DCT
2:19-cv-00125
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: 2:19-cv-00125, E.D. Tex., 04/16/2019
- Venue Allegations: Venue is based on allegations that Defendant Samsung Electronics America, Inc. maintains regular and established places of business within the Eastern District of Texas and makes, uses, offers for sale, sells, or imports the accused products to customers in the district.
- Core Dispute: Plaintiff alleges that a wide range of Defendant’s smartphones, tablets, and smart-home devices that implement the IEEE 802.11ac Wi-Fi standard infringe a patent related to dynamically reconfiguring communication terminals.
- Technical Context: The technology concerns methods for enabling two communication devices, potentially built to different standards, to negotiate their capabilities and establish a compatible communication link.
- Key Procedural History: The complaint does not mention any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history related to the patent-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 1999-04-23 | U.S. Patent No. 6,954,634 Priority Date |
| 2005-10-11 | U.S. Patent No. 6,954,634 Issued |
| 2019-04-16 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,954,634, RECONFIGURABLE COMMUNICATION NETWORK, issued October 11, 2005
The Invention Explained
- Problem Addressed: The patent addresses the problem of device incompatibility arising from the "plethora of communications standards." In a world with diverse and evolving protocols, a user might need multiple devices to communicate in different environments, or two devices may be unable to establish an optimal connection because their underlying standards differ. (’634 Patent, col. 1:38-41).
- The Patented Solution: The invention proposes a system where communication terminals can dynamically adapt to one another through a "process of service negotiation." (’634 Patent, col. 2:1-5). Instead of being limited to factory-set protocols, a terminal can transmit its capabilities to another device. The second device can then receive this information, select compatible parameters, and reconfigure its own software to establish a functional communication link. This process allows for on-the-fly compatibility without prior programming for every possible standard. (’634 Patent, Abstract; col. 4:16-24).
- Technical Importance: This technology provides a framework for interoperability and future-proofing, allowing devices to adapt to new or unknown communication protocols they encounter in the field. (’634 Patent, col. 2:20-33).
Key Claims at a Glance
- The complaint asserts independent claim 6. (Compl. ¶14).
- The essential elements of independent claim 6 are:
- means for transmitting capabilities of said communication terminal to another terminal;
- means for receiving parameters from said another terminal, said parameters matching said capabilities;
- means for selecting a portion of said parameters to form selected parameters and informing said another terminal of said selected parameters;
- means for receiving from said another terminal required information to form a profile of said communication terminal based on said selected parameters; and
- means for configuring said profile in response to said required information from said another terminal.
III. The Accused Instrumentality
Product Identification
The "Accused Infringing Devices" comprise a broad list of Samsung products, including Galaxy smartphones, Tab tablets, and SmartThings Wi-Fi hubs and peripheral devices. (Compl. ¶9).
