DCT

2:17-cv-03740

Invt SPE LLC v. H

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:17-cv-03740, D.N.J., 01/04/2019
  • Venue Allegations: Plaintiff alleges venue is proper in the District of New Jersey because Defendant HTC maintains a regular and established place of business in Bedminster, New Jersey, where it has operated a sales office since at least 2012 and employs personnel involved in the testing, analysis, and sale of the accused products.
  • Core Dispute: Plaintiff alleges that Defendant’s mobile devices, including phones and tablets that comply with 3G and 4G cellular standards, infringe eight U.S. patents related to wireless telecommunication technologies.
  • Technical Context: The patents-in-suit relate to foundational technologies for managing power, data rates, and transmission reliability in modern mobile communication standards such as HSPA and LTE.
  • Key Procedural History: The complaint alleges that the patents, which originated with Panasonic, were acquired by Plaintiff on April 27, 2017. Plaintiff alleges that Defendant had pre-suit knowledge of the patents and infringement allegations as early as January 20, 2015, through licensing discussions initiated by Plaintiff's predecessor-in-interest, Inventergy, Inc. These discussions allegedly included the provision of claim charts for several of the asserted patents.

Case Timeline

Date Event
1997-07-19 Earliest Priority Date for ’563 Patent
1998-04-17 Earliest Priority Date for ’676 Patent
1998-11-06 Earliest Priority Date for ’815 Patent
2000-08-02 Earliest Priority Date for ’590 and ’587 Patents
2001-08-22 Earliest Priority Date for ’949 Patent
2002-10-15 ’563 Patent Issued
2003-05-09 Earliest Priority Date for ’711 Patent
2003-08-26 ’676 Patent Issued
2004-07-06 ’590 Patent Issued
2004-11-19 Earliest Priority Date for ’439 Patent
2007-04-17 ’587 Patent Issued
2008-03-04 ’949 Patent Issued
2010-07-20 ’815 Patent Issued
2010-07-27 ’711 Patent Issued
2010-12-07 ’439 Patent Issued
2012-01-01 Defendant allegedly begins operating NJ sales office (approx.)
2014-03-04 Alleged notice of infringement for ’711 Patent
2015-01-20 Alleged first notice of infringement for asserted patents
2015-07-14 Alleged provision of additional claim charts to Defendant
2015-11-12 Alleged meeting between Plaintiff's predecessor and Defendant
2017-04-27 Plaintiff INVT SPE LLC acquired the asserted patents
2019-01-04 First Amended Complaint Filed

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: The patent describes a problem in conventional CDMA mobile devices where, to conserve battery power, transmission is halted completely when there is no data to send. This requires the device to re-establish synchronization with the base station when communication resumes, a process that consumes time and reduces overall transmission efficiency (Compl. ¶51; ’563 Patent, col. 1:53-64).
  • The Patented Solution: The invention proposes a method to maintain synchronization while still saving power. When data transmission ceases, instead of stopping entirely, the mobile device transmits "burst data" containing only essential synchronization signals (pilot and power control symbols) at a controlled, extended interval (e.g., every N slots instead of every slot). This approach consumes less power than continuous transmission but keeps the device synchronized for immediate data transmission when needed (Compl. ¶51; ’563 Patent, Abstract; col. 2:4-7).
  • Technical Importance: This technique provides a compromise between the competing demands of power conservation and network readiness, which is a critical design consideration for battery-operated wireless devices in CDMA networks (Compl. ¶51).

Key Claims at a Glance

  • The complaint asserts infringement of at least Claim 12 (Compl. ¶53, ¶55).
  • Independent Claim 12 requires:
    • A "transmission frame generator" for creating frames with data, pilot symbols, and transmission power control (TPC) symbols.
    • A "burst frame generator" for creating frames with only pilot and TPC symbols and no data.
    • A "transmission interval controller" that controls the transmission of these data-less burst frames to occur "cyclically once every N slots."
    • A "transmitter" for sending both types of frames by radio.
  • The complaint alleges infringement of "one or more claims" of the patent (Compl. ¶54).

