DCT
2:15-cv-00011
Ericsson Inc v. TCL Communication Technology Holdings Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Ericsson Inc. (Delaware) and Telefonaktiebolaget LM Ericsson (Sweden)
- Defendant: TCL Communication Technology Holdings, Ltd. (China), TCT Mobile Limited (Hong Kong), and TCT Mobile (US), Inc. (Delaware)
- Plaintiff’s Counsel: McKool Smith, P.C.
- Case Identification: Ericsson Inc. v. TCL Communication Technology Holdings, Ltd., 2:15-cv-00011, E.D. Tex., 01/08/2015
- Venue Allegations: Venue is alleged based on Defendant's business activities in the district, including shipping, distributing, selling, and advertising products, as well as maintaining an authorized warranty repair center in Richardson, Texas.
- Core Dispute: Plaintiff alleges that Defendant’s smartphones and other mobile devices, sold under the "Alcatel OneTouch" and "TCL" brands, infringe five U.S. patents related to mobile device hardware architecture, software control, user interfaces, and security.
- Technical Context: The patents address foundational technologies in mobile devices, including radio receiver design, software operating systems, user interaction, and secure access to device functions, which are critical areas of innovation and competition in the smartphone market.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant with actual notice of the '310, '052, and '931 patents on October 7, 2014, and of the '510 and '815 patents on October 21, 2014. Subsequent to the filing of this complaint, all five patents-in-suit were the subject of Inter Partes Review (IPR) proceedings. Public records indicate that numerous asserted claims in the '310, '052, '931, and '815 patents were cancelled, while claims of the '510 patent were found patentable. These post-filing events are highly relevant to the ongoing viability of the asserted claims.
Case Timeline
| Date | Event |
|---|---|
| 1997-07-01 | '052 Patent Priority Date |
| 1997-12-30 | '931 Patent Priority Date |
| 1999-08-05 | '310 Patent Priority Date |
| 2000-02-22 | '052 Patent Issue Date |
| 2000-12-22 | '815 Patent Priority Date |
| 2002-07-09 | '310 Patent Issue Date |
| 2002-09-23 | '510 Patent Priority Date |
| 2003-03-18 | '815 Patent Issue Date |
| 2006-12-12 | '510 Patent Issue Date |
| 2013-01-15 | '931 Patent Issue Date (Reissue) |
| 2014-10-07 | Plaintiff provides notice of '310, '052, '931 Patents |
| 2014-10-21 | Plaintiff provides notice of '510, '815 Patents |
| 2015-01-08 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,418,310 - "Wireless Subscriber Terminal Using Java Control Code," issued July 9, 2002
The Invention Explained
- Problem Addressed: The patent describes a conflict in mobile phone design where efficiency in memory, speed, and power consumption traditionally required control software written in low-level, processor-specific languages like C and Assembly, making software difficult to reuse across different hardware platforms (Compl. ¶11; ’310 Patent, col. 1:12-32).
- The Patented Solution: The invention proposes using the Java language, a platform-independent interpretive language, for the core control program of a wireless device. The solution involves storing both the control program (as Java bytecodes) and the Java interpreter (the Java Virtual Machine or JVM) in the device's Read-Only Memory (ROM), allowing for greater software portability and reusability without the overhead of loading these components into more expensive RAM ('310 Patent, Abstract; col. 6:1-15).
- Technical Importance: This approach aimed to reduce development costs and time-to-market for new mobile devices by allowing a single, high-level control program to run on a variety of different hardware configurations ('310 Patent, col. 2:55-65).
Key Claims at a Glance
- The complaint asserts infringement of "one or more claims" without specification (Compl. ¶20). Independent claim 1 is representative and recites:
- A portable wireless communications device, comprising:
- a radio transmitter and receiver for communicating with a network station.
- a read only memory (ROM) having therein both a control program in JAVA language and a JAVA interpreter program for said JAVA language.
- a man-machine interface for user input and output.
- a control processor that controls the transmitter and receiver based on the control program as interpreted by the interpreter.
- wherein the man-machine interface also operates under the control of the control processor as interpreted by the interpreter program.
