2:22-cv-11408
Neo Wireless LLC v. Tesla Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Neo Wireless, LLC (Delaware)
- Defendant: Tesla Inc. (Delaware)
- Plaintiff’s Counsel: Caldwell Cassady Curry P.C.; Young, Garcia & Quadrozzi, PC
- Case Identification: 2:22-cv-11408, E.D. Mich., 07/20/22
- Venue Allegations: The complaint asserts that venue is proper in the Eastern District of Texas because Tesla has allegedly committed acts of infringement and maintains a regular and established place of business within that district, citing the presence of physical stores and Supercharger stations.
- Core Dispute: Plaintiff alleges that Defendant’s vehicles equipped with 4G/LTE and 5G/NR cellular technology infringe six patents related to methods for managing random access, channel probing, and adaptive transmission in multi-carrier wireless communication systems.
- Technical Context: The patents relate to foundational technologies for modern cellular communication standards (4G/LTE, 5G/NR), focusing on improving efficiency and reliability in how mobile devices connect to and communicate with cellular networks.
- Key Procedural History: The complaint alleges Plaintiff provided Defendant with pre-suit notice of the patents-in-suit via a letter dated November 29, 2021, and that Defendant did not respond or engage in licensing negotiations.
Case Timeline
| Date | Event |
|---|---|
| 2004-01-29 | Earliest Priority Date for ’908, ’512, ’302 Patents |
| 2004-02-13 | Earliest Priority Date for ’941 Patent |
| 2004-03-09 | Earliest Priority Date for ’366 Patent |
| 2005-09-28 | Earliest Priority Date for ’450 Patent |
| 2013-06-18 | U.S. Patent No. 8,467,366 Issues |
| 2015-06-01 | Date after which Tesla vehicles were equipped with 4G LTE modems |
| 2018-09-11 | U.S. Patent No. 10,075,941 Issues |
| 2019-10-15 | U.S. Patent No. 10,447,450 Issues |
| 2020-09-08 | U.S. Patent No. 10,771,302 Issues |
| 2020-11-10 | U.S. Patent No. 10,833,908 Issues |
| 2021-03-30 | U.S. Patent No. 10,965,512 Issues |
| 2021-11-29 | Plaintiff alleges sending notice letter to Defendant |
| 2022-07-20 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,467,366 - Methods and Apparatus for Random Access in Multi-Carrier Communication Systems
The Invention Explained
- Problem Addressed: In wireless communication systems like OFDM, when many mobile devices try to connect to a base station simultaneously (a process called "random access"), their signals can collide and interfere with each other, especially when the devices are not yet synchronized with the network (U.S. Patent No. 8,467,366, col. 1:21-44). This can lead to wasted bandwidth and connection failures (id.).
- The Patented Solution: The invention proposes a specially configured "ranging signal" for random access that occupies a specific sub-channel. This signal is designed to have a low peak-to-average power ratio, which makes it more power-efficient for the mobile device to transmit, and includes features like setting power levels at the edges of the signal block to zero to reduce interference with adjacent channels (id., col. 4:5-12; col. 8:16-27). This structure improves the base station's ability to detect the access attempt while minimizing interference (id.).
- Technical Importance: The described methods for structuring random access signals provide a way to manage network entry for multiple users more reliably and efficiently, a fundamental requirement for scaling cellular networks (id., col. 1:21-25).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶72).
- Claim 1 requires an apparatus at a mobile station that performs steps including:
- Transmitting a data signal over a data subchannel.
- Transmitting a ranging signal over a ranging subchannel for random access.
- The ranging signal is formed from a selected ranging sequence.
- The ranging signal lasts for one or more OFDM symbols and has a low peak-to-average power ratio.
- The ranging subchannel has at least one block of subcarriers where the power levels at both ends of the block are set to zero.
- The complaint reserves the right to assert additional claims (Compl. ¶50).
U.S. Patent No. 10,833,908 - Channel Probing Signal for a Broadband Communication System
The Invention Explained
- Problem Addressed: For a base station to efficiently allocate resources, it needs to understand the communication channel conditions for each mobile device (e.g., signal strength, interference). This "channel probing" requires the mobile device to send a signal, but this can create interference and consume resources needed for data transmission (U.S. Patent No. 10,833,908, col. 1:28-44).
- The Patented Solution: The invention describes a method where a mobile device transmits a "random access signal" (which can be used for channel probing) followed by a "guard period." This signal is transmitted in "only a portion of the frequency band" and is designed to have a specific duration relative to standard OFDM data symbols (id., col. 12:5-23; Abstract). This allows the base station to measure channel characteristics from a dedicated, structured signal without disrupting the overall flow of data traffic on the main communication channel (id., col. 1:45-56).
