DCT
2:18-cv-00508
Uniloc 2017 LLC v. Samsung Electronics America Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Uniloc 2017 LLC (Delaware)
- Defendant: Samsung Electronics America, Inc. (New York) and Samsung Electronics Co. Ltd. (South Korea)
- Plaintiff’s Counsel: Prince Lobel Tye LLP; Nelson Bumgardner Albritton P.C.
- Case Identification: 2:18-cv-00508, E.D. Tex., 11/17/2018
- Venue Allegations: Plaintiff alleges venue is proper because Samsung offers its products and services to customers located in the Eastern District of Texas.
- Core Dispute: Plaintiff alleges that a wide range of Samsung's mobile devices infringe a patent related to device-level anti-theft protection for radiotelephony devices.
- Technical Context: The technology concerns methods for automatically locking a mobile device after a period of inactivity to prevent unauthorized use, even when the legitimate user's identification module is installed.
- Key Procedural History: The complaint alleges that Samsung was on notice of the patent-in-suit due to a prior lawsuit, Civil Action No. 2:18-cv-00309. Subsequent to the filing of this complaint, the patent-in-suit (the '654 Patent) survived an inter partes review (IPR) proceeding in which claims 10-20 were canceled, but the presently asserted claims (1, 3-5, and 7) were not.
Case Timeline
| Date | Event |
|---|---|
| 1999-12-21 | '654 Patent Priority Date |
| 2004-12-28 | '654 Patent Issue Date |
| 2018-11-17 | Complaint Filing Date |
| 2021-11-09 | '654 Patent IPR Certificate Issued |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,836,654 - "ANTI-THEFT PROTECTION FOR A RADIOTELEPHONY DEVICE"
- Patent Identification: U.S. Patent No. 6,836,654, "ANTI-THEFT PROTECTION FOR A RADIOTELEPHONY DEVICE," issued December 28, 2004.
The Invention Explained
- Problem Addressed: The patent addresses the problem of mobile device theft where a phone is stolen along with its linked user identification module (e.g., a SIM card). In such cases, the thief could use the device until the owner noticed the theft and contacted the network operator to block the module, which could involve a significant delay ('654 Patent, col. 1:21-35).
- The Patented Solution: The invention is a device-level security feature that automatically blocks the normal operation of the phone if it has been "inactive for a defined period of time," even if the correct, linked identification module is present ('654 Patent, Abstract; col. 2:36-52). This blocking is triggered by a timer. Normal operation can only be restored by supplying a "deblocking code" (e.g., a PIN) directly to the device ('654 Patent, col. 5:48-51). The system is designed so that a phone left unattended or stolen will likely become inactive long enough to self-lock, rendering it useless to a thief without the owner's code ('654 Patent, col. 2:53-58).
- Technical Importance: This approach creates an anti-theft mechanism that is local to the device and independent of (and potentially much faster than) network-level intervention, thereby reducing the value of a stolen phone ('654 Patent, col. 2:58-63).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶12).
- Essential elements of independent claim 1 include:
- "blocking means" for preventing normal operation, including outgoing calls.
- "timing means" for activating the blocking means after the device, containing a "linked user identification module", has been "inactive" for a "defined period of time".
- "deblocking means" for permitting normal operation upon supply of a "deblocking code".
- The complaint also asserts dependent claims 3-5 and 7, and reserves the right to assert others (Compl. ¶12).
III. The Accused Instrumentality
Product Identification
- The complaint accuses a broad range of Samsung smartphones and mobile devices, including the Galaxy Note8, Galaxy S9+, Galaxy A-series, and J-series, among many others, collectively termed the "Accused Infringing Devices" (Compl. ¶10).
Functionality and Market Context
- The complaint alleges that the Accused Infringing Devices are "mobile radiotelephony devices incorporating antitheft technology that utilizes timing and identification codes to block and unblock normal operation of the device" (Compl. ¶11). It further asserts that Samsung incorporates software and components that enable the devices to operate in a manner that infringes the '654 Patent (Compl. ¶13). The complaint does not describe the specific operation of any accused Samsung security feature (e.g., screen lock, Find My Mobile) in technical detail.
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
- Claim Chart Summary: The complaint does not contain a claim chart. The following table synthesizes the infringement theory from the complaint's narrative allegations against the elements of independent claim 1.
