable indoors or in "urban canyons," while cellular-based positioning can be inaccurate in rural areas with few base stations or in dense areas where a user is very close to a single station (Compl. ¶21; ’292 Patent, col. 1:32-58).
- The Patented Solution: The invention proposes a hybrid system that calculates a position using both GPS and cellular signals independently. Critically, it also calculates a "reliability" score for each position result based on factors like the number of satellites or base stations used and signal quality. These two position results are then combined using a weighted mean, where the reliability scores act as the weights, to produce a single, more accurate final position (Compl. ¶21; ’292 Patent, col. 2:13-19, Fig. 3).
- Technical Importance: This approach of fusing data from multiple location sources, weighted by confidence scores, became a foundational concept for providing reliable location-based services on mobile devices across diverse and challenging environments.
Key Claims at a Glance
- The complaint asserts non-infringement of independent claim 1 (Compl. ¶23).
- Essential elements of claim 1 include:
- GPS receiver means for receiving GPS-oriented signals
- GPS position calculation means for calculating position from GPS signals
- GPS reliability calculation means for calculating GPS positioning reliability
- cellular receiver means for receiving cellular-oriented signals
- cellular position calculation means for calculating position from cellular signals
- cellular reliability calculation means for calculating cellular positioning reliability
- GPS/cellular positioning results combining means for combining the GPS and cellular 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 cellular positioning systems like CDMA, base stations are identified by a pilot PN offset value. In dense urban areas, multiple base stations may be assigned the same PN offset. If a handset receives signals from two such stations at nearly the same time, their signals overlap in the device's "delay profile," making it difficult to distinguish them and leading to large errors in position calculation (’673 Patent, col. 2:1-16).
- The Patented Solution: The invention describes a method where the radio handset creates delay profiles from received cellular signals and identifies when signals from stations with the same PN offset value are present. The handset then performs a selection step to determine which base stations to use for the position calculation, which includes "determining not to use at least one" of the stations with the conflicting PN offset value to avoid ambiguity and improve accuracy (Compl. ¶28; ’673 Patent, Abstract).
- Technical Importance: This method provides a specific technique to improve the accuracy of cellular-based location services in dense network environments where the reuse of identifying codes is a known source of positioning error.
Key Claims at a Glance
- The complaint asserts non-infringement of at least claim 12, which depends from claims 11 and 9 (Compl. ¶30).
- Essential elements of independent claim 9 (a method claim) include:
- storing information of a plurality of radio stations and receiving signals from them
- 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
- calculating the position of the handset using timings from the selected radio stations
Multi-Patent Capsules
U.S. Patent No. 7,551,209, “Imaging Apparatus and Method for Controlling White Balance,” Issued June 23, 2009
- Technology Synopsis: The patent describes a method for performing automatic white balance in a digital camera. The system corrects colors by using three pieces of information—object brightness, object distance, and zoom value—to control the white balance adjustment according to different thresholds based on these conditions (Compl. ¶35).
- Asserted Claims: Claim 1 (Compl. ¶37).
- Accused Features: The complaint asserts that Motorola's smartphone camera systems do not infringe, alleging they lack the claimed means for forming and comparing threshold values based on zoom and brightness information (Compl. ¶38).
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, such as a flip phone. It discloses a clock controller that lowers the processor's clock frequency when the terminal is in a "closed condition" to save power, but allows the frequency to increase when a specific process is executed, even while closed (Compl. ¶42).
- Asserted Claims: Claims 1 and 5 (Compl. ¶44).
- Accused Features: The complaint asserts non-infringement based on the limitation in dependent claim 5 that allows a user to set the clock frequency, alleging the accused products do not permit such user control (Compl. ¶45).
U.S. Patent No. 7,952,645, “Video Processing Apparatus and Mobile Terminal Apparatus,” Issued May 31, 2011
- Technology Synopsis: This patent describes a video processing apparatus that detects "pattern portions" (e.g., wallpaper or letterbox bars) separate from the main video "contents." A controller then prevents a video "corrector" from applying corrections to these pattern portions, ensuring that only the main content is altered (Compl. ¶49).
- Asserted Claims: Claims 1-3 (Compl. ¶50).
- Accused Features: The complaint alleges that features like "Portrait mode" in Motorola products do not detect and exclude "pattern portions" from a correction process as claimed. It further alleges that to the extent the products have a "corrector," it is applied to both the main content and any purported pattern portions (Compl. ¶52-53).
