Active Wireless Tech LLC v. Verizon Communications Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Active Wireless Technologies LLC (Texas)
  • Defendant: Verizon Communications, Inc. and Cellco Partnership d/b/a Verizon Wireless (Delaware)
  • Plaintiff’s Counsel: Fabricant LLP
• Case Identification: 2:23-cv-00620, E.D. Tex., 12/20/2023
• Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas based on Defendant’s registration to do business in Texas and the presence of numerous regular and established places of business within the district, in addition to the operation of the accused mobile network infrastructure.
• Core Dispute: Plaintiff alleges that Defendant’s 5G and Narrowband Internet of Things (NB-IoT) wireless networks, and associated equipment and services, infringe four patents related to wireless communication protocols for managing control channels and broadcasting system information.
• Technical Context: The technologies at issue relate to fundamental operations within 5G New Radio (NR) and NB-IoT standards, governing resource efficiency for control signaling and the robust delivery of essential network information to user devices.
• Key Procedural History: The complaint notes that in other recent patent infringement actions, Defendant has either sought out, admitted, or not contested that the Eastern District of Texas is a proper venue. No prior litigation or post-grant proceedings involving the patents-in-suit are mentioned in the complaint.

Case Timeline

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

U.S. Patent No. 10,531,443 - “Physical Uplink Control Channel (PUCCH) Format Adaptation for 5th Generation (5G) New Radio (NR),”

• The Invention Explained:
  • Problem Addressed: In 5G New Radio (NR) systems, the amount of uplink control information (e.g., acknowledgement feedback for data reception) can vary significantly. The patent background notes that configuring the uplink control channel (PUCCH) to always handle the maximum possible data load is inefficient and leads to "very conservative PUCCH resource reservation, and significantly increase[s] the PUCCH resource overhead" (’443 Patent, col. 5:8-11).
  • The Patented Solution: The patent describes a method for dynamically adapting the PUCCH format based on the specific communication context. The system differentiates between data scheduled in a "common search space" (CSS), used for control information for multiple devices, and a "UE-specific search space" (USS), used for a single device (’443 Patent, col. 2:63-67). The invention allows a base station to receive simplified feedback (e.g., a single bit) for CSS-scheduled data but receive more detailed, higher-payload feedback for USS-scheduled data, thereby optimizing resource usage based on the scheduling context (’443 Patent, Abstract).
  • Technical Importance: This adaptive approach improves the spectral efficiency of the uplink control channel, a critical and limited resource in high-throughput, low-latency 5G networks.
• Key Claims at a Glance:
  • The complaint asserts independent claim 3.
  • Essential elements of claim 3 (a base station) include:
    • sending circuitry configured to send a physical downlink shared channel (PDSCH) that includes code block groups (CBGs) of a transport block; and
    • receiving circuitry configured to receive CBG based HARQ-ACK (Hybrid Automatic Repeat Request-Acknowledgement), wherein
    • for PDSCH scheduled in a common search space (CSS), the circuitry is configured to receive one HARQ-ACK bit for the transport block, and
    • for PDSCH scheduled in a UE-specific search space (USS), the circuitry is configured to receive HARQ-ACK bits of all CBGs.
  • The complaint does not explicitly reserve the right to assert other claims but this is standard practice.

U.S. Patent No. 11,019,557 - “Apparatus and Method for Acquisition of Periodically Broadcasted System Information in Wireless Communication,”

• The Invention Explained:
  • Problem Addressed: The patent background explains that constantly broadcasting all system information (SI) can waste valuable radio resources, particularly in small cell deployments where device traffic is not constant (’557 Patent, col. 1:57-65). This creates a need for more robust and efficient methods for devices to acquire necessary SI.
  • The Patented Solution: The invention provides a failure recovery mechanism for a user equipment (UE) trying to acquire system information. The patent describes a base station that transmits a "first type" System Information Block (SIB1) containing scheduling details for other SI messages. The key inventive step is a system behavior wherein if a UE fails in its attempt to acquire one of these other SI messages (a "second type SIB") within its scheduled time window, it is directed to re-acquire the first type SIB (SIB1) before trying again (’557 Patent, Abstract; col. 2:22-38). This ensures the UE works from the most current scheduling map after a failure, preventing repeated attempts based on potentially outdated information.
  • Technical Importance: This method improves the reliability of network access procedures by creating a structured process for UEs to recover from failures in acquiring essential system parameters.
• Key Claims at a Glance:
  • The complaint asserts independent claim 9.
  • Essential elements of claim 9 (a base station apparatus) include:
    • transmitting circuitry configured to transmit a first type SIB comprising scheduling information for an SI message, a parameter for determining a failure of SI message acquisition, and an indication of the SI message's broadcast status;
    • processor circuitry configured to cause the broadcast of the SI message;
    • wherein the system is structured such that the first type SIB is re-acquired by the user equipment upon the user equipment failing on the SI message acquisition process in at least one of its designated SI windows.
  • The complaint does not explicitly reserve the right to assert other claims.