Functionality and Market Context
The complaint alleges that these devices infringe by their support and implementation of the IEEE 802.11ac wireless standard. (Compl. ¶9). According to the complaint, devices using this standard "exchange information relating to how the devices will communicate wirelessly," including performance characteristics such as High Throughput (HT), Very High Throughput (VHT), and beamforming (MIMO) capabilities. (Compl. ¶11). This exchange allegedly allows the devices to "form a profile of sender’s and receiver’s HT/VHT/MIMO capabilities," after which the devices "configure themselves to communicate in a preferred manner," such as by using SU-MIMO beamforming. (Compl. ¶¶ 12-13). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
’634 Patent Infringement Allegations
| Claim Element (from Independent Claim 6) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| means for transmitting capabilities of said communication terminal to another terminal; | The Accused Infringing Devices exchange information including performance characteristics such as HT, VHT, and MIMO capabilities. | ¶11 | col. 7:62-65 |
| means for receiving parameters from said another terminal, said parameters matching said capabilities; | The complaint alleges a two-way "exchange of information" that allows devices to form a profile of each other's capabilities, which suggests the receipt of parameters from another device. | ¶¶11-12 | col. 8:1-3 |
| means for selecting a portion of said parameters to form selected parameters and informing said another terminal of said selected parameters; | The complaint alleges that an "exchange of information allows the devices to form a profile," which may suggest a selection process is performed to establish the parameters for the profile. | ¶12 | col. 8:4-9 |
| means for receiving from said another terminal required information to form a profile of said communication terminal based on said selected parameters; and | The complaint states that the exchange of capability information "allows the devices to form a profile of sender's and receiver's HT/VHT/MIMO capabilities." | ¶12 | col. 8:3-6 |
| means for configuring said profile in response to said required information from said another terminal. | After the profile is established, "the devices configure themselves to communicate in a preferred manner, such as by SU beamforming (SU-MIMO)." | ¶13 | col. 8:7-9 |
Identified Points of Contention
- Scope Questions (Means-Plus-Function): Claim 6 is drafted in means-plus-function format under 35 U.S.C. § 112(f). A central issue will be identifying the specific structures (e.g., processor, software modules) disclosed in the ’634 patent specification that perform the claimed functions. Infringement will require proving that the accused Samsung devices contain structures that are identical or equivalent to those disclosed structures. The complaint does not identify the specific structures it alleges are equivalent.
- Technical Questions: A key factual question will be whether the operational flow of the IEEE 802.11ac standard’s connection-establishment protocol maps onto the specific, multi-step negotiation recited in claim 6. For example, the court may need to determine if the 802.11ac protocol includes a discrete step of one terminal "selecting a portion of said parameters" and then "informing" the other, or if it operates via a different mechanism that does not meet this limitation.
V. Key Claim Terms for Construction
- The Term: "profile"
- Context and Importance: The complaint’s infringement theory hinges on the allegation that the accused devices "form a profile" of each other's capabilities. (Compl. ¶12). The definition of "profile" will be critical. If it is construed narrowly to require a specific, downloadable software module, the infringement case may be more difficult to prove than if it is construed broadly to cover any set of negotiated parameters that govern a communication session.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not provide an explicit definition for "profile." Claim 6 describes it as being formed "based on said selected parameters," which may support an interpretation that any collection of parameters defining the communication link constitutes a "profile." (’634 Patent, col. 8:5-6).
- Evidence for a Narrower Interpretation: The detailed description discusses transmitting a "Download Installation Profile" and downloading "code modules." (’634 Patent, col. 6:66–col. 7:10). This may support an argument that a "profile" must be a formal, installable data package, rather than simply the resulting parameters from a standardized handshake protocol. The abstract also discusses "building a new function into an actual implementation on the terminal," suggesting a more substantial reconfiguration than merely selecting from pre-existing operational modes. (’634 Patent, Abstract).
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement, asserting that Samsung "intentionally instructs its customers to use the Accused Infringing Devices in an infringing manner" through materials such as user guides, websites, and training videos. (Compl. ¶¶ 16-17). It further alleges contributory infringement, claiming that portions of the software in the accused devices are "especially made, or especially adapted, solely for use in infringement" and are not staple articles of commerce. (Compl. ¶18).
- Willful Infringement: The willfulness allegation is based on post-suit conduct. The complaint asserts that Samsung will be on notice of the ’634 Patent upon service of the complaint and that any continued infringement thereafter would be willful. (Compl. ¶19).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of structural equivalence: Because the asserted claim is in means-plus-function format, the case will likely turn on whether the specific hardware and software components within Samsung's 802.11ac-compliant devices are legally equivalent to the "processor," "memory," and "configuration manager" structures disclosed in the ’634 patent specification.
- A second central question will be one of procedural mapping: Does the standard communication handshake of the IEEE 802.11ac protocol perform the specific sequence of functions recited in Claim 6? The dispute may focus on whether the accused protocol includes a distinct step of "selecting a portion of... parameters" and "informing" the other device, as the claim requires, or if it achieves compatibility through a technically different process.