DCT

5:23-cv-00569

Telefonaktiebolaget LM Ericsson v. Lenovo United States Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 5:23-cv-00569, E.D.N.C., 10/11/2023
  • Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of North Carolina because Defendants Lenovo USA and Motorola maintain offices and senior executives in the district, have committed acts of infringement there, and have previously argued in other litigation that this district is a proper venue.
  • Core Dispute: Plaintiff alleges that Defendant’s cellular-enabled phones, tablets, and computers that comply with the 5G standard infringe patents related to wireless communication technology, following over a decade of failed licensing negotiations.
  • Technical Context: The patents relate to fundamental technologies for privacy, resource management, and efficiency in modern cellular networks, which are essential for the operation of devices compliant with 5G standards.
  • Key Procedural History: The complaint details extensive pre-suit licensing negotiations beginning as early as 2008. Plaintiff alleges that despite numerous offers, meetings in North Carolina, and an offer to engage in binding arbitration, Defendants have delayed signing a license for Plaintiff's Standard Essential Patents (SEPs). The dispute also involves declarations regarding compliance with Fair, Reasonable, and Non-Discriminatory (FRAND) licensing obligations.

Case Timeline

Date Event
2008-01-01 Ericsson first contacted Lenovo regarding a license (approximate date based on "as early as 2008")
2010-12-03 Ericsson sent Lenovo a draft Global Patent License Agreement
2014-10-30 Lenovo acquired Motorola Mobility
2016-04-12 Priority Date for U.S. Patent No. 11,317,342
2017-03-03 Ericsson publicly announced its 5G/NR royalty rates
2017-06-27 Priority Date for U.S. Patent No. 11,515,893
2017-07-25 Priority Date for U.S. Patent No. 10,425,817
2017-10-26 Priority Date for U.S. Patent No. 10,306,669
2019-04-01 Motorola released its first 5G-upgradeable phone, the Moto Z3 (approximate date based on "April of 2019")
2019-05-28 U.S. Patent No. 10,306,669 Issued
2019-09-24 U.S. Patent No. 10,425,817 Issued
2022-04-05 Ericsson sent Lenovo patent lists, providing notice of infringement of the Asserted Patents
2022-04-26 U.S. Patent No. 11,317,342 Issued
2022-11-29 U.S. Patent No. 11,515,893 Issued
2023-10-11 Complaint Filing Date

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

U.S. Patent No. 10,425,817 - “Subscription Concealed Identifier” (’817 Patent)

Issued September 24, 2019

The Invention Explained

  • Problem Addressed: In wireless networks, a mobile device may need to transmit its unique, permanent identifier over the air to register with the network, which creates a privacy risk. This transmission can allow attackers to capture the identifier and track the user (Compl. ¶¶94-95).
  • The Patented Solution: The invention conceals a subscriber's permanent identifier (SUPI) by encrypting it into a Subscription Concealed Identifier (SUCI) before transmission. The SUCI contains both the encrypted SUPI and clear-text data, such as a home network identifier, which allows the network to route the SUCI to a server capable of decrypting it to retrieve the original SUPI. This process maintains the confidentiality of the permanent identifier during over-the-air communication (’817 Patent, col. 1:19-40; Compl. ¶95).
  • Technical Importance: This technology is a foundational component of user privacy in 5G networks, preventing unauthorized tracking of subscribers during essential network procedures like initial registration (Compl. ¶94).

Key Claims at a Glance

  • The complaint asserts at least Claims 10-16, with Claim 10 being an independent method claim (Compl. ¶96).
  • Essential elements of independent claim 10 include:
    • generating, by user equipment (UE), a subscription concealed identifier (SUCI) from a subscription permanent identifier (SUPI), where the SUPI is encrypted;
    • wherein the SUCI further comprises a home network identifier in clear-text;
    • transmitting, by the UE, the SUCI in a wireless communications network;
    • receiving, by an authentication server, the SUCI; and
    • decrypting, by a de-concealing server, the SUCI to obtain the SUPI.
  • The complaint reserves the right to assert dependent claims (Compl. ¶96).

U.S. Patent No. 10,306,669 - “Physical uplink control channel (PUCCH) resource allocation” (’669 Patent)

Issued May 28, 2019

The Invention Explained

  • Problem Addressed: Modern wireless systems like New Radio (NR) require devices to transmit various types of uplink control information (UCI), such as acknowledgements (HARQ-ACKs) and channel state information (CSI). Efficiently and flexibly allocating the specific radio resources for this Physical Uplink Control Channel (PUCCH) without excessive signaling overhead is a significant technical challenge (’669 Patent, col. 1:17-38).
  • The Patented Solution: The invention provides a method for a wireless device to determine which PUCCH resource to use. The device receives a semi-static configuration of two or more sets of uplink control channel resources. It then determines which specific resource to use from those sets based on factors like downlink control messages it receives, which allows for flexible and efficient allocation of uplink resources for transmitting control information like HARQ feedback (’669 Patent, col. 3:6-30; Compl. ¶108).
  • Technical Importance: This method provides flexibility in resource allocation, which is crucial for managing the complex signaling required to maintain reliable, high-performance connections in 5G networks (Compl. ¶¶108-109).