- Technical Importance: This approach provides a dedicated mechanism for channel assessment that is integrated into the network's timing structure, enabling more dynamic and accurate network management without significant overhead (id.).
Key Claims at a Glance
- The complaint asserts at least independent claim 11 (Compl. ¶79).
- Claim 11 requires a method at a mobile station comprising:
- Transmitting a first uplink signal (e.g., data) within a frequency band using an OFDM frame structure.
- Transmitting a random access signal followed by a guard period "in only a portion of the frequency band."
- The random access signal includes a sequence associated with the base station.
- The combined duration of the random access signal and the guard period is greater than the duration of at least one OFDM symbol.
- Receiving a response message from the base station.
- The complaint reserves the right to assert additional claims (Compl. ¶50).
U.S. Patent No. 10,075,941 - Methods and Apparatus for Multi-Carrier Communication Systems with Adaptive Transmission and Feedback
Technology Synopsis
The patent addresses adapting wireless transmissions to changing channel conditions (Compl. ¶86). It discloses a method where a base station sends a control message to a mobile device specifying an antenna transmission scheme (e.g., diversity or MIMO) and a corresponding subchannel configuration (e.g., distributed or localized subcarriers) to optimize the subsequent data transmission based on channel quality (’941 Patent, col. 9:5-31).
Asserted Claims
At least independent claim 13 is asserted (Compl. ¶86).
Accused Features
The accused functionality is the configuration of mobile devices in Tesla vehicles to receive and process signals, such as Downlink Control Information (DCI) format 2, which dictates transmission parameters based on network conditions, allegedly as required by the 3GPP LTE standard (Compl. ¶¶85-86).
U.S. Patent No. 10,447,450 - Method and System for Multi-Carrier Packet Communication with Reduced Overhead
Technology Synopsis
The patent seeks to reduce control channel overhead in wireless systems (Compl. ¶93). It describes a method for transmitting control information where the number of information bits in a packet is a multiple of a basic resource unit, allowing the system to use modular resource allocation and reduce the bits needed to signal the size and location of data packets (’450 Patent, col. 5:45-63).
Asserted Claims
At least independent claim 7 is asserted (Compl. ¶93).
Accused Features
The accused feature is the capability of Tesla's products to receive and process all Physical Downlink Control Channel (PDCCH) formats, which allegedly use modular resource units (Control Channel Elements, or CCEs) to convey scheduling information in a manner covered by the patent (Compl. ¶¶92-93).
U.S. Patent No. 10,965,512 - Method and Apparatus Using Cell-Specific and Common Pilot Subcarriers in multi-Carrier, Multi Cell Wireless Communication Networks
Technology Synopsis
The patent describes a system using two types of pilot signals (subcarriers): "cell-specific" pilots unique to an individual cell and "common" pilots shared across multiple cells (Compl. ¶100). This dual structure allows a mobile device to perform functions requiring cell-specific information (like channel estimation for that cell) while also performing functions that benefit from combining signals from multiple cells (like initial network synchronization) (’512 Patent, col. 3:3-15).
Asserted Claims
At least independent claim 15 is asserted (Compl. ¶100).
Accused Features
The accused functionality is the operation of Tesla's products in LTE networks using various transmission modes, including at least Transmission Mode 7, which relies on User Equipment-specific reference signals (UE-RS) that are alleged to function as the claimed cell-specific pilots (Compl. ¶¶99-100).
U.S. Patent No. 10,771,302 - Channel Probing Signal for a Broadband Communication System
Technology Synopsis
This patent, related to the ’908 patent, also focuses on channel probing signals. It discloses a system where a probing signal (e.g., a Sounding Reference Signal or SRS) is transmitted by a mobile device over a time period that can overlap with the transmission of other control signals (e.g., Physical Uplink Control Channel or PUCCH) from other devices (Compl. ¶107). This allows for efficient, simultaneous use of uplink resources for both channel sounding and control information (’302 Patent, Abstract).
Asserted Claims
At least independent claim 23 is asserted (Compl. ¶107).
Accused Features
The accused functionality is the capability of Tesla's products to support simultaneous transmission of Sounding Reference Signals (SRS) and Physical Uplink Control Channel (PUCCH) signals as defined in the 3GPP LTE standard (Compl. ¶¶106-107).
III. The Accused Instrumentality
Product Identification
Tesla vehicle models including but not limited to the Model S, Model Y, Model 3, and Model X that implement 4G/LTE and/or 5G/NR cellular communications (Compl. ¶44).
