DCT
2:18-cv-00505
Uniloc 2017 LLC v. Cisco Systems Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Uniloc 2017 LLC (Delaware)
- Defendant: Cisco Systems, Inc. (California)
- Plaintiff’s Counsel: FEINBERG DAY ALBERTI LIM & BELLOLI LLP
- Case Identification: 2:18-cv-00505, E.D. Tex., 02/01/2019
- Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendant has committed acts of infringement in the district and maintains multiple regular and established places of business, including facilities in Richardson and Allen, Texas.
- Core Dispute: Plaintiff alleges that Defendant’s Bluetooth Low Energy beacon and wireless networking products infringe patents related to broadcasting data to portable devices and reducing power consumption in wireless terminals.
- Technical Context: The dispute centers on short-range wireless communication technologies, specifically Bluetooth Low Energy (BLE), which are fundamental to location-based services, proximity marketing, and power management in modern networked devices.
- Key Procedural History: The complaint alleges that a prior complaint filed on September 28, 2018, put Defendant on notice of infringement for both patents-in-suit. Subsequent to the filing of this First Amended Complaint, the asserted claims of both patents—Claim 14 of the '891 patent and Claim 1 of the '892 patent—were cancelled in separate Inter Partes Review (IPR) proceedings before the U.S. Patent and Trademark Office.
Case Timeline
| Date | Event |
|---|---|
| 1998-11-24 | '892 Patent Priority Date (as per filing date) |
| 2000-06-26 | '891 Patent Priority Date |
| 2001-09-04 | '892 Patent Issue Date |
| 2003-12-16 | '891 Patent Issue Date |
| 2018-09-28 | Cisco put on notice of infringement |
| 2019-02-01 | First Amended Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,664,891 - “Data Delivery Through Portable Devices,” issued December 16, 2003
The Invention Explained
- Problem Addressed: At the time of the invention, using standard Bluetooth protocols for location-based or "Context-Aware" services was inefficient. Establishing a full two-way connection was slow (10-30 seconds), consumed significant power on battery-operated devices, limited the number of simultaneous listeners, and compromised user privacy by revealing the listening device's identity ('891 Patent, col. 2:16-34; Compl. ¶16).
- The Patented Solution: The invention proposes a method for one-way data broadcasting that avoids the need for a full, formal connection. It achieves this by adding an "additional data field" carrying broadcast content directly to the initial "inquiry messages" used in the Bluetooth discovery process ('891 Patent, Abstract). This allows a device to transmit information that can be passively received and read by any suitably configured device in range, overcoming the latency, power, and privacy drawbacks of the prior art ('891 Patent, col. 2:55-63).
- Technical Importance: This technique enabled a form of anonymous, low-power, "connectionless" broadcasting, which was a key requirement for the emerging field of proximity-based mobile information services ('891 Patent, col. 1:14-20).
Key Claims at a Glance
- The complaint asserts independent claim 14 (Compl. ¶27).
- The essential elements of claim 14 are:
- A method wherein a first portable communications device broadcasts a series of inquiry messages.
- Each inquiry message is in the form of a plurality of predetermined data fields arranged according to a first communications protocol.
- The first device adds to each inquiry message, prior to transmission, an additional data field carrying broadcast message data.
- This is done such that other suitably configured portable devices may receive the messages and read the broadcast data from the additional data field.
U.S. Patent No. 6,285,892 - “Data Transmission System For Reducing Terminal Power Consumption In A Wireless Network,” issued September 4, 2001
The Invention Explained
- Problem Addressed: In existing wireless networks, terminals had to remain in a high-power state to listen for incoming data, draining batteries. Early power-saving systems required a central controller to manage each terminal individually, which created significant computational overhead and network inefficiency ('892 Patent, col. 2:39-47; Compl. ¶38).
- The Patented Solution: Instead of managing terminals one-by-one, the invention controls them in groups. A central controller or base station (BS/CC) identifies a "set of receivers" and issues a message that instructs the entire set when to switch from a low-power mode to a data-receiving mode for a specific transmission ('892 Patent, Abstract). This group-based management reduces the complexity and overhead associated with power-saving functions ('892 Patent, col. 3:9-17).
- Technical Importance: The invention provided a more efficient method for implementing power-saving features in early wireless networks, particularly wireless ATM networks, by reducing the control overhead on both the central network controller and the individual terminals ('892 Patent, col. 3:14-17).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶43).
- The essential elements of claim 1 are:
- Designating a terminal as a transmitter.
