DCT

5:24-cv-00038

Pantech Corp v. OnePlus Technology Shenzhen Co Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 5:24-cv-00038, E.D. Tex., 03/14/2024
  • Venue Allegations: Venue is alleged to be proper as Defendant is a foreign corporation not resident in the United States, and thus may be sued in any judicial district pursuant to 28 U.S.C. § 1391(c)(3).
  • Core Dispute: Plaintiffs allege that Defendant’s LTE and 5G-capable smartphones and mobile devices infringe eight U.S. patents related to fundamental cellular communication technologies.
  • Technical Context: The patents-in-suit relate to technologies for managing network access, data transmission, and connectivity in 4G (LTE) and 5G cellular systems, a globally standardized and commercially critical technology sector.
  • Key Procedural History: The complaint alleges a history of licensing negotiations beginning in June 2020 that failed to result in an agreement. It also references a prior patent infringement lawsuit filed by Plaintiffs against Defendant in the same district on June 3, 2022 (Case No. 5:22-cv-00069-RWS). These allegations support claims for willful infringement and breach of FRAND obligations.

Case Timeline

Date Event
2003-08-25 U.S. Patent No. 10,764,803 Priority Date
2007-09-28 U.S. Patent No. 11,212,838 Priority Date
2008-05-22 U.S. Patent No. 9,288,824 Priority Date
2010-03-29 U.S. Patent No. 8,995,372 Priority Date
2010-08-11 U.S. Patent No. 9,369,251 Priority Date
2012-03-23 U.S. Patent No. 9,769,776 Priority Date
2013-04-05 U.S. Patent No. 9,763,283 Priority Date
2013-05-10 U.S. Patent No. 10,863,573 Priority Date
2015-03-31 U.S. Patent No. 8,995,372 Issued
2016-03-15 U.S. Patent No. 9,288,824 Issued
2016-06-14 U.S. Patent No. 9,369,251 Issued
2017-09-12 U.S. Patent No. 9,763,283 Issued
2017-09-19 U.S. Patent No. 9,769,776 Issued
2020-06-12 Plaintiffs allegedly first notified Defendant of infringement
2020-09-01 U.S. Patent No. 10,764,803 Issued
2020-12-08 U.S. Patent No. 10,863,573 Issued
2021-12-28 U.S. Patent No. 11,212,838 Issued
2022-06-03 Prior infringement lawsuit filed by Plaintiffs
2024-03-14 Complaint Filing Date

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

U.S. Patent No. 9,288,824 - "Method for transmitting and receiving random access request and transmitting and receiving random access response"

  • Patent Identification: U.S. Patent No. 9,288,824, "Method for transmitting and receiving random access request and transmitting and receiving random access response," issued March 15, 2016 (Compl. ¶15, ¶49).

The Invention Explained

  • Problem Addressed: In wireless systems, a user device (UE) must efficiently establish an initial connection with a base station through a "random access" procedure. A key challenge is managing the timing of this process to ensure the UE listens for a response from the base station at the correct time, avoiding missed connections or wasting device power (’824 Patent, col. 1:20-27).
  • The Patented Solution: The invention defines a specific method for a UE to determine the precise time window to monitor for a response after sending an initial access request. The method involves calculating a start time for this monitoring window by identifying the subframe when the request transmission ended and adding a fixed offset of three subframes to that end time (Compl. ¶51; ’824 Patent, Abstract). This creates a predictable and efficient response window for the UE.
  • Technical Importance: This method provides a structured and efficient timing mechanism for the initial network handshake, which is a foundational process for establishing communication in modern cellular networks like LTE (Compl. ¶51).

Key Claims at a Glance

  • The complaint asserts independent claims 1 and 7 (Compl. ¶52).
  • Claim 1 (Method performed by a user equipment):
    • Transmitting a random access preamble to a base station.
    • Determining a time period for receiving a random access response.
    • Wherein the time period starts at a time point after an end time of transmitting the preamble.
    • Wherein the time period corresponds to a subframe number obtained by adding an offset of three to a subframe number corresponding to the end time of transmitting the preamble.
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 11,212,838 - "Method and apparatus for transmitting uplink data on uplink resources"

  • Patent Identification: U.S. Patent No. 11,212,838, "Method and apparatus for transmitting uplink data on uplink resources," issued December 28, 2021 (Compl. ¶16, ¶63).