Key Claims at a Glance

  • The complaint asserts at least Claims 1, 6, 11, and 18, all of which are independent (Compl. ¶110).
  • Essential elements of independent claim 1 (a method in a wireless device) include:
    • receiving signaling that provides a semi-static configuration of two or more uplink control channel resource sets, each comprising two or more uplink control channel resources;
    • receiving a downlink control channel that schedules a downlink shared channel transmission;
    • determining an uplink control channel resource to use for transmitting uplink control information for the downlink transmission; and
    • transmitting the uplink control information using the determined resource.
  • The complaint reserves the right to assert dependent claims (Compl. ¶110).

Multi-Patent Capsule: U.S. Patent No. 11,317,342 - “Transmission and Reception of System Information in Parts” (’342 Patent)

Issued April 26, 2022

  • Technology Synopsis: The complaint alleges that traditional broadcasting of cell-specific system information is inefficient. The patent describes a method to improve efficiency by transmitting system information in two parts: a wireless device receives a first part and an explicit signal over a first channel, and then uses that signal to demodulate or descramble a second part of the system information received over a second channel (Compl. ¶¶122-123).
  • Asserted Claims: Claims 1 and 34 (Compl. ¶124).
  • Accused Features: The complaint accuses Lenovo’s 5G-compliant products, such as the Moto Edge+, of infringing by practicing the 5G standard (Compl. ¶¶124-125).

Multi-Patent Capsule: U.S. Patent No. 11,515,893 - “Shift Values of Quasi-Cyclic LDPC Codes” (’893 Patent)

Issued November 29, 2022

  • Technology Synopsis: The complaint explains that Low-Density Parity-Check (LDPC) codes, used for error correction, can have performance issues if not properly designed. The patent is directed to an apparatus and method for generating different, optimized "approximate cycle extrinsic message degree" (ACE) constraints for different code rates, which correspond to a parity-check matrix used to encode information bits (Compl. ¶136).
  • Asserted Claims: Claims 1, 4, 7, and 10 (Compl. ¶137).
  • Accused Features: The complaint accuses Lenovo’s 5G-compliant products, such as the Moto Edge+, of infringing by implementing the 5G standard's encoding and transmission schemes (Compl. ¶¶137-138).

III. The Accused Instrumentality

Product Identification

The accused products are Lenovo's cellular-enabled phones, tablets, and computers that are capable of operating on 5G networks (Compl. ¶12). The complaint identifies the Motorola "Moto Edge+" as a specific exemplary accused product (Compl. ¶97, ¶111).

Functionality and Market Context

The complaint alleges the accused products incorporate 5G-compliant hardware, such as the Snapdragon 8 Gen 2 Mobile Platform with an X70 5G Modem, which supports 5G modes of operation (Compl. ¶98, ¶112). Lenovo is identified as a major global manufacturer of these devices, having become the "#3 Smartphone Maker" after its acquisition of Motorola Mobility in 2014 (Compl. ¶47, ¶66). The complaint includes an advertisement for the Moto Edge+ that promotes its "Blazing 5G speed" (Compl. p. 24, ¶97).

IV. Analysis of Infringement Allegations

The complaint references claim chart exhibits that were not provided with the filing. Therefore, the infringement allegations are summarized below in prose based on the complaint's narrative.

’817 Patent Infringement Allegations

The complaint alleges that Lenovo's 5G products directly infringe the ’817 Patent because their operation under the 5G standard requires performing the claimed method of concealing a subscriber's permanent identity (Compl. ¶¶96-97). The functionality is allegedly enabled by the products' 5G modems, which encrypt the permanent identifier into a concealed identifier for transmission to protect user privacy, as required by the standard (Compl. ¶98). The complaint provides a screenshot from Qualcomm's product brief for the Snapdragon X70 5G Modem, which lists support for various 5G modes, as evidence of this capability (Compl. p. 26).

