DCT

2:14-cv-00912

Core Wireless Licensing SARL v. LG Electronics Inc

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:14-cv-00912, E.D. Tex., 09/26/2014
  • Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendants conduct business in the district, including offering for sale and selling the accused wireless communication devices. The complaint also points to a large distribution hub for Defendant LGE in the Fort Worth area.
  • Core Dispute: Plaintiff alleges that Defendant’s wireless mobile communication devices that comply with the GSM/GPRS, UMTS, and LTE standards infringe a portfolio of thirteen patents essential to those standards.
  • Technical Context: The patents-in-suit relate to foundational technologies for 2G, 3G, and 4G mobile telecommunications, including protocol management, signal modulation, data transfer, and network connection procedures.
  • Key Procedural History: The complaint alleges the patents-in-suit are Standard-Essential Patents (SEPs) originally owned by Nokia and declared to the European Telecommunications Standards Institute (ETSI), creating an obligation for the patent holder to license them on Fair, Reasonable, and Non-Discriminatory (FRAND) terms. The complaint details nearly three years of licensing negotiations (2011-2014) during which Plaintiff allegedly made multiple offers that Defendant refused without providing a counteroffer. Plaintiff also brings counts for breach of contract based on these alleged FRAND obligations. Several claims of U.S. Patent No. 5,946,634 were cancelled or disclaimed after the filing of this complaint.

Case Timeline

Date Event
1996-09-17 Priority Date for U.S. Patent No. 6,633,536
1997-01-02 Priority Date for U.S. Patent No. 5,946,634
1997-05-29 Priority Date for U.S. Patent No. 6,266,321
1997-11-11 Priority Date for U.S. Patent No. 6,477,151
1998-09-11 Priority Date for U.S. Patent No. 7,529,271
1999-02-23 Priority Date for U.S. Patent No. 6,978,143
1999-08-31 U.S. Patent No. 5,946,634 Issued
1999-12-09 Priority Date for U.S. Patent Nos. 7,383,022 and 7,599,664
2000-05-22 Priority Date for U.S. Patent No. 7,782,818
2000-12-01 Priority Date for U.S. Patent Nos. 8,165,049 and 8,792,398
2001-04-19 Priority Date for U.S. Patent No. RE44,828
2001-07-24 U.S. Patent No. 6,266,321 Issued
2002-11-05 U.S. Patent No. 6,477,151 Issued
2003-10-14 U.S. Patent No. 6,633,536 Issued
2005-11-01 Priority Date for U.S. Patent No. 7,804,850
2005-12-20 U.S. Patent No. 6,978,143 Issued
2008-06-03 U.S. Patent No. 7,383,022 Issued
2009-05-05 U.S. Patent No. 7,529,271 Issued
2009-10-06 U.S. Patent No. 7,599,664 Issued
2010-08-24 U.S. Patent No. 7,782,818 Issued
2010-09-28 U.S. Patent No. 7,804,850 Issued
2011-09-01 Plaintiff Core Wireless acquires the patents-in-suit
2012-03-26 Plaintiff sends first notice letter to Defendant
2012-05-23 Plaintiff and Defendant meet; Plaintiff presents claim charts
2013-03-06 Plaintiff and Defendant meet; Plaintiff presents additional claim charts
2012-04-24 U.S. Patent No. 8,165,049 Issued
2014-04-08 U.S. Patent No. RE44,828 Issued
2014-06-19 Final licensing meeting between parties
2014-07-29 U.S. Patent No. 8,792,398 Issued
2014-09-26 Complaint Filed

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

U.S. Patent No. 5,946,634 - “Mobile Communications,” Issued August 31, 1999

The Invention Explained

  • Problem Addressed: The patent addresses the incompatibility of mobile terminals across different mobile communication standards (e.g., GSM in Europe, D-AMPS in the U.S.) and the problem of device obsolescence as new network technologies emerge (’634 Patent, col. 1:7-18).
  • The Patented Solution: The invention describes a mobile terminal capable of operating on multiple, otherwise incompatible, "backbone networks" by utilizing different "higher level communication protocols." The radio access network broadcasts a signal identifying the type of network it is connected to. A key feature is the terminal's ability to download a new protocol stack from the network if it encounters a network type for which it does not have the corresponding protocol pre-loaded, allowing for dynamic, over-the-air updates to maintain compatibility (’634 Patent, Abstract; col. 2:53-57; Fig. 10).
  • Technical Importance: This technology provided a framework for creating flexible, forward-compatible mobile devices that could adapt to different and evolving network standards, a foundational concept for modern multi-mode smartphones (’634 Patent, col. 2:19-21).

