Togail Tech Ltd v. TCL Technology Group Corp

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Togail Technologies Ltd. (Ireland)
  • Defendant: TCL Technology Group Corp. (China), et al. (collectively "TCL")
  • Plaintiff’s Counsel: BC LAW GROUP, Group
• Case Identification: 2:23-cv-00039, E.D. Tex., 02/01/2023
• Venue Allegations: Plaintiff alleges venue is proper because Defendants transact business and have committed acts of infringement in the district. For the foreign-domiciled Defendants, venue is alleged to be proper in any U.S. judicial district.
• Core Dispute: Plaintiff alleges that Defendant’s 5G-capable smartphones and tablets infringe three patents related to improvements in mobile communication systems.
• Technical Context: The technology concerns methods for managing system information updates, handling data request errors, and coordinating communication from multiple transmission points, which are all foundational to the performance and reliability of 5G mobile networks.
• Key Procedural History: The complaint notes that certain TCL defendants have not contested venue in the Eastern District of Texas in prior cases. Significantly, after the filing of this complaint, the U.S. Patent and Trademark Office issued an Ex Parte Reexamination Certificate for U.S. Patent No. 10,791,502, one of the patents-in-suit. This certificate cancelled claims 1 and 11, the two independent claims asserted in the complaint for that patent, which may render those specific infringement allegations moot.

Case Timeline

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

U.S. Patent No. 10,743,238 - System information updates in band width part (BWP) switch operation

The Invention Explained

• Problem Addressed: In 5G networks, a User Equipment (UE) may operate on various bandwidth parts (BWPs) to conserve power. If the network needs to send a system information (SI) update, the UE might be on a BWP that does not carry the broadcasted update, causing it to miss critical information and potentially fail to operate correctly (’238 Patent, col. 1:35-49).
• The Patented Solution: The invention specifies a clear procedure for a UE to handle SI updates. Upon receiving an SI change notification, the UE is directed to switch from its currently active BWP to a designated "initial active BWP." It then listens on this initial active BWP during the next defined time window (a "modification period") to receive the updated system information, ensuring the update is not missed (’238 Patent, Abstract; col. 2:2-14). Figure 1 illustrates this process, showing the UE moving from an "Indicated BWP" to the "Initial Active BWP" across modification period boundaries to acquire new information.
• Technical Importance: This method provides a reliable and standardized protocol for UEs to acquire system information changes in a dynamic BWP environment, enhancing network stability and device power efficiency (’238 Patent, col. 1:23-28).

Key Claims at a Glance

• The complaint asserts independent claims 1 (a method) and 11 (a user equipment) (Compl. ¶23).
• The essential elements of independent claim 1 include:
  • Receiving a system information (SI) change indication via a currently active BWP.
  • In response, switching from the currently active BWP to an "initial active BWP" for an SI update.
  • Receiving "remaining minimum SI (RMSI)" on the initial active BWP during a subsequent modification period.
  • Determining which system information blocks (SIBs) require updating based on the RMSI.
  • Receiving the content of the required SIBs.
• The complaint reserves the right to assert additional claims (Compl. ¶22).

U.S. Patent No. 10,791,502 - On-demand system information request procedure and error handling

The Invention Explained

• Problem Addressed: To conserve bandwidth, 5G networks may not continuously broadcast all system information. A UE may need to request specific, non-broadcasted SI on-demand, but prior art lacked an efficient mechanism to handle failures or errors in this request process (’502 Patent, col. 1:25-37).
• The Patented Solution: The patent proposes a method where, if a UE's on-demand SI request is unsuccessful, it executes an error handling procedure that includes storing information about the failure (e.g., which cell, which SIB, what time). This stored failure data can later be reported to the network, enabling the network operator to diagnose and correct issues with the on-demand SI system (’502 Patent, Abstract; Fig. 6).
• Technical Importance: This invention introduces a feedback loop for on-demand SI requests, improving the overall robustness and maintainability of the network by allowing it to learn from and correct procedural failures (’502 Patent, col. 9:1-14).