’669 Patent Infringement Allegations

The complaint alleges that Lenovo's 5G products directly infringe the ’669 Patent by practicing the 5G standard's methods for managing uplink communications (Compl. ¶110). Specifically, the products are alleged to determine and use resources on the Physical Uplink Control Channel (PUCCH) according to the claimed methods, such as receiving semi-static configurations of resource sets and then selecting a specific resource based on downlink control information (Compl. ¶¶108-109). The complaint includes a screenshot from Motorola's website advertising the Moto Edge+ with "superior 5G speeds," which it presents as evidence that Lenovo encourages use of the infringing 5G functionality (Compl. p. 31, ¶113).

Identified Points of Contention

  • Standard vs. Claim Scope: For all asserted patents, a central question will be whether the specific implementation of the 5G standard in the accused products meets every limitation of the asserted claims. For the ’817 Patent, this may involve whether the standard’s SUPI/SUCI architecture aligns with the claimed "subscription permanent identifier" and "subscription concealed identifier." For the ’669 Patent, this may turn on whether the 5G standard’s PUCCH procedures map onto the specific steps of receiving configured "resource sets" and "determining" a resource as claimed.
  • Technical Operation: An evidentiary question may arise regarding how the accused products actually operate. For instance, with respect to the ’669 Patent, a point of contention may be what specific downlink signaling the accused products use to determine an uplink control channel resource, and whether that process matches the one defined in the claims.

V. Key Claim Terms for Construction

Term: “subscription concealed identifier” and “subscription permanent identifier” (’817 Patent, Claim 10)

  • Context and Importance: The infringement analysis for the ’817 Patent will depend on whether the 5G standard's "Subscription Permanent Identifier" (SUPI) and "Subscription Concealed Identifier" (SUCI) fall within the scope of these claim terms. Practitioners may focus on whether the patent defines these terms with any structural or functional limitations beyond their plain names.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent abstract describes the invention broadly as "obtaining a subscription permanent identifier, SUPI" by receiving and decrypting a "SUCI," suggesting the terms may be coextensive with the standard's terminology (’817 Patent, Abstract).
    • Evidence for a Narrower Interpretation: The detailed description provides specific examples of the structure of the SUCI, including a clear-text part with a "home network identifier" and an "encryption scheme identifier" (’817 Patent, Abstract, Fig. 3). A defendant may argue these structural details limit the scope of the term to identifiers having this specific format.

Term: "uplink control channel resource sets" (’669 Patent, Claim 1)

  • Context and Importance: The infringement analysis for the ’669 Patent hinges on whether the accused devices receive a "semi-static configuration" of two or more "resource sets." The definition of a "set" and the nature of the "semi-static configuration" will be critical.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification discusses configuring "different sets of PUCCH resources for different CORESETs," suggesting a "set" is a collection of resources associated with a particular control region (’669 Patent, col. 18:29-33). This could support a broad reading covering various ways the 5G standard groups resources.
    • Evidence for a Narrower Interpretation: The claims require the configuration to be "semi-static." The specification links semi-static configuration to Radio Resource Control (RRC) signaling (’669 Patent, col. 15:42-44). A defendant might argue this limits the claim to configurations established only through RRC signaling, as opposed to other configuration methods.

VI. Other Allegations

Indirect Infringement

The complaint alleges induced infringement for all asserted patents. The basis for inducement is that Lenovo manufactures and sells the accused products while encouraging and instructing end-users to use their infringing 5G capabilities through advertisements, product manuals, and technical support (Compl. ¶¶100, 114, 128, 141). The complaint provides as an example a screenshot of an advertisement for the Moto Edge+, which encourages customers to use the device to achieve "superior 5G speeds" (Compl. p. 26, ¶99).

Willful Infringement

The complaint alleges willful infringement based on pre-suit knowledge. It states that on April 5, 2022, Ericsson sent Lenovo lists of 4G, 5G, and HEVC patents, which included the asserted patents or their pending applications, thereby putting Lenovo on notice of its infringement (Compl. ¶¶102, 116, 130, 143, 153).

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

  • A core issue will be one of contractual obligation and conduct: against the backdrop of failed FRAND negotiations, the court will be asked to determine whether Ericsson complied with its commitment to offer a license on FRAND terms and whether Lenovo breached its obligation to negotiate in good faith, which could impact the availability of an injunction and the ultimate damages award.
  • A key infringement question will be one of technical alignment: does the implementation of the 5G standard in Lenovo’s products, particularly regarding subscriber privacy ('817 patent) and uplink resource allocation ('669 patent), map precisely onto the specific limitations recited in the asserted claims, or are there material technical differences that place the products outside the claims' scope?
  • A central question for damages will be willfulness and notice: did Lenovo's knowledge of the patents, allegedly established by Ericsson's notice letter on April 5, 2022, render its subsequent infringement willful, potentially justifying an award of enhanced damages?