DCT
2:17-cv-03738
Invt SPE LLC v. Apple Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Invt SPE LLC (Delaware)
- Defendant: Apple, Inc. (California)
- Plaintiff’s Counsel: Robins Kaplan LLP
- Case Identification: 2:17-cv-03738, D.N.J., 05/25/2017
- Venue Allegations: Plaintiff alleges venue is proper in the District of New Jersey based on Defendant’s operation of numerous retail stores, employment of technical and sales personnel, and transaction of business within the district.
- Core Dispute: Plaintiff alleges that Defendant’s mobile phones and tablets infringe seven patents related to foundational technologies for data transmission and power management in CDMA, HSPA, and LTE mobile communication networks.
- Technical Context: The patents address methods for improving the efficiency, reliability, and power consumption of mobile devices operating on 3G and 4G cellular networks.
- Key Procedural History: The complaint alleges that Plaintiff’s predecessor-in-interest, Inventergy, first contacted Defendant on January 16, 2015, regarding a potential license to a portfolio including the asserted patents. This contact allegedly included notice of infringement and claim charts for several of the patents-in-suit. Plaintiff asserts that despite ongoing discussions, Defendant has refused to enter into a licensing agreement on offered FRAND terms. Plaintiff Invt SPE LLC acquired the patent portfolio on April 27, 2017.
Case Timeline
| Date | Event |
|---|---|
| 1997-07-19 | ’563 Patent Priority Date |
| 1998-04-17 | ’676 Patent Priority Date |
| 1998-11-06 | ’815 Patent Priority Date |
| 2000-08-02 | ’587 and ’590 Patent Priority Date |
| 2002-10-15 | ’563 Patent Issue Date |
| 2003-05-09 | ’711 Patent Priority Date |
| 2003-08-26 | ’676 Patent Issue Date |
| 2004-07-06 | ’590 Patent Issue Date |
| 2004-11-19 | ’439 Patent Priority Date |
| 2007-04-17 | ’587 Patent Issue Date |
| 2010-07-20 | ’815 Patent Issue Date |
| 2010-07-27 | ’711 Patent Issue Date |
| 2010-12-07 | ’439 Patent Issue Date |
| 2015-01-16 | Plaintiff’s predecessor allegedly provided notice of infringement for all asserted patents |
| 2015-03-06 | Plaintiff’s predecessor allegedly provided claim charts for the ’563 Patent |
| 2015-08-04 | Plaintiff’s predecessor allegedly provided additional claim charts for the ’590 and ’439 Patents |
| 2017-04-27 | Plaintiff acquired the asserted patent portfolio |
| 2017-05-25 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,466,563 - "CDMA Mobile Station and CDMA Transmission Method," issued October 15, 2002
The Invention Explained
- Problem Addressed: In conventional CDMA systems, a mobile device stops transmitting control signals (burst data) after a period of inactivity to conserve battery power. This forces the device to re-establish synchronization when communication resumes, causing delays and reducing transmission efficiency (’563 Patent, col. 1:53-63).
- The Patented Solution: The invention proposes a method where, instead of completely halting transmission during inactivity, the mobile device transmits burst data (containing only pilot and power control symbols) at a controlled, extended interval of "N slots." This method maintains synchronization with the base station for quick resumption of communication while still significantly reducing power consumption compared to continuous transmission (’563 Patent, Abstract; col. 2:3-7).
- Technical Importance: This approach balances the critical needs for power conservation in battery-operated mobile devices with the demand for responsive network connectivity (Compl. ¶50).
Key Claims at a Glance
- The complaint asserts at least independent Claim 12 (Compl. ¶52).
- Essential elements of Claim 12 include:
- A transmission frame generator for creating frames with user data, pilot symbols, and power control symbols.
- A burst frame generator for creating frames with only pilot and power control symbols (i.e., no user data).
- A transmission interval controller that controls the transmission of these burst frames to occur "cyclically once every N slots."
- A transmitter for sending both data frames and burst frames.
- The complaint reserves the right to assert additional claims (Compl. ¶53).
U.S. Patent No. 6,611,676 - "Radio Communication Apparatus and Transmission Rate Control Method," issued August 26, 2003
The Invention Explained
- Problem Addressed: When mobile communication quality degrades due to environmental factors like fading, a conventional response is for the base station to increase its transmission power. This can lead to excessive power consumption and create significant interference for other users on the network (’676 Patent, col. 1:46-56).