Functionality and Market Context
- The complaint alleges these vehicles are equipped with cellular modems that provide connectivity to 4G/LTE and 5G/NR networks, implementing 3GPP standards from release 8 through at least release 17 (Compl. ¶¶42, 45). This connectivity enables a wide range of features, including remote vehicle interaction via the Tesla App (climate control, charge monitoring, locking), navigation map updates, live traffic data, automatic collision notification, and an in-vehicle Wi-Fi hotspot (Compl. ¶¶41, 43).
- The complaint frames this cellular connectivity as a key enabler for advanced vehicle functions that are advertised and marketed to consumers (Compl. ¶¶41, 62).
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint alleges that the Accused Products necessarily infringe by implementing the 3GPP 4G/LTE and/or 5G/NR standards, which Plaintiff contends practice the patented inventions (Compl. ¶47). The complaint references claim chart exhibits that were not attached to the filing; the following charts summarize the infringement allegations based on the complaint's narrative.
U.S. Patent No. 8,467,366 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An apparatus configured to transmit a data signal to the serving base station...over a data subchannel... | The Accused Products are configured to transmit data over uplink channels in 4G/LTE and 5G/NR networks (Compl. ¶46). | ¶46, ¶71 | col. 3:39-44 |
| an apparatus configured to transmit a ranging signal...over a ranging subchannel for random access... | The Accused Products are configured to perform the 3GPP LTE random-access procedure, which involves transmitting a random access preamble. This is alleged to be the claimed "ranging signal" (Compl. ¶73). | ¶73 | col. 4:5-12 |
| the ranging signal is formed from a ranging sequence selected from a set of ranging sequences... | The 3GPP LTE standard specifies a set of Zadoff-Chu sequences for use as random access preambles. The Accused Products allegedly select and use these sequences as required by the standard (Compl. ¶72). | ¶72 | col. 4:43-47 |
| the ranging signal...exhibits a low peak-to-average power ratio in the time domain... | The complaint alleges the functionality covered by the claim is integral to LTE communications. Zadoff-Chu sequences used in LTE are known to have low peak-to-average power properties (Compl. ¶73). | ¶73 | col. 8:16-20 |
| the ranging subchannel comprises at least one block of subcarriers...and power levels of subcarriers at both ends of a block are set to zero. | The LTE random access channel (PRACH) occupies a specific block of subcarriers. The complaint alleges the standard-compliant implementation of this functionality meets this limitation (Compl. ¶72). | ¶72 | col. 4:8-12 |
Identified Points of Contention:
- Scope Questions: A central question may be whether the term "ranging signal" as defined in the patent, including its structural properties like "power levels...set to zero," is coextensive with the "random access preamble" transmitted according to the 3GPP LTE standard.
- Technical Questions: The analysis may focus on whether the specific implementation of the LTE random access procedure in the Accused Products meets every detail of the claim, such as the precise requirement for power levels at the "ends of a block" being "set to zero," or if the standard allows for implementations that differ from this limitation.
U.S. Patent No. 10,833,908 Infringement Allegations
| Claim Element (from Independent Claim 11) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| transmitting, to a base station, a first uplink signal within a frequency band... | The Accused Products are configured to transmit uplink data and control signals (e.g., on PUSCH or PUCCH) within the LTE frequency band (Compl. ¶46). | ¶46, ¶78 | col. 12:5-10 |
| transmitting, to the base station, an random access signal followed by a guard period... | The Accused Products are configured to transmit a random access preamble on the PRACH, which is a defined time-frequency resource that includes guard time to account for timing uncertainty. This is alleged to be the claimed signal and guard period (Compl. ¶79). | ¶79 | col. 4:1-5 |
| in only a portion of the frequency band... | The LTE PRACH is defined by the standard to occupy a narrow bandwidth (e.g., 6 resource blocks), which constitutes only a small portion of the total available system bandwidth (Compl. ¶78). | ¶78 | col. 12:11-13 |
| a time duration of a combination of the random access signal and the guard period is greater than a time duration of at least one of the plurality of OFDM symbols... | The complaint alleges that the implementation of the LTE random access procedure meets this timing requirement, as the resources allocated for the PRACH preamble and its associated guard times are longer than a single OFDM data symbol (Compl. ¶79). | ¶79 | col. 12:16-20 |
| receiving, from the base station, a response message. | After transmitting a preamble, the Accused Products are configured to monitor for and receive a Random Access Response (RAR) message from the base station, as required by the LTE standard (Compl. ¶46). | ¶46 | col. 9:1-4 |
Identified Points of Contention:
- Scope Questions: A key issue will likely be the construction of "random access signal." Defendant may argue that this term, in the context of the patent, implies a signal used for channel probing specifically, whereas the LTE preamble's primary function is to establish initial timing and access.