U.S. Patent No. 6,611,676 - "Radio Communication Apparatus and Transmission Rate Control Method," issued August 26, 2003

The Invention Explained

  • Problem Addressed: The patent addresses the issue where a mobile device in a poor signal environment (e.g., experiencing fading) may instruct the base station to significantly increase its transmission power to maintain a target signal quality. This power increase can cause substantial interference for other mobile devices in the same cell (Compl. ¶67; ’676 Patent, col. 1:45-56).
  • The Patented Solution: The invention describes a method for dynamically controlling the transmission rate based on transmission power. The apparatus calculates an average transmission power and compares it to a predetermined allowable power limit. If the average power exceeds the limit, the apparatus changes (e.g., reduces) the transmission rate. This method allows the system to adapt to poor channel conditions by lowering the data rate instead of continually increasing power, thereby managing interference (Compl. ¶67; ’676 Patent, col. 15:15-26).
  • Technical Importance: This form of adaptive rate control is a fundamental technique used in modern wireless standards to manage network resources, balance user performance, and maximize overall system capacity (Compl. ¶67).

Key Claims at a Glance

  • The complaint asserts infringement of at least Claim 7 (Compl. ¶69, ¶71).
  • Independent Claim 7 requires:
    • A "transmission power controller" that adjusts transmission power based on received control information.
    • An "average transmission power calculation circuitry" to calculate an average power value.
    • An "allowable transmission power holder circuitry" that stores a predetermined power limit.
    • A "comparison circuitry" that compares the average power to the allowable power limit.
    • A "rate change circuitry" that changes the transmission rate based on the comparison.
  • The complaint alleges infringement of "one or more claims" of the patent (Compl. ¶70).

U.S. Patent No. 7,206,587 - “Communication Terminal Apparatus, Base Station Apparatus, and Radio Communication Method,” issued April 17, 2007.

  • Technology Synopsis: The patent describes a method to prevent a decrease in downlink data throughput by making information about channel quality more robust against transmission errors. This is achieved by encoding the channel quality information (CQI) in a way that gives more important bits of the CQI greater protection from errors than less important bits (Compl. ¶82).
  • Asserted Claims: At least Claim 4 (Compl. ¶84).
  • Accused Features: The accused devices are alleged to estimate a Channel Quality Estimate (CQI) value and encode it using a method where the most significant bit is better protected from channel errors than other bits, in compliance with UMTS and/or HSPA standards (Compl. ¶86).

U.S. Patent No. 7,760,815 - “Apparatus and Method for Transmission/Reception,” issued July 20, 2010.

  • Technology Synopsis: The technology aims to improve transmission efficiency in an OFDM system that uses modulation schemes like 8PSK (where one symbol represents three or more bits). The invention places more important information (e.g., control information) onto the more reliable bit positions within the symbol (e.g., the 1st or 2nd bit), while less critical information is placed on less reliable bit positions (Compl. ¶95).
  • Asserted Claims: At least Claim 10 (Compl. ¶97).
  • Accused Features: The accused devices are alleged to generate bit sequences where header control information is modulated onto the first bits of a symbol and related data control bits are modulated onto the second bit, as required by the EGPRS standard (Compl. ¶99).

U.S. Patent No. 7,764,711 - “CDMA Transmission Apparatus and CDMA Transmission Method,” issued July 27, 2010.

  • Technology Synopsis: The invention is directed to improving reception performance in a Multi-Input/Multi-Output (MIMO) CDMA system. It achieves this by apportioning data to a plurality of transmission antennas and spreading the data with different spreading codes assigned to each antenna before transmission (Compl. ¶110).
  • Asserted Claims: At least Claim 1 (Compl. ¶112).
  • Accused Features: The accused devices are alleged to utilize a MIMO transmitter that apportions and transmits replicated data in parallel to a base station, in compliance with the LTE Advanced standard (Compl. ¶114).

U.S. Patent No. 7,848,439 - “Communication Apparatus, Communication System, and Communication Method,” issued December 7, 2010.

  • Technology Synopsis: The patent describes a method to increase spectrum utilization in subcarrier communication systems (like OFDM) by grouping subbands together. It then selects modulation and coding parameters for each subband group and performs joint coding across the group, which is intended to reduce feedback overhead and simplify adaptation (Compl. ¶125).
  • Asserted Claims: At least Claim 1 (Compl. ¶127).
  • Accused Features: The accused devices are alleged to perform adaptive modulation by measuring cell-specific reference signals, using that measurement to select a recommended modulation and coding scheme from a pre-stored set, and transmitting that information to a base station, as required by the LTE standard (Compl. ¶129).

U.S. Patent No. 6,760,590 - “Communication Terminal Apparatus, Base Station Apparatus, and Radio Communication Method,” issued July 6, 2004.