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| blocking means for preventing a normal operation of the mobile radiotelephony device, wherein the normal operation includes a processing of outgoing calls; | The accused devices allegedly incorporate antitheft technology that functions to "block... normal operation of the device." | ¶11 | col. 5:38-47 |
| timing means for activating the blocking means in response to the mobile radiotelephony device being inactive during the normal operation of the mobile radiotelephony device for a defined period of time subsequent to a mounting of a linked user identification module inside the mobile radiotelephony device; | The accused devices allegedly utilize "timing" to trigger the blocking of the device's normal operation. | ¶11 | col. 5:32-38 |
| and deblocking means for permitting the normal operation of the mobile radiotelephony device in response to a supply of a deblocking code to the mobile radiotelephony device... | The accused devices allegedly utilize "identification codes to... unblock normal operation of the device." | ¶11 | col. 5:48-51 |
- Identified Points of Contention:
- Scope Questions (Means-Plus-Function): The asserted independent claim is drafted using means-plus-function language ("blocking means," "timing means"). Under 35 U.S.C. § 112(f), the scope of these elements is limited to the specific algorithms and structures disclosed in the patent's specification (e.g., the logic in the FIG. 3 flowchart) and their equivalents. A central dispute will likely be whether the software architecture of the accused Samsung devices embodies structures that are equivalent to those disclosed in the patent for performing the claimed functions.
- Technical Questions: The complaint does not specify how any accused Samsung feature satisfies the "inactive...for a defined period of time" limitation. A key technical question will be whether a standard, user-configurable screen timeout in the accused devices functions in the same way as the anti-theft inactivity timer described in the patent ('654 Patent, col. 5:19-21), or if there is a fundamental operational difference.
V. Key Claim Terms for Construction
The Term: "inactive... for a defined period of time"
Context and Importance: This phrase defines the trigger for the patented anti-theft feature. Its construction is critical to determining whether the operation of the accused devices falls within the claim scope. Practitioners may focus on this term because the infringement case depends on mapping this concept onto a specific function of the accused devices, such as a screen lock timeout.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification mentions the period can be "of the order of several minutes," which could support an argument that it covers conventional, short-duration screen timeouts ('654 Patent, col. 2:56-57).
- Evidence for a Narrower Interpretation: The specification describes this inactivity in the context of a device that is "lost, stolen or left without attendance for some time" ('654 Patent, col. 5:19-21). This context suggests the term may refer to a specific anti-theft state rather than any generic period of non-interaction with the device. The patent's flowchart shows the inactivity check (K10) occurring within a specific anti-theft logic path, after verifying a "linked" module is present (Y4) ('654 Patent, FIG. 3).
The Term: "linked user identification module"
Context and Importance: The claim requires the security feature to activate when a "linked" module is present, distinguishing it from systems that react to an unlinked or unknown module. The definition of how a module becomes "linked" to the device is therefore central to the infringement analysis.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification notes that "the identification module is automatically linked to the device without the intervention of the user" by reading and storing data such as an IMSI number ('654 Patent, col. 2:6-10). This could support a reading where any insertion of a SIM card creates a "link."
- Evidence for a Narrower Interpretation: The patent also describes a process where the user must first access a "configuration menu" to lock the device, an action which then "automatically link[s]" the currently inserted module ('654 Patent, col. 4:65-67, col. 5:1-3). This may support a narrower construction requiring an explicit user action to establish the "link," beyond simply using the device with a SIM card.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Samsung induces infringement by providing customers with instructional materials, including user guides, support websites, and training videos, that allegedly instruct on the use of the infringing functionalities (Compl. ¶14, ¶15). It also alleges contributory infringement, stating that Samsung provides components "especially made or especially adapted for use in infringement" (Compl. ¶16).
- Willful Infringement: The willfulness claim is based on alleged post-suit knowledge. The complaint asserts that Samsung has been on notice of its infringement since at least the service of a complaint in a prior case (Civil Action No. 2:18-cv-00309) and that its continued infringement thereafter is intentional and willful (Compl. ¶17).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim scope under § 112(f): As the asserted claim is in means-plus-function format, the dispute will likely focus on identifying the specific algorithms disclosed in the '654 Patent's specification corresponding to the "timing means" and "blocking means," and then determining whether the accused Samsung software architectures contain equivalent structures performing the identical functions.
- A central factual question will be one of operational equivalence: Does the functionality of a standard screen timeout in the accused Samsung devices equate to the device being "inactive for a defined period of time" as contemplated by the patent, which frames the feature as a specific anti-theft measure triggered after a device is potentially lost or stolen?
- A third key question will concern the "linked" module precondition: Can the plaintiff demonstrate that the accused devices perform the claimed blocking function only after a user identification module has become "linked" in the manner described in the patent, and what evidence will establish that such a link was created?