Key Claims at a Glance

  • The complaint asserts infringement of one or more claims without specification (Compl. ¶71). Independent claim 20 is representative of the asserted technology.
  • Essential elements of independent claim 20 include:
    • A wireless interface.
    • A formatting device for applying a low level signal format protocol to a signal for transmission.
    • A control unit for receiving a type signal from the wireless interface and for applying a high level protocol for application to the signal based on the type signal.

U.S. Patent No. 6,266,321 - “Method For Transmitting Two Parallel Channels Using Code Division And An Apparatus Realizing The Method,” Issued July 24, 2001

The Invention Explained

  • Problem Addressed: In Code Division Multiple Access (CDMA) systems, transmitting control and user data on parallel channels at different power levels can cause large variations in the combined signal's amplitude. This forces the mobile terminal's power amplifier to operate inefficiently to avoid distortion, which consumes excess battery power and increases system interference (’321 Patent, col. 2:18-39).
  • The Patented Solution: The invention discloses a method for simultaneously transmitting two channels by spreading the data from both channels with two separate spreading codes (e.g., C_I and C_Q). The resulting signals are combined such that the in-phase (I) component of the transmitted signal is a difference of spread signals and the quadrature (Q) component is a sum of other spread signals. This specific combination scheme allows the power level of one channel to be adjusted relative to the other while maintaining a nearly constant-envelope signal, which allows the power amplifier to operate more efficiently (’321 Patent, Abstract; col. 4:5-22; Fig. 2a).
  • Technical Importance: This signal modulation and combination technique improved the power efficiency of mobile terminals in CDMA-based networks, a critical factor for extending battery life and improving overall network performance (’321 Patent, col. 2:12-18).

Key Claims at a Glance

  • The complaint asserts infringement of one or more claims without specification (Compl. ¶84). Independent claim 1 is representative of the asserted technology.
  • Essential elements of independent claim 1 (a device claim) include:
    • Four spreading means for spreading data from a first channel and a second channel using a first and second spreading code in parallel.
    • Means for changing the power level of the data related to the second channel relative to the first.
    • A combiner means to compile a transmission from the spread data.

U.S. Patent No. 6,477,151 - “Packet Radio Telephone Services,” Issued November 5, 2002

  • Technology Synopsis: The patent addresses timing synchronization in packet radio systems like GPRS. It discloses a method where a mobile station uses a "timing advance value" received from the base station to advance its transmission slots for both uplink and downlink channels to compensate for radio propagation delays (’151 Patent, Abstract).
  • Asserted Claims: The complaint does not specify claims; independent claims include 1 and 8.
  • Accused Features: The complaint alleges that LG's "Standard-Compliant Products" that operate on packet-switched networks like GPRS infringe the patent (Compl. ¶¶ 30, 95).

U.S. Patent No. 6,633,536 - “Signalling In A Digital Mobile Communications System,” Issued October 14, 2003

  • Technology Synopsis: The patent discloses a method for in-band signaling where control messages are transmitted by intentionally marking a user data frame (e.g., a speech frame) as "bad" and inserting the bit pattern of the message into that frame. This allows signaling to occur on the data channel without requiring a separate control channel (’536 Patent, Abstract).
  • Asserted Claims: The complaint does not specify claims; independent claims include 1, 9, 17, and 19.
  • Accused Features: The complaint alleges that LG's "Standard-Compliant Products" that implement applicable mobile communication standards infringe the patent (Compl. ¶¶ 30, 108).

U.S. Patent No. 6,978,143 - “Method And Arrangement For Managing Packet Data Transfer In A Cellular System,” Issued December 20, 2005

  • Technology Synopsis: The patent describes a method for managing uplink data transfer by deciding whether to use a common channel (like RACH) or a dedicated channel (DCH). The decision is made at the mobile station based on "channel selection parameters" (e.g., RACH load, max packet size) that are broadcast by the network (’143 Patent, Abstract).
  • Asserted Claims: The complaint does not specify claims; independent claims include 1 and 15.
  • Accused Features: The complaint alleges that LG's "Standard-Compliant Products" that manage uplink packet data infringe the patent (Compl. ¶¶ 30, 121).

