Uniloc USA Inc v. ZTE

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Uniloc USA, Inc. (Texas), Uniloc 2017 LLC (Delaware), and Uniloc Licensing USA LLC (Delaware)
  • Defendant: ZTE (USA), Inc. (New Jersey) and ZTE (TX), Inc. (Texas)
  • Plaintiff’s Counsel: Prince Lobel Tye LLP; Nelson Bumgardner Albrittion PC
• Case Identification: 2:18-cv-00308, E.D. Tex., 08/08/2018
• Venue Allegations: Plaintiff alleges venue is proper because Defendant ZTE has a regular and established place of business in the district and has committed alleged acts of infringement there.
• Core Dispute: Plaintiff alleges that a wide range of Defendant’s electronic devices that comply with HSPA/HSPA+ cellular standards infringe a patent related to selecting data transmission formats in a wireless network.
• Technical Context: The technology concerns resource allocation in wireless communication networks, specifically how a device's MAC (Medium Access Control) layer selects a transport format combination to efficiently transmit data while meeting quality of service requirements.
• Key Procedural History: The provided patent documentation includes an Inter Partes Review (IPR) Certificate, issued on August 16, 2021, subsequent to the filing of this complaint. This certificate indicates that all asserted claims in this case (claims 1, 3-6, and 12) were cancelled. This post-filing event raises a threshold question about the continued viability of the infringement claims as pleaded.

Case Timeline

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

U.S. Patent No. 7,167,487 - "NETWORK WITH LOGIC CHANNELS AND TRANSPORT CHANNELS"

The Invention Explained

• Problem Addressed: In wireless networks like those based on 3GPP standards, data from different applications (logic channels) must be bundled into transport blocks and sent over the air via physical channels. The MAC layer is responsible for selecting a "transport format combination" (TFC) that defines how this data is bundled and transmitted. The patent background notes the need for an "optimized selection process" for choosing a suitable TFC from many possible combinations (Compl. ¶11; ’487 Patent, col. 1:8-32).
• The Patented Solution: The invention proposes a selection algorithm for TFCs that explicitly incorporates a quality of service requirement directly into the selection process at the MAC layer. Specifically, the algorithm selects a TFC "while maintaining a minimum bit rate applicable to the respective logic channel" (’487 Patent, col. 1:45-48, Abstract). This integrates the bit rate requirement into the low-level TFC selection logic, rather than having it managed separately at a higher application layer (’487 Patent, col. 2:55-64).
• Technical Importance: This approach aimed to improve transmission efficiency and ensure quality of service (e.g., for a voice call requiring a constant bit rate) by making the TFC selection process aware of application-level data rate requirements (’487 Patent, col. 1:63-2:3).

Key Claims at a Glance

• The complaint asserts independent claim 1 and dependent claims 3-6 and 12 (Compl. ¶17).
• Independent Claim 1:
  • A network with a first plurality of logic channels with which is associated a second plurality of transport channels,
  • which transport channels are provided for transmitting transport blocks formed from packet units of the logic channels,
  • wherein a plurality of valid transport format combinations is allocated to the transport channels, which combinations indicate the transport blocks provided for transmission on each transport channel,
  • wherein a selection algorithm is provided for selecting the transport format combinations, and
  • wherein the selection algorithm uses a minimum bit rate criteria applicable to the respective logic channel.

III. The Accused Instrumentality

Product Identification

A broad list of ZTE electronic devices, including smartphones and tablets from the "nubia," "Blade," "Axon," and other product lines, that "operate in compliance with HSPA/HSPA+ standardized in UMTS 3GPP Release 6 and above" (collectively, the "Accused Infringing Devices") (Compl. ¶15).

Functionality and Market Context

The complaint alleges that the Accused Infringing Devices implement networks that manage data transmission across logic and transport channels. The core accused functionality is the devices' use of a MAC layer for "sending and receiving packet units in accordance with HSPA/HSPA+" that employs a "minimum bit rate criteria" (Compl. ¶16). The complaint does not describe the specific operation of the ZTE devices beyond their compliance with this industry standard.
No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

’487 Patent Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: The complaint's theory appears to be that compliance with the HSPA/HSPA+ standard is sufficient to constitute infringement. A central question will be whether the standard requires the use of a selection algorithm that meets all limitations of claim 1, or if the standard allows for non-infringing implementations.
  • Technical Questions: The complaint does not provide technical details on the specific algorithm implemented in ZTE's devices. A key evidentiary question is what proof exists that the accused devices’ algorithm actually "uses a minimum bit rate criteria" in the manner claimed, beyond a conclusory allegation to that effect (Compl. ¶16).

V. Key Claim Terms for Construction

• The Term: "selection algorithm... uses a minimum bit rate criteria"
• Context and Importance: This phrase is the central limitation of claim 1, purporting to distinguish the invention from the prior art. The definition of how the algorithm must "use" the "criteria" will be determinative of infringement. Practitioners may focus on whether this requires the specific, multi-step iterative process detailed in the patent or if any consideration of a minimum bit rate suffices.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The plain language of claim 1 does not specify how the criteria must be used, only that it is used by the algorithm. This could support a construction covering any algorithm that considers a minimum bit rate as one of its inputs or constraints (’487 Patent, col. 1:45-48).
  • Evidence for a Narrower Interpretation: The specification describes a detailed, three-iteration selection process where the "minBr condition" is the focus of the first iteration (’487 Patent, col. 8:31-46, col. 9:31-57). A defendant may argue that the term should be limited to an algorithm that operates in a manner consistent with this detailed embodiment, which prioritizes satisfying the minimum bit rate before considering other factors.

VI. Other Allegations

• Indirect Infringement: The complaint alleges inducement by asserting that ZTE "instructs its customers to use the Accused Infringing Devices" through materials such as user guides and websites, causing them to operate in a manner that allegedly infringes (Compl. ¶¶19-20). The basis for contributory infringement is that the accused components are "especially made or especially adapted" for infringement and are not staple articles of commerce (Compl. ¶21).
• Willful Infringement: Willfulness is alleged based on ZTE's knowledge of the ’487 Patent "at the latest, the service upon it of the Original Complaint in this case" (Compl. ¶22). The allegation is thus based on post-suit knowledge.

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

1. A dispositive, threshold issue is one of claim viability: can this lawsuit proceed when the provided patent documentation shows that all asserted claims (1, 3-6, and 12) were cancelled in an Inter Partes Review proceeding that concluded after the complaint was filed?
2. A central technical question is one of standard-essentiality: does mere compliance with the HSPA/HSPA+ standard, as alleged in the complaint, necessarily require practicing the patented "selection algorithm," or is the complaint’s infringement theory based on an overbroad reading of the standard's requirements?
3. An evidentiary question concerns proof of operation: what specific evidence does the plaintiff possess to demonstrate that the accused devices’ internal software performs the selection process using a "minimum bit rate criteria" in the manner required by the claim, beyond the general allegation that the devices comply with a cellular standard?