The Invention Explained

  • Problem Addressed: Mobile devices in a cellular network are allocated dedicated uplink resources for transmitting data. To conserve battery power and network capacity, these resources should be deactivated when not in use. The technical problem is creating an efficient and reliable mechanism for managing the deactivation of these resources without constant, power-intensive signaling between the device and the network (’838 Patent, col. 1:56-67).
  • The Patented Solution: The invention provides a method where a device's resource management is controlled by a local timer. The device receives a Radio Resource Control (RRC) message that not only indicates which uplink resources to use but also provides information for configuring a Medium Access Control (MAC) timer. After transmitting data, the device deactivates the assigned resources automatically when the MAC timer expires, eliminating the need for a separate deactivation command from the network (Compl. ¶65; ’838 Patent, Abstract).
  • Technical Importance: This timer-based resource control mechanism is critical for power management and network efficiency in LTE devices, allowing them to autonomously release resources after periods of inactivity (Compl. ¶65).

Key Claims at a Glance

  • The complaint asserts claims 1-10, including independent claim 1 (Compl. ¶66).
  • Claim 1 (Method performed by a wireless transmit/receive unit):
    • Receiving at least one radio resource control (RRC) message indicating uplink resources for the unit and medium access control (MAC) timer information.
    • Transmitting uplink data based on the indicated uplink resources.
    • Deactivating the indicated uplink resources in response to a MAC timer expiring.
    • Wherein the MAC timer is configured based on the MAC timer information indicated by the received RRC message.
  • The complaint alleges infringement of dependent claims 2-10 but does not specify a basis distinct from the independent claim.

U.S. Patent No. 9,763,283 - "Method and apparatus for wireless link control in wireless communication system supporting dual connectivity"

  • Patent Identification: U.S. Patent No. 9,763,283, "Method and apparatus for wireless link control in wireless communication system supporting dual connectivity," issued September 12, 2017 (Compl. ¶77).
  • Technology Synopsis: The patent addresses radio link control when a device is connected to two base stations simultaneously (dual connectivity). The invention is a method for a user device to detect a radio link failure (RLF) on its connection to a secondary base station and then generate and transmit an RLF indicator to its primary (master) base station (Compl. ¶79).
  • Asserted Claims: Independent claims 9 and 10 are asserted (Compl. ¶80).
  • Accused Features: The complaint alleges that 5G-compatible products, such as the OnePlus Open, which support dual connectivity, are configured to detect a radio link failure, generate an indicator, and transmit it as claimed (Compl. ¶81).

U.S. Patent No. 10,863,573 - "Method and apparatus for sequential forwarding considering multi-flow in dual connectivity system"

  • Patent Identification: U.S. Patent No. 10,863,573, "Method and apparatus for sequential forwarding considering multi-flow in dual connectivity system," issued December 8, 2020 (Compl. ¶91).
  • Technology Synopsis: The patent concerns data handling in dual connectivity systems where a device receives data packets from both a macro and a small base station. The invention provides a method for the device to manage out-of-sequence data packets by receiving information related to an "in-sequence timer" from the macro base station via an RRC message (Compl. ¶93).
  • Asserted Claims: Independent claim 1 is asserted (Compl. ¶94).
  • Accused Features: 5G-compatible products supporting dual connectivity are alleged to receive packet data from macro and small base stations and use an in-sequence timer managed via RRC messages as mandated by the 5G standard (Compl. ¶95).

U.S. Patent No. 9,369,251 - "Apparatus and method for transmitting muting information, and apparatus and method for acquiring channel state using same"

  • Patent Identification: U.S. Patent No. 9,369,251, "Apparatus and method for transmitting muting information, and apparatus and method for acquiring channel state using same," issued June 14, 2016 (Compl. ¶105).
  • Technology Synopsis: The patent describes a method for managing interference in cellular networks by "muting" certain transmissions. A device receives muting information from a serving cell that includes fields specifying a cycle, an offset, and an n-bit bitmap, which dictates when to mute transmissions to avoid interfering with reference signals from other cells (Compl. ¶107).
  • Asserted Claims: Independent claims 7, 9, 10, and 11 are asserted (Compl. ¶108).
  • Accused Features: LTE-compatible devices that support cell-specific reference signals are alleged to implement the claimed method of receiving and using CSI-RS muting information as required by the LTE standard (Compl. ¶109).

U.S. Patent No. 9,769,776 - "Apparatus and Method for Uplink Synchronizing in Multiple Component Carrier System"

  • Patent Identification: U.S. Patent No. 9,769,776, "Apparatus and Method for Uplink Synchronizing in Multiple Component Carrier System," issued September 19, 2017 (Compl. ¶119).
  • Technology Synopsis: This invention relates to uplink synchronization in systems using multiple carriers. A device receives information about a serving cell being added or released, along with an identifier for a "timing advance group" (TAG), and associates the new cell with other cells having the same TAG identifier to maintain synchronization (Compl. ¶121).
  • Asserted Claims: Independent claim 5 is asserted (Compl. ¶122).
  • Accused Features: The complaint alleges that 5G/NR-compatible products supporting multi-component carrier systems perform the claimed method of uplink synchronization as mandated by the 5G standard (Compl. ¶123).