U.S. Patent No. 7,383,022 - “Mobile Equipment Based Filtering For Packet Radio Service,” Issued June 3, 2008

  • Technology Synopsis: The patent discloses a method for filtering link quality measurements within a mobile device. The filtering operation uses a "filter length" that is a function of a parameter indicative of signal quality, such as the speed of the mobile equipment, which is determined by the network and transmitted to the device (’022 Patent, Abstract).
  • Asserted Claims: The complaint does not specify claims; independent claims include 1, 7, 13, and 17.
  • Accused Features: The complaint alleges that LG's "Standard-Compliant Products" that perform link quality reporting infringe the patent (Compl. ¶¶ 30, 134).

U.S. Patent No. 7,529,271 - “Method And Device For Transferring Data Over GPRS Network,” Issued May 5, 2009

  • Technology Synopsis: The patent describes a method for prioritizing data transfer in a GPRS network by reordering Logical Link Control (LLC) packet data units (PDUs). PDUs are reordered according to the "relative urgency of transmission" associated with their respective Packet Data Protocol (PDP) contexts, ensuring that higher-priority data is sent before lower-priority data (’271 Patent, Abstract).
  • Asserted Claims: The complaint does not specify claims; independent claims include 1, 18, and 38.
  • Accused Features: The complaint alleges that LG's "Standard-Compliant Products" that handle data transfer over GPRS networks infringe the patent (Compl. ¶¶ 30, 147).

U.S. Patent No. 7,599,664 - “Mobile Equipment Based Filtering For Packet Radio Service (PRS),” Issued October 6, 2009

  • Technology Synopsis: As a continuation of the '022 patent, this patent relates to filtering link quality measurements in a mobile device. The filtering process is adapted based on a parameter indicative of signal quality, such as the device's speed, which is provided by the network to the device (’664 Patent, Abstract).
  • Asserted Claims: The complaint does not specify claims; independent claims include 1, 14, and 27.
  • Accused Features: The complaint alleges that LG's "Standard-Compliant Products" that report link quality infringe the patent (Compl. ¶¶ 30, 160).

U.S. Patent No. 7,782,818 - “System And Method For Providing A Connection In A Communication Network,” Issued August 24, 2010

  • Technology Synopsis: The patent describes a system where a network element, such as a radio network controller (RNC), can select a serving node (e.g., an SGSN) from a list of available nodes when multiple nodes serve the same geographic area. The selection can be based on an identifier provided by the mobile station or an identifier for the routing area (’818 Patent, Abstract).
  • Asserted Claims: The complaint does not specify claims; independent claims include 1, 8, and 30.
  • Accused Features: The complaint alleges that LG's "Standard-Compliant Products" that connect to communication networks infringe the patent (Compl. ¶¶ 30, 173).

U.S. Patent No. 7,804,850 - “Slow MAC-E For Autonomous Transmission In High Speed Uplink Packet Access (HSUPA)...,” Issued September 28, 2010

  • Technology Synopsis: The patent discloses a method for managing autonomous data transmissions in HSUPA networks. It defines a control parameter, independent of the transmission time interval (TTI), that specifies the minimum time between new data transmissions, thereby controlling the data rate without requiring constant scheduling grants from the network (’850 Patent, Abstract).
  • Asserted Claims: The complaint does not specify claims; independent claims include 1, 11, 21, and 32.
  • Accused Features: The complaint alleges that LG's "Standard-Compliant Products" that operate on HSUPA networks infringe the patent (Compl. ¶¶ 30, 186).

U.S. Patent No. 8,165,049 - “Filtering of Electronic Information To Be Transferred To A Terminal,” Issued April 24, 2012

  • Technology Synopsis: The patent describes a system for filtering electronic information (e.g., multimedia messages) before it is fully transferred to a terminal. A filtering parameter is attached to the information and sent to the terminal first, allowing the terminal to decide whether to accept or prevent the download of the full content based on that parameter (’049 Patent, Abstract).
  • Asserted Claims: The complaint does not specify claims; independent claims include 1, 18, and 28.
  • Accused Features: The complaint alleges that LG's "Standard-Compliant Products" that receive data infringe the patent (Compl. ¶¶ 30, 199).

