DCT
2:24-cv-00752
Wilus Institute Of Standards Technology Inc v. HP Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Wilus Institute of Standards and Technology Inc. (South Korea)
- Defendant: HP Inc. (Delaware)
- Plaintiff’s Counsel: Russ August & Kabat
- Case Identification: 2:24-cv-00752, E.D. Tex., 09/13/2024
- Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendant HP Inc. maintains a "regular and established place of business" in the district, citing a previous court finding in another matter and public records of business personal property taxes paid by HP in Collin County, Texas.
- Core Dispute: Plaintiff alleges that Defendant’s Wi-Fi 6 (IEEE 802.11ax) enabled devices, such as laptops and desktops, infringe four U.S. patents related to the physical layer (“PHY”) of wireless communication technology.
- Technical Context: The technology at issue pertains to the IEEE 802.11ax standard, known commercially as Wi-Fi 6, which is a foundational technology for high-efficiency wireless local area networking in a wide array of modern consumer and enterprise electronic devices.
- Key Procedural History: The complaint alleges that Defendant was notified of the asserted patents and their alleged infringement prior to the lawsuit. Specifically, it cites letters sent by Plaintiff's licensing agent, Sisvel, to HP on August 2, 2022, and January 18, 2023, which identified the patents as "essential to the 802.11ax standard." These allegations form the basis for claims of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2015-06-29 | Priority Date for U.S. Patent No. 10,313,077 |
| 2015-12-24 | Priority Date for U.S. Patent Nos. 10,687,281 & 11,470,595 |
| 2017-01-09 | Priority Date for U.S. Patent No. 11,159,210 |
| 2019-06-04 | U.S. Patent No. 10,313,077 Issued |
| 2020-06-16 | U.S. Patent No. 10,687,281 Issued |
| 2021-10-26 | U.S. Patent No. 11,159,210 Issued |
| 2022-08-02 | First pre-suit notice letter allegedly sent to HP |
| 2022-10-11 | U.S. Patent No. 11,470,595 Issued |
| 2023-01-18 | Second pre-suit notice letter allegedly sent to HP |
| 2024-09-13 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,313,077 - “Wireless communication method and wireless communication terminal for coexistence with legacy wireless communication terminal,” Issued June 4, 2019
The Invention Explained
- Problem Addressed: The patent describes the technical challenge of introducing new, higher-throughput wireless LAN systems (referred to as "non-legacy") into environments already populated by older devices ("legacy") operating under different standards. A new-generation device must transmit data frames in a way that legacy devices can at least partially interpret to prevent network collisions, even if they cannot fully decode the new data format (’077 Patent, col. 2:5-24).
- The Patented Solution: The invention proposes a method for a non-legacy terminal to receive and interpret a "non-legacy physical layer frame" that embeds a "legacy signaling field" (L-SIG). This L-SIG contains information, such as the frame's duration, that is decodable by older legacy terminals. The patented non-legacy terminal uses this duration information from the L-SIG, along with other parameters, in a specific mathematical formula to determine the number of data symbols in the advanced, non-legacy portion of the frame, thereby enabling backward compatibility for coexistence (’077 Patent, Abstract; col. 3:1-44).
- Technical Importance: This approach is designed to allow newer Wi-Fi standards to be deployed in the same frequency bands as older standards with reduced interference, facilitating a smoother technological transition in crowded wireless spectrums (Compl. ¶42).
Key Claims at a Glance
The complaint asserts infringement of the ’077 Patent without specifying claims; the allegations in paragraphs 29-36 correspond to an independent device claim, such as Claim 1.
- Independent Claim 1: A wireless communication terminal comprising a transceiver and a processor configured to:
- receive a non-legacy physical layer frame;
- obtain a legacy signaling field from that frame that is decodable by a legacy terminal;
- obtain length information on the frame's duration from the legacy signaling field;
- obtain other information via a remaining value derived from dividing the length information by the data size transmittable by a legacy symbol; and
- determine the number of data symbols in the non-legacy frame according to a specific equation.
U.S. Patent No. 10,687,281 - “Wireless communication method and wireless communication terminal, which use discontinuous channel,” Issued June 16, 2020
The Invention Explained
- Problem Addressed: As wireless channels become wider to support higher data rates (e.g., 80 MHz or 160 MHz), the probability increases that a portion of the wide channel is occupied by interference, rendering the entire channel unusable for legacy systems and wasting spectrum (’281 Patent, col. 2:5-18).
