DCT

3:18-cv-01883

Uniloc USA Inc v. BlackBerry Corp

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 3:18-cv-01883, N.D. Tex., 08/08/2018
  • Venue Allegations: Venue is alleged to be proper in the Northern District of Texas because Defendant Blackberry has a regular and established place of business in the district and has committed alleged acts of infringement there.
  • Core Dispute: Plaintiff alleges that Defendant’s electronic devices that operate on LTE networks infringe a patent related to a method for managing service requests between a mobile device and a base station.
  • Technical Context: The technology addresses the need for reliable and efficient communication of service requests in wireless networks, such as UMTS and LTE, by repeatedly sending a request until it is acknowledged.
  • Key Procedural History: The complaint asserts U.S. Patent No. 6,868,079, including claims 17 and 18. Subsequent to the filing of this First Amended Complaint, an Inter Partes Review (IPR2019-00510) was instituted against the patent, resulting in the cancellation of claim 17. This development narrows the dispute to the remaining asserted claim 18 and any other claims Plaintiff may pursue.

Case Timeline

Date Event
1998-12-10 ’079 Patent Priority Date
2005-03-15 ’079 Patent Issue Date
2018-08-08 First Amended Complaint Filing Date
2019-01-10 IPR (IPR2019-00510) Filed against ’079 Patent
2021-08-16 IPR Certificate Issued, Cancelling Claim 17

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

U.S. Patent No. 6,868,079: "RADIO COMMUNICATION SYSTEM WITH REQUEST RE-TRANSMISSION UNTIL ACKNOWLEDGED" (Issued Mar. 15, 2005)

  • The Invention Explained:

    • Problem Addressed: In wireless communication systems, when a mobile device (secondary station) needs to establish a connection with a base station (primary station), it sends a request. Traditional methods, like random access channels, can be inefficient due to collisions and delays. Even in systems with dedicated request slots, a request might be missed by the base station due to noise or interference, forcing the mobile device to wait a significant time before re-transmitting. (’079 Patent, col. 1:16-54).
    • The Patented Solution: The invention proposes a method where a secondary station, upon needing service, repeatedly transmits its request in consecutively allocated time slots without waiting for a response after each transmission. (’079 Patent, col. 3:60-col. 4:6). This re-transmission continues until the primary station sends an acknowledgement. This allows the primary station to combine the signals from multiple successive request transmissions, improving the likelihood of accurately detecting the request even under poor signal conditions. (’079 Patent, col. 4:18-28; Abstract).
    • Technical Importance: This approach improves the robustness of the service request mechanism by using time diversity, thereby reducing the delay between a device's initial request and the establishment of service. (’079 Patent, col. 4:18-28).

  • Key Claims at a Glance:

    • The complaint asserts claims 17-18, though claim 17 has since been cancelled by an IPR proceeding. (Compl. ¶19).
    • Independent claim 18 is a system claim with the following essential elements:
      • A radio communication system comprising a primary station and a plurality of secondary stations.
      • The primary station has "means for allocating respective time slots in an uplink channel" for the secondary stations to transmit service requests.
      • The secondary stations have "means for re-transmitting the same respective requests in consecutive allocated time slots without waiting for an acknowledgement" until one is received from the primary station.
      • The primary station determines if a request was sent by "determining whether a signal strength of the respective transmitted request... exceeds a threshold value."

III. The Accused Instrumentality

  • Product Identification: The accused instrumentalities are a range of BlackBerry-branded electronic devices that "operate in accordance with the LTE standards," including the BlackBerry Motion, Keyone, Key2, Priv, and Passport, among others (collectively "Accused Infringing Devices"). (Compl. ¶14).
  • Functionality and Market Context:
    • The complaint alleges the Accused Infringing Devices possess LTE capability and utilize a physical uplink control channel (PUCCH) for transmissions to base stations. (Compl. ¶16).
    • The core accused functionality is the transmission of a scheduling request (SR) by the device. According to the complaint, the device transmits this SR "in respective time slots every nth sub-frame" and this process is "repeated until the primary device transmits a resource allocation acknowledgement." (Compl. ¶17). The complaint alleges the primary device (base station) detects this SR "by the presence of a certain energy level on the PUCCH." (Compl. ¶17).
    • No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint alleges that the Accused Infringing Devices, when operating as part of an LTE network, form a system that infringes at least claim 18 of the ’079 Patent.