U.S. Patent No. RE44,828 E - “Method and Arrangement For Choosing A Channel Coding And Interleaving Scheme For Certain Types of Packet Data Connections,” Issued April 8, 2014

  • Technology Synopsis: The patent relates to selecting an appropriate channel coding and interleaving scheme for a packet data connection. The selection is based on mapping a set of Quality of Service (QoS) parameters associated with the connection to a specific coding/interleaving scheme (’828 Patent, Abstract).
  • Asserted Claims: The complaint does not specify claims; independent claims include 1, 6, 8, and 20.
  • Accused Features: The complaint alleges that LG's "Standard-Compliant Products" that establish packet data connections infringe the patent (Compl. ¶¶ 30, 209).

U.S. Patent No. 8,792,398 - “Filtering of Electronic Information To Be Transferred To A Terminal,” Issued July 29, 2014

  • Technology Synopsis: As a continuation of the '049 patent, this patent relates to a system for pre-transfer filtering of electronic information at a terminal. A filtering parameter is sent ahead of the main content, allowing the terminal to decide whether to allow or prevent the full download (’398 Patent, Abstract).
  • Asserted Claims: The complaint does not specify claims; independent claims include 1 and 11.
  • Accused Features: The complaint alleges that LG's "Standard-Compliant Products" that receive data infringe the patent (Compl. ¶¶ 30, 219).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are "LG Standard-Compliant Products," defined as wireless mobile communication devices that implement GSM/GPRS, UMTS, and/or LTE standards (Compl. ¶30). The complaint provides a non-exhaustive list including smartphones and tablets from LG's Optimus, G, L, F, and Nexus device families, and the G Pad family of tablets (Compl. ¶30).

Functionality and Market Context

  • The complaint alleges these devices are designed, manufactured, and sold for use on major wireless networks (Compl. ¶¶ 2-3). The relevant functionality is their alleged compliance with the 2G, 3G, and 4G mobile communication standards developed by ETSI (Compl. ¶¶ 25, 30). The core of the infringement allegation is that by implementing these standards, the accused devices necessarily practice the inventions claimed in the patents-in-suit, which Plaintiff alleges are essential to those standards (Compl. ¶¶ 69, 82, 95).

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint.

U.S. Patent No. 5,946,634 Infringement Allegations

Claim Element (from Independent Claim 20) Alleged Infringing Functionality Complaint Citation Patent Citation
a wireless interface; The RF transceivers in the accused LG devices that enable communication with cellular networks. ¶30 col. 3:61-62
a formatting device for applying a low level signal format protocol to a signal for transmission over said wireless interface; The baseband processors in the accused LG devices that format data for transmission according to the physical layer of the relevant standard (e.g., GSM, UMTS, LTE). ¶30 col. 4:4-6
a control unit for receiving a type signal from said wireless interface, and for applying a high level protocol for application to said signal based on said type signal. The processors in the accused LG devices that select and apply the appropriate protocol stack (e.g., for GSM, UMTS, or LTE) based on signals received from the cellular network indicating the network type available. ¶¶ 30, 69 col. 6:29-38
  • Identified Points of Contention:
    • Scope Questions: A central question may be whether selecting between pre-installed protocol stacks for different network standards (e.g., 2G, 3G, 4G) meets the "applying a high level protocol based on said type signal" limitation. The defense may argue this limitation requires the specific downloading capability described as a preferred embodiment in the patent, which modern multi-mode phones may not perform in the same way.
    • Technical Questions: The complaint does not specify what constitutes the "type signal" in a modern LTE network or how the accused devices' processors "apply" a different protocol. The analysis will depend on evidence of how the accused devices actually switch between network modes and whether that process maps to the claim elements.

U.S. Patent No. 6,266,321 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
first... and second spreading means for spreading data related to a first channel using a first... and second spreading code, The baseband processors in the accused LG devices, when operating in a CDMA-based mode (e.g., UMTS), allegedly spread first channel data (e.g., a data channel) with two different spreading codes. ¶¶ 30, 82 col. 4:45-50
third... and fourth spreading means for spreading data related to a second channel using said first... and second spreading code, The baseband processors allegedly spread second channel data (e.g., a control channel) with the same two spreading codes. ¶¶ 30, 82 col. 4:45-50
means for changing the power level of said data related to the second channel with respect to the power level of data related to the first channel, The accused devices' processors allegedly apply a gain factor to the spread control channel data to adjust its power relative to the data channel. ¶¶ 30, 82 col. 4:21-25
combiner means to compile a transmission from spread data related to the first channel and spread data related to the second channel the... gain of which has been changed... The accused devices' RF circuitry allegedly combines the spread signals using a specific sum-and-difference IQ modulation scheme to create the final transmission signal. ¶¶ 30, 82 col. 4:63-5:2
  • Identified Points of Contention:
    • Scope Questions: Claim 1 recites "combiner means," which may be construed as a means-plus-function limitation under 35 U.S.C. § 112(f). If so, its scope would be limited to the specific structure disclosed in the patent's specification (adders, multipliers, oscillator, and phase shifter arranged as in Fig. 2a) and its equivalents.
    • Technical Questions: The infringement analysis will require a detailed examination of the chipsets in the accused LG devices. A key question is whether they implement the specific parallel spreading and I/Q signal combination architecture required by the claim, or if they use an alternative, structurally different method to manage multi-channel uplink transmission that is part of the UMTS standard.