- Designating a set of terminals as able to receive data from the transmitter.
- Issuing a first message identifying the transmitter and the set.
- Receiving a request for transmission from the transmitter.
- Issuing a second message that identifies the transmitter.
- Wherein each terminal determines if it can receive data based on the second message.
- Wherein terminals able to receive the data are enabled to do so, and at least one terminal not able to receive the data is enabled to enter a low-power mode.
III. The Accused Instrumentality
Product Identification
- The complaint accuses Cisco's Beacon Point devices and its Meraki Bluetooth Low Energy (“BLE”) solutions, which include Meraki access points (MR32, MR42, MR52, MR53, MR72), the Meraki dashboard, and the Meraki Location Analytics API (Compl. ¶2, ¶19, ¶42).
Functionality and Market Context
- The accused Cisco Beacon Point is a portable communication device that uses BLE technology to broadcast messages, such as custom notifications and URLs, to other devices in proximity (Compl. ¶21). The complaint includes a marketing graphic illustrating how mobile applications receive beams from Beacon Points to enable location-aware services (Compl. ¶21, p. 6, Fig. 2).
- The accused Meraki access points are described as incorporating a dedicated Bluetooth radio and antenna for "location awareness and returning meaningful value to customers" (Compl. ¶44, p. 18). These products are part of a system that uses a Scanning API to detect BLE devices in real-time and export location data to a back-end server, enabling applications like asset tracking and customer engagement (Compl. ¶44, p. 18; ¶20, p. 20).
IV. Analysis of Infringement Allegations
U.S. Patent No. 6,664,891 Infringement Allegations
| Claim Element (from Independent Claim 14) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| broadcasts a series of inquiry messages each in the form of a plurality of predetermined data fields arranged according to a first communications protocol | The Cisco Beacon Point broadcasts a series of advertisements (inquiry messages) using Bluetooth beacons, which contain predetermined data fields like a preamble, access address, and PDU header. | ¶22, ¶23 | col. 2:55-60 |
| and wherein said first portable communications device adds to each inquiry message prior to transmission an additional data field carrying broadcast message data | The accused devices' advertisements add a broadcast message, such as a UUID, Major, and Minor value, into the packet payload prior to transmission. | ¶24 | col. 2:58-63 |
| such that suitably configured other portable devices may receive the transmitted inquiry messages and read the broadcast data from said additional data field | Cisco provides a software development kit (SDK) to configure other portable devices to receive the transmitted messages and read the broadcast data (UUID, Major, Minor) from the advertisement field. | ¶25, ¶26 | col. 2:63-65 |
- Identified Points of Contention:
- Scope Questions: A central question may be whether utilizing the standard payload field (AdvData) of a modern BLE advertising packet constitutes "adding an additional data field" to an "inquiry message" as contemplated by the patent, which was filed before the BLE standard existed. The defense could argue this is standard protocol usage, not an "addition" in the patent's sense.
- Technical Questions: The analysis will depend on whether a modern BLE "advertising packet" can be considered equivalent to the "inquiry message" described in the '891 Patent. The complaint provides a screenshot from a Cisco video showing a user receiving a "SALE" notification, which it uses as evidence of the infringing system in operation (Compl. ¶29, p. 11).
U.S. Patent No. 6,285,892 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| designating at least one of the plural terminals as a transmitter...; designating a set of the plural terminals as able to receive data output to the wireless network by the transmitter | In a BLE network, devices are designated into roles; the "Advertiser" is designated as the transmitter, and "Scanners" are designated as the set of receiving terminals. | ¶46, ¶47 | col. 3:48-52 |
| issuing a first message to the plural terminals identifying the transmitter and the set of plural terminals | The Advertiser transmits a broadcast message (an Advertising Broadcast or ADVB) that implicitly identifies the transmitter (by its address) and the set of receivers (all scanning devices in range). | ¶48 | col. 3:24-28 |
| receiving a request for transmission from the transmitter | A BLE network implements requests for transmission via protocols like the Attribute Protocol (ATT) or control links (ADVB-C) that carry scan and connection requests. | ¶51 | col. 2:1-5 |
| issuing a second message to the plural terminals that identifies the transmitter | The complaint alleges that the same ADVB broadcast message also serves as the second message, as its PDU header contains the advertiser's address, which identifies the transmitter. | ¶52, ¶53 | col. 8:1-5 |
| and wherein... at least one of those of the plural terminals that are not able to receive the data is enabled to enter a low-power mode | The complaint alleges that BLE networks use a "White List" filtering procedure. Transmissions from devices not on the list are ignored, allowing the scanning device to enter a low-power "Standby State." | ¶55 | col. 8:15-19 |
- Identified Points of Contention:
- Scope Questions: The claim recites a sequence of discrete actions (designating, issuing a first message, receiving a request, issuing a second message) typical of a centralized controller. A key dispute may be whether the continuous, peer-to-peer operation of a standard BLE protocol, where devices have predefined roles, can be mapped onto this command-and-control structure.
