DCT

2:24-cv-00132

Celerity IP LLC v. LG Electronics Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:24-cv-00132, E.D. Tex., 02/23/2024
  • Venue Allegations: Plaintiffs allege venue is proper for LG Electronics, Inc. as a foreign corporation and for LG Electronics U.S.A., Inc. based on its alleged commission of infringing acts and maintenance of regular and established places of business within the Eastern District of Texas.
  • Core Dispute: Plaintiffs allege that Defendants’ 4G/LTE and 5G-compliant cellular devices infringe five patents related to various wireless telecommunication standards.
  • Technical Context: The technology at issue concerns methods for managing data transmission, security, and resource allocation in 4G/LTE and 5G wireless networks, which are foundational to modern mobile communications.
  • Key Procedural History: The complaint alleges that the asserted patent families were declared essential to the 4G and/or 5G standards through the European Telecommunications Standards Institute (ETSI). The complaint also details a history of pre-suit licensing communications with LG, beginning in August 2018, which included notice letters, patent lists, and claim charts.

Case Timeline

Date Event
2007-12-05 Priority Date for U.S. Patent No. 8,472,628
2008-09-26 Priority Date for U.S. Patent No. 8,565,128
2008-10-22 Priority Date for U.S. Patent No. 8,411,626
2009-01-22 Priority Date for U.S. Patent No. 8,559,962
2010-04-29 Priority Date for U.S. Patent No. 8,855,095
2011-07-12 Plaintiff ISL declares patent families to ETSI as essential to 4G
2013-04-02 Issue Date for U.S. Patent No. 8,411,626
2013-06-25 Issue Date for U.S. Patent No. 8,472,628
2013-10-15 Issue Date for U.S. Patent No. 8,559,962
2013-10-22 Issue Date for U.S. Patent No. 8,565,128
2013-12-26 Plaintiff ISL declares '095 patent family to ETSI as essential to 4G
2014-10-07 Issue Date for U.S. Patent No. 8,855,095
2018-08-15 Plaintiff ISL sends "First Letter" to LG identifying Asserted Patents
2018-09-12 Plaintiff ISL sends "Second Letter" to LG
2019-02-18 Plaintiff ISL sends spreadsheet of 4G patent assets to LG
2019-03-20 Plaintiff ISL sends claim charts to LG
2020-01-01 Approximate launch period of LG VELVET 5G smartphone (2020)
2020-07-09 Plaintiff ISL declares patent families to ETSI as essential to 5G
2021-06-30 Plaintiff Celerity IP becomes exclusive licensing agent
2024-02-23 Complaint Filing Date

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

U.S. Patent No. 8,411,626 - "Method and Apparatus for Handling UL-SCH Transmission," issued April 2, 2013.

The Invention Explained

  • Problem Addressed: In LTE wireless systems, a "Message 3" (Msg3) transmission, which is part of the procedure for a device to gain initial access to the network, can be scheduled at the same time as a retransmission of other user data already stored in the device's uplink hybrid automatic repeat request (HARQ) buffer. This creates a potential collision, as the device can typically only perform one such uplink transmission at a time ( Compl. ¶18; ’626 Patent, col. 3:1-5).
  • The Patented Solution: The invention provides a method to resolve this conflict by explicitly prioritizing the Msg3 transmission over the pending retransmission of the other data block when they are scheduled for the same time ('626 Patent, Abstract). This ensures that the critical network access message is sent, preventing a potential failure in the connection process ('626 Patent, col. 5:15-21).
  • Technical Importance: This method enhances the reliability of the random access procedure, a fundamental process for a user device to establish a connection and communicate on an LTE network, by preventing resource conflicts at the device level ('626 Patent, col. 5:26-33).

Key Claims at a Glance

  • The complaint asserts independent claim 7 ('626 Patent, Compl. ¶52).
  • Essential elements of independent claim 7 (a communication device) include:
    • performing an initial transmission of a transport block (TB) on an UL-SCH transmission via a first HARQ process;
    • performing an initial transmission of a Message 3 (Msg3) via a second HARQ process; and
    • prioritizing a retransmission of the Msg3 when the retransmission of the Msg3 and a retransmission of the TB are scheduled at the same time.
  • The complaint reserves the right to assert other claims ('626 Patent, Compl. ¶45).

U.S. Patent No. 8,472,628 - "Method of Handling Security Key Change and Related Communication Device," issued June 25, 2013.

The Invention Explained

  • Problem Addressed: In wireless communication systems, security keys must be updated periodically or upon certain events to maintain secure communications. The prior art lacked a clear, unified procedure to handle two different types of key changes: one that is accompanied by a full Authentication and Key Agreement (AKA) run, and one that is not (’628 Patent, col. 2:51-55).
  • The Patented Solution: The invention describes using a single Radio Resource Control (RRC) procedure to activate a key change. This RRC message contains an "indicator" that explicitly informs the user device whether the new Access Stratum (AS) security keys should be derived from a new "base key" (resulting from an AKA run) or from a "previous base station level key" (when no AKA run occurred) ('628 Patent, Abstract; col. 4:36-42).
  • Technical Importance: This provides a streamlined and unambiguous mechanism for managing security key updates, which is critical for maintaining secure and efficient operation in a mobile network ('628 Patent, col. 2:35-41).