U.S. Patent No. 8,059,177, “Electric Camera,” Issued November 15, 2011
- Technology Synopsis: The patent discloses an electric camera with an image sensor having a high number of vertical pixels (at least three times the scanning lines of a TV system). A driver can operate in different modes to "vertically mix or cull" signal charges from groups of pixels to produce an output signal compatible with the television system's resolution (Compl. ¶57).
- Asserted Claims: Claim 1 (Compl. ¶59).
- Accused Features: The complaint asserts non-infringement by alleging the accused products' cameras do not "vertically mix or cull signal charges accumulated in individual pixels of every K pixels" as required by the claim (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 a multiplexed audio decoder that extracts and decodes a specific audio sequence from a group of packets "designated by a user." The apparatus includes a controller that can detect a change in the compression method and download the corresponding new decoding algorithm to a memory for use by the processor (Compl. ¶64).
- Asserted Claims: Claim 1 (Compl. ¶66).
- Accused Features: The complaint asserts non-infringement by arguing the accused products do not allow a "user" to designate the audio data sequence to be used; rather, the sequence is selected automatically (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 having two distinct radio communication units that operate simultaneously. A control unit assigns transmission rates to each, ensuring that the rate for a first unit receiving digital video is greater than the rate for a second unit accessing the internet or a home network (Compl. ¶71).
- Asserted Claims: Claim 1 (Compl. ¶73).
- Accused Features: The complaint addresses allegations that the accused products' Bluetooth and cellular radios meet the claims. It asserts non-infringement by arguing these two radio types perform different functions and have different capabilities, and thus cannot be interchangeably identified as the "first" and "second" radio communication units as claimed (Compl. ¶74).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are a wide range of "Motorola Mobility Products," identified as mobile communication devices and smartphones (Compl. ¶1, ¶18). Specific product families named include the Moto E, Moto Edge, Moto G, Moto One, Moto Razr, and Moto Z series of devices (Compl. ¶18).
Functionality and Market Context
The complaint describes Motorola Mobility as a "leading designer and manufacturer" of these devices (Compl. ¶1). The accused functionalities are those inherent to modern smartphones, corresponding to the technologies of the asserted patents: location determination systems using GPS and cellular signals, camera systems with white balance and image processing, processor power management, and audio/video decoding and transmission using multiple radio technologies (e.g., cellular and Bluetooth) (Compl. ¶24, ¶38, ¶45, ¶53, ¶60, ¶67, ¶74).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
'292 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| GPS position calculation means for calculating the mobile handset's position from the received GPS signals and outputting a GPS-based position result; | The complaint does not describe the specific functionality of the accused products, but asserts the products do not have the claimed means. | ¶24 | col. 6:28-34 |
| GPS reliability calculation means for calculating GPS positioning reliability based on the GPS-based position result; | The complaint does not describe the specific functionality of the accused products, but asserts the products do not have the claimed means. | ¶24 | col. 6:43-50 |
| cellular position calculation means for calculating the mobile handset's position from the received cellular signals and outputting a cellular-based position result; | The complaint does not describe the specific functionality of the accused products, but asserts the products do not have the claimed means. | ¶24 | col. 6:11-16 |
| cellular reliability calculation means for calculating cellular positioning reliability based on the cellular-based position result; | The complaint does not describe the specific functionality of the accused products, but asserts the products do not have the claimed means. | ¶24 | col. 6:22-27 |
| 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 does not describe the specific functionality of the accused products, but asserts the products do not have the claimed means. | ¶24 | col. 6:39-42 |
- Identified Points of Contention:
- Scope Questions: A primary issue may be whether the integrated location processing systems in modern smartphones perform the functions of the distinct "means" elements recited in the claim. The case may turn on whether the accused products' software architecture is structurally equivalent to the separate functional blocks disclosed in the patent (e.g., Fig. 1, blocks 201, 204, 301, 304, 400).
- Technical Questions: What evidence does the complaint provide that the accused products do not calculate separate reliability values for GPS and cellular signals before combining them? The complaint asserts non-infringement without detailing the actual method used by the accused products, raising the question of their technical operation.