Key Claims at a Glance

• The complaint asserts independent claims 1 (a method) and 11 (a user equipment) (Compl. ¶32).
• Subsequent to the complaint's filing, Ex Parte Reexamination Certificate US 10,791,502 C1 was issued, which cancelled claims 1 and 11.
• The essential elements of original independent claim 1 included:
  • Transmitting a first SI request message to a base station while in a connected state.
  • Activating a "prohibit timer."
  • Transmitting a second SI request message only if the requested information is not received and the prohibit timer expires.
• The complaint reserves the right to assert additional claims (Compl. ¶31).

U.S. Patent No. 11,115,165 - Method and apparatus for multiple transmit/receive point (TRP) operations

Technology Synopsis

This patent addresses the complexity of a UE communicating with multiple transmission points (TRPs) at once, a key feature of advanced 5G. It details a method for a UE to process a single Transmission Configuration Indicator (TCI) from a control channel to determine how to receive multiple, separate data streams from different TRPs. The TCI state data is associated with multiple Demodulation Reference Signal (DMRS) port groups, allowing the UE to derive distinct spatial reception parameters (Quasi Co-Location, or QCL, assumptions) for each data stream ('165 Patent, Abstract; col. 1:49-61).

Asserted Claims

The complaint asserts independent claim 1 (a user equipment) (Compl. ¶41).

Accused Features

The accused functionality is the implementation of multi-TRP 5G communication protocols within the Accused Products, where they allegedly receive and process TCI state data to manage simultaneous data reception from multiple network transmission points (Compl. ¶¶40-41).

III. The Accused Instrumentality

Product Identification

The Accused Products include a range of 5G-capable mobile devices sold under the TCL brand, such as the TCL 10 5G UW, 20 Pro 5G, Stylus 5G, and Tab Pro 5G (Compl. ¶22, ¶31, ¶40).

Functionality and Market Context

• The complaint alleges that the Accused Products are wireless communication devices that implement 5G cellular technology (Compl. ¶24). The relevant functionality is their alleged use of standardized 5G protocols for managing system information, BWP switching, on-demand SI requests, and multi-TRP operations, which are necessary for connecting to and operating on a 5G network (Compl. ¶¶24, 33, 42).
• The complaint positions Defendants as "one of the largest worldwide makers and sellers of smartphones" (Compl. ¶9) and alleges that they derive "substantial revenue" from the sale and use of the infringing products within the Eastern District of Texas (Compl. ¶15).

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint.

'238 Patent Infringement Allegations

The complaint alleges that the Accused Products, by virtue of their 5G-compliance, necessarily practice the methods of the ’238 Patent for handling system information updates (Compl. ¶22). The theory of infringement posits that when operating on a 5G network, the devices receive SI change notifications and execute the claimed steps of switching to an initial active BWP to acquire updated RMSI in a subsequent time period, thereby infringing at least claims 1 and 11 (Compl. ¶23). The complaint references a non-provided claim chart exhibit (Ex. 2) to support these allegations (Compl. ¶23).

'502 Patent Infringement Allegations

The complaint asserts that the Accused Products infringe claims 1 and 11 of the ’502 Patent by performing on-demand SI requests and associated error handling procedures (Compl. ¶¶31-32). However, these specific asserted independent claims were cancelled by the U.S. Patent and Trademark Office in a subsequent ex parte reexamination. Therefore, the infringement allegation for the ’502 Patent, as currently pled, appears to rely on invalid claims.

'165 Patent Infringement Allegations

The complaint alleges that the Accused Products directly infringe claim 1 of the ’165 Patent by performing multi-TRP operations standard in 5G networks (Compl. ¶¶40-41). The infringement theory is that the devices receive TCI state data associated with a plurality of DMRS port groups and, from that, obtain a plurality of QCL assumptions to properly receive multiple data streams from different transmission points, thus mapping onto the elements of the asserted claim (Compl. ¶41). This allegation is supported by reference to a non-provided claim chart (Ex. 6) (Compl. ¶41).