U.S. Patent No. 8,995,372 - "Apparatus and method for performing random access in a wireless communication system"

  • Patent Identification: U.S. Patent No. 8,995,372, "Apparatus and method for performing random access in a wireless communication system," issued March 31, 2015 (Compl. ¶133).
  • Technology Synopsis: The patent addresses timing advance adjustments in systems with multiple component carriers. The claimed method involves a device setting a "delegate" component carrier (CC) within a timing group, obtaining a timing advance (TA) value through that delegate CC, and then using that value to update the TA for the entire group (Compl. ¶135).
  • Asserted Claims: Independent claim 1 is asserted (Compl. ¶136).
  • Accused Features: 5G/NR-compatible devices are alleged to perform random access using delegate component carriers for timing advance as required by the 5G standard (Compl. ¶137).

U.S. Patent No. 10,764,803 - "Enhanced uplink operation in soft handover"

  • Patent Identification: U.S. Patent No. 10,764,803, "Enhanced uplink operation in soft handover," issued September 1, 2020 (Compl. ¶147).
  • Technology Synopsis: The patent describes a method for managing data reception during a "soft handover," where a device is connected to multiple cells simultaneously. The device receives a message on its primary cell that indicates which of the non-primary cells will send the next downlink transmission, allowing the device to properly receive and process that transmission (’803 Patent, Abstract; Compl. ¶149).
  • Asserted Claims: Independent claims 1 and 7 are asserted (Compl. ¶150).
  • Accused Features: The complaint alleges that LTE-compatible products supporting enhanced uplink (EU) operation during a soft handover perform the claimed method of receiving and processing transmissions from non-primary cells based on indicators received on a primary cell (Compl. ¶151).

III. The Accused Instrumentality

Product Identification

  • The Accused Instrumentalities are Defendant's mobile phones and other LTE- and 5G-capable devices, including but not limited to the OnePlus series (e.g., OnePlus 12, OnePlus Open) and Nord series (e.g., Nord N30 5G) (Compl. ¶12-13).

Functionality and Market Context

  • The accused products are smartphones and mobile devices that operate on 4G (LTE) and 5G cellular networks (Compl. ¶13). The complaint alleges that to function on these networks, the devices must comply with the 3GPP technical standards (Compl. ¶51, ¶65). The core of the infringement allegations is that compliance with these standards necessarily requires the accused products to practice the methods claimed in the patents-in-suit, such as contention-based random access, uplink resource control, and dual connectivity management (Compl. ¶53, ¶67, ¶81).

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint.

U.S. Patent No. 9,288,824 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A method, performed by a user equipment (UE), the method comprising: transmitting a random access preamble to a base station... Accused devices, to establish an initial connection on an LTE network, transmit a random access preamble to a base station as part of the random access procedure. ¶51, ¶53 col. 10:1-2
determining a time period for receiving a random access response... Accused devices determine a specific window of time in which to monitor for a response from the base station after sending the preamble. ¶51, ¶53 col. 10:3-4
wherein the time period starts at a time point after an end time of transmitting the random access preamble... The monitoring window determined by the accused devices begins after the device has finished transmitting the preamble. ¶51 col. 10:5-7
...and wherein the time period corresponds to a subframe number obtained by adding an offset of three to a subframe number corresponding to the end time of transmitting the random access preamble. The start of the monitoring window is allegedly calculated by adding an offset of three subframes to the subframe in which the preamble transmission concluded. ¶51 col. 10:7-12
  • Identified Points of Contention:
    • Scope Questions: A central question will be whether compliance with the 3GPP LTE standard, as alleged, requires the performance of every limitation of the asserted claims. The dispute may focus on whether the standard mandates the specific "offset of three" subframes calculation or merely allows for it as one of several possibilities.
    • Technical Questions: What evidence does the complaint provide that the accused devices perform the specific function of adding an "offset of three" to a subframe number? The complaint bases its allegation on the devices' compliance with the LTE standard generally, rather than on a direct technical analysis of the accused products' operation (Compl. ¶51).