V. Key Claim Terms for Construction

  • For the ’634 Patent:

    • The Term: "high level protocol" (from Claim 20, via Claim 1)
    • Context and Importance: The definition of this term is critical. Infringement may depend on whether selecting from among pre-loaded software stacks for different cellular standards (e.g., UMTS, LTE) constitutes "applying" different "high level protocols," or if the term is limited to the patent's described embodiment of dynamically downloading new, previously unknown protocols. Practitioners may focus on this term because it addresses the core inventive concept of adapting a single device to multiple, otherwise incompatible network types.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: Claim 1 refers to "a plurality of alternative high level signalling protocols," which does not on its face require that the protocols be downloaded rather than pre-stored (’634 Patent, col. 9:8-9).
      • Evidence for a Narrower Interpretation: The specification repeatedly frames the invention as a solution to the problem of fixed, pre-set protocols, and the preferred embodiment details a system for downloading new protocols from the network (’634 Patent, col. 2:53-57, FIG. 10). The abstract also highlights the ability to "download a new protocol stack."

  • For the ’321 Patent:

    • The Term: "combiner means to compile a transmission" (from Claim 1)
    • Context and Importance: As a potential means-plus-function term, its construction will define the specific hardware structure required to infringe. The dispute will center on whether the accused devices' IQ modulators are structurally equivalent to the configuration disclosed in the patent. Practitioners may focus on this term because it defines the precise signal processing steps that allegedly provide the invention's power-efficiency benefits.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The term "combiner means" could be argued to encompass any structure that performs the function of compiling the final transmission signal from the spread data components.
      • Evidence for a Narrower Interpretation: The specification discloses a specific corresponding structure for performing the combining function: a set of adders (57, 58) that perform sum and difference operations on the spread signals, followed by IQ modulation circuitry (59-62) that generates the final RF signal (’321 Patent, col. 4:63-5:2; Fig. 2a). This detailed disclosure may support a narrower construction limited to this structure and its equivalents.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges both induced and contributory infringement for all patents-in-suit. Inducement allegations are based on Defendants' affirmative acts of selling the accused products and providing "instructive materials" that allegedly lead third parties (end-users) to infringe (e.g., Compl. ¶73, ¶86). Contributory infringement is alleged on the basis that Defendants provide hardware and/or software components that are a material part of the invention, not a staple article of commerce, and are especially adapted for infringement (e.g., Compl. ¶75, ¶88).
  • Willful Infringement: The complaint alleges willful infringement for all patents-in-suit based on alleged pre-suit knowledge. It cites a series of notice letters and in-person meetings between March 2012 and March 2013 where Plaintiff allegedly provided Defendants with notice and infringement claim charts for many of the asserted patents (Compl. ¶¶ 34-38, 77, 90).

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

  • A central issue will be one of contractual and equitable rights under the FRAND framework: did Defendants' alleged refusal to take a license or provide a counteroffer constitute a breach of their obligations as an implementer of ETSI standards, and if so, how does that impact Plaintiff's entitlement to damages or injunctive relief for infringement of its declared SEPs?
  • A key technical question will be one of essentiality and implementation: for each patent, the court will need to determine whether compliance with the relevant 2G, 3G, or 4G standards necessarily requires practicing the specific limitations of the asserted claims. This will involve a granular comparison of the standard specifications with the claim language, rather than a high-level assertion of infringement-by-compliance.
  • A critical legal question will be one of functional equivalence and scope: for system and method claims rooted in the technology of the late 1990s and early 2000s, can the claim language be construed to read on the more complex, integrated, and multifaceted operations of modern multi-mode smartphones, or is there a fundamental mismatch in technical operation and scope?