DCT

2:25-cv-00387

Peninsula Tech LLC v. DISH Wireless LLC

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:25-cv-387, E.D. Tex., Filed 04/11/2025
  • Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas based on Defendant’s regular and established places of business in the district, including retail stores and cellular base stations, and because Defendant has allegedly committed acts of patent infringement in the district.
  • Core Dispute: Plaintiff alleges that Defendant’s 5G cellular network infringes four patents related to procedures for handing over wireless devices to unlicensed spectrum cells and for managing small data transmissions from low-power devices.
  • Technical Context: The technologies at issue concern methods for improving efficiency in modern 5G networks, specifically by managing communication parameters for unlicensed spectrum and streamlining data transmissions for devices in low-power states.
  • Key Procedural History: Plaintiff alleges it provided Defendant with pre-suit notice of the asserted patents and infringement allegations via a letter and claim charts delivered on April 4, 2025.

Case Timeline

Date Event
2016-12-20 ’810 Patent - Earliest Priority Date
2020-07-01 DISH acquires Boost Mobile
2020-09-24 ’844 & ’057 Patents - Earliest Priority Date
2020-10-21 ’109 Patent - Earliest Priority Date
2020-12-04 ’810 Patent - Application Filed
2022-06-15 DISH deploys its own native 5G network
2022-09-06 ’810 Patent - Issue Date
2022-03-31 ’844 Patent - Application Filed
2022-10-26 ’109 Patent - Application Filed
2023-01-31 ’844 Patent - Issue Date
2023-01-30 ’057 Patent - Application Filed
2023-08-08 ’109 Patent - Issue Date
2024-01-01 DISH begins migrating over half a million subscribers to its own network (Beginning of)
2024-11-12 ’057 Patent - Issue Date
2025-04-04 Plaintiff sends notice letter to Defendant
2025-04-11 Complaint Filing Date

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

U.S. Patent No. 11,438,810 - "Communication of configuration parameters of radio resources of an unlicensed cell," issued September 6, 2022

The Invention Explained

  • Problem Addressed: The patent describes challenges in managing cellular communication in multi-carrier systems that utilize both licensed and unlicensed frequency bands, such as Licensed-Assisted Access (LAA) systems. A key challenge is ensuring a base station has the necessary, detailed configuration information about a neighboring unlicensed cell before initiating a handover of a wireless device to that cell (’810 Patent, col. 11:5-13; col. 25:54-65).
  • The Patented Solution: The invention provides a method for one base station (a "first base station") to receive detailed configuration parameters about an "unlicensed cell" from another base station (a "second base station"). These parameters are structured to include: an identifier for the cell, an explicit information element (IE) indicating the cell uses unlicensed spectrum, and further IEs detailing the configuration of the unlicensed radio resources. Upon receiving this information, the first base station can make an informed decision and send a handover request message to the second base station (’810 Patent, Abstract; col. 29:55-col. 30:9).
  • Technical Importance: This structured communication of parameters enables more efficient and reliable handovers to unlicensed spectrum cells, which is crucial for network operators seeking to augment their network capacity in high-traffic areas (’810 Patent, col. 25:54-65).

Key Claims at a Glance

  • The complaint asserts independent Claim 1 (’810 Patent, col. 33:13-29; Compl. ¶25).
  • The essential elements of Claim 1 are:
    • receiving, by a first base station from a second base station, cell configuration parameters of one or more cells of the second base station,
    • the cell configuration parameters indicating: at least one first information element (IE) indicating a first identifier of a first cell; at least one second IE indicating that the first cell is an unlicensed cell; and at least one third IE indicating one or more configuration parameters of radio resources of the unlicensed cell, and
    • sending, to the second base station, a handover request message for a wireless device based on the cell configuration parameters.
  • The complaint reserves the right to assert additional claims (Compl. ¶25, fn. 1).

U.S. Patent No. 11,570,844 - "Release message in small data transmission procedure," issued January 31, 2023

The Invention Explained

  • Problem Addressed: Modern wireless devices, particularly IoT devices, often need to send small amounts of data (Small Data Transmission or SDT) while in a low-power, inactive state (RRC_INACTIVE). The technical problem is how to handle these transmissions when a device moves between base station coverage areas without the significant signaling overhead and power consumption of a full handover or RRC connection re-establishment, which involves transferring the device's entire operational "context" (’844 Patent, col. 61:1-12).
  • The Patented Solution: The patent discloses a method for SDT without relocating the device's context. A "first base station" (which holds the device context) receives a request from a "second base station" (which the device is currently near) indicating an SDT procedure. The first base station decides to keep the context, informs the second base station, receives the uplink data via the second station, and, upon completion of the data transfer, sends an RRC release message to the second station to be forwarded to the device. This allows the device to complete its transmission and return to a low-power state efficiently (’844 Patent, Abstract; Fig. 26).
  • Technical Importance: This procedure reduces network signaling and battery consumption for devices that transmit small, infrequent data packets, which is a key enabling technology for massive IoT deployments (’844 Patent, col. 61:1-12).