U.S. Patent No. 10,785,764 - “Information Change Transmission Method and Device for Single-Cell Multicast Service,”

• Technology Synopsis: The patent addresses methods for efficiently notifying user devices about changes to Single-Cell Multicast Control Channel (SC-MCCH) information, which is relevant for services like NB-IoT. The claimed solution uses distinct Downlink Control Information (DCI) formats transmitted over narrowband channels to both signal that a change has occurred and to indicate the resources for acquiring the new, updated SC-MCCH information, improving upon prior art systems that used a less informative single-bit notification ('764 Patent, col. 2:35-51).
• Asserted Claims: The complaint asserts independent claim 3.
• Accused Features: Verizon’s NB-IoT network is accused of infringing by using base stations that transmit SC-MCCH information and change notifications via first and second DCI formats on narrowband control channels (NPDCCH) in a manner compliant with 3GPP standards (Compl. ¶47).

U.S. Patent No. 10,601,566 - “Multiple Slot Long Physical Uplink Control Channel (PUCCH) Design for 5th Generation (5G) New Radio (NR),”

• Technology Synopsis: The patent describes a design for an uplink control channel (PUCCH) that spans multiple time slots, known as a "long PUCCH," for use in 5G NR systems. The invention specifies how a base station signals the configuration of this multi-slot channel to a user device, including rules for frequency hopping across slots to improve reliability, and ensures that the number and location of symbols used for the PUCCH transmission remain the same in each of the multiple slots ('566 Patent, Abstract; col. 3:3-16).
• Asserted Claims: The complaint asserts independent claim 8.
• Accused Features: Verizon’s 5G base stations (gNBs) are accused of infringing by transmitting signaling that configures a multi-slot PUCCH with frequency hopping, where the number and location of symbols are consistent across each slot, as defined by 3GPP standards (Compl. ¶62).

III. The Accused Instrumentality

Product Identification

• The accused instrumentalities are Verizon's 5G and NB-IoT cellular networks, including their constituent components: 5G and 5G Ultra Wideband base stations, 5G hardware, software, radio units, baseband units, and associated platforms such as Verizon Connect and ThingSpace (Compl. ¶18).

Functionality and Market Context

• The complaint alleges these products provide wireless communication services to customers throughout the United States, including within the Eastern District of Texas (Compl. ¶¶7, 17). The complaint references a Verizon coverage map showing the availability of 5G and NB-IoT services in the district (Compl. p. 6, Exhibit 8). This map indicates the presence of the accused network technologies within the venue. The core technical functionality is the implementation of 3GPP-compliant standards for 5G NR and NB-IoT communications, which allegedly incorporate the patented technologies (Compl. ¶19). The complaint references Verizon's public announcements regarding the launch of its "world's first 5G network" in October 2018 and its nationwide NB-IoT network in May 2019, positioning these as commercially significant services (Compl. ¶¶15-16).

IV. Analysis of Infringement Allegations

U.S. Patent No. 10,531,443 Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: The infringement theory rests on compliance with 3GPP standards. A central question may be whether the term "configured to receive" requires the base station to be actively operating in the claimed manner, or if merely having the capability under the standard is sufficient.
  • Technical Questions: The complaint alleges infringement based on the operation of a standards-compliant network. A key evidentiary question will be whether Verizon's network actually implements the differential HARQ-ACK feedback mechanisms based on the search space (CSS vs. USS) as required by claim 3, or if the standard permits alternative, non-infringing configurations that Verizon may use.