  • Technology Synopsis: The patent discloses a method to prevent a drop in downlink throughput by transmitting channel quality information in a way that is less susceptible to errors. This is accomplished by assigning a larger number of bits during the encoding process to the more significant digits of the channel quality information than to the less significant digits (Compl. ¶141, ¶145).
  • Asserted Claims: At least Claim 3 (Compl. ¶143).
  • Accused Features: The accused devices are alleged to measure downlink channel quality and encode the resulting Channel Quality Information (CQI), wherein the upper digit (most significant bit) is assigned to a larger number of bits during encoding than the lower digits, in compliance with the LTE standard (Compl. ¶145).

U.S. Patent No. 7,339,949 - “ARQ Transmission and Reception Methods and Apparatus,” issued March 4, 2008.

  • Technology Synopsis: The patent relates to a method for scheduling data reception and the corresponding transmission of acknowledgment (ACK/NAK) messages in a Time Division Duplex (TDD) system. The time slots for sending ACK/NAK messages are set based on the allocation of physical resources, which is designed to add flexibility and minimize signaling overhead in the HARQ error-correction process (Compl. ¶157, ¶159).
  • Asserted Claims: At least Claim 16 (Compl. ¶161).
  • Accused Features: The accused devices are alleged to receive encoded data packets and subsequently transmit an acknowledgment message in a scheduled time slot that is based on the allocation of physical resources, in compliance with LTE standards (Compl. ¶163).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are Defendant HTC’s mobile phones, phablets, tablets, modems, and other devices capable of operating on EDGE/3G/LTE networks (Compl. ¶1, ¶4). The complaint specifically identifies the HTC 10 mobile phone as an exemplary infringing device (Compl. ¶54, ¶70).

Functionality and Market Context

  • The complaint alleges that the accused products implement mandatory portions of various 3GPP technical specifications, including HSPA (TS 25.308), WCDMA/HSUPA (TS 25.214, 25.319, 25.321), and LTE (TS 36.211, 36.213), among others (Compl. ¶52, ¶68, ¶160). The relevant functionality is the devices’ alleged adherence to these standards for managing uplink control channel transmissions, adapting uplink data rates based on power constraints, and reporting channel quality information. The complaint asserts that HTC is one of the world's largest manufacturers of such devices (Compl. ¶24). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

U.S. Patent No. 6,466,563 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 Accused devices generate and transmit frames containing data along with pilot and TPC symbols during active HSPA data transmission. ¶55 col. 3:1-4
a burst frame generator that generates burst frames comprising pilot symbols and transmission power control symbols and no transmission data Accused devices use discontinuous uplink transmission to generate and transmit frames containing only pilot and TPC symbols when no user data is being sent on the E-DCH or HS-DPCCH, as required by the HSPA standard (TS 25.308). ¶52, ¶55 col. 3:11-13
a transmission interval controller that controls a transmission interval of said burst frames to cyclically once every N slots The HSPA standard requires transmitting the uplink DPCCH in a "controllable burst pattern" when not transmitting data, which allegedly corresponds to the claimed N-slot interval. ¶52 col. 4:1-3
a transmitter that transmits said transmission data and said burst frames by radio Accused devices are wireless mobile devices that transmit radio frequency signals to a base station. ¶54 col. 3:5-10
  • Identified Points of Contention:
    • Scope Questions: A potential point of contention may be whether the "controllable burst pattern" described in the 3GPP standard (Compl. ¶52) meets the claim limitation "cyclically once every N slots." The defense could argue that the standard allows for patterns that are not strictly "cyclical" as required by the claim.
    • Technical Questions: The complaint's theory relies on the accused products' compliance with the HSPA standard. A factual question will be what evidence demonstrates that the accused devices practice this specific discontinuous transmission functionality in a manner that maps to the claim elements.

U.S. Patent No. 6,611,676 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...according to transmission power control information received Accused devices use Transmit Power Control (TPC) commands to control their transmit power based on feedback from the network, as required by the 3GPP standard TS 25.214. ¶68 col. 1:21-34
average transmission power calculation circuitry that calculates an average value of the transmission power Accused devices determine the state of each Enhanced Transport Format Combination (E-TFC) based on its "required transmit power," which allegedly involves a calculation of average transmission power. ¶68, ¶71 col. 15:15-17
allowable transmission power holder circuitry that holds a predetermined allowable transmission power value Accused devices are alleged to use the "maximum remaining power allowed" as a predetermined limit for transmission power. ¶68, ¶71 col. 15:18-19
comparison circuitry that compares the average value with the allowable transmission power value Accused devices compare the "required transmit power" for an E-TFC against the "maximum remaining power allowed," as required by 3GPP standard TS 25.321. ¶68, ¶71 col. 15:20-22
rate change circuitry that changes a transmission rate according to the comparison result Accused devices select an E-TFC to change the uplink transmission rate based on the outcome of the power comparison, as required by 3GPP standard TS 25.319. ¶68, ¶71 col. 15:23-26
  • Identified Points of Contention:
    • Scope Questions: The primary dispute may center on whether the functionality described in the standards maps to the claim language. For instance, a question is whether comparing a "required transmit power" for a specific data format against a "maximum remaining power allowed" (Compl. ¶68) is equivalent to the claimed steps of calculating an "average transmission power" and comparing it to a single "predetermined allowable transmission power value."
    • Technical Questions: The complaint does not detail how the accused products perform the alleged calculation of "average transmission power." The case may require evidence on the specific algorithms implemented in the accused devices and how they align with the patent's disclosure.

