Uniloc USA Inc v. LG Corp

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Uniloc USA, Inc. (Texas) and Uniloc Luxembourg, S.A. (Luxembourg)
  • Defendant: LG Electronics U.S.A., Inc. (Delaware); LG Electronics Mobilecomm U.S.A. Inc. (California); LG Electronics, Inc. (Korea)
  • Plaintiff’s Counsel: Prince Lobel Tye LLP; Nelson Bumgardner Albritton PC
• Case Identification: 3:18-cv-00559, N.D. Tex., 07/02/2018
• Venue Allegations: Venue is based on allegations that Defendant LG Electronics U.S.A., Inc. maintains a regular and established place of business in the Northern District of Texas and that all Defendants offer the accused products for sale to customers within the district.
• Core Dispute: Plaintiff alleges that Defendants’ electronic devices implementing the Bluetooth Low Energy standard infringe a patent related to a power-efficient method for polling secondary devices using modified wireless inquiry messages.
• Technical Context: The technology addresses latency and power consumption issues in short-range wireless communication protocols, particularly for connecting peripheral devices that require quick response times but are used intermittently.
• Key Procedural History: The operative complaint is a First Amended Complaint. After its filing, the patent-in-suit was subject to three Inter Partes Review (IPR) proceedings before the U.S. Patent and Trademark Office. The asserted claims survived these challenges, while other claims (11-12) were cancelled, an outcome that may be raised by the Plaintiff to suggest the validity of the asserted claims.

Case Timeline

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

U.S. Patent No. 6,993,049 - "COMMUNICATION SYSTEM"

The Invention Explained

• Problem Addressed: The patent describes the challenge of connecting wireless Human Interface Devices (HIDs), such as a mouse or keyboard, to a host system using protocols like Bluetooth. Standard connection procedures could introduce significant latency ("several tens of seconds") and require the battery-powered HID to remain active, consuming excessive power. (’049 Patent, col. 1:30-38; col. 2:9-12).
• The Patented Solution: The invention proposes "piggy-backing a broadcast channel on the inquiry messages" that a primary station (host) periodically sends out to discover nearby devices. (’049 Patent, col. 3:15-17). The primary station adds an "additional data field" to these standard inquiry messages to poll a specific secondary device (the HID). (’049 Patent, Abstract; col. 6:5-9). This allows the secondary device to remain in a low-power state, listen for the modified inquiry message, and respond quickly with data when polled, bypassing the time-consuming standard connection process. (’049 Patent, col. 2:21-35).
• Technical Importance: The described method provided a way to improve both the responsiveness and power efficiency of wireless peripherals, making their use more practical and seamless for consumers. (’049 Patent, col. 1:26-29).

Key Claims at a Glance

• The complaint asserts independent claims 2 and 8, along with dependent claims 3-6 and 9.
• Independent Claim 2 (Primary Station): A primary station comprising means for:
  • broadcasting a series of inquiry messages, each in the form of a plurality of predetermined data fields arranged according to a first communications protocol, and
  • adding to each inquiry message prior to transmission an additional data field for polling at least one secondary station.
• Independent Claim 8 (Secondary Station): A secondary station comprising means for:
  • receiving an inquiry message broadcast by the primary station, the message being in the form of a plurality of predetermined data fields arranged according to a first communications protocol and having added to it an additional data field for polling at least one secondary station, and
  • determining when an additional data field has been added to the plurality of data fields, for determining whether it has been polled from the additional data field and for responding to a poll when it has data for transmission to the primary station.

III. The Accused Instrumentality

Product Identification

• The complaint names a wide array of LG electronic devices that "utilize Bluetooth Low Energy version 4.0 and above," including smartphones, laptops, wireless speakers, sound bars, and projectors (collectively, the "Accused Infringing Devices"). (Compl. ¶¶14-15).

Functionality and Market Context

• The complaint alleges the Accused Infringing Devices operate in compliance with Bluetooth Low Energy (BLE) standards. (Compl. ¶15). The relevant functionality involves a "primary device" broadcasting "advertising message packets" to a "secondary scanner device." (Compl. ¶¶17, 19). This mechanism is alleged to include a method for polling the secondary device, which can then respond if it has data to transmit to the primary device. (Compl. ¶15).

