DCT

2:20-cv-00004

Salazar v. AT&T Mobility LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 5:19-cv-00075, E.D. Tex., 07/19/2019
  • Venue Allegations: Venue is alleged on the basis that each Defendant has regular and established places of business in the district, operates and/or leases cell towers, and has offered for sale, sold, or imported the accused products within the district.
  • Core Dispute: Plaintiff alleges that Defendants’ sale of certain HTC One series smartphones infringes a patent related to a universal wireless communication system capable of controlling external devices.
  • Technical Context: The technology concerns a unified, microprocessor-controlled device designed to replace multiple remote controls by communicating with various appliances using both infrared (IR) and radio frequency (RF) signals.
  • Key Procedural History: The filing is a First Amended Complaint. 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
1995-09-28 ’467 Patent Priority Date
1998-09-01 ’467 Patent Issue Date
2019-07-19 Complaint Filing Date

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

U.S. Patent No. 5,802,467 - WIRELESS AND WIRED COMMUNICATIONS, COMMAND, CONTROL AND SENSING SYSTEM FOR SOUND AND/OR DATA TRANSMISSION AND RECEPTION

  • Issued: September 1, 1998

The Invention Explained

  • Problem Addressed: The patent describes a market where remote control devices were limited, either by using only a single communication method (e.g., line-of-sight infrared or potentially interfering radio frequency) or by being tied to specific hardware like a cable television converter, which limited their universal applicability and flexibility (’467 Patent, col. 1:16–48).
  • The Patented Solution: The invention proposes a unified, microprocessor-based system, embodied in a handset or base station, that can function as a universal remote for a multitude of external appliances (’467 Patent, col. 2:11–26). A key aspect of the solution is a novel data storage method that uses "parameter sets" to reconstruct the full command codes for various devices, which claims to substantially reduce the memory required to store the commands for many different products (’467 Patent, col. 8:22–30). The system is designed to be flexible, using both RF and IR transceivers to communicate.
  • Technical Importance: The described technology represents an early architecture for a universal remote control capable of learning or storing protocols for many different devices and brands, aiming to consolidate numerous single-purpose remotes into one adaptable device (’467 Patent, col. 2:56–64).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (Compl. ¶18).
  • The essential elements of independent claim 1 are:
    • A microprocessor for generating control signals and creating reprogrammable communication protocols, which include command code sets.
    • A memory device storing "parameter sets" used to "recreate a desired command code set," such that the memory space for the parameters is smaller than for the full command code sets.
    • A user interface for receiving user selections and displaying menus, with the microprocessor generating a communication protocol in response to those selections.
    • An infrared (IR) frequency transceiver for transmitting to, and receiving from, external devices.
  • The complaint does not explicitly reserve the right to assert dependent claims.

III. The Accused Instrumentality

Product Identification

  • The accused products are the HTC One M7, HTC One M8, and HTC One M9 smartphones (Compl. ¶12).

Functionality and Market Context

  • The complaint describes the accused products as Android-based smartphones that include microprocessors (e.g., Qualcomm® Snapdragon™ 600), memory (RAM and Flash), user interfaces, and infrared transceivers (Compl. ¶19, ¶31, ¶34, ¶38). Their functionality is alleged to meet the patent claims through a combination of hardware and software (e.g., Google Android, HTC Sense) that enables communication with external devices like televisions via various protocols, including IR (Compl. ¶30, ¶33).

