DCT
3:18-cv-03068
Uniloc 2017 LLC v. BlackBerry Corp
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-03068, N.D. Tex., 01/16/2019
- Venue Allegations: Venue is alleged based on Defendant Blackberry having a regular and established place of business in Irving, Texas.
- Core Dispute: Plaintiff alleges that various Blackberry mobile devices utilizing the Bluetooth Low Energy communication standard infringe a patent related to efficiently polling secondary devices to check for data to transmit.
- Technical Context: The technology concerns low-power wireless communication protocols designed to enable battery-operated peripheral devices (e.g., keyboards, mice) to maintain a responsive connection with a host device while minimizing power consumption.
- Key Procedural History: This amended complaint follows an original complaint in a related case (3:18-cv-01885) which allegedly put Blackberry on notice of the patent-in-suit. Subsequent to the original filing, the asserted patent was the subject of multiple Inter Partes Review (IPR) proceedings. The IPRs resulted in the cancellation of claims 11-12, while the asserted independent claim 1 survived the validity challenges.
Case Timeline
| Date | Event |
|---|---|
| 2000-06-26 | '049 Patent Priority Date |
| 2006-01-31 | '049 Patent Issue Date |
| 2018-11-12 | First IPR petition filed against '049 Patent (IPR2019-00251) |
| 2019-01-16 | Amended Complaint Filing Date |
| 2021-09-28 | IPR Certificate issued, cancelling claims 11-12 of the '049 Patent |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,993,049 - “COMMUNICATION SYSTEM,” issued January 31, 2006
The Invention Explained
- Problem Addressed: The patent describes the challenge of connecting low-throughput, battery-operated Human Interface Devices (HIDs), such as a wireless mouse, to a host system. At the time, establishing a new wireless link was a slow process (potentially "several tens of seconds"), while maintaining a constantly active link to ensure responsiveness would quickly drain the HID's battery. (’049 Patent, col. 1:30-34, col. 2:4-22).
- The Patented Solution: The invention proposes a method to "piggy-back" a polling function onto the standard "inquiry" messages that primary devices (hosts) broadcast to discover other devices. The primary station adds an "additional data field" to its inquiry messages specifically to poll one or more secondary devices (HIDs). A secondary device can remain in a low-power state, periodically listening for these modified inquiry messages, and can respond quickly if it is polled and has data to send, avoiding both the long connection delay and the power drain of a constantly active link. (’049 Patent, Abstract; col. 2:23-35).
- Technical Importance: This approach provided a technical solution to the critical trade-off between power consumption and responsiveness for wireless peripherals, a key hurdle for the widespread adoption of technologies like Bluetooth for HIDs. (’049 Patent, col. 2:18-22).
Key Claims at a Glance
- The complaint asserts infringement of claim 1. (Compl. ¶10).
- Independent Claim 1 requires:
- A communications system with a primary station and at least one secondary station.
- The primary station has means for broadcasting a series of "inquiry messages" according to a first communications protocol.
- The primary station also has means for adding an "additional data field" to an inquiry message to poll a secondary station.
- The polled secondary station has means to determine when the additional data field has been added, determine if it has been polled, and respond to the poll if it has data to transmit.
- The complaint broadly alleges infringement of "claims of the '049 Patent," which may suggest an intent to assert dependent claims later. (Compl. ¶10).
III. The Accused Instrumentality
Product Identification
- A range of Blackberry devices are accused of infringement, including the BlackBerry KEY2, KEYOne, Z10, Priv, and others that "utilize Bluetooth Low Energy version 4.0 and above" (collectively, the "Accused Infringing Devices"). (Compl. ¶8).
Functionality and Market Context
- The complaint alleges the Accused Infringing Devices implement communication systems where a primary device broadcasts messages to poll a secondary device. This polling mechanism allegedly allows the secondary device to respond when it has data to transmit to the primary device. (Compl. ¶9). The infringing functionality is tied to the devices' implementation of the "Bluetooth Low Energy version 4.0 and above" standard. (Compl. ¶12).
IV. Analysis of Infringement Allegations
The complaint alleges infringement through a high-level narrative and by reference to an exhibit that was not included with the provided filing. (Compl. ¶10). The core allegations are summarized below.