U.S. Patent No. 11,212,838 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A method performed by a wireless transmit/receive unit (WTRU), the method comprising: receiving at least one radio resource control (RRC) message indicating uplink resources for the WTRU and medium access control (MAC) timer information; Accused LTE-compatible devices receive RRC messages from the network that configure uplink resources and provide information for setting up a MAC timer. ¶65, ¶67 col. 11:10-14
transmitting uplink data based on the indicated uplink resources; After configuration, the accused devices transmit uplink data to the network using the assigned resources. ¶65, ¶67 col. 11:15-16
deactivating the indicated uplink resources in response to a MAC timer expiring... When the MAC timer expires, indicating a period of inactivity, the accused devices automatically deactivate the assigned uplink resources to conserve power and network capacity. ¶65, ¶67 col. 11:17-18
...wherein the MAC timer is configured based on the MAC timer information indicated by the received RRC message. The MAC timer in the accused devices is configured according to the parameters and values supplied in the RRC message from the network. ¶65, ¶67 col. 11:19-21
  • Identified Points of Contention:
    • Scope Questions: Does the term "deactivating...in response to a MAC timer expiring" require that the timer's expiration is the sole and direct cause of deactivation? A defendant could argue that deactivation is triggered by a combination of factors, or by a separate command, and that the timer's expiration is merely coincidental or a secondary condition.
    • Technical Questions: Does the information provided in the RRC messages of a standard LTE network constitute "MAC timer information" as that term is used and defined within the patent? The analysis will likely require a comparison of the 3GPP standards' specifications with the patent's description of this information.

V. Key Claim Terms for Construction

For U.S. Patent No. 9,288,824

  • The Term: "an offset of three"
  • Context and Importance: This term is highly specific and forms the core of the claimed method's timing calculation. The infringement case for this patent may hinge on whether the accused devices, by complying with the LTE standard, are required to use this exact numerical offset. Practitioners may focus on this term because its specificity could be a point of vulnerability if the standard allows for flexibility or different offset values.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claims themselves recite the term without further limitation, suggesting it should be given its plain and ordinary meaning of adding the integer three (’824 Patent, col. 10:10). The specification's abstract also describes the offset as a key part of the solution without limiting it to a particular embodiment.
    • Evidence for a Narrower Interpretation: The detailed description repeatedly refers to the "offset of '3'" in the context of specific examples and embodiments (’824 Patent, col. 6:32, col. 7:2). A defendant might argue that the term should be limited to the specific implementation details described in the specification, rather than covering any method that happens to use the number three.

For U.S. Patent No. 11,212,838

  • The Term: "deactivating...in response to a MAC timer expiring"
  • Context and Importance: This phrase requires a causal relationship between the timer's expiration and the deactivation of resources. The dispute will likely center on whether the standard-compliant operation of the accused devices establishes this causation. Practitioners may focus on this term because infringement requires more than mere correlation; it requires proof that the timer's expiration triggers the deactivation.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim language "in response to" suggests a causal link but does not explicitly exclude other contributing factors. The patent's abstract describes deactivation as occurring "in response to a MAC timer expiring," framing it as the triggering event (’838 Patent, Abstract).
    • Evidence for a Narrower Interpretation: The specification describes embodiments where the timer's expiration is the specific event that leads to resource release (’838 Patent, col. 4:1-5). A defendant might argue that if the accused devices' deactivation logic relies on other primary signals (e.g., an explicit release command from the network), then the "in response to" element is not met, even if a timer also happens to expire.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges both induced and contributory infringement for all asserted patents. Inducement is primarily based on allegations that Defendant advertised its products as LTE/5G compliant and provided instruction materials, knowing that standard-compliant use by customers would directly infringe (e.g., Compl. ¶57-59, ¶71-73). Contributory infringement is alleged on the basis that the accused devices are material components specifically made for use in an infringing manner and are not staple articles of commerce suitable for substantial non-infringing use (e.g., Compl. ¶60, ¶74).
  • Willful Infringement: Willfulness is alleged for all patents. For most patents, the allegation is based on pre-suit knowledge stemming from licensing communications that began as early as June 12, 2020 (Compl. ¶54-55, ¶82-83, ¶96-97, ¶110-111, ¶138-139, ¶152-153). For at least one patent (’776 Patent), willfulness is alleged from the filing date of the complaint (Compl. ¶124-125).

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

  • A core issue will be one of standard-essentiality: does compliance with the 3GPP LTE and 5G standards, as implemented in the accused devices, necessarily result in the practice of every element of the asserted patent claims? The case will require a detailed comparison of the claim language against the mandatory requirements of the relevant technical specifications.
  • A key legal and technical question will be one of claim scope: can narrowly defined claim limitations, such as the calculation of a time period using "an offset of three," be construed broadly enough to read on the potentially more flexible implementations permitted by a complex technical standard? The outcome of claim construction for such terms will be central to the infringement analysis.
  • A significant parallel issue will be the dispute over FRAND obligations. Given the patents are alleged to be essential to industry standards, the court will likely need to evaluate the history of licensing negotiations, including whether Plaintiffs' offers were fair and reasonable and whether Defendant's refusal to take a license constituted holdout behavior.