IV. Analysis of Infringement Allegations

’467 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a microprocessor for generating a plurality of control signals used to operate said system, said microprocessor creating a plurality of reprogrammable communication protocols... wherein each communication protocol includes a command code set that defines the signals that are employed to communicate with each one of said external devices The accused phones contain a microprocessor (Qualcomm® Snapdragon™ 600) that generates control signals and creates reprogrammable protocols (e.g., Bluetooth, IR) with command code sets to operate the system and communicate with external devices. ¶31, ¶32, ¶33 col. 7:12–25
a memory device coupled to said microprocessor configured to store a plurality of parameter sets retrieved by said microprocessor so as to recreate a desired command code set, such that the memory space required to store said parameters is smaller than the memory space required to store said command code sets The phones include memory (RAM, Flash) coupled to the microprocessor, which is alleged to store parameter sets to recreate command code sets in a way that requires less memory space than storing the full command code sets. ¶34, ¶35 col. 8:22–44
a user interface coupled to said microprocessor for sending a plurality of signals corresponding to user selections to said microprocessor and displaying a plurality of menu selections available for the user's choice, said microprocessor generating a communication protocol in response to said user selections The phones have a user interface that sends signals to the microprocessor based on user input and displays menus, with the microprocessor generating communication protocols in response. ¶36, ¶37 col. 6:57–64
an infra-red frequency transceiver coupled to said microprocessor for transmitting to said external devices and receiving from said external devices, infra-red frequency signals in accordance with said communications protocols The phones include an IR transceiver coupled to the microprocessor that transmits to, and receives from, external devices. ¶38 col. 4:11–14
  • Identified Points of Contention:
    • Technical Question: The complaint alleges that the accused phones store "parameter sets" to "recreate" command codes in a manner that saves memory, directly tracking the claim language (Compl. ¶34, ¶35). A central factual question will be whether the accused phones’ software architecture for storing IR codes actually performs this specific recreation function as detailed in the patent’s specification, or if it uses a different, more conventional form of data compression or storage. The complaint provides no specific facts to support this allegation.
    • Scope Question: A potential dispute may arise over whether the IR hardware in the accused phones constitutes a "transceiver" capable of both transmitting and receiving IR signals, as required by the claim (Compl. ¶38). Evidence will be required to show that the component is not merely a transmit-only IR blaster.
    • Scope Question: The infringement theory applies the claims, which describe a dedicated remote control system, to a general-purpose smartphone. The court may need to determine if a "communications, command, control and sensing system" can be read to cover a multi-function device like a smartphone, where the accused functionality is provided by one of many software applications.

No probative visual evidence provided in complaint.

V. Key Claim Terms for Construction

  • The Term: "a memory device... configured to store a plurality of parameter sets... so as to recreate a desired command code set"

  • Context and Importance: This limitation appears to be a core inventive concept of the patent, distinguishing it from simply storing a large library of command codes. The viability of the infringement case hinges on whether the accused phones' method of storing IR codes falls within the scope of this term. Practitioners may focus on this term because the complaint's allegation is conclusory and highly technical, making it a likely point of dispute.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The plaintiff may argue that the term "parameter sets" should be given a broad meaning, encompassing any form of compressed data from which a full command signal can be reconstructed.
    • Evidence for a Narrower Interpretation: The defendant may argue the term is implicitly defined by the patent's detailed description, which discloses a specific hierarchical structure of "parent" and "child" arrays containing fields for signal characteristics like "Clock 0 Width" and "Pulse 1 Width" (’467 Patent, FIG. 6; col. 8:31–54). This detailed embodiment could be used to argue for a narrower construction limited to this specific data structure.

  • The Term: "reprogrammable communication protocols"

  • Context and Importance: The scope of this term is important for determining what actions constitute "reprogramming." The complaint alleges that using the phone's built-in Bluetooth constitutes creating such a protocol (Compl. ¶32).

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: A plaintiff might argue this term covers any protocol defined by software, which can be changed or updated by installing new applications or system updates.
    • Evidence for a Narrower Interpretation: A defendant could argue the term, in the context of the patent, refers to the ability to fundamentally alter the communication rules of the core system itself, for example by downloading a new "data base update" (’467 Patent, col. 7:26–29), rather than merely installing a self-contained application that uses its own pre-defined protocol.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement by Defendants through acts of selling the infringing phones, marketing their capabilities, and providing instructions and technical support (Compl. ¶21). It also alleges contributory infringement, asserting the phones are not suitable for substantial non-infringing use (Compl. ¶26), an argument that may face challenges for a multi-functional smartphone.
  • Willful Infringement: Willfulness is alleged based on Defendants having "full knowledge, or willful blindness" of the infringement (Compl. ¶28). The complaint asserts, on information and belief, that Defendants had knowledge of the ’467 Patent since its issue date in September 1998, but provides no specific facts to support this pre-suit knowledge allegation (Compl. ¶23).

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

  • A central issue will be one of technical evidence: can the plaintiff produce evidence demonstrating that the accused smartphones' software implements the specific, memory-saving data structure claimed in the patent—wherein "parameter sets" are used to "recreate" command codes—or will discovery show a functionally different method of storing IR signals?
  • The case will also likely turn on a question of claim construction: can the term "a memory device... configured to... recreate a desired command code set", which is described with significant detail in the specification, be construed broadly enough to read on the data handling methods used in a modern smartphone operating system?
  • A third question will be one of functional scope: does the accused phones' IR hardware meet the "transceiver" limitation, which requires both transmitting and receiving capabilities, or is it a transmit-only component, creating a literal non-infringement defense for that element?