'673 Patent Infringement Allegations
| Claim Element (from Independent Claim 9) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| in said radio handset, storing information of a plurality of radio stations... | The complaint does not provide sufficient detail for analysis of this element. | ¶30-31 | col. 12:28-31 |
| creating a plurality of delay profiles for said plurality of received signals; | The complaint does not provide sufficient detail for analysis of this element. | ¶30-31 | col. 12:36-39 |
| extracting signal reception timings from said plurality of delay profiles: | The complaint does not provide sufficient detail for analysis of this element. | ¶30-31 | col. 12:40-43 |
| 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 does not address this element directly, but asserts non-infringement of dependent claim 12, which requires the position calculation to be performed by the handset. | ¶31 | col. 12:44-48 |
| calculating the position of said radio handset using said extracted signal reception timings corresponding to said selected radio stations. | The complaint asserts non-infringement of dependent claim 12, which requires that this calculation be "performed by said radio handset." | ¶31 | col. 12:49-52 |
- Identified Points of Contention:
- Scope Questions: Does the claim term "selecting radio stations... by determining not to use" cover modern techniques that might de-weight or algorithmically penalize signals from stations with conflicting PN offsets, or does it require a specific, explicit exclusion step?
- Technical Questions: Does the position calculation, including the selection of base stations, occur entirely "in said radio handset" as required by dependent claims 11 and 12, or do the accused products rely on network assistance for part of this process? The complaint's focus on this limitation suggests the location of the processing may be a central dispute.
V. Key Claim Terms for Construction
For the ’292 Patent
- The Term: "GPS reliability calculation means" / "cellular reliability calculation means"
- Context and Importance: These are means-plus-function limitations under 35 U.S.C. § 112(f). Their scope is not their plain meaning, but is limited to the corresponding structures described in the patent's specification and their equivalents. The core of the infringement dispute for this patent will likely be whether the software and/or hardware in the accused smartphones that assesses the quality of location data is structurally equivalent to what the '292 Patent discloses.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue that the function is calculating reliability, and the specification's examples—using "the number of GPS satellites used" and the "received signal quality (such as a signal-to-noise ratio)"—are merely illustrative (’292 Patent, col. 5:62-65). This could support an argument that any modern system considering signal strength and source count is an equivalent.
- Evidence for a Narrower Interpretation: A party may argue the structure is limited to the specific embodiment of discrete calculation units (204 and 304 in Fig. 1) that perform these calculations separately before passing them to a distinct combining unit (400) (’292 Patent, Fig. 1). This could support an argument that an integrated algorithm performing a single, holistic calculation does not have an equivalent structure.
For the ’673 Patent
- The Term: "selecting radio stations... by determining not to use at least one of a radio station having a PN offset value same as another radio station" (from claim 9)
- Context and Importance: This term defines the novel step for resolving signal ambiguity. Practitioners may focus on this term because the infringement analysis will turn on whether the accused devices' method for handling PN offset collisions meets this specific "determining not to use" requirement. An alternative method, such as weighting conflicting signals differently without formally excluding one, might fall outside the claim's scope.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent states that when signals from two stations cannot be separated, "it is decided to exclude a signal from at least one of these radio stations" (’673 Patent, Abstract). A party could argue this language covers any logical process that results in a signal from a conflicting station being ignored or discarded for the final calculation.
- Evidence for a Narrower Interpretation: The flowchart in Fig. 3 shows a binary decision: if stations have the same PN offset, "USE NONE OF THE BASE STATIONS THAT HAVE THE SAME PN OFFSET VALUE" (Fig. 3, block 202). A party may argue this embodiment limits the claim to a strict exclusion of all conflicting stations, not a more nuanced selection among them.
VI. Other Allegations
This section is not applicable as the complaint is for a declaratory judgment of non-infringement and does not contain allegations of indirect or willful infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this declaratory judgment action may turn on the following central questions:
- A core issue will be one of architectural mapping: Can the functions recited in the patents’ claims, many of which are drafted as distinct "means for" or method steps corresponding to older hardware-block-diagram architectures, be found in the integrated, software-driven processing systems of modern smartphones?
- A key evidentiary question will be one of functional specificity: Do the algorithms in the accused Motorola devices perform the exact functions required by the claims—such as the explicit exclusion of a base station with a duplicate PN offset (’673 Patent) or the strict separation of video "content" from "pattern portions" (’645 Patent)—or do they achieve similar results through different technical operations that fall outside the claims' scope?
- A threshold procedural question will be one of jurisdiction and venue: Which court is the proper forum to adjudicate this dispute—the Western District of Texas, where Maxell filed its original infringement suit, or the Northern District of Illinois, where Motorola filed this subsequent declaratory judgment action?