- The Patented Solution: Rather than solely relying on power adjustments, the invention controls the data transmission rate. The apparatus calculates an average transmission power and compares it to a predetermined allowable power threshold. Based on this comparison, it changes the transmission rate (e.g., lowers the rate to improve robustness when average power usage is high), thereby managing link quality without necessarily increasing interference (’676 Patent, col. 18:60-67, cl. 7).
- Technical Importance: This method provides a more sophisticated way to manage network resources by adapting the data rate, not just power, in response to changing channel conditions, which can improve overall system capacity and stability (Compl. ¶66).
Key Claims at a Glance
- The complaint asserts at least independent Claim 7 (Compl. ¶68).
- Essential elements of Claim 7 include:
- A transmission power controller to increase or decrease power based on received control information.
- Average transmission power calculation circuitry to calculate an average power value.
- Allowable transmission power holder circuitry to store a predetermined allowable power value.
- Comparison circuitry to compare the average value with the allowable value.
- Rate change circuitry to change the transmission rate based on the comparison result.
- The complaint reserves the right to assert additional claims (Compl. ¶69).
U.S. Patent No. 7,206,587 - "Communication Terminal Apparatus, Base Station Apparatus, and Radio Communication Method," issued April 17, 2007
- Technology Synopsis: The technology aims to prevent a drop in downlink throughput when a base station erroneously receives channel quality information from a mobile terminal. The solution involves transmitting crucial channel quality information with greater protection against errors in the propagation path (Compl. ¶81).
- Asserted Claims: At least independent Claim 4 is asserted (Compl. ¶83).
- Accused Features: The accused devices allegedly estimate a Channel Quality Estimate (CQI) and encode it using a method where the most significant bit receives better protection from channel errors than other bits (Compl. ¶85).
U.S. Patent No. 7,760,815 - "Apparatus and Method for Transmission/Reception," issued July 20, 2010
- Technology Synopsis: The invention seeks to improve transmission efficiency in systems like OFDM while maintaining quality for important information. This is achieved in a modulation system (e.g., 8 PSK) by placing more important information (e.g., control information) on the more robust bits of a multi-bit symbol (Compl. ¶94).
- Asserted Claims: At least independent Claim 10 is asserted (Compl. ¶96).
- Accused Features: The accused devices are alleged to generate a sequence of bits, including control and data information, that modulates a multi-bit symbol such that the first bits contain header control information and subsequent bits contain related data control bits (Compl. ¶98).
U.S. Patent No. 7,764,711 - "CDMA Transmission Apparatus and CDMA Transmission Method," issued July 27, 2010
- Technology Synopsis: The technology is directed to improving reception performance in a MIMO (Multi-Input/Multi-Output) CDMA system. The solution involves apportioning specific data to multiple antennas and transmitting it with different spreading codes to enhance reception while maintaining efficiency (Compl. ¶109).
- Asserted Claims: At least independent Claim 1 is asserted (Compl. ¶111).
- Accused Features: The accused devices allegedly use a multi-input, multi-output transmitter that apportions and transmits replicated data in parallel to a base station, for example when supporting LTE category 13 uplink (Compl. ¶113).
U.S. Patent No. 7,848,439 - "Communication Apparatus, Communication System, and Communication Method," issued December 7, 2010
- Technology Synopsis: The invention aims to increase spectrum utilization in subcarrier communication systems by reducing feedback overhead associated with adaptive modulation. The solution involves grouping subbands based on a fixed rule and selecting modulation and coding parameters for each group (Compl. ¶124).
- Asserted Claims: At least independent Claim 1 is asserted (Compl. ¶126).
- Accused Features: The accused devices allegedly perform adaptive modulation in an OFDM system by estimating channel quality from cell-specific reference signals and using that estimate to select a recommended modulation and coding scheme to be sent to a base station (Compl. ¶128).
U.S. Patent No. 6,760,590 - "Communication Terminal Apparatus, Base Station Apparatus, and Radio Communication Method," issued July 6, 2004
- Technology Synopsis: This invention, similar to the ’587 Patent, aims to prevent a drop in downlink throughput caused by erroneous reception of channel quality information. The solution involves transmitting the information with less susceptibility to errors, thereby making it more robust (Compl. ¶140).