- The Patented Solution: The patent discloses a method for using a "discontinuous channel" by "puncturing" or omitting the occupied sub-channels. A wireless terminal receives a packet with signaling fields (HE-SIG-A and HE-SIG-B). Information in the HE-SIG-A "bandwidth field" can indicate which sub-channels are punctured, while the HE-SIG-B field can provide further information about which "resource units" are unassigned. The terminal decodes the packet by using this combined information to process data only on the clear portions of the channel, thereby operating efficiently despite partial interference (’281 Patent, Abstract; col. 3:45-56).
- Technical Importance: This technique, known as preamble puncturing, allows Wi-Fi 6 devices to make more flexible and efficient use of wide channels in congested wireless environments, improving throughput and reliability (Compl. ¶64).
Key Claims at a Glance
The complaint asserts infringement of the ’281 Patent without specifying claims; the allegations in paragraphs 52-58 correspond to an independent device claim, such as Claim 1.
- Independent Claim 1: A wireless communication terminal comprising a processor and a communication unit configured to:
- receive a wireless packet;
- obtain bandwidth information from a bandwidth field in the packet's HE-SIG-A field;
- obtain information about an unassigned resource unit from both the bandwidth field of HE-SIG-A and a subfield of HE-SIG-B;
- decode the packet based on both the bandwidth information and the unassigned resource unit information;
- wherein the unassigned resource unit information is indicated by a combination of the HE-SIG-A bandwidth field (indicating punctured channels) and an HE-SIG-B resource unit allocation field (indicating additional puncturing).
U.S. Patent No. 11,470,595 - “Wireless communication method and wireless communication terminal, which use discontinuous channel,” Issued October 11, 2022
Technology Synopsis
This patent relates to signaling methods for discontinuous channel use in Wi-Fi 6. The invention describes a method where a terminal receives a wireless packet and obtains information about unassigned resource units (RUs) from both the HE-SIG-A and HE-SIG-B fields, with specific signaling to indicate whether a user is allocated to a "center 26-tone resource unit" when operating in bandwidths of 80 MHz or greater (’595 Patent, Abstract).
Asserted Claims
Independent Claim 1 appears to be asserted (Compl. ¶¶74-81).
Accused Features
The accused HP products allegedly implement the IEEE 802.11ax standard, which requires receiving wireless packets and using the HE-SIG-A and HE-SIG-B fields to determine RU assignments, including for the center 26-tone RU in 80 MHz and wider modes (Compl. ¶¶76, 81).
U.S. Patent No. 11,159,210 - “Wireless communication method and wireless communication terminal for signaling multi-user packet,” Issued October 26, 2021
Technology Synopsis
This patent addresses efficient signaling for multi-user transmissions in Wi-Fi 6. The invention specifies a method where a "SIG-B compression field" and a "number of MU-MIMO users" subfield within the HE-SIG-A portion of a packet preamble are used to determine the format of user-specific fields within the subsequent HE-SIG-B portion, allowing for different and more efficient signaling structures depending on whether the transmission is for a single user or multiple users (’210 Patent, Abstract).
Asserted Claims
Independent Claim 1 appears to be asserted (Compl. ¶¶97-104).
Accused Features
The accused HP products, by complying with the 802.11ax standard, allegedly receive and decode multi-user packets where the format of the HE-SIG-B field is determined by the SIG-B compression and user count fields in the HE-SIG-A field (Compl. ¶102).
III. The Accused Instrumentality
Product Identification
The complaint accuses "all of HP's Wi-Fi 6 (802.11ax) enabled devices, including laptops and desktops" (Compl. ¶13). The HP Spectre x360 2-in-1 Laptop is identified as an exemplary product (Compl. ¶29).
Functionality and Market Context
The relevant functionality of the accused products is their implementation of the IEEE 802.11ax (Wi-Fi 6) wireless communication standard (Compl. ¶29). The complaint alleges that these devices contain processors and wireless transceivers, such as the "Intel® Wi-Fi 6E AX211" wireless card, that are configured to receive and decode wireless packets according to the structures and methods defined in the 802.11ax standard (Compl. ¶¶30, 53). The complaint presents a screenshot from an HP product page for the Spectre laptop, which lists "Up to Wi-Fi 7" as a feature, implying support for the predecessor Wi-Fi 6 standard (Compl. p. 8). Plaintiff alleges these features provide benefits like faster throughput and improved coexistence, which are valuable to consumers (Compl. ¶42).
