DCT

2:18-cv-00074

Uniloc USA Inc v. Huawei Tech Co Ltd

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:18-cv-00074, E.D. Tex., 03/13/2018
  • Venue Allegations: Venue is alleged based on Defendant Huawei USA, Inc. being a Texas corporation with an established principal place of business in the state, and both defendants offering for sale and selling the accused products to customers within the Eastern District of Texas.
  • Core Dispute: Plaintiff alleges that Defendant’s electronic devices that utilize Bluetooth Low Energy infringe a patent related to methods for polling secondary devices to improve responsiveness and power efficiency.
  • Technical Context: The technology addresses power consumption and connection latency in short-range wireless communication protocols, a critical design consideration for battery-powered consumer electronics and peripherals.
  • Key Procedural History: The patent-in-suit was filed with a terminal disclaimer. Subsequent to the filing of this complaint, the patent was the subject of multiple Inter Partes Review (IPR) proceedings before the U.S. Patent and Trademark Office. These proceedings resulted in a certificate, issued September 28, 2021, cancelling claims 11 and 12 of the patent. The cancellation of claim 11, which is asserted in the complaint, raises questions about its continued viability in this litigation.

Case Timeline

Date Event
2000-06-26 '049 Patent Priority Date
2006-01-31 '049 Patent Issue Date
2018-03-13 Complaint Filing Date
2018-11-12 IPR2019-00251 Filed against '049 Patent
2019-05-06 IPR2019-01026 Filed against '049 Patent
2019-08-22 IPR2019-01530 Filed against '049 Patent
2021-09-28 IPR Certificate Issued, cancelling claims 11-12

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

U.S. Patent No. 6,993,049 - "COMMUNICATION SYSTEM"

  • Patent Identification: U.S. Patent No. 6,993,049, "COMMUNICATION SYSTEM", issued January 31, 2006.

The Invention Explained

  • Problem Addressed: The patent describes a problem in wireless communication systems like Bluetooth, where connecting peripheral devices such as a mouse or keyboard—termed Human Interface Devices (HIDs)—can be slow. The patent notes that establishing an initial connection could take "several tens of seconds," and maintaining a continuously active link to ensure responsiveness drains the batteries of portable HIDs. (’049 Patent, col. 2:5-22).
  • The Patented Solution: The invention proposes a method for a primary station (e.g., a host computer) to poll secondary stations (e.g., HIDs) without requiring a permanent, power-intensive connection. This is achieved by adding an "additional data field" to the standard "inquiry messages" that are periodically broadcast by the primary station. This additional field contains a poll directed to a specific secondary device, which can then respond if it has data to transmit. (’049 Patent, Abstract; col. 4:58-63). This approach allows the secondary device to remain in a low-power state but still provide a "rapid response time." (’049 Patent, Abstract).
  • Technical Importance: This technique sought to balance the competing demands of instant responsiveness and long battery life for wireless peripherals, a persistent challenge in mobile computing. (’049 Patent, col. 2:19-22).

Key Claims at a Glance

  • The complaint asserts infringement of claims 1-6, 8-9, and 11. Independent claims 1, 2, 8, and 11 are asserted.
  • The essential elements of independent claim 1, a system claim, include:
    • A communications system with a primary station and at least one secondary station.
    • The primary station having "means for broadcasting a series of inquiry messages" according to a first protocol, and "means for adding to an inquiry message... an additional data field for polling" the secondary station.
    • The polled secondary station having "means for determining when an additional data field has been added," "means for determining whether it has been polled," and "means for responding to a poll when it has data for transmission."
  • The complaint reserves the right to assert other claims, though claim 11 has been cancelled post-filing. (Compl. ¶16; '049 Patent IPR Certificate).

III. The Accused Instrumentality

Product Identification

The complaint names a wide range of Huawei electronic devices, including smartphones, tablets, and smartwatches, such as the Huawei MateBook X, MediaPad M3 Lite, and Huawei WATCH 2 (collectively, the "Accused Infringing Devices"). (Compl. ¶14).

Functionality and Market Context

The complaint alleges that all accused devices "utilize Bluetooth Low Energy version 4.0 and above." (Compl. ¶14). The accused functionality is described in terms that mirror the patent claims, alleging the devices implement systems where a primary device polls a secondary device by broadcasting messages, and the secondary device responds when it has data to transmit. (Compl. ¶15). The complaint does not describe the specific technical implementation within the accused devices beyond their use of the Bluetooth Low Energy standard.