Key Claims at a Glance

  • The complaint asserts independent Claim 1 (’844 Patent, col. 81:50-63; Compl. ¶38).
  • The essential elements of Claim 1 are:
    • receiving, by a first base station from a second base station, a request message indicating a small data transmission (SDT) procedure of a wireless device,
    • sending, to the second base station, an indication that the first base station keeps a context of the wireless device,
    • receiving, from the wireless device via the second base station, uplink data associated with the SDT procedure, and
    • sending, to the second base station and based on completion of the SDT procedure, a radio resource control (RRC) release message for the wireless device.
  • The complaint reserves the right to assert additional claims (Compl. ¶37).

U.S. Patent No. 11,723,109 - "Downlink data of small data transmission procedure," issued August 8, 2023

  • Technology Synopsis: This patent addresses the handling of downlink data during the SDT procedure without context relocation described in the ’844 patent. The invention outlines the signaling between a last serving base station and a receiving base station to establish data forwarding tunnels, enabling the efficient delivery of data from the core network to a device in an inactive state (’109 Patent, Abstract; Compl. ¶¶50-54).
  • Asserted Claims: Claim 1 (Compl. ¶49).
  • Accused Features: The accused features are the functionalities within DISH's 5G network that manage the reception and forwarding of downlink data for devices engaged in an SDT procedure without UE context relocation (Compl. ¶¶53-54).

U.S. Patent No. 12,144,057 - "Release message in small data transmission procedure," issued November 12, 2024

  • Technology Synopsis: This patent is a continuation of the technology in the ’844 patent, focusing on the same SDT procedure without context relocation. It specifically claims the method as applied to a wireless device that is in a "radio resource control (RRC) inactive state or RRC idle state," thereby explicitly tying the efficient SDT procedure to these defined low-power states (’057 Patent, Abstract; Compl. ¶63).
  • Asserted Claims: Claim 1 (Compl. ¶62).
  • Accused Features: The accused features are the procedures in DISH's 5G network for handling SDT from a device that is specifically in an RRC_INACTIVE state (Compl. ¶63).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentality is Defendant's 3GPP 5G cellular network that provides Boost Mobile-branded services, including its cellular base stations, referred to as New Generation Node Bs (gNBs) (Compl. ¶¶13, 25-26, 37-38).

Functionality and Market Context

  • The complaint alleges that Defendant operates as a full Mobile Network Operator (MNO), having deployed its own native 5G network infrastructure beginning in 2022 (Compl. ¶11). This network is accused of employing handover techniques between base stations and Small Data Transmission (SDT) procedures that are compliant with 3GPP standards (Compl. ¶¶13, 26, 38). The complaint alleges DISH is the fourth largest wireless carrier in the United States, serving over 7 million subscribers (Compl. ¶12).

IV. Analysis of Infringement Allegations

’810 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
receiving, by a first base station from a second base station, cell configuration parameters of one or more cells of the second base station A serving base station (gNB) receives from a target base station (gNB) an 'Xn Setup Response' message containing cell configuration parameters. ¶26 col. 29:55-65
the cell configuration parameters indicating: at least one first IE indicating a first identifier of a first cell ...; at least one second IE indicating that the first cell is an unlicensed cell; and at least one third IE indicating one or more configuration parameters of radio resources of the unlicensed cell The 'Xn Setup Response' message allegedly contains a 'Served Cell Information NR' IE, which in turn includes IEs identifying the cell ('NR-PCI', 'NR CGI'), an IE indicating it is unlicensed ('NR-U Channel Info List'), and IEs with radio resource parameters ('NR-U Channel ID', 'NR ARFCN'). A diagram from a 3GPP technical specification is provided to illustrate the 'XN SETUP RESPONSE' message structure (Compl. p. 8). ¶¶27-28 col. 30:1-4
sending, to the second base station, a handover request message for a wireless device based on the cell configuration parameters The serving base station sends to the target base station a 'Handover Request' message for the user equipment (UE). ¶29 col. 30:5-9
  • Identified Points of Contention:
    • Scope Questions: A potential question is whether the patent's use of "unlicensed cell," with examples pointing to "LAA cell" technology, can be construed to read on the "NR-U" (New Radio Unlicensed) technology that is part of the 5G standard and is the basis of the infringement allegation (Compl. ¶27, fn. 3; ’810 Patent, Fig. 15).
    • Technical Questions: Claim 1 requires "sending... a handover request message... based on the cell configuration parameters." An evidentiary question will be whether the accused network's decision to send the 'Handover Request' is causally and technically based on the specific IEs received in the 'Xn Setup Response', or if it is triggered by other network logic or measurements.