- Asserted Claims: At least independent Claim 3 is asserted (Compl. ¶142).
- Accused Features: The accused devices allegedly measure downlink channel quality and, during the encoding process for transmission, assign the most significant bit of the channel quality information to a larger number of bits than the lower-order bits (Compl. ¶144).
III. The Accused Instrumentality
Product Identification
- The complaint accuses Defendant’s mobile phones, tablets, and other devices with HSPA, UMTS, EGPRS, LTE, and/or MIMO capabilities (Compl. ¶53, 69, 84, 97, 112, 127, 143). Specific examples cited include the iPhone 7, iPhone 7 Plus, and a list of HSPA, LTE, and other devices in an "Appendix A" which is not attached to the publicly filed complaint (Compl. ¶4a, 53).
Functionality and Market Context
- The complaint alleges that the accused products operate in compliance with mandatory portions of various 3GPP telecommunication standards, including HSPA, UMTS, EGPRS, and LTE (Compl. ¶51, 67, 82, 95, 110, 125, 141). This standards-compliance is the foundation of the infringement allegations. Plaintiff asserts that Defendant is one of the world's largest manufacturers of such devices (Compl. ¶21). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
’563 Patent Infringement Allegations
| Claim Element (from Independent Claim 12) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a transmission frame generator that generates frames by inserting pilot symbols and transmission power control symbols into transmission data | The accused devices generate and transmit frames for uplink transmission containing user data along with pilot and Transmit Power Control (TPC) symbols. | ¶54 | col. 3:1-10 |
| a burst frame generator that generates burst frames comprising pilot symbols and transmission power control symbols and no transmission data | When not transmitting user data, the accused devices, per the HSPA standard, use discontinuous uplink transmission to transmit frames containing only pilot and TPC symbols. | ¶51, ¶54 | col. 3:11-13 |
| a transmission interval controller that controls a transmission interval of said burst frames to cyclically once every N slots | The accused devices use discontinuous uplink transmission techniques which transmit the burst frames in a controllable burst pattern, as required by 3GPP standard TS 25.308. | ¶51, ¶54 | col. 3:65-4:2 |
| a transmitter that transmits said transmission data and said burst frames by radio | The accused devices transmit both the data-containing frames and the data-free burst frames over a cellular network. | ¶54 | col. 3:5-10 |
- Identified Points of Contention:
- Scope Questions: A primary question will be whether the HSPA standard's "controllable burst pattern" (Compl. ¶51) meets the claim limitation of "cyclically once every N slots." The analysis may focus on whether the standard mandates a regular, periodic interval as suggested by the claim language, or a more variable pattern.
- Technical Questions: The complaint alleges infringement based on compliance with the HSPA standard. A key question for the court will be whether the functionality mandated by the standard is coextensive with the functionality required by the claim elements.
’676 Patent Infringement Allegations
| Claim Element (from Independent Claim 7) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a transmission power controller that increases or decreases transmission power of said transmission circuitry... | The accused devices use Transmit Power Control (TPC) commands to control the transmit power of the user device as required by 3GPP standard TS 25.214. | ¶67, ¶70 | col. 7:25-32 |
| average transmission power calculation circuitry that calculates an average value of the transmission power | The accused devices allegedly perform calculations of the average transmission power needed for a certain transmission rate. | ¶70 | col. 15:1-8 |
| allowable transmission power holder circuitry that holds a predetermined allowable transmission power value | The accused devices allegedly use a maximum allowable transmission power constraint. | ¶70 | col. 15:1-8 |
| comparison circuitry that compares the average value with the allowable transmission power value | The accused devices are alleged to compare the calculated average transmission power needed with the maximum allowable transmission power. | ¶70 | col. 15:1-8 |
| rate change circuitry that changes a transmission rate according to the comparison result in said comparison circuitry | Based on power calculations, the accused devices select an E-TFC to change the uplink transmission rate, as specified in 3GPP standards. | ¶67, ¶70 | col. 7:25-32 |
- Identified Points of Contention:
- Scope Questions: The dispute may focus on whether the mechanisms described in the cited 3GPP standards (TS 25.214, 25.319, 25.321) embody the specific five-element structure of Claim 7. For example, does the standards-based use of SIR comparisons to select an E-TFC constitute the claimed act of comparing a calculated "average transmission power" with a "predetermined allowable transmission power"?
