DCT

2:23-cv-00488

ASUS Technology Licensing Inc v. Verizon Communications Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:23-cv-00488, E.D. Tex., 10/19/2023
  • Venue Allegations: Venue is alleged to be proper based on Defendant's operation of numerous retail stores constituting a regular and established place of business within the district, as well as the commission of infringing acts (e.g., offering for sale and selling accused services) within the district.
  • Core Dispute: Plaintiffs allege that Defendant’s 4G and 5G wireless networks infringe a patent related to the method for configuring control channel resources in a wireless communication system.
  • Technical Context: The technology concerns fundamental resource management in 4G/5G wireless systems, specifically how a network efficiently and unambiguously assigns monitoring tasks to user equipment for receiving control information.
  • Key Procedural History: The complaint alleges that the patent-in-suit is essential to standards promulgated by the European Telecommunications Standards Institute (ETSI) and that Plaintiffs have complied with their obligation to offer a license on Fair, Reasonable, and Non-Discriminatory (FRAND) terms. Plaintiffs allege they initiated licensing discussions no later than August 2022 and provided Verizon with claim charts evidencing infringement by February 2023, but that negotiations were unsuccessful.

Case Timeline

Date Event
2010-11-30 Verizon announces initial 4G LTE network launch
2018-01-18 ’359 Patent Priority Date
2019-10-25 Verizon 5G network launch date mentioned for Dallas
2021-03-16 ’359 Patent Issue Date
2022-08-25 Plaintiffs allegedly initiate licensing correspondence with Verizon
2023-02-02 Plaintiffs allegedly provide Verizon access to infringement claim charts
2023-10-19 Complaint Filing Date

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

U.S. Patent No. 10,951,359 - "Method and Apparatus For Providing Control Resource Set Configuration In A Wireless Communication System," issued March 16, 2021

The Invention Explained

  • Problem Addressed: In advanced wireless networks like 5G, a network node must tell user equipment (UE) precisely when and for how long to monitor a control channel for instructions. The patent addresses the potential for ambiguity or error if the instructions for these monitoring "occasions" are configured improperly, for example, if they overlap or are scheduled too close together, which could confuse the UE. (’359 Patent, col. 15:56 - col. 16:2).
  • The Patented Solution: The invention describes a method where a network node transmits a signal to a UE that defines a "control resource set" (CORESET). This signal specifies a "first duration" (how long to monitor) and a "bit map" (when to start monitoring). The core of the patented solution is a rule: the network is "not allowed to transmit" a signal where the "interval" between any two start times (indicated by '1's in the bit map) is less than the specified duration. This rule prevents the network from sending ambiguous or overlapping monitoring assignments. (’359 Patent, Abstract; Fig. 7; col. 1:41-55).
  • Technical Importance: By establishing a clear rule to prevent conflicting monitoring assignments, the method aims to improve the reliability and efficiency of resource management in complex, high-speed wireless networks. (’359 Patent, col. 1:21-39).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1. (Compl. ¶50).
  • The essential elements of independent claim 1 are:
    • A method performed by a network node.
    • Transmitting a signal indicating a "first duration" (for a CORESET) and a "bit map."
    • The bit map contains a set of bit positions, where a value of "one" indicates a starting OFDM symbol for a monitoring occasion.
    • Not allowing the signal to be transmitted if the interval between any two bit positions with a value of "one" is smaller than the first duration.
  • The complaint reserves the right to assert additional claims. (Compl. ¶44).

III. The Accused Instrumentality

Product Identification

  • The "Verizon Wireless Networks," which encompass Defendant's 4G and 5G wireless telecommunications networks and associated services. (Compl. ¶¶ 10, 32, 49).

Functionality and Market Context

The complaint alleges that the accused networks provide 4G and 5G wireless services across the United States, including within the Eastern District of Texas. (Compl. ¶¶ 10-11). The complaint describes the networks as employing both 4G and 5G technologies to provide end-users with wireless connectivity. (Compl. ¶35). The complaint includes a screenshot from Verizon's website showing its 4G and 5G wireless coverage map in and around Marshall, Texas, to support its venue and infringement allegations. (Compl. ¶11, p. 4). The commercial significance of the networks is highlighted through references to press releases touting their speed, capacity, and expanding coverage. (Compl. ¶¶ 33-34, 37).

