Skyhook Wireless Inc v. Unwired Labs India Pvt Ltd

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Skyhook Wireless, Inc. and Skyhook Holding, Inc. (Delaware)
  • Defendant: Unwired Labs (India) Pvt. Ltd. (India)
  • Plaintiff’s Counsel: Global IP Law Group, LLC
• Case Identification: 1:19-cv-12316, D. Mass., 08/06/2020
• Venue Allegations: Plaintiff alleges that because Defendant is a corporation organized under the laws of India and not a resident of the United States, venue is proper in any judicial district pursuant to 28 U.S.C. § 1391(c)(3).
• Core Dispute: Plaintiff alleges that Defendant’s location positioning products and services infringe five patents related to the use of Wi-Fi access point data for determining the geographic location of wireless devices.
• Technical Context: The technology at issue is foundational to modern location-based services, enabling devices like smartphones to determine their position in environments where satellite-based systems like GPS are unreliable.
• Key Procedural History: The complaint notes that Plaintiff has previously licensed its patent portfolio to competitors of the Defendant, including a litigation settlement with Google, Inc. that resulted in a $90 million payment to Plaintiff. The complaint also asserts that Plaintiff engaged in licensing discussions with Defendant's CEO for over a year prior to filing suit.

Case Timeline

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

U.S. Patent No. 7,397,424 - "System and method for enabling continuous geographic location estimation for wireless computing devices"

The Invention Explained

• Problem Addressed: The patent’s background section describes the unreliability of satellite-based positioning systems (e.g., GPS) in areas with obstructed sky views, such as urban canyons or indoors, and the challenge of creating a comprehensive database of ground-based wireless beacons (e.g., Wi-Fi access points) needed for an alternative system (’424 Patent, col. 1:36-54).
• The Patented Solution: The invention proposes a hybrid system where a wireless device uses GPS when available but switches to a database of wireless beacons when GPS signals are weak or absent. To build and maintain this database, the invention discloses a method where devices with a functioning GPS connection can identify nearby Wi-Fi beacons, determine their location, and forward this new information to a central database, which in turn distributes updates to other devices in the network (’424 Patent, col. 3:5-29; Fig. 2).
• Technical Importance: This crowdsourcing method for building a Wi-Fi access point location database provided a practical solution to augment or replace GPS in environments where it was ineffective, a critical step for enabling persistent location awareness on mobile devices (Compl. ¶14, ¶52).

Key Claims at a Glance

• The complaint asserts independent method claim 15 (Compl. ¶27).
• Claim 15 recites a method for administering a database of wireless beacons, with the following essential elements:
  • maintaining a central database of wireless beacons;
  • wirelessly coupling the central database to multiple wireless computing devices;
  • enabling each device to determine information about new beacons not yet in the central database, without communicating with it;
  • periodically forwarding this new beacon information from the devices to the central database;
  • updating the central database with the forwarded information; and
  • periodically directing the updates from the central database to the devices.
• The complaint also asserts dependent claim 16 (Compl. ¶27).

U.S. Patent No. 7,696,923 - "System and method for determining geographic location of wireless computing devices"

The Invention Explained

• Problem Addressed: The patent addresses the need for a non-satellite method to determine the geographic location of a wireless device, particularly in areas where GPS is unavailable (’923 Patent, col. 1:26-44).
• The Patented Solution: The patent describes a client-server architecture for location positioning. A wireless device detects one or more nearby wireless beacons and generates identification information (e.g., a MAC address). The device then sends this information with a position request to a server. The server uses a database that maps beacon identifiers to known geographic locations to determine the device’s position and then undertakes an action based on that position, such as sending the location back to the device (’923 Patent, Abstract; col. 7:40-54).
• Technical Importance: This architecture forms a basis for many Wi-Fi positioning services by centralizing the large location database and computational load on a server, reducing the burden on resource-constrained mobile devices (Compl. ¶17-18).

Key Claims at a Glance

• The complaint asserts independent system claim 1 and independent method claim 16 (Compl. ¶27).
• Claim 1 recites a system with the following essential elements:
  • A server with a database of identification and positional information for wireless beacons.
  • A wireless computing device that communicates with the server via the Internet.
  • The device is arranged to receive a transmission from a beacon and generate its identification information.
  • The device is arranged to send a position request with the beacon's identification information to the server.
  • The server is arranged to receive the request and determine the device's geographic position using the received information and its database.
  • The server is arranged to undertake an action based on the determined position.
• The complaint also asserts dependent claims 2, 12-15, 17, and 20 (Compl. ¶27).

U.S. Patent No. 7,856,234 - "System and method for estimating positioning error within a WLAN-based positioning system"

• Technology Synopsis: This patent addresses the problem of quantifying the accuracy of a Wi-Fi-based location estimate. The claimed solution is a method for estimating an "expected error" in terms of distance, based on the characteristics (e.g., MAC address, signal strength) of the Wi-Fi access points used to calculate the position (’234 Patent, Abstract).
• Asserted Claims: Independent claim 1 and dependent claims 2, 3, and 11 (Compl. ¶27).
• Accused Features: The complaint alleges that Defendant’s service, which provides an "accuracy" field in its API responses described as "[t]he accuracy of the position [] returned in meters," infringes this patent (Compl. ¶171, ¶173).

U.S. Patent No. 8,837,363 - "Server for updating location beacon database"

• Technology Synopsis: This patent describes a method for building the location database of Wi-Fi access points. The claimed solution involves deriving the position of access points by applying a "reverse triangulation algorithm" to data sets collected during a "comprehensive traversal" of a geographic area, such as systematically driving all streets in a city (’363 Patent, Abstract).
• Asserted Claims: Independent claim 18 and dependent claims 19, 20, 23, and 24 (Compl. ¶27).
• Accused Features: The complaint alleges that Defendant’s methods for building and updating its Wi-Fi access point database infringe this patent (Compl. ¶204, ¶210).