Key Claims at a Glance

  • The complaint asserts independent claim 5 ('628 Patent, Compl. ¶63).
  • Essential elements of independent claim 5 (a communication device) include:
    • receiving a Radio Resource Control (RRC) message for activating a key change during an RRC procedure;
    • wherein the RRC message comprises an indicator for indicating whether to derive an Access Stratum (AS) key set from a base key or a previous base station level key.
  • The complaint reserves the right to assert other claims ('628 Patent, Compl. ¶56).

U.S. Patent No. 8,855,095 - "Method and Apparatus for a Component Carrier Deactivation Timer in a Wireless Communication System," issued October 7, 2014.

  • Technology Synopsis: This patent addresses the management of multiple radio frequency carriers, known as component carriers (CCs), in advanced wireless systems. It discloses a method to prevent a secondary component carrier (SCC) from being unnecessarily deactivated by restarting its deactivation timer upon receiving a specific Medium Access Control (MAC) message, even if that SCC is already in an activated state (Compl. ¶20; '095 Patent, Abstract).
  • Asserted Claims: The complaint asserts independent claim 8 (Compl. ¶74).
  • Accused Features: The accused features are the functionalities within LG's 4G/5G devices that manage the activation and deactivation timers for secondary component carriers in compliance with carrier aggregation standards (Compl. ¶¶67, 70).

U.S. Patent No. 8,559,962 - "Method and Apparatus for Improving Reconfiguration Procedure for Scheduling Request," issued October 15, 2013.

  • Technology Synopsis: This patent addresses an issue where reconfiguring parameters for a Scheduling Request (SR) while an SR is already pending can lead to errors. The invention proposes a method where the device receives a reconfiguration request but delays applying the new configuration until the pending SR is resolved and a new SR is triggered, thereby avoiding procedural conflicts (’962 Patent, Abstract; Compl. ¶21).
  • Asserted Claims: The complaint asserts independent claim 7 (Compl. ¶85).
  • Accused Features: The accused features are the methods used by LG's 4G/5G devices to reconfigure SR parameters, which allegedly follow the patented procedure to prevent errors during reconfiguration (Compl. ¶¶78, 81).

U.S. Patent No. 8,565,128 - "Method and Apparatus of Handling a Timer for Triggering Buffer Status Report," issued October 22, 2013.

  • Technology Synopsis: This patent aims to prevent the waste of network resources caused by unnecessary Buffer Status Report (BSR) transmissions. It discloses a method for restarting a BSR timer whenever a semi-persistent scheduling (SPS) uplink grant is configured for a given time interval, which prevents the timer from expiring and triggering a redundant BSR (’128 Patent, Abstract; Compl. ¶22).
  • Asserted Claims: The complaint asserts independent claim 5 (Compl. ¶96).
  • Accused Features: The accused features relate to how LG's 4G/5G devices manage the BSR timer, particularly in scenarios involving semi-persistent scheduling, which allegedly infringes the patented method (Compl. ¶¶89, 92).

III. The Accused Instrumentality

Product Identification

The complaint accuses "LG's cellular devices that are 4G/LTE- and/or 5G-compliant," referred to as the "LG Devices" (Compl. ¶¶40, 45). The LG VELVET 5G smartphone is identified as an exemplary accused product (Compl. ¶41).

Functionality and Market Context

The core accused functionality is the devices' compliance with the 4G/LTE and 5G ETSI standards, which Plaintiffs allege embody the features of the Asserted Patents (Compl. ¶40). The complaint includes a screenshot from a technical specification sheet for the LG VELVET 5G UW phone, which lists its network capabilities as "5G (Sub6, mmWave), LTE, UMTS, GSM, CDMA" (Compl. p. 12). This visual is offered as evidence that the device is designed to operate on the relevant 4G and 5G networks (Compl. ¶41).

IV. Analysis of Infringement Allegations

The complaint references, but does not include, exemplary claim charts for each of the Asserted Patents (Compl. ¶¶50, 61, 72, 83, 94). The infringement allegations are therefore summarized in prose based on the narrative in the complaint.

'626 Patent Infringement Allegations

The complaint alleges that LG's 4G/5G devices, by complying with the relevant standards, necessarily practice the method of claim 7 (Compl. ¶¶45, 47). The infringement theory is that when these devices operate on a 4G/5G network, they are required to implement the random access procedure, which includes logic for handling resource conflicts. This logic allegedly includes the claimed step of "prioritizing" a Message 3 (Msg3) transmission when it is scheduled at the same time as a retransmission of a transport block from a HARQ buffer (Compl. ¶¶18, 48).

