DCT

1:22-cv-00621

Buffalo Patents LLC v. Motorola Mobility LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:22-cv-00621, N.D. Ill., 02/04/2022
  • Venue Allegations: Plaintiff alleges venue is proper in the Northern District of Illinois because Defendant has committed acts of patent infringement in the district and maintains a regular and established place of business in Chicago.
  • Core Dispute: Plaintiff alleges that Defendant’s smartphones with Voice over Wi-Fi (VoWi-Fi) functionality infringe four patents related to internet telephony, and that its smartphones with curved flexible displays infringe one patent related to hybrid display devices.
  • Technical Context: The lawsuit involves two distinct technologies: Voice over IP communications using standard wireless protocols like Wi-Fi, and the physical construction of modern smartphone displays that combine rigid and flexible materials.
  • Key Procedural History: The complaint alleges that Plaintiff sent Defendant a letter on November 2, 2021, providing notice of U.S. Patent Nos. 7,187,670 and 6,856,086, which forms part of the basis for the willful infringement allegations.

Case Timeline

Date Event
2000-09-01 Priority Date for ’670, ’915, ’328, and ’816 Patents
2001-06-25 Priority Date for ’086 Patent
2005-02-15 U.S. Patent No. 6,856,086 Issued
2007-03-06 U.S. Patent No. 7,187,670 Issued
2008-08-05 U.S. Patent No. 7,408,915 Issued
2013-12-17 U.S. Patent No. 8,611,328 Issued
2015-04-07 U.S. Patent No. 9,001,816 Issued
2021-11-02 Plaintiff allegedly notified Defendant of ’670 and ’086 Patents
2022-02-04 Complaint Filed

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

U.S. Patent No. 7,187,670 - “Communications Terminal, a System and a Method for Internet/Network Telephony”

  • The Invention Explained:
    • Problem Addressed: The patent’s background describes the high cost of traditional telephony and the inflexibility of early wireless voice systems that required specialized, proprietary base stations to function (’670 Patent, col. 1:12-21).
    • The Patented Solution: The invention is an electronic portable communications terminal that processes voice calls using a standardized network protocol (e.g., TCP/IP). Instead of connecting to a proprietary base station, the terminal uses a "wireless near field communications means" (e.g., Wi-Fi) to exchange data packets with a generic "connecting unit" (e.g., a Wi-Fi router) that is connected to the internet. The terminal itself contains the "protocol means" to handle the packetization of voice data, decoupling the device from specific network hardware (’670 Patent, Abstract; Fig. 1).
    • Technical Importance: This architecture enabled voice communication over standard, ubiquitous IP networks, forming a basis for modern Voice over Wi-Fi (VoWi-Fi) technology (Compl. ¶9).
  • Key Claims at a Glance:
    • The complaint asserts independent Claim 1 (Compl. ¶18).
    • Claim 1 is a system claim with four key "means-plus-function" elements:
      • "audio means" for reproducing sound based on a first electrical signal and recording sound resulting in a second electrical signal.
      • "converting means" for converting the second electrical signal into transmission data and converting received data into the first electrical signal.
      • "protocol means" for handling communication in accordance with a standardized network protocol, including embedding and extracting data from a data packet format.
      • "wireless near field communications means" for exchanging the data packets with the protocol means and embedding/extracting that data into/from a wireless data format for transmission to a connecting unit.

U.S. Patent No. 7,408,915 - “Communications Terminal, a System and a Method for Internet/Network Telephony”

