Uniloc 2017 LLC v. BlackBerry Ltd

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Uniloc 2017 LLC (Delaware)
  • Defendant: Blackberry Corporation (Delaware)
  • Plaintiff’s Counsel: Prince Lobel Tye LLP; Nelson Bumgardner Albritton P.C.
• Case Identification: 3:18-cv-03065, N.D. Tex., 01/16/2019
• Venue Allegations: Venue is based on Defendant Blackberry having a regular and established place of business in Irving, Texas.
• Core Dispute: Plaintiff alleges that Defendant’s electronic devices that operate on LTE networks infringe a patent related to methods for managing service requests in a radio communication system.
• Technical Context: The technology concerns protocols for improving the reliability of service requests sent from a mobile device to a network base station by repeatedly transmitting the request until an acknowledgement is received.
• Key Procedural History: The complaint alleges Blackberry was on notice of the patent and infringement allegations due to the service of an original complaint in a prior case, No. 3:18-cv-01883. An Inter Partes Review (IPR) of the patent-in-suit was subsequently initiated (IPR2019-00510), resulting in the cancellation of Claim 17 of the patent, a proceeding not mentioned in the complaint as it was filed prior to the IPR's conclusion.

Case Timeline

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: March 15, 2005. (’079 Patent).

The Invention Explained

• Problem Addressed: The patent describes a problem in mobile communication systems where a mobile station (MS) needing to request services from a base station (BS) may face an unreliable or inefficient process. If a dedicated signalling channel is used, a single request from the MS might not be detected by the BS due to noise or interference, leading to delays. (’079 Patent, col. 1:45-55).
• The Patented Solution: The invention proposes a method where a secondary station (the MS) repeatedly re-transmits a service request in its dedicated, allocated time slots until it receives an acknowledgement from the primary station (the BS). This persistent re-transmission allows the primary station to improve detection accuracy by combining the signals received across multiple time slots, thereby increasing the robustness of the signalling channel. (’079 Patent, Abstract; col. 2:1-14).
• Technical Importance: This method was designed to enhance the reliability and reduce the delay of establishing service connections in emerging third-generation (e.g., UMTS) networks compared to prior art protocols. (’079 Patent, col. 1:40-44).

Key Claims at a Glance

• The complaint alleges infringement of unspecified "claims of the '079 Patent," stating they are "exemplified in Exhibit 1," which is not attached to the filed complaint (Compl. ¶13). The patent contains five independent claims (1, 8, 12, 17, and 18).
• Independent claim 1, a method claim, includes the following essential elements:
  • Allocating time slots in an uplink channel to secondary stations.
  • A secondary station transmitting a service request to a primary station in its time slot.
  • The secondary station re-transmitting the same request in "consecutive allocated time slots" until an acknowledgement is received.
  • The primary station determining if a request was sent "from a combination of the received signals in a plurality of successive time slots." (’079 Patent, col. 6:1-22).

III. The Accused Instrumentality

Product Identification

• The complaint identifies a range of Blackberry electronic devices capable of operating on LTE networks, including the BlackBerry Motion, Keyone, Key2, Priv, Passport, Z10, and others (collectively, "Accused Infringing Devices") (Compl. ¶8).

Functionality and Market Context

• The Accused Infringing Devices are alleged to operate in compliance with LTE standards, using a physical uplink control channel (PUCCH) to transmit information to base stations (Compl. ¶10).
• The complaint alleges that, using "PUCCH format 1," the devices transmit a scheduling request (SR) in specific time slots, and this transmission is "repeated until the primary device transmits a resource allocation acknowledgement" (Compl. ¶11). The primary device is said to detect this SR by "the presence of a certain energy level on the PUCCH" (Compl. ¶11).
• No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