- Technical Questions: It raises the question of whether the BLE "white list" function—a general-purpose filter based on pre-set device addresses—is technically equivalent to the claimed step of enabling a low-power mode for terminals "not able to receive the data" in the context of a specific, dynamically messaged transmission. The complaint provides a BLE topology diagram to illustrate the distinct physical channels for advertising and piconet connections (Compl. ¶45, p. 23).
V. Key Claim Terms for Construction
'891 Patent
- The Term: "adds ... an additional data field" (Claim 14)
- Context and Importance: This term is the core of the infringement theory. The case may turn on whether populating a standard data payload in a modern BLE packet is equivalent to "adding" a field as understood in the pre-BLE context of the patent. Practitioners may focus on this term because Defendant is likely to argue that its products simply use the BLE standard as intended, rather than performing an extra "adding" step.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification discusses a "broadcast messaging scheme" and the goal of transmitting messages "without requiring either the sending or receiving user device to join a piconet" ('891 Patent, col. 2:60-65). This focus on functional outcome could support construing "adds" to mean including broadcast data in any available portion of an inquiry-type packet.
- Evidence for a Narrower Interpretation: The patent repeatedly uses the phrase "adds to each inquiry message ... an additional data field," suggesting something appended to or distinct from the conventional structure of an inquiry message ('891 Patent, Abstract). The complaint itself uses a diagram of a BLE packet where "AdvData" is a standard field, not an "additional" one (Compl. ¶23, p. 7).
'892 Patent
- The Term: "designating a set of the plural terminals" (Claim 1)
- Context and Importance: The patent's solution relies on a central controller actively "designating" a group of receivers for a transmission. The complaint maps this to the static roles of "Advertiser" and "Scanner" in the BLE protocol. The construction of "designating" will determine if a static protocol role meets the claim's requirement for what appears to be a dynamic, per-transmission action.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent's general description of its system for transmitting data "among plural WTs in a wireless network" could support a view where "designating" refers to establishing the overall network architecture and roles ('892 Patent, col. 3:18-21).
- Evidence for a Narrower Interpretation: The flowchart in Figure 8 shows "BS/CC DESIGNATES RECEIVING WTs" as a specific, active step (S802) in the process, separate from designating a transmitter (S801). This suggests a dynamic, case-by-case action by a controller, not a fixed protocol-defined role ('892 Patent, Fig. 8).
VI. Other Allegations
- Indirect Infringement: The complaint alleges Cisco induces infringement by providing customers with instructional materials, including marketing documents, user guides, and YouTube videos, that allegedly demonstrate and encourage use of the accused products in an infringing manner (Compl. ¶28-29, ¶57-58).
- Willful Infringement: Willfulness is alleged based on Cisco’s purported knowledge of the patents since at least September 28, 2018, the date of a prior complaint, and its alleged continuation of the infringing activity after receiving notice (Compl. ¶31, ¶60).
VII. Analyst’s Conclusion: Key Questions for the Case
- Claim Validity: The central and likely dispositive issue for the case as pleaded is one of claim validity. Given that the specific independent claims asserted in the complaint (Claim 14 of the '891 patent and Claim 1 of the '892 patent) were subsequently cancelled in IPR proceedings, a primary question is what legal basis, if any, remains for the infringement action to proceed.
- Architectural Mismatch: A key technical question is one of architectural mapping. Can the centralized, command-and-control systems described in the patents—where a base station actively "adds" data fields ('891 patent) or "designates" receiver sets and issues reservation messages ('892 patent)—be persuasively mapped onto the decentralized, peer-to-peer architecture of the modern Bluetooth Low Energy standard used by the accused products?
- Definitional Scope: The dispute raises a core question of definitional scope: do terms rooted in the context of early 2000s wireless protocols (e.g., "inquiry message") read on their modern, but functionally distinct, counterparts (e.g., BLE "advertising packet")? The outcome will likely depend on whether the court finds a fundamental match or mismatch in the underlying technical operations.