IV. Analysis of Infringement Allegations
’077 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A wireless communication terminal that communicates wirelessly, the terminal comprising: a transceiver; and a processor... | The Accused Products are wireless terminals, such as the HP Spectre laptop, that contain processors and wireless transceivers (e.g., Intel Wi-Fi 6E cards). | ¶29, ¶30 | col. 3:1-3 |
| configured to: receive a non-legacy physical layer frame by using the transceiver... | The processor is configured to receive a High Efficiency (HE) Physical Layer Protocol Data Unit (PPDU) frame, which is a non-legacy frame format defined by the IEEE 802.11ax standard. The complaint includes Figure 27-23 from the standard to illustrate this frame structure. | ¶31 | col. 3:4-6 |
| obtain a legacy signaling field including information decodable by a legacy wireless communication terminal from the non-legacy physical layer frame... | The processor obtains the L-SIG field from the HE PPDU, which contains rate and length information decodable by legacy 802.11a/g/n/ac devices. | ¶32 | col. 3:6-9 |
| obtain length information indicating information on a duration of the non-legacy physical layer frame, from the legacy signaling field... | The processor obtains the LENGTH field from the L-SIG to determine the duration (TXTIME) of the non-legacy frame. | ¶33 | col. 3:9-12 |
| obtain information other than information on the duration of the non-legacy physical layer frame through a remaining value obtained by dividing the length information by a data size transmittable by a symbol of a legacy physical layer frame...is 3 octets when a data rate...is 6 Mbps... | The processor calculates a value based on the length information and a fixed data size of 3 octets per symbol at a 6 Mbps rate, as specified in the 802.11ax standard. | ¶34 | col. 3:12-20 |
| determine the number of symbols of data of the non-legacy physical layer frame according to a following equation... | The processor determines the number of data symbols (N_SYM) using an equation that matches the one specified in the claim, citing an equivalent formula from the IEEE 802.11ax standard. | ¶35 | col. 3:21-34 |
Identified Points of Contention
- Scope Questions: The infringement theory relies on the accused products' compliance with the IEEE 802.11ax standard. A potential question for the court is whether every possible implementation of the standard necessarily practices the claimed method, including the exact mathematical formula for determining the number of symbols, or if standard-compliant alternatives exist that would fall outside the claim's scope.
- Technical Questions: The analysis will depend on evidence demonstrating that the processors in HP's devices actually execute the specific sequence of steps as claimed. The complaint's evidence is the standard itself, raising the question of what evidence will be presented to show the actual operation of the accused chips.
’281 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A wireless communication terminal, the terminal comprising: a processor; and a communication unit... | The Accused Products are wireless terminals with processors and communication units (transceivers) for wireless communication. | ¶52, ¶53 | col. 10:4-6 |
| configured to: receive a wireless packet through the communication unit... | The processor is configured to receive a wireless packet, specifically an HE Multi-User (MU) PPDU as defined by the 802.11ax standard. | ¶53 | col. 10:7-8 |
| obtain bandwidth information indicated via a bandwidth field of HE-SIG-A of the received packet... | The processor obtains bandwidth information from the 3-bit "Bandwidth" field within the HE-SIG-A portion of the packet, as shown in the complaint's excerpt from Table 27-20 of the standard. | ¶54 | col. 10:9-11 |
| obtain information of an unassigned resource unit via at least one of the bandwidth field of the HE-SIG-A and a subfield of HE-SIG-B of the received packet... | The processor obtains information about unassigned Resource Units (RUs) from both the HE-SIG-A bandwidth field (which can indicate punctured channels) and various subfields in the HE-SIG-B common field (which can indicate unallocated RUs). | ¶55 | col. 10:12-16 |
| decode the received packet based on the bandwidth information and the information of the unassigned resource unit... | The processor decodes the packet by processing data only on the assigned RUs and ignoring the unassigned/punctured portions of the channel, as dictated by the PHY receive state machine illustrated in Figure 27-63 of the standard. | ¶56 | col. 10:17-19 |
| wherein the information of the unassigned resource unit is indicated via a combination of the bandwidth field of the HE-SIG-A and a resource unit allocation field of the HE-SIG-B... | The 802.11ax standard allegedly specifies that unassigned RUs are indicated by a combination of the HE-SIG-A bandwidth field (for overall bandwidth and puncturing) and the HE-SIG-B RU Allocation field (for specific RU assignments). | ¶57 | col. 10:20-24 |
| wherein the bandwidth field of the HE-SIG-A indicates channel information to be punctured within the bandwidth, and the resource unit allocation field indicates additional puncturing information... | The HE-SIG-A bandwidth field allegedly indicates primary puncturing information, while the HE-SIG-B RU allocation field provides additional, more granular puncturing information for unassigned RUs. | ¶58 | col. 10:25-29 |
Identified Points of Contention
- Scope Questions: The claim requires that information about the unassigned resource unit be obtained via a combination of fields from HE-SIG-A and HE-SIG-B. A potential dispute may arise over whether the accused devices always use this combination, or if in some modes of operation, the necessary information can be derived from one field alone, potentially placing that operation outside the claim scope.