’079 Patent Infringement Allegations

• Identified Points of Contention:
  • Technical Questions: A principal technical question is whether the LTE standard's method for detecting a scheduling request—which the complaint describes as detecting "a certain energy level on the PUCCH" (Compl. ¶11)—satisfies the claim limitation requiring a determination "from a combination of the received signals in a plurality of successive time slots" (’079 Patent, col. 6:17-20). The complaint does not allege facts to support this specific combining step, which the patent presents as a key feature for improving detection accuracy (’079 Patent, col. 4:18-28).
  • Scope Questions: Claim 1 requires re-transmission in "consecutive allocated time slots." The complaint alleges the accused SR is repeated "every nth sub-frame" (Compl. ¶11). This raises the question of whether the LTE protocol, where requests may be periodic but not necessarily in every single successive allocated slot, falls within the scope of the term "consecutive" as used in the patent.

V. Key Claim Terms for Construction

The Term: "a combination of the received signals"

• Context and Importance: This term is central to the novelty of the invention as performed by the primary station (the base station). The infringement analysis will depend heavily on whether the standard operation of an LTE base station in detecting a scheduling request can be characterized as making "a combination" of signals from multiple slots.
• Intrinsic Evidence for a Broader Interpretation: The specification discusses various ways to improve detection, including a "multiple threshold scheme" where a decision can be deferred, which may suggest that "combination" is not limited to a direct mathematical summation of signal waveforms but could include any process that uses information from multiple slots to make a final determination (’079 Patent, col. 5:25-33).
• Intrinsic Evidence for a Narrower Interpretation: The specification explicitly describes a simulation where "magnitudes of two successive matched filter outputs were added together" to improve the missed detection rate (’079 Patent, col. 4:59-62). A party could argue this specific embodiment limits "combination" to a direct signal processing operation that adds or integrates signal values from different slots.

The Term: "consecutive allocated time slots"

• Context and Importance: The temporal pattern of the accused re-transmissions must match this limitation. The complaint's description of the accused protocol as repeating "every nth sub-frame" (Compl. ¶11) creates a potential mismatch with a strict definition of "consecutive."
• Intrinsic Evidence for a Broader Interpretation: A party might argue the term means consecutive opportunities that are allocated for the specific purpose of a service request, even if those allocated slots are separated by frames used for other purposes.
• Intrinsic Evidence for a Narrower Interpretation: The patent states that a secondary station can "retransmit requests in each allocated time slot" (’079 Patent, col. 2:4-5) and that requests continue in "successive allocated time slots" (’079 Patent, col. 3:62-63). This language may support an interpretation requiring that the allocated slots for re-transmission must occur one after another without interruption.

VI. Other Allegations

• Indirect Infringement: The complaint alleges that Blackberry induces infringement by incorporating software and components that "enable the devices to operate automatically" in an infringing manner (Compl. ¶14). It further alleges contributory infringement, asserting the devices are "especially made or especially adapted for use" to infringe and are not staple articles of commerce (Compl. ¶15).
• Willful Infringement: The willfulness claim is based on alleged pre-suit knowledge of the ’079 Patent stemming from the service of a complaint in a prior case (No. 3:18-cv-01883), after which Blackberry allegedly "refused to discontinue its infringing acts" (Compl. ¶16).

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

• A core issue will be one of evidentiary proof: can the plaintiff demonstrate that the accused LTE systems practice the claimed "combination of the received signals in a plurality of successive time slots"? The complaint's description of merely detecting an "energy level" does not, on its face, satisfy this key limitation, suggesting a significant factual dispute may arise.
• The case will also turn on a question of claim scope: can the term "consecutive allocated time slots" be construed to cover the LTE standard's scheduling request protocol, which the complaint alleges involves repetition "every nth sub-frame"? The interpretation of this temporal limitation will be critical to the infringement analysis.
• Finally, a key procedural question is the impact of the unspecified claims. The complaint’s failure to identify which of the patent's five independent claims it asserts, particularly in light of the subsequent IPR cancellation of Claim 17, creates uncertainty that will need to be resolved during litigation.