- Technical Questions: Does the timing structure of the 3GPP LTE PRACH, including its various formats and associated guard periods, always satisfy the specific requirement that the combined duration is "greater than a time duration of at least one of the plurality of OFDM symbols"? The factual evidence will need to confirm this mapping for all relevant operational modes of the Accused Products.
V. Key Claim Terms for Construction
The Term: "random access signal" (’366 Patent, cl. 1; ’908 Patent, cl. 11)
- Context and Importance: This term is central to the infringement allegations for both lead patents. The Plaintiff's case hinges on this term being construed to read on the random access preambles transmitted by the Accused Products as part of the 3GPP LTE standard's random access procedure. The definition will determine whether the foundational infringing act occurs.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specifications describe the signal in functional terms related to establishing communication and initiating network entry, a process for which the LTE preamble is used. The ’366 patent states the process involves a mobile station sending a signal "so that the base station can identify the mobile station and measure the power and time delay" (’366 Patent, col. 1:28-32), which aligns with the function of an LTE preamble.
- Evidence for a Narrower Interpretation: The specifications also repeatedly associate the signal with "ranging" (’366 Patent, col. 1:26) and "channel probing" (’908 Patent, Abstract). A defendant may argue these terms imply a more specific technical function of measuring distance or detailed channel characteristics, potentially distinguishing it from the primary function of an LTE preamble, which is to achieve initial uplink synchronization.
The Term: "in only a portion of the frequency band" (’908 Patent, cl. 11)
- Context and Importance: This term defines the spectral location of the accused signal. Plaintiff alleges that the LTE PRACH, which occupies a narrow bandwidth (e.g., 1.08 MHz), satisfies this limitation. Practitioners may focus on this term because its construction will require a factual comparison between the specific bandwidth of the PRACH in the Accused Products and the overall system bandwidth in which they operate.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not provide a specific numerical or percentage threshold for what constitutes a "portion." The specification describes overlaying a spread spectrum signal on a multi-carrier (OFDM) signal, where the spread spectrum signal may occupy a narrower band to serve a specific purpose like random access (’908 Patent, Abstract, Fig. 7). This supports an interpretation where any dedicated channel occupying less than the full system bandwidth could qualify.
- Evidence for a Narrower Interpretation: A defendant might argue that the term implies a functional, not merely mathematical, distinction. For example, if other claim limitations or specification language suggest the "portion" must be separate or non-interfering in a specific way that the standard LTE PRACH configuration does not satisfy, the term could be construed more narrowly.
VI. Other Allegations
Indirect Infringement
The complaint alleges induced infringement under 35 U.S.C. § 271(b), asserting that Tesla encourages and instructs its customers to use the Accused Products in an infringing manner through advertising, user manuals, technical materials, and product support related to the vehicles' 4G/LTE and 5G/NR connectivity features (Compl. ¶¶ 59-61).
Willful Infringement
The willfulness allegation is based on alleged pre-suit knowledge. The complaint states that a letter was sent to Tesla on November 29, 2021, identifying the patents-in-suit and their alleged coverage of 3GPP standards used by Tesla (Compl. ¶66). Plaintiff alleges that Tesla's failure to respond and continued infringement despite this notice constitutes willful and egregious conduct (Compl. ¶¶ 66-67).
VII. Analyst’s Conclusion: Key Questions for the Case
This dispute centers on the allegation that implementing established cellular communication standards necessarily infringes the asserted patents. The case will likely turn on the resolution of several key, open questions for the court:
- A primary issue will be one of claim scope versus standards: Does the specific language of the patent claims, when properly construed, map directly onto the mandatory requirements of the 3GPP LTE/5G-NR standards? The case may depend on whether a party can implement the standard in a way that avoids one or more specific limitations of the asserted claims.
- A second core issue will be one of claim construction: Can terms like "random access signal," which are rooted in the patents' specific descriptions, be construed broadly enough to cover the technically distinct structures, such as the "random access preamble" and "PRACH," as defined and implemented in the 3GPP standards?
- A third question will be evidentiary: Assuming the claims are found to read on the standard, what evidence will Plaintiff provide to demonstrate that the Accused Products, as sold and operated, actually practice the allegedly infringing portions of the standard in all accused modes of operation?