Identified Points of Contention

• Technical Questions: A primary point of contention will likely be whether the Accused Products' actual, internal 5G operations precisely match the specific steps recited in the claims. For the ’238 Patent, this raises the question of whether the devices use the exact BWP-switching and RMSI-acquisition logic claimed. For the ’165 Patent, it raises the question of whether a single TCI state is in fact "associated with a plurality" of DMRS port groups from which a "plurality" of QCL assumptions are derived, or if the devices achieve multi-TRP communication through a technically distinct, non-infringing method.
• Scope Questions: The construction of key claim terms will be critical. For the ’238 Patent, the dispute may center on the definition of "initial active BWP." The court will need to determine if this term can read on any BWP a device uses for updates, or if it is limited to a more specific configuration described in the patent's embodiments.

V. Key Claim Terms for Construction

"initial active BWP" (’238 Patent, Claim 1)

• Context and Importance: This term is the destination for the claimed BWP switch and is central to the patented solution. Its construction will determine whether the BWP to which an accused device switches for updates falls within the scope of the claim.
• Intrinsic Evidence for a Broader Interpretation: The specification provides a functional definition: "an initial active DL BWP is defined as the frequency location and bandwidth dedicated for broadcasting remaining minimum SI (RMSI)" (’238 Patent, col. 1:35-38). This could support a construction covering any BWP used for this purpose.
• Intrinsic Evidence for a Narrower Interpretation: The abstract and figures tie the switch to this BWP to a specific sequence involving a "next BCCH modification period" (’238 Patent, Abstract; Fig. 1). A defendant may argue this temporal and functional linkage narrows the term to a specific type of BWP used in a specific way, not a general-purpose or default BWP.

"TCI state data... associated with a plurality of Demodulation Reference Signal (DMRS) port groups" (’165 Patent, Claim 1)

• Context and Importance: This limitation defines the specific nature of the control information that the patented user equipment is configured to receive. Infringement will depend on whether the TCI data in the accused devices is structured in this manner, linking a single TCI state to multiple DMRS groups.
• Intrinsic Evidence for a Broader Interpretation: The specification notes that TCI state data can be a "TRP index that is configured per a cell/Component Carrier (CC), or Bandwidth Part (BWP) basis" (’165 Patent, col. 6:19-22), which a plaintiff might argue supports a broad concept of "association."
• Intrinsic Evidence for a Narrower Interpretation: The claim requires a single instance of "TCI state data" to be associated with a "plurality" of DMRS port groups. A defendant could argue this requires a specific data structure that is not present in the accused devices, which may instead use multiple, separate TCI states or other mechanisms to manage multiple TRPs.

VI. Other Allegations

Indirect Infringement

For all three patents, the complaint alleges induced infringement based on Defendants providing user manuals, online instructions, and marketing materials that encourage customers to use the 5G functionality of the Accused Products in an infringing manner (Compl. ¶¶ 24, 33, 42). Contributory infringement is also alleged, on the basis that the Accused Products are especially made to practice the patents and are not staple articles of commerce suitable for non-infringing use (Compl. ¶¶ 25, 34, 43).

Willful Infringement

The complaint alleges willfulness based on knowledge of the patents and infringement occurring from "at least the filing and service of this complaint" (Compl. ¶¶ 24, 33, 42). This pleading appears directed at establishing post-suit willfulness, as no specific facts supporting pre-suit knowledge are alleged.

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

• A threshold procedural issue for the case is the viability of the infringement claim for the ’502 patent. Given that the asserted independent claims were cancelled by the USPTO after the complaint was filed, the court must determine how, or if, Plaintiff may proceed on this patent, likely requiring an amended pleading asserting different, surviving claims.
• A key evidentiary question will be one of operational mapping: can Plaintiff produce technical evidence to demonstrate that the accused TCL devices' internal 5G chipset and software operations precisely follow the specific, multi-step logical flows recited in the asserted claims of the ’238 and ’165 patents, or will TCL be able to establish a fundamental mismatch in technical operation?
• A central legal question will be one of claim scope: will terms like "initial active BWP" in the ’238 patent be construed broadly based on their functional description, or more narrowly based on the specific embodiments in the specification, potentially placing the accused devices' functionality outside the bounds of the claims?