- Technical Questions: A key question will be how the terms "punctured channel" and "unassigned resource unit" are construed. The infringement argument suggests that the former, signaled in HE-SIG-A, is a type of the latter, with more detail provided in HE-SIG-B. The defense may argue these are distinct technical concepts signaled and processed differently, potentially challenging the "combination" element of the claim.
V. Key Claim Terms for Construction
’077 Patent, Claim 1
The Term: "determine the number of symbols of data... according to a following equation"
- Context and Importance: This term recites a specific mathematical formula that is a required step for infringement. The case will likely turn on whether the accused devices perform a calculation that meets this limitation, either literally or under the doctrine of equivalents. Practitioners may focus on this term because the plaintiff's infringement read is based on an allegedly identical equation in the IEEE 802.11ax standard.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the purpose of the equation is to allow a non-legacy terminal to calculate the frame length (’077 Patent, col. 4:40-59). A party might argue that any calculation that achieves this same functional outcome using the same inputs should be covered.
- Evidence for a Narrower Interpretation: The claim recites the exact structure of the equation. A party could argue that this represents a specific, chosen definition of the invention and that any deviation from this precise mathematical relationship, even if functionally similar, falls outside the literal scope of the claim.
’281 Patent, Claim 1
The Term: "information of an unassigned resource unit is indicated via a combination of the bandwidth field of the HE-SIG-A and a resource unit allocation field of the HE-SIG-B"
- Context and Importance: This limitation requires that information about unassigned resources is derived from two distinct sources in the packet preamble. Infringement hinges on whether the accused devices necessarily combine information from both fields to make a decoding decision. Practitioners may focus on this term because it links two separate signaling mechanisms (channel puncturing and RU allocation), and the nature of their interaction is a potential point of dispute.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the overall goal of using both HE-SIG-A and HE-SIG-B to manage resource allocation in a flexible way (’281 Patent, col. 3:45-56). A party could argue "combination" means the system considers both fields, even if one contains all the necessary information in a particular scenario.
- Evidence for a Narrower Interpretation: A party could argue that "combination" requires that information from both fields be actively used and integrated to determine the unassigned RUs for any given infringing act. If a device can determine the unassigned RUs from the HE-SIG-B field alone in some modes, those instances might not infringe.
VI. Other Allegations
Indirect Infringement
The complaint alleges both induced and contributory infringement. It asserts that HP had knowledge of the patents from at least August 2, 2022, via letters from Sisvel (Compl. ¶37, ¶59). It further alleges that by selling Wi-Fi 6 products and providing user manuals and instructions, HP actively encourages and intends for its customers to use the devices in their normal, infringing mode of operation (Compl. ¶38, ¶60).
Willful Infringement
Willfulness allegations are based on HP's alleged pre-suit knowledge from the August 2022 and January 2023 notice letters. The complaint claims that despite being aware of the patents and their alleged essentiality to the Wi-Fi 6 standard, HP continued to make, use, and sell the accused products without a license (Compl. ¶40, ¶62).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of standard essentiality and claim scope: The case appears to rest on the assertion that the patents are essential to the IEEE 802.11ax standard. A central question for the court will be whether compliance with that standard necessarily requires practicing the methods as recited in the asserted claims, or if non-infringing alternative implementations are permitted by the standard.
- A key evidentiary question will be one of operational proof: Beyond mapping the patent claims to the language of the 802.11ax standard, the case will likely require technical evidence demonstrating how the accused HP devices actually operate at the chip and software level to prove that they perform the specific claimed steps, such as using the precise mathematical formula of the ’077 patent.
- The dispute will also involve a critical question of claim construction: The viability of the infringement claims will depend heavily on the court's interpretation of key terms, such as whether the "equation" in the '077 patent requires literal identity and whether the "combination" of signaling fields in the '281 patent requires active integration of information from both sources for every infringing act.