’844 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
receiving, by a first base station from a second base station, a request message indicating a small data transmission (SDT) procedure of a wireless device A "last serving gNB" receives from a "receiving gNB" a 'Retrieve UE Context Request' message that includes an "SDT indicator." ¶38 col. 75:11-16
sending, to the second base station, an indication that the first base station keeps a context of the wireless device The "last serving gNB" decides not to relocate the full UE context and sends a 'Partial UE Context Transfer' message to the "receiving gNB." This is illustrated in a 3GPP diagram showing RA-based SDT without UE context relocation (Compl. p. 15). ¶39 col. 75:17-21
receiving, from the wireless device via the second base station, uplink data associated with the SDT procedure The "last serving gNB" receives uplink SDT data from the UE via the "receiving gNB" through established data tunnels. ¶40 col. 75:22-25
sending, to the second base station and based on completion of the SDT procedure, a radio resource control (RRC) release message for the wireless device Upon termination of the SDT session, the "last serving gNB" sends a 'Retrieve UE Context Failure' message to the "receiving gNB," which includes an encapsulated 'RRCRelease' message to be sent to the UE. ¶41 col. 75:26-30
  • Identified Points of Contention:
    • Scope Questions: A central issue may be the construction of "sending... an RRC release message." The complaint alleges this is met by sending a 'Retrieve UE Context Failure' message that contains an encapsulated 'RRCRelease' message. The court may need to determine if sending a container message that includes the claimed message satisfies the claim limitation.
    • Technical Questions: The claim requires the RRC release message to be sent "based on completion of the SDT procedure." The infringement analysis will depend on evidence showing that the termination of the SDT procedure is the technical trigger for the "last serving gNB" to send the accused 'Retrieve UE Context Failure' message.

V. Key Claim Terms for Construction

’810 Patent, Claim 1

  • The Term: unlicensed cell
  • Context and Importance: This term's scope is critical. The patent was filed in the context of "Licensed-Assisted Access" (LAA), a 4G-era technology, and its examples use the term "LAA cell." The infringement allegation is based on "New Radio Unlicensed" (NR-U), the 5G successor. Practitioners may focus on this term because Defendant could argue the invention is limited to the specific LAA technology disclosed, not the newer NR-U standard.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim itself uses the general term unlicensed cell without specifying "LAA" or any particular standard (’810 Patent, col. 33:22). The specification also refers more broadly to operation in an "unlicensed spectrum" (’810 Patent, col. 25:54-56).
    • Evidence for a Narrower Interpretation: The patent's flowcharts and detailed descriptions consistently refer to "LAA cell" as the exemplary embodiment, which could be used to argue the inventors contemplated and described only that specific implementation (’810 Patent, Fig. 15, 1510; Fig. 16, 1610).

’844 Patent, Claim 1

  • The Term: first base station and second base station
  • Context and Importance: These terms define the actors performing the claimed method steps. The complaint maps these to a "last serving gNB" and a "receiving gNB" in a 3GPP-compliant network (Compl. ¶¶38-39). Practitioners may focus on these terms because the infringement case depends on demonstrating that the specific functions and interactions of the accused gNBs align with the roles of the "first" and "second" base stations as described and claimed in the patent.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent claims do not limit the terms to any specific type of base station or network architecture, using the general terms first base station and second base station (’844 Patent, col. 81:51). This may support an interpretation that covers any network nodes performing the recited functions.
    • Evidence for a Narrower Interpretation: The patent's detailed description and figures illustrate a specific sequence of interactions between the two base stations in the context of an SDT procedure without context relocation. A defendant might argue that these terms should be limited to nodes that perform all the functions described for them in the specification, potentially creating a mismatch if the accused gNBs operate differently in some respect (’844 Patent, Fig. 26).

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement to infringe for all asserted patents. This is based on allegations that DISH directs and encourages others, such as partners and operators, to use and operate 3GPP-compliant base stations through contractual agreements like the "DISH-AT&T Network Services Agreement" (Compl. ¶¶30, 42, 55, 67).
  • Willful Infringement: The complaint alleges willful infringement of all asserted patents. The basis for this allegation is Defendant's alleged pre-suit knowledge of the patents and the alleged infringement, stemming from a notice letter and claim charts that Plaintiff's licensing agent delivered to DISH on April 4, 2025 (Compl. ¶¶21, 33, 45, 58, 70).

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

  • A core issue will be one of technical mapping: do the standardized 3GPP message sequences allegedly used in DISH's 5G network for Small Data Transmission (e.g., 'Retrieve UE Context Request', 'Partial UE Context Transfer') perform the distinct functions in the specific order required by the claims of the '844 and '057 patents for a "first base station" and "second base station"?
  • A key question of claim scope will be whether the term unlicensed cell from the '810 Patent, rooted in the technological context of 4G-era "LAA cells," can be construed to cover the "New Radio Unlicensed" (NR-U) technology allegedly practiced by the accused 5G network, or if the patent's disclosure limits the claim to the earlier context.
  • A central evidentiary question will be one of causation and completion: for the '844 and '057 patents, what evidence demonstrates that the accused network sends the RRCRelease message "based on completion of the SDT procedure," as the claims require, versus being triggered by independent network logic or timers?