- Technical Questions: What evidence does the complaint provide that the accused devices perform a distinct calculation of "average transmission power" as an input for rate control, as opposed to other metrics like instantaneous signal-to-interference ratio (SIR) which is also mentioned in the complaint (Compl. ¶67)?
V. Key Claim Terms for Construction
’563 Patent, Claim 12
- The Term: "cyclically once every N slots"
- Context and Importance: This term defines the timing of the power-saving transmission mode. The infringement case for the ’563 Patent hinges on whether the "controllable burst pattern" allegedly used by the accused HSPA devices (Compl. ¶51) falls within the scope of this term. Practitioners may focus on this term because a narrow interpretation requiring a fixed, rigid periodicity could allow Defendant to design around the claim, while a broader interpretation covering any recurring, gapped transmission might support the Plaintiff's standards-based infringement theory.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent abstract describes N simply as "a natural number," suggesting flexibility (’563 Patent, Abstract). The overall objective is to maintain sync while reducing power, a goal that could be achieved by various forms of periodic, non-continuous transmission.
- Evidence for a Narrower Interpretation: Figure 3C of the patent illustrates a highly regular, repeating interval labeled "N SLOT," which may suggest that "cyclically" implies a fixed, predetermined period, rather than a dynamically "controllable" one.
’676 Patent, Claim 7
- The Term: "average transmission power calculation circuitry"
- Context and Importance: This element is a critical input to the claimed rate-control decision process. The viability of the infringement allegation depends on whether the accused devices actually calculate an "average transmission power" for this purpose. Practitioners may focus on this term because the complaint also references functionality based on signal-to-interference ratio (SIR) (Compl. ¶67), raising the question of whether an SIR-based system is equivalent to one based on an "average transmission power."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent's objective is broadly described as controlling transmission rate based on "reception quality information from the other end of communication" (’676 Patent, col. 2:1-3). This could support an argument that any metric derived from power levels over a period of time, even indirectly, functions as an "average."
- Evidence for a Narrower Interpretation: The detailed description associated with Figure 29 of the patent describes a specific calculation of "Pave: AVERAGE TRANSMISSION POWER" (’676 Patent, col. 15:1-8). A defendant could argue this term should be limited to this specific calculation, and that an SIR-based control mechanism operates differently and does not meet this limitation.
VI. Other Allegations
- Indirect Infringement: Plaintiff alleges both induced and contributory infringement for all asserted patents. The inducement claims are based on allegations that Defendant encourages infringement through its advertising, user manuals, technical specifications, and customer support, all of which allegedly instruct customers on using the infringing HSPA, LTE, and other functionalities of the accused devices (Compl. ¶57-58, 72-73, 100-101, 115-116, 131-132, 147-148).
- Willful Infringement: Plaintiff alleges that Defendant’s infringement has been willful and deliberate. This allegation is primarily based on pre-suit notice allegedly provided by Plaintiff’s predecessor starting on January 16, 2015, which included claim charts for the ’563, ’439, and ’590 patents. Plaintiff alleges that Defendant continued its infringing activities despite this knowledge and an objectively high likelihood of infringement (Compl. ¶56, 71, 86, 99, 114, 130, 146).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of standards equivalence: can Plaintiff demonstrate that compliance with the cited 3GPP standards (e.g., HSPA, LTE) necessarily requires practicing the specific methods and structures recited in the asserted patent claims, or can the standards be implemented in a non-infringing manner?
- The case will also turn on questions of definitional scope during claim construction. For example, can the term "cyclically once every N slots" in the ’563 patent be construed to cover the "controllable burst pattern" of the HSPA standard? Similarly, for the ’676 patent, does a rate adaptation system based on signal-to-interference ratio (SIR) perform the same function as the claimed system based on a comparison of "average transmission power" to an "allowable transmission power"?
- A key evidentiary question will be one of pre-suit knowledge and intent: given the alleged licensing negotiations and provision of claim charts dating back to 2015, the court will have to examine the extent of Defendant’s knowledge of the patents and the objective recklessness of its continued alleged infringement to determine willfulness.