U.S. Patent No. 11,019,557 Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: The claim is directed to a base station apparatus, but the final "wherein" clause describes a required action taken by a separate device (the user equipment). This raises the question of whether this limitation can be met by the base station directly, or if it requires proof that Verizon's base stations are part of a system necessarily designed to cause this UE behavior, potentially implicating principles of divided infringement.
  • Technical Questions: The analysis will likely focus on what constitutes "a failure of an SI message acquisition process." It raises the question of whether the 3GPP condition of a stored SIB version becoming invalid is equivalent to the claimed "failure," or if a more specific type of failure, such as an inability to decode a transmission, is required by the claim.

V. Key Claim Terms for Construction

’443 Patent

• The Term: "scheduled in a common search space (CSS)" and "scheduled in a UE-specific search space (USS)"
• Context and Importance: The distinction between these two search spaces is the technological core of asserted claim 3, as it dictates which HARQ-ACK feedback mechanism is used. The definitions of these terms must map directly to the functionalities alleged to be practiced by Verizon's 3GPP-compliant network for infringement to be found.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification describes CSS generally in the context of scheduling for a group of UEs and USS for a single UE, stating "If a PDSCH is scheduled in common search space (CSS) or UE-group search space, the UE may report only one bit per TB" ('443 Patent, col. 2:63-65). This language may support applying the terms to any functionally equivalent scheduling spaces in the 3GPP standard.
  • Evidence for a Narrower Interpretation: The specific embodiments and context at the time of invention could be used to argue that the terms are limited to particular implementations known at the time, and not necessarily any feature later labeled "CSS" or "USS" in the evolving 3GPP standard.

’557 Patent

• The Term: "a failure of an SI message acquisition process"
• Context and Importance: This phrase defines the triggering condition for the claimed inventive step—the re-acquisition of the first type SIB. The scope of what constitutes a "failure" is central to the infringement analysis. Practitioners may focus on this term because it links the operation of the accused base station to a specific state or action of the user equipment.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent discusses the "need to (re)-acquire SIB" in situations where "the UE does not have a valid version of a stored SIB" ('557 Patent, col. 19:23-25). This could support a broad definition where any event that renders a UE's stored system information invalid constitutes a "failure," thereby triggering the claimed process.
  • Evidence for a Narrower Interpretation: The term "acquisition process" itself may imply an active attempt to receive information. A defendant could argue this limits "failure" to an unsuccessful attempt to decode a transmitted SI message within a specific SI window, rather than the more passive state of a previously stored SIB becoming stale due to a timer expiring.

VI. Other Allegations

• Indirect Infringement: The complaint pleads induced infringement for all four patents. It alleges Verizon provides instructions, documentation, technical support, and marketing materials that encourage and facilitate infringing use of the accused products by customers and end-users (Compl. ¶¶28, 41, 56, 67).
• Willful Infringement: The complaint alleges that Verizon performs its infringing acts "with knowledge of the ['###] Patent and with the intent, or willful blindness, that the induced acts directly infringe the ['###] Patent" for each patent-in-suit (Compl. ¶¶28, 41, 56, 67). This language provides a basis for a claim of willful infringement, which would likely be predicated on pre-suit knowledge established by the filing and service of the complaint itself, as no earlier notice is alleged.

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

• Claim Scope vs. Standard Compliance: A central issue will be whether compliance with the cited 3GPP standards constitutes a per se infringement of the asserted claims. The case will likely turn on claim construction and whether the mandatory functions of the standards implemented by Verizon align with the specific limitations of the claims, or if the standards permit non-infringing operational modes.
• Divided Infringement for Apparatus Claims: For claims like claim 9 of the ’557 patent, which define a base station in part by the responsive behavior of a user equipment, a key legal question will concern divided infringement. The court will need to assess whether Verizon can be liable for direct infringement based on the intended and necessary operation of its system as a whole, or if infringement of such claim elements can only be established through a theory of inducement.
• Evidentiary Proof of Operation: The complaint's infringement theory is based on technical standards and public statements. A critical question for the litigation will be one of evidentiary sufficiency: what direct evidence can be discovered to demonstrate that Verizon's accused networks are actually configured and operate in the specific, infringing manner required by the claims, rather than merely being capable of such operation under the standards.