U.S. Patent No. 8,909,245 - "System and method for estimating positioning error within a WLAN-based positioning system"

• Technology Synopsis: This patent, like the ’234 patent, addresses the problem of quantifying the accuracy of a Wi-Fi location estimate. The claimed solution focuses on estimating the expected error based on the "spatial spread"—a measure of the distances between the detected Wi-Fi access points used in the calculation (’245 Patent, Abstract).
• Asserted Claims: Independent claim 1 and dependent claims 2, and 5-7 (Compl. ¶27).
• Accused Features: The complaint alleges that Defendant’s error estimation, which it claims is based on the spatial spread of access points, infringes this patent (Compl. ¶255).

III. The Accused Instrumentality

Product Identification

• Defendant Unwired’s "LocationAPI" and "LocationIQ" products and services (Compl. ¶28). A screenshot from Defendant’s website describes its "LocationAPI" product as a service to "[g]et a connected device’s location based on cell towers, WiFi and IP address" (Compl. p. 7).

Functionality and Market Context

• The accused services operate by receiving information about nearby wireless access points from a user's device and referencing a proprietary database to calculate and return the device's geographic position (Compl. ¶28, ¶39). The complaint alleges that Unwired maintains a central database of Wi-Fi access points on its servers to provide these location-positioning services (Compl. ¶40, ¶69). The complaint further alleges that Unwired’s services provide an "accuracy" field in position request responses, indicating the estimated error of the location in meters (Compl. ¶173).
• The complaint positions Defendant as a competitor to Plaintiff and Plaintiff's other licensees in the location services market (Compl. ¶19).

IV. Analysis of Infringement Allegations

’424 Patent Infringement Allegations

’923 Patent Infringement Allegations

Identified Points of Contention

• Scope Questions: A potential issue in the ’923 Patent analysis is the scope of "undertake an action." The complaint’s allegations suggest that the "action" is returning the calculated location to the user device via its API. The case may raise the question of whether simply transmitting data fulfills this limitation or if a more substantive, application-level action is required by the claim.
• Technical Questions: For the ’424 Patent, a key technical question may be whether the accused system performs the forwarding and directing steps "periodically" as required by the claim. The complaint alleges periodic forwarding and directing, but many modern systems operate on an event-driven or on-demand basis. The evidence presented will need to clarify if Unwired's system uses a scheduled, time-based process that meets the potential construction of "periodically."

V. Key Claim Terms for Construction

• The Term: "periodically" (from ’424 Patent, Claim 15)

• Context and Importance: This term appears twice in Claim 15, governing both the uploading of new beacon data from devices and the downloading of updates to devices. Its construction is critical because it dictates the required timing of these data transfers. A narrow, time-based definition could create a significant infringement hurdle for systems that operate on an on-demand or event-triggered basis.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification uses the term without providing a specific definition, for example, stating the system "periodically [directs] the updates of the central database to the plurality of wireless computing devices" (’424 Patent, col. 4:2-5). A party might argue this supports a meaning of "from time to time" or "repeatedly," rather than at fixed intervals.
  • Evidence for a Narrower Interpretation: A party could argue that the plain and ordinary meaning of "periodically" implies a regular, recurring interval. The patent does not appear to contain explicit language to counter this interpretation, such as describing an event-driven update process.

• The Term: "undertake an action" (from ’923 Patent, Claim 1)

• Context and Importance: This is the final step performed by the server in the claimed system. The term's scope is central to determining what the server must do after calculating a device's position. Practitioners may focus on this term because if it is construed to require more than simply returning coordinates (e.g., displaying a map), it could create a dispute over whether Defendant's server, which provides an API, performs the claimed step.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The claim language itself is broad, and the specification does not appear to define or limit the "action" to any specific task (’923 Patent, col. 7:62-64). This lack of limitation suggests any subsequent server-side operation based on the location could meet the claim element.
  • Evidence for a Narrower Interpretation: The patent does not provide specific embodiments that would narrow this term. A defendant might argue based on extrinsic evidence or the overall context that a mere data transmission is not an "action" in the sense intended by the patent, but the intrinsic evidence for such a limitation appears limited.

VI. Other Allegations

• Indirect Infringement: The complaint alleges that Unwired induces infringement by "providing user guides and other support materials and services to its users and by advertising features" that encourage use of the patented methods (Compl. ¶29).
• Willful Infringement: The complaint alleges pre-suit knowledge of the patents "since at least July 2018" and cites "numerous emails and phone calls between Skyhook and Unwired's CEO" regarding the patents before the lawsuit was filed (Compl. ¶32, ¶293). The complaint also alleges ongoing infringement after receiving notice of the lawsuit, which may support a claim of post-suit willfulness (Compl. ¶35, ¶294).

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

• A core issue will be one of operational equivalence: does the accused system, which likely operates on an on-demand, request-response basis typical of modern APIs, practice the "periodic" data forwarding and directing steps required by claim 15 of the ’424 patent, or is there a fundamental mismatch in the timing and trigger of its data exchange processes?
• A key question of definitional scope will be whether the broad claim term "undertake an action" from the ’923 patent can be construed to cover the act of a server returning location coordinates via an API, or if the patent requires a more substantive, user-facing function to be performed by the server itself.
• A central evidentiary challenge for the Plaintiff will likely involve demonstrating how Defendant’s non-public, server-side systems for database creation and maintenance practice the specific "reverse triangulation" and "comprehensive traversal" methods claimed in the ’363 patent.