Harmony Licensing LLC v. Corning Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Harmony Licensing LLC (Texas)
  • Defendant: Corning Incorporated (New York)
  • Plaintiff’s Counsel: SAND, SEBOLT & WERNOW CO., LPA
• Case Identification: 6:22-cv-06404, W.D.N.Y., 09/22/2022
• Venue Allegations: Venue is alleged to be proper because Defendant resides in the judicial district, being a corporation organized under the laws of New York.
• Core Dispute: Plaintiff alleges that Defendant’s methods for wireless data reception, as practiced by products including the "Corning SCRN-310," infringe a patent related to Multiple-Input Multiple-Output (MIMO) spread spectrum communication systems.
• Technical Context: The lawsuit concerns MIMO technology, a foundational technique in modern wireless communications (e.g., HSPA+, 4G/LTE) that uses multiple antennas at both the transmitter and receiver to improve data throughput and link reliability.
• Key Procedural History: The patent-in-suit is a reissue patent, which indicates it was surrendered to the USPTO and re-issued, potentially with amended claims, to correct a perceived error in the original patent. The patent family also has a history of continuation applications, suggesting a complex prosecution background that may be relevant to claim construction.

Case Timeline

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

U.S. Reissue Patent No. RE42,219 - "MULTIPLE-INPUT MULTIPLE-OUTPUT (MIMO) SPREAD SPECTRUM SYSTEM AND METHOD"

• Issued: March 15, 2011.

The Invention Explained

• Problem Addressed: The patent seeks to solve problems in wireless communication caused by "shadowing" (signal blockage by obstacles like buildings) and "multipath" (where a signal arrives at the receiver via multiple paths, causing fading). (’219 Patent, col. 1:30-49).
• The Patented Solution: The invention describes a MIMO system that transmits data split into multiple streams, each encoded with a unique "chip-sequence," from multiple antennas. A receiver with multiple antennas captures these signals. The core of the patented solution is a receiver architecture that uses "RAKE and space-diversity combiners" to process and combine the various signal versions received across different antennas and from different multipath arrivals, thereby reconstructing the original data more robustly. (’219 Patent, Abstract; col. 2:58-66).
• Technical Importance: Combining spatial diversity (from multiple antennas) with multipath diversity (via RAKE receivers) was a key innovation for increasing the capacity and reliability of wireless systems in challenging radio environments. (’219 Patent, col. 2:60-65).

Key Claims at a Glance

• The complaint asserts independent Claim 1. (Compl. ¶13, ¶14).
• The essential elements of Claim 1 are:
  • A MIMO method for receiving data where the data is demultiplexed into subchannels, processed with different chip-sequence signals, and radiated from multiple antennas as spread-spectrum signals.
  • These signals pass through a multipath channel, generating at least a first and a second spread-spectrum signal.
  • The method comprises the steps of:
    • receiving the first and second spread-spectrum signals with a plurality of receiver antennas.
    • detecting, at each receiver antenna, the first signal as a "first plurality of detected spread-spectrum signals."
    • detecting, at each receiver antenna, the second signal as a "second plurality of detected spread-spectrum signals."
    • combining the "first plurality" of detected signals from each receiver antenna to generate a "first combined signal."
    • combining the "second plurality" of detected signals from each receiver antenna to generate a "second combined signal."
• The complaint alleges infringement of "at least one claim," suggesting the potential assertion of other claims later in the litigation. (Compl. ¶14).

III. The Accused Instrumentality

Product Identification

The complaint names the "Corning SCRN-310" as the Accused Product and notes that its investigation is on-going for other potentially infringing products. (Compl. ¶15 & fn. 1).

Functionality and Market Context

The complaint alleges the Accused Product practices a MIMO method for receiving data, such as QAM data symbols, that has been demultiplexed into multiple data streams. (Compl. ¶15). It is alleged to have HSPA+ capabilities and to use multiple spreading codes. (Compl. ¶18, ¶19). The complaint states that the accused method is practiced "at least in internal testing and usages," which may indicate that Plaintiff is not alleging, or does not have evidence of, commercial sales to third parties. (Compl. ¶15).

IV. Analysis of Infringement Allegations

The complaint references an "exemplary claim chart" in Exhibit B but does not attach the exhibit. (Compl. ¶16). The infringement theory is therefore drawn from the narrative allegations in the complaint body.