IV. Analysis of Infringement Allegations

’359 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A method of a network node, the method comprising: The Verizon Wireless Networks practice a method of a network node when providing 5G wireless services. ¶50 col. 1:41-43
transmitting a signal indicating at least a first duration and a bit map, The Verizon Wireless Networks transmit a radio resource control (RRC) reconfiguration message that indicates a duration of a control resource set (CORESET) and a bitmap for monitoring symbols. ¶51 col. 1:44-46
wherein the first duration is time duration of a control resource set (CORESET), The duration indicated in the signal is the time duration of the CORESET, measured in number of symbols. ¶52 col. 1:47-49
wherein the bit map includes a set of bit positions... where each bit position with the value of one indicates a starting Orthogonal Frequency Division Multiplexing (OFDM) symbol of a monitoring occasion of the CORESET within a slot; The bitmap includes bit positions where a value of "one" indicates the starting OFDM symbol for a monitoring occasion of the CORESET within a slot. ¶53 col. 1:49-53
and not allowing to transmit the signal such that an interval between any two bit positions with the value of one in the set of bit positions in the bit map is smaller than the first duration. The Verizon Wireless Networks do not allow transmission of a bitmap where the interval between any two bit positions set to "one" is smaller than the defined CORESET duration. ¶54 col. 1:51-55
  • Identified Points of Contention:
    • Technical Question: The complaint alleges, "on information and belief," that the network practices the "not allowing" step. (Compl. ¶54). A primary technical question will be what evidence demonstrates that Verizon's network infrastructure specifically implements this negative limitation. This may require analysis of network equipment software, operational parameters, or adherence to specific versions of the 3GPP standards.
    • Scope Question: A dispute may arise over the meaning of "not allowing to transmit." Does this require an active, programmatic check that prevents the generation of a non-compliant signal, as suggested by the patent's flowchart (Fig. 7)? Or, could it be satisfied by showing the network is configured in a way that, by design or by compliance with a standard, such a signal is never generated in practice?

V. Key Claim Terms for Construction

  • The Term: "not allowing to transmit the signal"

    • Context and Importance: This negative limitation is the central inventive concept. Its construction will determine the type and level of proof required to show infringement. The dispute will focus on whether this requires a specific, active prevention mechanism or if passive conformity with a rule is sufficient.
    • Intrinsic Evidence for a Broader Interpretation: The specification states that a UE "does not expect to receive a CORESET configuration with an overlap" (’359 Patent, col. 16:20-22), which might support an interpretation where "not allowing" means operating in a way that meets this expectation, such as by complying with a standard that includes the rule.
    • Intrinsic Evidence for a Narrower Interpretation: Claim 1 is a method claim directed to the actions of a "network node." The flowchart in Figure 7 depicts "The network node is not allowed to transmit the signal..." as a distinct step (710), suggesting an active role for the network node in enforcing the rule, potentially supporting a narrower construction requiring a specific preventative function.

  • The Term: "interval"

    • Context and Importance: The calculation of the "interval" between monitoring occasions is what triggers the "not allowing" limitation. How this term is defined is therefore critical to the infringement analysis.
    • Intrinsic Evidence for a Broader Interpretation: The patent states that an "interval or distance between two bit positions could be a number of bits between the two bit positions," or alternatively, "could be difference of the two bit positions." (’359 Patent, col. 16:41-44, 16:49-50). This language may support a more flexible definition.
    • Intrinsic Evidence for a Narrower Interpretation: The specification provides a concrete example: "an interval or distance between two bit positions indicating value 1 for a bitmap '10001000000000' is 3." (’359 Patent, col. 16:45-48). A party could argue this example cabins the meaning of "interval" to a specific calculation method, such as the difference in bit-position indices.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges both induced and contributory infringement. The inducement theory is based on Verizon's alleged acts of advertising its networks and providing instructions, documentation, and technical support that encourage and teach customers to use the infringing network technologies. (Compl. ¶¶ 40, 56). The contributory infringement theory alleges that the accused components are material to the invention, are not staple articles of commerce, and are known by Verizon to be especially adapted for infringement. (Compl. ¶¶ 41, 57).
  • Willful Infringement: Willfulness is alleged based on Verizon’s continued infringement after receiving notice of the patent and alleged infringement. The complaint pleads pre-suit knowledge as of at least February 2, 2023, the date Plaintiffs allegedly provided Verizon access to infringement claim charts. (Compl. ¶¶ 43, 59).

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

  1. A central evidentiary question will be one of proving a negative limitation: what specific technical evidence can be adduced from Verizon's network equipment, software, and operational logs to prove that the system actively "not allow[s]" the transmission of signals with the characteristics proscribed by Claim 1?
  2. The outcome may hinge on a question of claim scope: will the court construe the term "not allowing to transmit" to require a specific, affirmative blocking function within the network node, or can the limitation be met by demonstrating the network's overall design and configuration complies with a standard that embodies the patented rule?
  3. Given the assertion that the patent is standard-essential (Compl. ¶¶ 23-25), a core issue will be the enforceability and terms of a FRAND license. Beyond the technical infringement analysis, the dispute will likely involve whether Plaintiffs have met their good-faith negotiation obligations and, if infringement is found, what constitutes a fair and reasonable royalty.