U.S. Patent No. 6,029,052 - "Multiple-Mode Direct Conversion Receiver," issued February 22, 2000
The Invention Explained
- Problem Addressed: The patent notes that incorporating multi-band capabilities into wireless devices is difficult because conventional "superheterodyne" receivers require duplicating significant hardware components for each frequency band, which is inefficient in terms of size and cost (’052 Patent, col. 1:47-63).
- The Patented Solution: The invention discloses a multi-band receiver that uses "direct conversion," a technique that processes received radio signals at or near their original frequency, eliminating the need for conversion to intermediate frequencies. This architecture allows a single set of hardware components (e.g., mixers, oscillators, filters) to be re-used for multiple frequency bands, thereby simplifying the circuit and reducing component duplication (’052 Patent, Abstract; col. 2:5-12).
- Technical Importance: Direct conversion architecture enables the design of smaller, more cost-effective mobile devices capable of operating on different wireless communication standards (e.g., GSM, DCS, PCS) without requiring redundant hardware for each standard (’052 Patent, col. 1:37-44).
Key Claims at a Glance
- The complaint asserts infringement of "one or more claims" without specification (Compl. ¶27). Independent claim 1 is representative and recites:
- A multiple-band communication receiver, comprising:
- receiving means for receiving signals in any one of a plurality of frequency bands.
- amplifier means for selectively amplifying the signals, including at least one band-specific amplifier for each band.
- quadrature generation means for generating in-phase and quadrature signals from the amplified signals.
- low pass filtering means for filtering the in-phase and quadrature signals.
- baseband processing means.
- wherein the receiver uses direct conversion for converting the signals.
U.S. Patent No. RE 43,931 - "Radiotelephones Having Contact-Sensitive User Interfaces and Methods of Operating Same," issued January 15, 2013
- Technology Synopsis: This patent describes a radiotelephone with a contact-sensitive user interface, such as a touch strip mounted on the side or front of the device's housing. This transducer allows a user to control functions, such as scrolling through menus or lists on the display, by swiping a finger along the strip (Compl. ¶13; ’931 Patent, Abstract).
- Asserted Claims: "one or more claims" (Compl. ¶34).
- Accused Features: The contact-sensitive user interface of at least the Alcatel OneTouch Fierce smartphone (Compl. ¶34).
U.S. Patent No. 6,535,815 - "Position Updating Method for a Mobile Terminal Equipped With a Positioning Receiver," issued March 18, 2003
- Technology Synopsis: This patent discloses a method for a mobile terminal with a GPS receiver to optimize how it obtains a position fix. The terminal uses a "quality of service" (QoS) parameter to determine whether its currently stored aiding data is sufficient to meet a required accuracy or speed, or if it must request new aiding data from the network, thereby balancing performance against network usage and potential user costs (Compl. ¶15; ’815 Patent, Abstract).
- Asserted Claims: "one or more claims" (Compl. ¶41).
- Accused Features: The location-based services and position-updating methods of at least the Alcatel OneTouch Fierce smartphone (Compl. ¶¶ 15, 41).
U.S. Patent No. 7,149,510 - "Security Access Manager in Middleware," issued December 12, 2006
- Technology Synopsis: This patent describes a security system within a mobile terminal's middleware for controlling access to the device's native platform functions. When a non-native application (e.g., a Java app) requests access to a service, an interception module passes the request to a security access manager, which determines whether to grant or deny permission based on established security policies (Compl. ¶14; ’510 Patent, Abstract).
- Asserted Claims: "one or more claims" (Compl. ¶48).
- Accused Features: The middleware for controlling access on at least the Alcatel OneTouch Fierce smartphone, which is noted to use the Android operating system (Compl. ¶¶ 14, 48).
III. The Accused Instrumentality
Product Identification
- The complaint accuses "smartphones and other mobile devices" sold under the "Alcatel OneTouch" and "TCL" brands (Compl. ¶7). Specifically, the "Alcatel OneTouch Fierce" is accused of infringing the ’310, ’931, ’815, and ’510 patents, while the "Alcatel OneTouch Evolve" is accused of infringing the ’052 patent (Compl. ¶¶ 20, 27, 34, 41, 48).