  • The Invention Explained:
    • Problem Addressed: As a continuation of the ’670 Patent, the ’915 Patent addresses the same problem of enabling flexible, low-cost telephony over standard IP networks without specialized hardware (’915 Patent, col. 1:16-25).
    • The Patented Solution: The patent claims a method for performing Internet telephony that mirrors the system of the ’670 Patent. The claimed method involves steps of reproducing and recording sound, converting signals to and from a suitable data format, handling the data according to a standardized protocol (like TCP/IP), and embedding the resulting IP packets into a wireless format (like WiFi) for transmission and reception (’915 Patent, Abstract). The process is illustrated in flowcharts showing the sequence of operations for making a call (’915 Patent, Figs. 3a-3b).
    • Technical Importance: By claiming the method of use, the patent provides a different scope of protection than the system claim of the parent ’670 Patent, covering the act of performing VoWi-Fi on a compatible device (Compl. ¶9).
  • Key Claims at a Glance:
    • The complaint asserts independent Claim 29 (Compl. ¶46).
    • Claim 29 is a method claim comprising the steps of:
      • Reproducing sound and recording sound by audio means.
      • Converting between electrical signals and transmission data by converting means.
      • Handling communication in accordance with a standardized network protocol by protocol means.
      • Receiving/sending data via wireless near field communication means, including embedding transmission data into a WiFi or IEEE 802.11 format and extracting received data from that format.

U.S. Patent No. 8,611,328 - “Communications Terminal, a System and a Method for Internet/Network Telephony”

  • Technology Synopsis: This patent is in the same family as the ’670 and ’915 patents and claims a method for network telephony. The asserted claim focuses on the steps of converting a detected sound into first digital data, converting that digital data into IP packets according to a first network protocol, and embedding those packets into first wireless data that accords to a second, near-field communication protocol (e.g., 802.11) (Compl. ¶75-80).
  • Asserted Claims: Independent Claim 8 (Compl. ¶73).
  • Accused Features: The VoWi-Fi feature of Motorola smartphones is accused of infringing by performing the claimed method of converting voice into digital IP packets and embedding them into Wi-Fi frames for transmission (Compl. ¶76, ¶78, ¶80).

U.S. Patent No. 9,001,816 - “Communications Terminal, a System and a Method for Internet/Network Telephony”

  • Technology Synopsis: This patent, also from the same family, claims a method focused on the reception side of a VoWi-Fi call. The claimed method comprises receiving, via a near-field network, wireless data (e.g., an 802.11 frame) that uses a first network protocol, where that wireless data includes an embedded data packet (e.g., an IP packet) that uses a second network protocol (Compl. ¶91-93). The method further includes extracting the packet and generating a sound based on it (Compl. ¶94, ¶96-97).
  • Asserted Claims: Independent Claim 10 (Compl. ¶89).
  • Accused Features: The accused feature is the VoWi-Fi capability of Motorola smartphones, specifically the process of receiving Wi-Fi frames, extracting the embedded IP voice packets, and converting the data back into audible sound for the user (Compl. ¶93, ¶95, ¶97).

U.S. Patent No. 6,856,086 - “Hybrid Display Device”

  • Technology Synopsis: This patent relates to display device construction. It discloses a "hybrid" display having a front panel with a rigid substrate (e.g., glass) and a back panel with a flexible substrate (e.g., a plastic film) (’086 Patent, Abstract). A light control material, such as OLED or LCD, is located between the two panels. This structure enables novel display form factors while allowing for efficient manufacturing techniques, such as roll-to-roll processing for the flexible back panel (’086 Patent, col. 1:45-54).
  • Asserted Claims: Independent Claim 1 (Compl. ¶103).
  • Accused Features: The Motorola Edge smartphone is accused of infringing. The complaint alleges its curved "waterfall" display embodies the claimed invention by having a front panel with a rigid substrate (Corning Gorilla Glass 5) and a back panel with a flexible substrate containing the OLED layers (Compl. ¶105-106, ¶108).

III. The Accused Instrumentality

Product Identification

  • The complaint identifies two sets of accused products:
    1. For the four telephony patents, the exemplary product is the Motorola One 5G Ace smartphone and other Motorola products that support "Voice over Wi-Fi (VoWi-Fi) or Wi-Fi calling" (Compl. ¶17).
    2. For the display patent, the exemplary product is the Motorola Edge smartphone and other products with "curved displays or flexible OLED displays" (Compl. ¶102).