No probative visual evidence provided in complaint.

The complaint alleges that the Accused Product performs the method of Claim 1 by:

• Employing a MIMO antenna system to receive data that has been demultiplexed into multiple streams and processed with multiple spreading codes. (Compl. ¶15, ¶18-19).
• Receiving first and second spread-spectrum signals with a "multiple antenna system." (Compl. ¶21).
• Detecting the presence of and recovering the first spread-spectrum signal at each antenna port, and separately detecting and recovering the second spread-spectrum signal at each antenna port. (Compl. ¶22-25).
• Combining the detected signals by forming "a single aggregated version of the received signal from the multiple versions of the transmitted time and space diverse signals received at the multiple receiver antennas." (Compl. ¶27, ¶29).

Identified Points of Contention

• Technical Question: Claim 1 requires two distinct combining steps that result in two distinct outputs: a "first combined signal" and a "second combined signal." The complaint alleges the accused product "forms a single aggregated version of the received signal" (Compl. ¶27). This raises a critical question: does a process that creates a single aggregated output meet the claim limitation of generating two separate combined signals?
• Evidentiary Question: The complaint's allegation of infringement "at least in internal testing and usages" (Compl. ¶15), coupled with infringement allegations that largely track the claim language, raises the question of what specific evidence Plaintiff possesses to show that the Corning SCRN-310 actually performs each claimed step.

V. Key Claim Terms for Construction

• The Term: "...combining... thereby generating a first combined signal; and combining... thereby generating a second combined signal"
• Context and Importance: This sequence of limitations is at the core of the claimed receiver method. The case may turn on whether this language requires two physically or temporally distinct combining operations resulting in two distinct intermediate signals, or if it can be read on a single, integrated process that logically accounts for both signal types. Practitioners may focus on this term because the complaint's description of the accused product forming a "single aggregated version" (Compl. ¶27) appears to be in tension with the claim's structure.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent's objective is to robustly recover data. A party might argue that any combining process that ultimately accounts for the first and second spread-spectrum signals to produce decoded data meets the spirit of the invention, even if implemented as a single, complex operation.
  • Evidence for a Narrower Interpretation: The plain language of Claim 1 presents two separate "combining" steps in series, linked by "and," each "thereby generating" its own distinct signal. This grammatical structure supports a requirement for two separate outputs. The patent's figures, such as Figure 3, depict separate "RAKE and space combiner" blocks (161, 162, 163, 164), each corresponding to a different chip-sequence signal and producing its own output before multiplexing, which supports the interpretation of distinct combining paths and signals. (’219 Patent, Fig. 3, col. 10:24-42).

VI. Other Allegations

Indirect Infringement

The complaint makes a conclusory allegation of induced infringement, stating Defendant encouraged infringement while knowing its actions constituted infringement. (Compl. ¶35). It does not, however, plead specific supporting facts, such as references to user manuals or marketing materials that instruct users on performing the infringing method.

Willful Infringement

The complaint alleges that Defendant has had knowledge of the ’219 Patent "at least as of the service of the present Complaint" and requests enhanced damages. (Compl. ¶33; Prayer for Relief ¶f). These allegations, if proven, could potentially support a finding of post-suit willful infringement but do not allege pre-suit knowledge.

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

1. A central issue will be one of functional operation: does the accused method, which allegedly creates a "single aggregated version" of a signal, perform the distinct steps of generating a "first combined signal" and a "second combined signal" as required by the sequential structure of Claim 1? The resolution of this potential mismatch between the claim language and the accused functionality will be critical.

2. A key evidentiary question will be one of infringement basis: what factual evidence does Plaintiff possess to support its allegation that Defendant's "internal testing" of the Corning SCRN-310 infringes every element of the asserted claim? The conclusory nature of the complaint suggests that the sufficiency of Plaintiff's pre-suit investigation under Federal Rules may become a focus of early discovery and motion practice.

3. The case may also turn on claim scope derived from prosecution history: as a reissue patent with a complex family history, the interpretation of key terms like "combining" and "detecting" will likely be contested. The arguments and amendments made by the patentee during both the original and reissue prosecution will be closely examined to determine the proper scope of the claims.