Functionality and Market Context
- The complaint broadly identifies the accused products as smartphones that implement mobile telecommunication standards (Compl. ¶3). It alleges these devices are designed, manufactured, and sold for use in the United States (Compl. ¶7). The complaint specifically notes that infringement of the ’510 Patent occurs in devices using the Android operating system (Compl. ¶14, 48). No probative visual evidence provided in complaint.
- The complaint does not provide sufficient detail for analysis of the specific technical operation of the accused products beyond these general characterizations.
IV. Analysis of Infringement Allegations
'310 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A portable wireless communications device, comprising: a) a radio transmitter... b) a radio receiver... | The complaint alleges the Alcatel OneTouch Fierce is a smartphone, which by its nature includes a radio transmitter and receiver for wireless communication (Compl. ¶20). | ¶20 | col. 3:40-48 |
| c) a read only memory (ROM) having therein both a control program in JAVA language and a JAVA interpreter program... | The complaint alleges the accused device infringes the ’310 Patent, which covers a "ROM-stored control program written in the JAVA language." The infringement theory rests on the allegation that the accused device embodies this architecture (Compl. ¶11). | ¶11, ¶20 | col. 6:1-8 |
| d) a man-machine interface, said man-machine interface receiving input to the device from a user and providing output thereto; | As a smartphone, the accused Alcatel OneTouch Fierce necessarily includes a man-machine interface (e.g., touchscreen, buttons, speaker) (Compl. ¶20). | ¶20 | col. 3:19-22 |
| e) a control processor controlling the operation of said transmitter and said receiver... according to said control program as interpreted by said interpreter program; | The complaint’s infringement allegation implies that the control processor in the Alcatel OneTouch Fierce executes a Java-based control program via an interpreter to manage the device’s core communication functions (Compl. ¶11, ¶20). | ¶11, ¶20 | col. 6:8-12 |
| f) wherein said man-machine interface operates under the control of said control processor according to said control program as interpreted by said interpreter program. | The complaint's infringement allegation implies that the user interface of the Alcatel OneTouch Fierce is also controlled by the interpreted Java control program (Compl. ¶11). | ¶11, ¶20 | col. 6:12-15 |
Identified Points of Contention
- Scope Question: Does the term "control program in JAVA language," as used in the patent, read on the architecture of the Android operating system used in the accused products? The court may need to determine if the patent's specific teaching of a ROM-stored program for "intimate control software" like Layer-3 signaling covers the way Java/Dalvik/ART is used for applications and some system services in Android.
- Technical Question: What evidence demonstrates that the accused Alcatel OneTouch Fierce stores its core control program and a Java interpreter in ROM for the express purpose of controlling the radio and MMI, as required by the claim, versus using Java in a different manner common to modern smartphones (e.g., for user-facing applications run from flash memory)?
'052 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A multiple-band communication receiver, comprising: receiving means for receiving communication signals in any one of a plurality of frequency bands... | The complaint alleges the Alcatel OneTouch Evolve is a smartphone that infringes the ’052 Patent, which covers a "multiple-mode" receiver, implying it operates on multiple frequency bands (Compl. ¶12, ¶27). | ¶12, ¶27 | col. 2:13-16 |
| amplifier means for selectively amplifying the received communication signals... wherein the amplifier means includes at least one band-specific amplifier for each of the plurality of frequency bands; | The infringement allegation implies that the accused device's receiver contains band-specific amplifiers as part of its multi-band design (Compl. ¶27). | ¶27 | col. 2:16-19 |
| quadrature generation means for generating in-phase and quadrature signals from the amplified signals; | The infringement allegation implies the accused receiver contains circuitry to generate I/Q signals necessary for direct conversion processing (Compl. ¶27). | ¶27 | col. 2:19-22 |
| wherein the multiple-band communication receiver uses direct conversion for converting all of the received communication signals... | The core of the infringement allegation is that the Alcatel OneTouch Evolve's receiver uses "direct conversion rather than superheterodyne circuitry" as taught by the patent (Compl. ¶12, ¶27). | ¶12, ¶27 | col. 2:8-12 |
Identified Points of Contention
- Technical Question: Does the receiver architecture in the Alcatel OneTouch Evolve actually employ "direct conversion" as defined in the patent? The defense may argue that the device uses a different, non-infringing architecture, such as a low-intermediate frequency (low-IF) or a conventional superheterodyne design.