V. Key Claim Terms for Construction

For U.S. Patent No. 6,466,563

  • The Term: "cyclically once every N slots" (from Claim 12)
  • Context and Importance: This term is central to the infringement allegation, as it must be mapped to the "controllable burst pattern" mandated by the HSPA standard (Compl. ¶52). The definition of "cyclically" will be critical; a narrow definition requiring strict periodicity might allow Defendant to argue that the patterns permitted by the standard are not infringing.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent's detailed description states that a "transmission interval control circuit 308 controls the transmission interval of burst data to N times one slot" ('563 Patent, col. 4:1-3) without using the word "cyclically," which may suggest the term in the claim should not be read with undue strictness.
    • Evidence for a Narrower Interpretation: The specification also explicitly notes that "the transmission interval of burst data may be non-cyclic" ('563 Patent, col. 4:26-27). This express distinction suggests that "cyclically" was intended to mean a regular, periodic interval, in contrast to a non-periodic one.

For U.S. Patent No. 6,611,676

  • The Term: "average transmission power" (from Claim 7)
  • Context and Importance: Plaintiff's infringement theory equates the standard's concept of a "required transmit power" for a given data format with the claimed "average transmission power" (Compl. ¶68, ¶71). Practitioners may focus on this term because the defendant could argue that a forward-looking power requirement for a potential transmission is technically distinct from a backward-looking "average" of actual power used over time.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent does not define a specific mathematical formula for "average," leaving the term open to a more general meaning related to a representative power level over a period of operation. The overall context is managing power, which often involves averaging or smoothing principles.
    • Evidence for a Narrower Interpretation: The patent's abstract describes switching the transmission rate "based on reception quality information." The description of the prior art discusses measuring Frame Error Rate (FER) "in every several frames" to adjust a target SIR ('676 Patent, col. 1:36-40), which could imply that "average" refers to a value calculated over a past time window, not a power level required for a future transmission.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges both induced and contributory infringement for all asserted patents. Inducement allegations are based on Defendant’s advertising of standards-compliant features (e.g., "HSPA," "4G LTE"), publishing technical specifications, and creating user manuals that allegedly encourage customers to use the accused products in an infringing manner (e.g., Compl. ¶58-59, ¶73-74). Contributory infringement is alleged on the basis that Defendant’s components, such as the "Snapdragon 820" chipset, are a material part of the inventions, are not staple articles of commerce, and are specifically made to operate in compliance with the relevant infringing standards (e.g., Compl. ¶60, ¶75).
  • Willful Infringement: Willfulness is alleged for all asserted patents based on Defendant’s alleged pre-suit knowledge. The complaint alleges that Defendant was on notice of its infringement of most asserted patents since at least January 20, 2015, as a result of licensing communications that included the provision of claim charts (e.g., Compl. ¶34, ¶40-46, ¶57). For the ’711 patent, knowledge is alleged since at least March 4, 2014 (Compl. ¶115).

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

  • A central issue will be one of standards mapping: does the functionality required by the 3GPP technical specifications, upon which the complaint heavily relies, align with the specific limitations recited in the patent claims? The case will likely require a detailed, element-by-element comparison of how the standards operate versus what the claims specifically require.
  • A key legal question will be one of definitional scope: can claim terms rooted in the patents’ disclosures, such as "cyclically once every N slots" (’563 Patent) or "average transmission power" (’676 Patent), be construed broadly enough to encompass the related but potentially distinct technical operations described in the cellular standards? The outcome of claim construction will be critical.
  • Given the allegations of pre-suit notice and provision of claim charts, a key question for damages will be one of objective recklessness: does the evidence of Defendant’s alleged continued infringing conduct after receiving specific notice from Plaintiff's predecessor support a finding of willful infringement, which could lead to enhanced damages?