Functionality and Market Context

  • The complaint alleges the Motorola One 5G Ace and similar products contain the necessary hardware (microphones, speakers, processors, codecs, Wi-Fi chipsets) and software to perform VoWi-Fi (Compl. ¶21, ¶25, ¶31, ¶34). This feature allows users to place and receive voice calls over an IEEE 802.11 network, which is marketed as "Wi-Fi Calling." The complaint provides a screenshot from a T-Mobile support page illustrating how to turn on this feature (Compl. p. 7).
  • The Motorola Edge smartphone is alleged to feature a flexible OLED display with an "Endless Edge display" that curves around the sides of the device (Compl. ¶102, ¶106). The complaint alleges this display is constructed with a rigid front panel of Corning Gorilla Glass 5 and a flexible back panel containing the organic polymer layers of the OLED display (Compl. ¶106, ¶108). To support this technical characterization, the complaint includes a scanning electron microscope (SEM) image of the display's cross-section (Compl. p. 74).

IV. Analysis of Infringement Allegations

7,187,670 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
an electronic portable communications terminal for network telephony, comprising: audio means for reproducing sound on the basis of a first electrical signal and to record sound resulting in a second electrical signal... The Motorola One 5G Ace includes a speaker to reproduce sound and a microphone to record sound. ¶20-23 col. 8:3-9
converting means converting said second electrical signal into transmission data...and to convert received data...into said first electrical signal... The device includes a codec (coder/decoder) to convert analog voice signals from the microphone into digital transmission data, and to convert received digital data into analog signals for the speaker. ¶24-27 col. 8:11-20
protocol means connected to said converting means for handling and controlling communication...in accordance with a standardized network protocol, thereby embedding and extracting said transmission and received data, respectively, in/from a data packet format... The device includes a processor that splits voice input into IP packets ("embedding") and extracts voice data from received IP packets ("extracting"). ¶28-31 col. 8:30-41
wireless near field communications means connected to said protocol means for receiving/sending said received and transmission data...and to embed said transmission data...in a wireless second data format... The device includes a Wi-Fi chipset that embeds the IP packets into IEEE 802.11 frames (PPDUs) for transmission over a wireless network and extracts IP packets from received 802.11 frames. ¶32-35 col. 8:42-53

7,408,915 Infringement Allegations

Claim Element (from Independent Claim 29) Alleged Infringing Functionality Complaint Citation Patent Citation
a method for network telephony comprising the step of reproducing sound on the basis of a first electrical signal and recording sound resulting in a second electrical signal, by audio means... The accused products use a speaker to reproduce sound and a microphone to record sound during a VoWi-Fi call. ¶48-51 col. 5:16-20
converting said second electrical signal into transmission data...and converting received data...into said first electrical signal, by converting means... The accused products use a codec to convert analog voice from the microphone into digital data for transmission and convert received digital data into an analog signal for the speaker. ¶52-55 col. 5:21-28
handling/controlling communication of said received and transmission data in accordance with a standardized network protocol...by protocol means... The accused products use a processor to encapsulate outgoing voice data into IP packets and extract voice data from incoming IP packets. ¶56-59 col. 5:29-37
receiving/sending, by wireless near field communication means...embedding said transmission data in said data packet format received from said protocol means in a WiFi or IEEE 802.11 format and extracting said received data...from said WiFi or IEEE 802.11 format. The accused products use a Wi-Fi chipset to embed outgoing IP packets into IEEE 802.11 frames and extract incoming IP packets from received IEEE 802.11 frames. ¶60-63 col. 5:38-46

Identified Points of Contention:

  • Scope Questions: A central issue for the ’670 Patent will be the scope of its "means-plus-function" claim elements. The court’s construction of these terms will be limited to the corresponding structures disclosed in the specification (e.g., the specific depiction of "protocol means" in Figure 1) and their legal equivalents. A question for the court will be whether modern, highly integrated System-on-a-Chip (SoC) processors in smartphones are structurally equivalent to the distinct functional blocks described in the 2000-era patent.
  • Technical Questions: For all the telephony patents, a technical question may be whether the multi-layered protocol stack in modern VoWi-Fi systems performs the claimed "embedding" and "extracting" steps in a manner that maps directly onto the patent's simpler description. The complaint relies on a diagram from the device's user manual, which labels the locations of microphones and speakers, to support its infringement theory for the "audio means" limitation (Compl. p. 9). The court may need to consider whether the specific functions of these components in a VoWi-Fi call align with the claim requirements.