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint.

Claim Chart Summary: '049 Patent Infringement Allegations (Claim 2 - Primary Station)

Claim Chart Summary: '049 Patent Infringement Allegations (Claim 8 - Secondary Station)

Identified Points of Contention

• Scope Questions: The patent is explicitly framed around modifying the "Bluetooth inquiry procedure." (’049 Patent, col. 3:11-12). The accused products use the Bluetooth Low Energy (BLE) standard, which uses "advertising" events rather than the "inquiry" process of classic Bluetooth. This raises the question of whether the claimed "inquiry message" can be construed to cover BLE advertising packets.
• Technical Questions: The patent claims "adding... an additional data field" to an inquiry message. (’049 Patent, cl. 2). The complaint alleges that a "variable PDU Payload field," an integral part of the BLE standard, serves this function. (Compl. ¶19). A dispute may arise over whether using a standard, albeit variable, field within the BLE protocol constitutes "adding" a field as contemplated by the patent, or if the patent requires appending a non-standard field to an otherwise complete message.

V. Key Claim Terms for Construction

• The Term: "inquiry message"

  • Context and Importance: This term's construction is critical because the patent's teachings are rooted in the "inquiry" process of classic Bluetooth, while the accused products use the "advertising" process of the distinct BLE standard. The outcome of the case may depend on whether "inquiry message" is interpreted broadly enough to encompass BLE advertising.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent states that the invention "is applicable to a range of other communication systems," particularly other "frequency hopping systems," not just Bluetooth. (’049 Patent, col. 1:6-8; col. 3:26-30). This language may support a functional definition of "inquiry message" as any broadcast message used for device discovery and initial contact.
    • Evidence for a Narrower Interpretation: The specification repeatedly refers to the "Bluetooth inquiry procedure" and describes the invention as a specific solution to problems within that procedure. (’049 Patent, col. 3:11-12, col. 3:21-25). A party could argue the term is therefore limited to the specific "ID packet" used in the inquiry process of classic Bluetooth, as detailed in the patent. (’049 Patent, col. 5:52-56).

• The Term: "adding... an additional data field"

  • Context and Importance: The infringement theory hinges on the standard BLE "PDU Payload" qualifying as an "additional data field." The interpretation of "adding" will determine if a standard, albeit optional or variable, protocol field meets this limitation.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes the applicants' proposal that inquiry messages "have an extra field 504 appended to them." (’049 Patent, col. 6:59-62). This could be argued to mean the functional inclusion of polling data, regardless of whether the field is defined as standard or non-standard by the protocol.
    • Evidence for a Narrower Interpretation: The patent’s language ("adding to," "appended to") and Figure 5, which shows field 504 appended to packet 502, could support an interpretation that requires tacking on a new field to a pre-existing, otherwise complete message structure, rather than simply populating a pre-defined, integral field within a protocol. (’049 Patent, cl. 2; Fig. 5).

VI. Other Allegations

• Indirect Infringement: The complaint alleges induced infringement, stating that Defendant provides "training videos, demonstrations, brochures, installation and user guides" that instruct customers to use the accused devices in a manner that infringes the patent. (Compl. ¶¶22-23). The complaint also alleges contributory infringement. (Compl. ¶24).
• Willful Infringement: The willfulness allegation is based on notice of the patent allegedly provided by the "service of the Original Complaint" in the case, and Defendant's alleged refusal to cease the accused activities thereafter. (Compl. ¶25).

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

• A core issue will be one of protocol equivalence: can the term "inquiry message," which the patent bases on the device discovery process in classic Bluetooth, be construed to read on the "advertising message packets" of the newer and distinct Bluetooth Low Energy (BLE) standard implemented by the accused products?
• A key evidentiary question will be one of structural modification: does the use of a standard, variable "PDU Payload" field within the BLE protocol constitute "adding... an additional data field" as required by the claims, or does the patent’s language and figures demand the appending of a non-standard field to an otherwise complete message structure?