’079 Patent Infringement Allegations

Claim Element (from Independent Claim 18) Alleged Infringing Functionality Complaint Citation Patent Citation
A radio communication system, comprising: a primary station and a plurality of respective secondary stations; The Accused Infringing Devices are used in communication systems where a "primary device" (e.g., a base station) communicates with one or more "secondary devices" (e.g., BlackBerry smartphones). ¶18 col. 3:10-13
the primary station having means for allocating respective time slots in an uplink channel to the plurality of respective secondary stations to transmit respective requests for services... In systems compliant with LTE Standards, a primary device allocates time slots for secondary devices to request services. The Accused Infringing Devices use a PUCCH to transmit in these allocated slots. ¶15, ¶16 col. 3:20-29
wherein the respective secondary stations have means for re-transmitting the same respective requests in consecutive allocated time slots without waiting for an acknowledgement until said acknowledgement is received from the primary station, A secondary device (accused BlackBerry device) transmits a scheduling request (SR). This transmission "is repeated until the primary device transmits a resource allocation acknowledgement." ¶17 col. 3:60-col. 4:6
wherein said primary station determines whether a request for services has been transmitted... by determining whether a signal strength of the respective transmitted request... exceeds a threshold value. The primary device (base station) "detects the incoming SR by the presence of a certain energy level on the PUCCH," which implies a comparison of signal energy to a predetermined threshold. ¶17 col. 8:30-41
  • Identified Points of Contention:
    • Scope Questions: A central dispute may arise over whether the protocols defined in the LTE standard for scheduling requests (SR) on the PUCCH fall within the scope of the claim terms. The infringement theory appears to rest on the assertion that compliance with the LTE standard necessarily results in infringement.
    • Technical Questions: What evidence demonstrates that the repetition of an SR in the LTE protocol constitutes "re-transmitting... without waiting for an acknowledgement" as defined by the patent? The defense may argue that the timing and control rules of the LTE protocol introduce a form of "waiting" that distinguishes it from the claimed invention. Further, the complaint's allegation of detection via a "certain energy level" will require technical evidence to prove it functions by exceeding a "threshold value" as claimed.

V. Key Claim Terms for Construction

  • The Term: "without waiting for an acknowledgement"

    • Context and Importance: This phrase is central to the patent’s asserted novelty over prior art systems that required a waiting period before re-transmission. Practitioners may focus on this term because its construction will determine whether the timing of the LTE scheduling request protocol, which the accused devices allegedly follow, meets this limitation.
    • Intrinsic Evidence for a Broader Interpretation: The patent’s background distinguishes the invention from prior art where a station "has to wait at least long enough for the primary station to have received, processed and acknowledged a request before it is able to retransmit." (’079 Patent, col. 2:5-8). This suggests "without waiting" could be interpreted broadly to mean not waiting for the full request-process-acknowledge cycle to complete.
    • Intrinsic Evidence for a Narrower Interpretation: The detailed description states that requests "continue to be made in successive allocated time slots" and that a scheme could involve repeating a request "in every allocated time slot." (’079 Patent, col. 3:62-63; col. 4:11-12). This language could support a narrower construction requiring transmission in immediately consecutive allocated slots with no intervening gaps, which may not align with the LTE standard's implementation.

  • The Term: "primary station"

    • Context and Importance: The claims cover a system comprising both a primary and a secondary station. The complaint equates an LTE base station with the claimed "primary station." (’079 Patent, col. 3:11-12; Compl. ¶17). Practitioners may focus on this term because the specific functions attributed to the "primary station" in the patent must be shown to be performed by the base stations with which the accused devices operate.
    • Intrinsic Evidence for a Broader Interpretation: The patent generally describes the primary station as the entity that receives service requests and allocates resources, which aligns with the general function of a cellular base station. (’079 Patent, col. 3:10-13, col. 3:20-29).
    • Intrinsic Evidence for a Narrower Interpretation: The patent also discloses that the roles can be reversed, where a base station can function as a secondary station and a mobile station as a primary one, for example in the context of paging. (’079 Patent, col. 5:48-55). This flexibility could be used to argue that the terms are defined by specific functional roles in a given transaction, rather than being fixed to "base station" and "mobile device."

VI. Other Allegations

  • Indirect Infringement: The complaint alleges active inducement, asserting that BlackBerry "intentionally instructs its customers to infringe" by providing user guides, marketing materials, and other instructional content that direct users to operate the devices in an infringing manner (i.e., using their LTE functionality). (Compl. ¶22). A claim for contributory infringement is also made, based on allegations that BlackBerry knows the devices are especially adapted for infringing use and are not staple articles of commerce. (Compl. ¶23).
  • Willful Infringement: Willfulness is alleged based on post-suit conduct. The complaint contends that BlackBerry has had knowledge of the ’079 Patent and the infringement allegations since at least the service of the original complaint and has "refused to discontinue its infringing acts." (Compl. ¶24).

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

  1. A central issue will be one of standards interpretation: does the operation of a device in compliance with the LTE standard's protocol for scheduling requests (SR) on the Physical Uplink Control Channel (PUCCH) necessarily meet all limitations of claim 18? The case may depend on whether the specific, technical details of the standard align with the patent's description of its inventive method.
  2. The case will likely involve a crucial claim construction dispute: can the phrase "without waiting for an acknowledgement" be construed to read on the timed re-transmission sequence of the LTE SR protocol? The outcome will hinge on whether the inherent timing rules of the standard are considered a form of "waiting" that falls outside the claim scope.
  3. An important procedural question is the impact of the IPR: how will the cancellation of asserted claim 17 affect the litigation over the very similar remaining claim 18? The arguments and prior art that proved successful in invalidating claim 17 will almost certainly be leveraged by the defense to attack the validity of claim 18.