'049 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A communications system comprising a primary station and at least one secondary station... | The Accused Infringing Devices are electronic devices that operate as part of a communications system with a first/primary and second/secondary device. | ¶9 | col. 8:28-29 |
| wherein the primary station has 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, | The primary device broadcasts messages using the "Bluetooth Low Energy version 4.0 and above" protocol. | ¶9, ¶12 | col. 8:30-34 |
| and means for adding to an inquiry message prior to transmission an additional data field for polling at least one secondary station, | The broadcast messages are used "to poll the second or secondary device." | ¶9 | col. 8:34-37 |
| and wherein the at least one polled secondary station has means for... determining whether it has been polled... and for responding to a poll when it has data for transmission... | The secondary device "may respond to the first device when the second device has data to transmit to the first device." | ¶9 | col. 8:38-44 |
- Identified Points of Contention:
- Scope Questions: A central question is whether the communication method used in the "Bluetooth Low Energy version 4.0" standard falls within the scope of the patent's claims. The patent was filed in 2000 and describes modifying the "inquiry" procedure of an early Bluetooth specification. (’049 Patent, col. 4:11-15). The accused BLE 4.0 standard uses a different device discovery mechanism based on "advertising" and "scanning." The case may turn on whether BLE "advertising packets" can be construed as the claimed "inquiry messages."
- Technical Questions: What evidence demonstrates that the accused BLE protocol involves adding an "additional data field" to a pre-existing message type, as claimed, rather than using an entirely different, integrated packet structure? The patent teaches appending an "extra field 504" to a standard "ID packet 502" (’049 Patent, Fig. 5), raising the question of whether the structure of a BLE advertising packet corresponds to this claimed architecture.
No probative visual evidence provided in complaint.
V. Key Claim Terms for Construction
The Term: "inquiry message"
- Context and Importance: The infringement analysis hinges on this term. Practitioners may focus on this term because the patent's specification heavily details the "inquiry" procedure of the classic Bluetooth protocol known at the time of filing. (’049 Patent, col. 4:11-49). Defendant may argue the term is limited to this specific protocol, while Plaintiff may argue it functionally covers the "advertising packets" used for device discovery in the accused BLE 4.0 standard.
- Evidence for a Broader Interpretation: The specification states the invention "is applicable to a range of other communication systems" and not just Bluetooth, particularly "frequency hopping systems." (’049 Patent, col. 1:6-8, col. 3:26-29). This could support a functional definition not strictly limited to the term of art in the original Bluetooth specification.
- Evidence for a Narrower Interpretation: The patent provides a detailed description of the "Bluetooth inquiry procedure," including its use of GIAC/DIAC codes, the structure of transmission trains, and specific timing cycles. (’049 Patent, col. 4:11-49). This extensive detail about a specific embodiment could be used to argue for a narrower construction limited to that described protocol.
The Term: "additional data field"
- Context and Importance: The inventive concept is framed as an addition to an existing message. Practitioners may focus on this term because the dispute will likely center on whether BLE advertising packets can be technically characterized as a base message with an "additional" field, or if they are a distinct, integrated packet type.
- Evidence for a Broader Interpretation: The patent describes the purpose of the field is to "carry a HID poll message," suggesting that any data segment within a broadcast packet that serves this polling function could meet the claim limitation. (’049 Patent, col. 4:61-62).
- Evidence for a Narrower Interpretation: Figure 5 and the corresponding description show an "extra field 504" appended to a standard "ID packet 502," which reduces a "guard space." (’049 Patent, col. 5:12-24, Fig. 5). This suggests a specific act of structural modification to a pre-existing packet, not merely the presence of polling data within a packet.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement, stating that Blackberry "intentionally instructs its customers" through "marketing, promotional, and instructional materials" to use the accused devices in a manner that infringes by sending and receiving data packets via the accused BLE functionality. (Compl. ¶12-13).
- Willful Infringement: The complaint alleges post-suit willfulness, asserting that Blackberry has been on notice of the patent since at least the service of a complaint in a prior case (3:18-cv-01885) and has "refused to discontinue its infringing acts" despite this knowledge. (Compl. ¶15).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of protocol interpretation: Can the term "inquiry message", which is rooted in the patent’s description of a specific, older Bluetooth protocol, be construed to read on the functionally similar but structurally different "advertising packets" used in the modern Bluetooth Low Energy standard?
- A key evidentiary question will be one of structural correspondence: Does the accused BLE protocol technically implement the claimed architecture of adding an "additional data field" to a standard discovery message, or is its advertising packet a fundamentally different, integrated data structure that creates a mismatch with the claim language?
- A central legal question will be the impact of the patent’s IPR history: How will the arguments and outcomes of the prior IPR proceedings, which affirmed the validity of claim 1, influence the court’s construction of the key claim terms and its ultimate infringement analysis?