DCT
2:18-cv-00512
Uniloc 2017 LLC v. Terrano LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Uniloc 2017 LLC (Delaware)
- Defendant: Terrano, LLC (Pennsylvania)
- Plaintiff’s Counsel: Prince Lobel Tye LLP; Nelson Bumgardner Albritton P.C.
- Case Identification: 2:18-cv-00512, E.D. Tex., 03/04/2019
- Venue Allegations: The complaint does not contain specific allegations establishing the basis for venue in the Eastern District of Texas.
- Core Dispute: Plaintiff alleges that Defendant’s Bluetooth-enabled communication systems infringe a patent related to enabling multi-party group calls on a wireless mobile device.
- Technical Context: The technology addresses the creation of conference calls on a single mobile handset by combining a traditional cellular or cordless call with one or more local, direct device-to-device wireless links, such as Bluetooth.
- Key Procedural History: The complaint alleges the patent-in-suit was issued on a first-action allowance. It also asserts that Defendant has been on notice of the patent since the service of a complaint in a separate case, 2:18-cv-00397, which may form the basis for its willfulness allegations.
Case Timeline
| Date | Event |
|---|---|
| 1999-12-08 | Priority Date for U.S. Patent No. 6,405,027 |
| 2002-06-11 | Issue Date for U.S. Patent No. 6,405,027 |
| 2019-03-04 | Amended Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,405,027 - "GROUP CALL FOR A WIRELESS MOBILE COMMUNICATION DEVICE USING BLUETOOTH", Issued June 11, 2002
The Invention Explained
- Problem Addressed: At the time of the invention, multi-party conference call functionality was known in contexts like wired networks and PBX systems, but was not available for mobile phones or entirely wireless terminals (Compl. ¶6; ’027 Patent, col. 1:38-41). The complaint asserts that the contemporary Bluetooth specification did not contemplate using a Bluetooth link to conference a second phone into a cellular call, or to create a group call implemented entirely with Bluetooth intercom links (Compl. ¶¶ 9-10).
- The Patented Solution: The invention describes a mobile communication handset that can manage at least two wireless links simultaneously: a first link to a wide-area network (e.g., a cellular call) and a second, direct device-to-device link (e.g., a Bluetooth intercom call) ('027 Patent, Abstract). The handset includes "group call combining means" to merge the audio signals from these separate calls, allowing the handset user, the remote party on the cellular link, and the local party on the Bluetooth link to all participate in a single conference call ('027 Patent, col. 2:57-68). This architecture is depicted in Figure 1A of the patent.
- Technical Importance: The invention purported to increase the functionality of mobile phones by enabling them to host multi-party calls locally, a feature the complaint claims was previously unavailable (Compl. ¶14).
Key Claims at a Glance
The complaint alleges infringement of "claims of the '027 Patent" without specifying which claims it asserts (Compl. ¶24). Independent claims 1 and 12 are foundational to the patent. The Patent Office's stated reason for allowance, as quoted in the complaint, explicitly references the subject matter of these two claims (Compl. ¶16).
- Independent Claim 1 (Device Claim):
- A mobile communication device comprising a local end (transducers);
- Means for carrying on a first call to a remote end via a first wireless link;
- Means for carrying on a second call to another communication device via a direct device-to-device second wireless link, without an intervening base station;
- The means for carrying on the first and second calls can be active simultaneously; and
- Further comprising "group call combining means" for forming the signals for the local end and the first and second calls to maintain the group call.
- Independent Claim 12 (Program Claim):
- A program stored in memory for a processor, configured for steering:
- Carrying on a local side of a first call via a first wireless link;
- Carrying on a local side of a second call via a direct device-to-device second wireless link;
- Wherein the local sides of the first and second calls are active simultaneously; and
- Forming the signals applied to the local end and the two calls to maintain a group call.
III. The Accused Instrumentality
Product Identification
The complaint identifies communication systems designated "TERRANO-X and TERRANO XT" as the "Accused Infringing Devices" (Compl. ¶20).
Functionality and Market Context
- The complaint describes the accused products as "mobile communication devices" that implement Bluetooth technology (Compl. ¶¶ 20-21). Their accused functionality involves establishing at least two wireless communication links: a first link between two local devices, and a second link from one of those devices to a remote mobile phone (Compl. ¶22). The devices can allegedly join these links into a conference call (Compl. ¶23).
- The complaint alleges the products are imported, used, offered for sale, and sold in the United States, but provides no further detail regarding their market positioning or commercial significance (Compl. ¶20).
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint does not contain a claim chart. The following table summarizes the infringement theory for representative Claim 1 based on the narrative allegations.