'628 Patent Infringement Allegations

The complaint alleges that LG's 4G/5G devices infringe at least claim 5 by implementing security protocols required by the 4G/5G standards (Compl. ¶¶56, 58). The theory is that the devices must handle security key changes using an RRC procedure. This procedure allegedly uses a message containing the claimed "indicator" to signal to the device whether it should derive new security keys based on a recent authentication (AKA run) or from existing key material, thereby practicing the patented method (Compl. ¶¶19, 59).

Identified Points of Contention

  • Scope Questions: For the '626 Patent, a central question may be whether the term "prioritizing," as used in the claim, reads on the specific conflict-resolution mechanism implemented in LG's devices. For the '628 Patent, a dispute may arise over whether any field in the RRC messages used by LG devices functions as the claimed "indicator for indicating whether to derive" keys from one source versus another.
  • Technical Questions: An evidentiary question for the '626 Patent is what proof exists that an LG device, when faced with the specific conflict described in claim 7, performs the claimed prioritization step, as opposed to resolving the conflict in a different, non-infringing way. For the '628 Patent, the technical question is how LG's devices actually implement key derivation logic and whether that process is controlled by a specific indicator as claimed, or by other means.

V. Key Claim Terms for Construction

For the '626 Patent

  • The Term: "prioritizing a retransmission of the Msg3" (from claim 7)
  • Context and Importance: This term describes the core action of the invention. The infringement analysis will likely depend on whether the conflict-resolution behavior of LG's devices falls within the scope of "prioritizing."
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification states that "the UE prioritizes the Msg3 transmission over the existing retransmission" ('626 Patent, col. 5:18-19). This language could be argued to encompass any process that results in the Msg3 being sent in place of the conflicting data.
    • Evidence for a Narrower Interpretation: A specific embodiment describes not only sending the Msg3 but also an underlying action: "the embodiment of the present invention further replaces the TB already stored in the UL HARQ buffer with a TB stored in an Msg3 buffer of the UE" ('626 Patent, col. 5:44-47). This may support a narrower construction that requires this specific replacement step.

For the '628 Patent

  • The Term: "indicator for indicating whether to derive" (from claim 5)
  • Context and Importance: Infringement hinges on finding a corresponding structure in the accused devices' RRC messages. The construction of "indicator" will determine what type of data, field, or signal satisfies this limitation.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent describes the indicator's function broadly as "indicating the key change accompanied with the AKA run or not" ('628 Patent, col. 4:40-42), which could suggest that any signal conveying this binary choice would suffice.
    • Evidence for a Narrower Interpretation: The specification also describes a more concrete implementation involving a "status which indicates whether the key set associated with the most recent AKA run has been activated or not," which could be "represented by a binary bit" ('628 Patent, col. 4:56-65). This may support a narrower construction requiring a specific, dedicated flag or status bit.

VI. Other Allegations

Indirect Infringement

The complaint alleges that LG induced infringement by providing customers with devices, manuals, and technical information that instruct them to operate the devices in a manner that practices the claims of the Asserted Patents (e.g., Compl. ¶48). It further alleges contributory infringement, stating that the LG devices are especially designed to infringe and are not staple articles of commerce suitable for substantial non-infringing use (e.g., Compl. ¶49).

Willful Infringement

The complaint alleges willful infringement for all Asserted Patents. The basis for willfulness includes LG's alleged knowledge of the patents from multiple sources: (1) Plaintiff ISL's declarations of the patents as essential to ETSI standards, of which LG is a member (e.g., Compl. ¶46); (2) direct pre-suit communications including notice letters and claim charts beginning August 15, 2018 (e.g., Compl. ¶51); and (3) LG's alleged citation of the '626 and '128 patents during the prosecution of its own patents (Compl. ¶31).

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

  • A central issue will be one of standards-essentiality and infringement: The case for all five patents appears to be built on the theory that compliance with 4G/LTE and 5G standards necessitates infringement. A primary focus will be whether the specific requirements of the standards, as implemented in LG's devices, map directly onto the limitations of the asserted claims.
  • A key evidentiary question will be one of functional implementation: Beyond mere standards compliance, the proceedings will likely require a technical deep-dive to determine if the accused devices perform the specific functions recited in the claims. For instance, for the '626 patent, does an LG device actually "prioritize" a Msg3 transmission as claimed, and for the '628 patent, does an RRC message contain a functional "indicator" that directs key derivation as claimed?
  • Given the extensive history of alleged pre-suit notice, a significant question for the case will be willfulness and state of mind: The court will likely examine the detailed allegations regarding LG's knowledge of the patents from ETSI declarations, direct licensing outreach, and its own patent prosecution activities to determine whether its continued alleged infringement constitutes the type of egregious conduct that would warrant enhanced damages.