V. Key Claim Terms for Construction

  • The Term: "protocol means" (from Claim 1 of the ’670 Patent)

    • Context and Importance: This is a means-plus-function term central to the infringement analysis. Its scope will be defined by the corresponding structure disclosed in the specification. The dispute will likely focus on whether the accused processors and software are structurally equivalent to the disclosed "protocol means (103)" connected to a microprocessor "μP (105)" (’670 Patent, Fig. 1).
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification describes the function broadly as "handling of data/information in connection with transmission and reception of data" using the TCP/IP protocol, which could support an argument that any processor configured to perform IP packetization is a structural equivalent (’670 Patent, col. 8:30-41).
      • Evidence for a Narrower Interpretation: The specification discloses this "means" as a distinct block in Figure 1. A defendant may argue that this disclosure limits the claim to a specific hardware or software module dedicated to protocol handling, and that the integrated nature of a modern smartphone SoC is structurally different.

  • The Term: "a data packet that accords to a second network protocol" (from Claim 10 of the ’816 Patent)

    • Context and Importance: This term is critical for defining the relationship between the two nested protocols (e.g., IP-over-Wi-Fi). Infringement depends on whether the IP packets in the accused system are properly characterized as according to a "second network protocol" that is distinct from the "first network protocol" of the wireless data (i.e., Wi-Fi).
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The patent consistently discusses using the Internet (an IP-based network) for transport, separate from the local wireless link. The specification states that the system "uses the IP protocol for passing on digital speech information via the Internet between various base stations" (’816 Patent, col. 1:57-60, via incorporation of WO 98/57508). This suggests any standard IP packet would meet the limitation.
      • Evidence for a Narrower Interpretation: A defendant might argue that in modern VoWi-Fi, the IP packets are part of a single, unified communication session governed by the 802.11 standard, and not a distinct "second network protocol" in the manner contemplated by the patent.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges that Motorola indirectly infringes the ’670 and ’086 Patents through both inducement and contributory infringement (Compl. ¶114, ¶131). The inducement allegation is based on Motorola providing user manuals and on-device software that instruct and encourage users to enable and use the accused VoWi-Fi and hybrid display features (Compl. ¶117). The contributory infringement allegation claims these features are specially designed for an infringing use and have no substantial non-infringing uses (Compl. ¶132-134).
  • Willful Infringement: Willfulness is alleged against all patents-in-suit. The claim is based on alleged pre-suit knowledge of the ’670 and ’086 Patents from a November 2, 2021 notice letter (Compl. ¶136), as well as post-suit knowledge from the filing of the complaint. The complaint further alleges that Motorola maintains a policy of "willful blindness" by instructing employees not to review patents of others, which it argues constitutes objective recklessness (Compl. ¶138-139).

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

  • A core issue will be one of structural equivalence: For the means-plus-function claims in the early VoWi-Fi patents, can the disclosed functional blocks from a 2000-era specification be proven equivalent to the highly integrated, multi-functional processors and software stacks operating in modern smartphones?
  • A key question for the hybrid display patent will be one of claim construction: How will the court define "front panel" and "back panel" in the context of a modern, multi-layered smartphone display assembly, and does the accused Motorola Edge, with its rigid glass cover and underlying flexible OLED screen, meet that construction?
  • A central evidentiary question will concern intent: Can Plaintiff produce sufficient evidence to prove that Motorola, beyond merely selling products with infringing capabilities, possessed the specific intent required to induce its customers to infringe, particularly in light of its alleged policy of willful blindness toward third-party patents?