'027 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A mobile communication device | The Accused Infringing Devices (TERRANO-X and TERRANO XT) are identified as mobile communication devices. | ¶21 | col. 6:46 |
| means for carrying on a local side of a first call to a remote end thereof via a first wireless link | The first or second accused device communicates with a remote mobile phone via a second communication link. | ¶22 | col. 6:50-55 |
| means for carrying on a local side of at least a second call ... via a direct device-to-device second wireless link, without any intervening base station | A first accused device communicates with a second accused device via a first wireless communication link. | ¶22 | col. 6:56-62 |
| wherein the means for carrying on the local sides of the first and second calls can be active simultaneously | The complaint alleges the devices are capable of at least two wireless communication links that can be joined into a conference call, which suggests simultaneous activity. | ¶¶21, 23 | col. 7:1-2 |
| further comprising group call combining means for forming the signals applied to said local end, the signals applied to said first call, and the signals applied to said second call | Once the communication links are established, the devices may be joined into a conference call with the remote mobile phone. | ¶23 | col. 7:3-10 |
- Identified Points of Contention:
- Scope Questions: Claim 1 is written in means-plus-function format. A central issue will be whether the "group call combining means" is limited to the specific structure disclosed in the patent—a baseband section with a DSP and microprocessor programmed with specific firmware—and its structural equivalents ('027 Patent, Fig. 2; col. 4:28-38). The complaint provides no information on the internal architecture of the accused devices, raising the question of what evidence Plaintiff will offer to show the accused products contain the required structure.
- Technical Questions: A key factual question is whether the accused devices' method for creating a conference call is technically the same as that claimed. The patent describes a specific function of forming output signals by summing input signals from the various call participants ('027 Patent, col. 3:52-68). The complaint does not allege how the accused devices technically combine the audio streams, leaving open whether their functionality matches that required by the claims.
V. Key Claim Terms for Construction
The Term: "group call combining means" (Claim 1)
Context and Importance: This means-plus-function term is the technological core of the asserted independent device claim. The outcome of the infringement analysis will heavily depend on the scope of the structure corresponding to this function. Practitioners may focus on this term because its construction will determine whether any device that can merge audio from a Bluetooth and cellular call infringes, or only those that do so using a specific hardware and software implementation.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that the corresponding structure is a general-purpose processor configured to perform the function, as such components are common.
- Evidence for a Narrower Interpretation: The specification explicitly discloses the corresponding structure as a "baseband section 30" which includes a "digital signal processor (DSP) 30a and microprocessor 30b" and associated memory storing firmware ('027 Patent, col. 4:28-38). The function is further defined as combining audio signals according to a set of mathematical equations ('027 Patent, col. 3:52-68). A court may limit the scope of the term to this disclosed structure and its equivalents.
The Term: "direct device-to-device second wireless link" (Claim 1)
Context and Importance: This term distinguishes the invention from purely network-based conference calling. The nature of the "direct" link is critical to defining the claim's boundary.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself is technologically neutral as to the specific protocol used for the direct link, so long as it is "without any intervening base station" ('027 Patent, col. 6:59-60).
- Evidence for a Narrower Interpretation: The patent specification, including the title and detailed description, repeatedly and specifically identifies the link as one implemented "in accordance with the Bluetooth Intercom Profile" ('027 Patent, col. 1:16-19, col. 2:13-15). A party might argue this repeated emphasis limits the claim's scope to Bluetooth-based links, effectively reading the protocol into the claim.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement, stating that Terrano instructs its customers on using the accused functionality through "videos, demonstrations, brochures, and installation and user guides" (Compl. ¶25). It further alleges that the software providing the functionality has no substantial non-infringing use (Compl. ¶27).
- Willful Infringement: The complaint alleges that Terrano has been on notice of the '027 Patent "since, at the latest, the service of the complaint upon it in 2:18-cv-00397" (Compl. ¶28). It alleges that despite this knowledge, Terrano "has refused to discontinue its infringing acts," which may support a claim for post-suit willful infringement (Compl. ¶28).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of claim scope and structure: As the core "group call combining means" limitation is governed by 35 U.S.C. § 112(f), the case may turn on whether the internal hardware and software architecture of the Terrano devices can be proven to be structurally equivalent to the specific DSP/microprocessor configuration disclosed in the '027 Patent's specification.
- The case will present a key evidentiary question of technical operation: Can Uniloc produce evidence, likely through discovery or reverse engineering, to show that the Accused Infringing Devices actually perform the claimed functions—specifically, the simultaneous operation of a cellular-type link and a direct device-to-device link, and the combination of their audio signals in a manner consistent with the patent's teachings? The high-level notice pleading in the complaint leaves this question entirely open.