IV. Analysis of Infringement Allegations

'049 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a primary station has means for broadcasting a series of inquiry messages, each in the form of a plurality of predetermined data fields arranged according to a first communications protocol, The Accused Infringing Devices, acting as primary devices, allegedly implement communications systems that broadcast messages to secondary devices. (The complaint alleges this functionality is part of the Bluetooth Low Energy standard). ¶15 col. 4:26-34
and means for adding to an inquiry message prior to transmission an additional data field for polling at least one secondary station, The broadcast messages are alleged to include data to "poll the second or secondary device." ¶15 col. 4:58-63
and wherein the at least one polled secondary station has means for determining when an additional data field has been added to the plurality of data fields, for determining whether it has been polled from the additional data field and for responding to a poll when it has data for transmission to the primary station. The secondary device is alleged to respond to the primary device "when the second or secondary device has data to transmit to the first or primary device." ¶15 col. 5:29-35

No probative visual evidence provided in complaint.

Identified Points of Contention

  • Scope Questions: The asserted independent claims are drafted in "means-plus-function" format. The scope of such claims is limited to the specific structures disclosed in the patent's specification that perform the claimed function, and their equivalents. A central question for the court will be to identify the corresponding structure in the '049 Patent (e.g., the microprocessor and link controller of FIG. 2) and then determine if the accused Bluetooth LE systems contain the same or an equivalent structure. The complaint does not identify any accused structure.
  • Technical Questions: The complaint's infringement theory appears to rely on the general operation of the Bluetooth Low Energy standard. A key technical question is whether the Bluetooth LE protocol, as implemented in the accused devices, actually performs the claimed function of "adding... an additional data field" to a standard inquiry message, or if it achieves low-power polling through a different, non-infringing technical method. The complaint's lack of detail on the specific operations of the accused devices may be a focus of dispute.

V. Key Claim Terms for Construction

  • The Term: "means for adding to an inquiry message prior to transmission an additional data field for polling at least one secondary station"
  • Context and Importance: This is a means-plus-function limitation under 35 U.S.C. § 112, ¶ 6 (pre-AIA). Its construction is critical because it defines the core of the invention. The infringement analysis will depend entirely on first identifying the specific "structure, material, or acts" in the patent's specification that correspond to this function, and then comparing that structure to the accused devices.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A party might argue that the "means" should be construed broadly to cover any processor-based system capable of appending data to a packet, as this is a general-purpose computing function. The specification describes the function in relation to a generic digital controller unit. (’049 Patent, col. 4:6-10).
    • Evidence for a Narrower Interpretation: A party would argue the corresponding structure is limited to the specific embodiment shown. The patent explicitly describes a "digital controller unit 206, further comprising a link baseband controller (LC) 208, a microprocessor (uP) 210 and an interface unit (INT) 212" as the hardware that performs the protocol management. (’049 Patent, col. 4:6-9; FIG. 2). This specific arrangement of a microprocessor managing a dedicated link controller to append an extra field (504) as shown in FIG. 5 could be argued as the only disclosed structure, thus narrowing the claim's scope. (’049 Patent, col. 4:58-63).

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement of infringement based on Huawei providing "training videos, demonstrations, brochures, installation and user guides" that allegedly instruct customers on how to use the devices in an infringing manner. The complaint cites general corporate and developer websites as examples of these instructions. (Compl. ¶17).
  • Willful Infringement: The complaint alleges that service of the complaint puts Huawei on notice of the '049 Patent. It further alleges that by trial, Huawei's continued infringement will be willful, which suggests a theory based on post-suit knowledge. (Compl. ¶19).

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

  • A central issue will be one of structural correspondence for the means-plus-function claims. The case will likely hinge on whether the circuitry and software implementing the Bluetooth Low Energy protocol in Huawei’s devices constitute an equivalent structure to the specific microprocessor and link-controller arrangement disclosed in the '049 Patent for the function of appending a polling field to an inquiry message.
  • A key evidentiary question will be one of technical implementation: does the accused Bluetooth Low Energy standard operate by modifying legacy Bluetooth inquiry packets as described in the patent, or does it utilize a fundamentally different architecture for low-power communications that falls outside the literal scope of the claims?
  • A threshold legal question will be the viability of the remaining asserted claims. Given that claim 11 was asserted in the complaint but later cancelled during an IPR proceeding, the court will likely face arguments regarding whether the surviving asserted claims (1-6, 8-9) are patentably distinct and valid over the prior art that invalidated their cancelled sibling claim.