- Scope Question: The definition of "direct conversion" is key. The patent defines it as a process where "the use of intermediate frequencies is either eliminated or any frequency conversion is limited to frequencies within the bandwidth of the received signals" (’052 Patent, col. 2:9-12). The dispute may focus on whether the accused device's architecture meets this specific functional definition.
V. Key Claim Terms for Construction
For the ’310 Patent
- The Term: "control program in JAVA language"
- Context and Importance: This term is the central inventive concept. Its construction will determine whether the patent can cover modern Android devices. Practitioners may focus on this term because the patent's specification appears to tie the "control program" to the "intimate control software of a mobile phone," such as Layer-3 network signaling, contrasting it with third-party downloaded applications (’310 Patent, col. 2:61-65).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself is broad, not explicitly limiting the "control program" to any specific function. One could argue it covers any program controlling the device written in Java.
- Evidence for a Narrower Interpretation: The specification repeatedly discusses the program in the context of core mobile phone operations like handling control messages (e.g., handoff, authentication) and contrasts this with prior art use of Java for downloaded web content (’310 Patent, col. 3:1-24, col. 5:10-18). The emphasis on ROM storage for efficiency also points to a more limited, non-volatile core function.
For the ’052 Patent
- The Term: "direct conversion"
- Context and Importance: This term defines the entire receiver architecture at issue. Its construction is critical to determining infringement, as there are multiple ways to design a radio receiver. Practitioners may focus on this term to distinguish the patented method from other modern architectures like low-IF, which is technically not "direct" conversion to a zero-frequency baseband but is very close.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent states that in direct conversion, "any frequency conversion is limited to frequencies within the bandwidth of the received signals" (’052 Patent, col. 2:10-12). This could be argued to encompass architectures that are not strictly zero-IF but operate at very low intermediate frequencies.
- Evidence for a Narrower Interpretation: The patent consistently contrasts its invention with "superheterodyne circuitry," which uses "intermediate frequencies [that] can differ substantially from the first frequency" (’052 Patent, col. 1:50-52). The abstract and summary emphasize eliminating intermediate frequencies, suggesting a narrow definition centered on conversion directly to baseband.
VI. Other Allegations
Indirect Infringement
- The complaint alleges both induced and contributory infringement for all five patents. Inducement is based on allegations that TCL provides instruction manuals and otherwise encourages its manufacturers, resellers, and end-users to operate the accused products in their "normal and customary way," which allegedly constitutes direct infringement (e.g., Compl. ¶¶ 21-22). The basis for contributory infringement is the allegation that the accused devices are material to the inventions, have no substantial non-infringing uses, and are known by TCL to be especially adapted for infringement (e.g., Compl. ¶¶ 23-24).
Willful Infringement
- The complaint alleges willful infringement based on TCL's continued infringing activities after receiving actual notice of the patents-in-suit on October 7 and October 21, 2014 (Compl. ¶17). The complaint asserts that TCL acted with "knowledge or willful blindness that the induced acts would constitute infringement" (e.g., Compl. ¶22).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of technical implementation: Do the accused Alcatel products actually incorporate the specific hardware and software architectures required by the claims (e.g., a "direct conversion" receiver, a core "control program in JAVA language" stored in ROM), or do they utilize more common, alternative technologies that may fall outside the claims' scope? The bare-bones nature of the complaint leaves these as open factual questions.
- A second key question will be one of definitional scope: How will the court construe key terms like "control program" and "direct conversion"? The viability of Ericsson's claims, particularly against modern Android devices, may depend on whether these terms are given a broad, functional meaning or are limited to the specific embodiments and problems described in the patents.
- Finally, a determinative procedural question is the impact of subsequent IPRs: Given that a significant number of claims from four of the five asserted patents were cancelled in IPRs after this complaint was filed, a primary issue for the court will be to determine which, if any, of the originally asserted claims remain valid and infringed, fundamentally altering the scope and potential value of the lawsuit.