Mesa Digital LLC v. Janam Tech LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Parties: Mesa Digital, LLC (Plaintiff, New Mexico) v. Janam Technologies LLC (Defendant, Delaware)
  • Plaintiff’s Counsel: David J. Hoffman
• Case Identification: 1:25-cv-05394, E.D.N.Y., 09/25/2025
• Venue Allegations: Plaintiff alleges venue is proper because Defendant has a regular and established place of business in the Eastern District of New York and has committed the alleged acts of infringement within the district.
• Core Dispute: Plaintiff alleges that Defendant’s electronic wireless handheld media devices infringe a patent related to handheld devices capable of communicating over multiple wireless standards.
• Technical Context: The technology at issue concerns the integration of multiple wireless communication protocols, such as cellular, Wi-Fi, and Bluetooth, into a single handheld electronic device.
• Key Procedural History: The complaint states that Plaintiff is a non-practicing entity that has never sold a product. It also discloses that Plaintiff and its predecessors have entered into prior settlement licenses and argues that these agreements did not trigger patent marking requirements under 35 U.S.C. § 287, a point that may become a focus of disputes over pre-suit damages.

Case Timeline

Date	Event
2000-06-27	’537 Patent Earliest Priority Date
2015-05-12	’537 Patent Issued
2025-09-25	Complaint Filed

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

U.S. Patent No. 9,031,537 - Electronic wireless hand held multimedia device

The Invention Explained

• Problem Addressed: The patent’s background section, describing the state of the art as of its June 2000 priority date, notes that Personal Digital Assistants (PDAs) were not available that could selectively link to more than one type of wireless connection for accessing remote multimedia data from sources like the Internet (’537 Patent, col. 2:50-58).
• The Patented Solution: The invention is a handheld multimedia device that incorporates a microprocessor and "more than one wireless transceiver modules" to enable communication over a variety of standards, including cellular, 802.11 (WLAN), and short-range protocols like Bluetooth and Infrared (’537 Patent, Abstract; col. 3:39-49). This multi-modal capability is designed to allow the device to retrieve, process, and display multimedia data from remote servers regardless of the specific wireless network available (’537 Patent, col. 4:28-32).
• Technical Importance: The patented concept addresses the need for a single, portable device that can maintain connectivity across different wireless environments, a foundational principle for modern smartphones and other mobile computing devices (’537 Patent, col. 3:1-5).

Key Claims at a Glance

• The complaint asserts infringement of "one or more of claims 1-37" (’537 Patent, Compl. ¶9). The patent contains seven independent claims (1, 8, 15, 21, 27, 32, and 34).
• Independent Claim 1 recites the core elements of the invention:
  • An electronic wireless hand held multimedia device, comprising:
  • at least one of a wireless unit and a tuner unit supporting bi-directional data communications of data including video and text... over cellular telecommunications networks, over wireless local area networks and over a direct wireless connection with electronic devices located within short range using Bluetooth communications after accepting a passcode from a user of the electronic wireless hand held multimedia device during the communications;
  • a touch sensitive display screen configured to display the data including video and text received by the electronic wireless hand held multimedia device by selecting a particular data represented by a soft button on the touch sensitive display screen; and
  • a microprocessor configured to facilitate operation of and communications by the electronic wireless hand held multimedia device.

III. The Accused Instrumentality

Product Identification

The complaint accuses "electronic wireless hand held media devices" manufactured, sold, or imported by the Defendant (Compl. ¶9). No specific product models are identified.

Functionality and Market Context

The complaint alleges that the accused products contain "a microprocessor and more than one wireless transceiver modules enabling wireless communications over a variety of standards, including Cellular (e.g., GSM, CDMA, GPRS, 3G), 802.11 (e.g., WLAN), and short range (i.g. Bluetooth, infrared, RFID), for the retrieval, processing and delivery of multimedia data to/from remote data resources" (Compl. ¶9). The complaint does not provide further technical details about the operation of the accused devices or their market positioning. No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint states that support for its infringement allegations is found in an "exemplary table included as Exhibit B" (Compl. ¶10). However, this exhibit was not attached to the publicly filed complaint. The narrative infringement theory alleges that Defendant's devices practice the claims of the ’537 Patent because they are handheld devices that include a microprocessor and multiple wireless transceivers (e.g., Cellular, WLAN, Bluetooth) for communicating with remote data sources like the Internet (Compl. ¶9). This description mirrors the core elements of the asserted patent claims. Without the referenced claim chart, a detailed element-by-element analysis of the allegations is not possible.

V. Key Claim Terms for Construction

• The Term: "a wireless unit... supporting bi-directional data communications... over cellular telecommunications networks, over wireless local area networks and over a direct wireless connection with electronic devices located within short range using Bluetooth" (from Claim 1).

• Context and Importance: This term is central to the invention's contribution of multi-modal wireless capability. Practitioners may focus on whether this limitation requires distinct hardware modules for each communication standard or if it can be satisfied by a single, integrated chipset that performs all functions. The patent was filed in an era when such functions were often handled by separate components, whereas modern devices typically use highly integrated circuits.

  • Intrinsic Evidence for a Broader Interpretation: The specification describes the functionality of supporting various standards and refers generally to "more than one wireless transceiver modules," which could be interpreted to cover any architecture that provides the distinct communication capabilities, regardless of physical integration ('537 Patent, col. 3:39-42).
  • Intrinsic Evidence for a Narrower Interpretation: Figure 1(c) of the patent depicts "Wireless Transceiver Modules" as a block containing separate sub-components for a "1st Transceiver," "2nd Transceiver," and so on ('537 Patent, Fig. 1(c)). This could support an interpretation requiring physically or architecturally distinct modules.

• The Term: "after accepting a passcode from a user... during the communications" (from Claim 1).

• Context and Importance: This limitation introduces a specific user authentication step tied to the communication process. The dispute may turn on what type of user action satisfies this element and when it must occur.

  • Intrinsic Evidence for a Broader Interpretation: The patent does not define "passcode" or specify the context for its acceptance beyond being "during the communications." This could be argued to encompass a general device unlock PIN or password that enables subsequent wireless connections.
  • Intrinsic Evidence for a Narrower Interpretation: The placement of the phrase within the description of Bluetooth communications could support an argument that the "passcode" must be specifically related to the Bluetooth pairing or connection process itself, rather than a general device unlock.

VI. Other Allegations

• Indirect Infringement: The complaint does not plead indirect infringement. Plaintiff explicitly "reserves the right to amend to add claims for indirect infringement, including inducement and contributory... to the extent fact discovery shows Defendant's pre-expiration knowledge of the patent" (Compl. ¶11, fn. 2).
• Willful Infringement: The complaint does not plead willful infringement, but similarly reserves the right to amend its pleading to add such a claim pending discovery (Compl. ¶11, fn. 2).

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

1. A central issue will be one of technological translation: can the ’537 Patent’s disclosure, rooted in the year 2000 hardware paradigm of discrete components, be construed to cover the modern, highly integrated multi-standard wireless chipsets allegedly used in the accused devices?
2. A key evidentiary question will concern factual proof: what evidence will be presented to demonstrate that the accused products perform the specific claim step of "accepting a passcode from a user" in the manner required by the asserted claims, a factual predicate not detailed in the complaint?
3. A significant procedural battle may focus on pre-suit damages: will the Defendant succeed in arguing that Plaintiff's prior settlement licenses created a patent marking obligation under 35 U.S.C. § 287, and if so, will that finding limit Plaintiff's potential monetary recovery to the period after the complaint was filed?