DCT

1:05-cv-00181

Board Of Regents Ut v. BenQ America Corp

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I. Executive Summary and Procedural Information

Case Timeline

Date Event
1985-09-06 Priority Date for U.S. Patent No. 4,674,112
1987-06-16 Issue Date for U.S. Patent No. 4,674,112
2005-05-06 Plaintiff's First Amended Complaint for Patent Infringement Filed

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

U.S. Patent No. 4,674,112 - "Character Pattern Recognition and Communications Apparatus"

The Invention Explained

  • Problem Addressed: The patent addresses the difficulty of non-verbal communication using a standard 12-key telephone keypad, where most number keys correspond to three different alphabetic characters, making any word input inherently ambiguous ('112 Patent, col. 4:21-30, col. 5:54-58). Traditional methods required multiple keystrokes to specify a single letter, which was a "major impedimate to effective tele-communication" ('112 Patent, col. 2:45-52).
  • The Patented Solution: The invention proposes an apparatus that receives a sequence of single, ambiguous key presses (e.g., "4-3-5-7" for "HELP"). It then resolves this ambiguity by matching the sequence against a stored vocabulary of "syllabic elements"—defined broadly to include common letter groups, prefixes, suffixes, and whole words—to reconstruct and display the intended word ('112 Patent, Abstract; col. 5:4-14). The system can combine these recognized syllabic elements to form complete words, reducing memory requirements compared to storing a full dictionary of complete words ('112 Patent, col. 6:30-41).
  • Technical Importance: This approach provided a method for rapid text entry on limited keypads, a critical enabling technology for text messaging on mobile phones before the advent of touchscreens.

Key Claims at a Glance

  • The complaint does not specify which claims are asserted, alleging infringement of "the claims of the '112 Patent" generally (Compl. ¶23). Independent claim 1 is a representative apparatus claim.
  • Independent Claim 1 Elements:
    • "receiving means" for receiving transmitted tones and decoding them into a series of codes, where each tone represents one of two or more possible alphabetic characters.
    • "controller means" for processing the series of codes and outputting a signal indicative of a particular word.
    • The controller includes "recognition means" for matching the series of codes with a programmed code sequence.
    • The recognition means includes a "stored vocabulary" comprising a plurality of "syllabic elements".
    • The recognition means is operable for "matching said series of codes with one or more syllabic elements" and outputting a signal for a word represented by them.
    • "indicating means" for receiving the signal and communicating it in a perceptible form to the user.
  • The complaint does not explicitly reserve the right to assert dependent claims.

III. The Accused Instrumentality

Product Identification

The complaint accuses a large number of mobile telephones from various manufacturers, including but not limited to the BenQ "S670C," HTC "SPV E100," Kyocera "Koi/KX2," LG "VX7000," NEC "515 HDM," Sanyo "MM-7400," Siemens "CT66," Sony Ericsson "P910a," and Spreadtrum "SP7100A" (Compl. ¶¶23-36).

Functionality and Market Context

The complaint identifies the accused instrumentalities only by their model names (Compl. ¶¶23-36). It does not provide any technical description of their operation. Based on the patent-in-suit and the nature of the products, the relevant functionality is the system used for entering text via the numeric keypad for functions such as text messaging. The complaint does not contain allegations regarding the specific commercial importance of these products beyond their sale by major mobile phone manufacturers. No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint does not provide a claim chart or a detailed narrative theory of infringement. It makes conclusory allegations that the accused products "fall within the scope of the claims of the '112 Patent" (Compl. ¶¶23-36). The following table outlines the elements of a representative independent claim and notes the lack of specific factual allegations in the complaint.

'112 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A communications apparatus comprising: receiving means operably connectable to a telephone or the like for receiving a series of transmitted tones...and for decoding the tones into a series of codes... The complaint makes general allegations of infringement but does not specify which product components constitute the claimed "receiving means". ¶¶23-36, 37 col. 7:1-9
controller means coupled to said receiving means for processing said series of codes and outputting a signal indicative of a particular word... The complaint does not identify the specific "controller means" (e.g., a baseband processor) within the accused mobile phones. ¶¶23-36, 37 col. 7:10-13
said controller means including, recognition means for matching said series of codes with a programmed code sequence indicative of said particular word, The complaint does not describe the software or hardware architecture alleged to perform the claimed "recognition means" function. ¶¶23-36, 37 col. 7:13-17
said recognition means including a stored vocabulary comprising a plurality of syllabic elements... The complaint does not allege that the accused phones contain a "stored vocabulary" of "syllabic elements" as the term is used in the patent. ¶¶23-36, 37 col. 7:18-20
said recognition means being operable for matching said series of codes with one or more syllabic elements and outputting a signal indicative of a particular word represented by said one or more syllabic elements; and The complaint does not describe the specific algorithm used by the accused phones or allege that it matches key-press sequences with "syllabic elements." ¶¶23-36, 37 col. 7:20-25
indicating means for receiving said signal and communicating the signal in a form perceptible to the user. The complaint does not identify the phone's display screen or other components as the claimed "indicating means". ¶¶23-36, 37 col. 7:26-28
  • Identified Points of Contention:
    • Scope Questions: The primary dispute will likely center on the scope of the term "syllabic elements". A key question is whether the ambiguity-resolution dictionaries used in the accused phones, which may be based on whole words, can be construed as the claimed "vocabulary comprising a plurality of syllabic elements."
    • Technical Questions: The complaint's lack of detail raises the fundamental question of what evidence Plaintiff will offer to show that the accused products' text-entry systems (e.g., T9 or similar technologies) actually operate by matching and combining "syllabic elements" as described in the patent ('112 Patent, col. 6:30-41), rather than using a different method, such as a direct whole-word dictionary lookup.

V. Key Claim Terms for Construction

  • The Term: "syllabic elements"

  • Context and Importance: This term is the core of the invention's contribution to ambiguity resolution. The entire recognition process depends on matching key-press codes to these "elements." Whether the accused text-entry systems meet this limitation will be a central issue. Practitioners may focus on this term because it is not a standard technical term and appears to be defined by the patentee.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification explicitly states that the term is used "genericly" and defines it broadly to include "common letter-groups, suffixes, prefixes, single letters, and a few complete words" ('112 Patent, col. 5:10-12). This language may support a construction that is not limited to dictionary definitions of "syllables."
    • Evidence for a Narrower Interpretation: A defendant might argue that the term, despite the specification's language, should be given a meaning closer to its ordinary sense of a unit of pronunciation, or that the examples given limit its scope. The patent's emphasis on combining these elements to "create the words" ('112 Patent, col. 5:6-7) could be used to argue that a system based only on a dictionary of complete words does not infringe.

  • The Term: "recognition means for matching..."

  • Context and Importance: This is a means-plus-function limitation under 35 U.S.C. § 112, para. 6 (pre-AIA). Its scope is not limitless but is confined to the specific structures disclosed in the specification for performing the function, and their equivalents. The infringement analysis will depend on whether the algorithms and data structures in the accused phones are equivalent to what is described in the '112 patent.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: A plaintiff may argue that the disclosed structure—a microcomputer executing a program to search a lookup table ('112 Patent, col. 3:50-58; col. 6:54-57)—is described at a high level, allowing for a range of equivalent implementations.
    • Evidence for a Narrower Interpretation: The structure corresponding to the function is the specific algorithm described in the specification and flow charts (see '112 Patent, Figs. 6-7), which involves segmenting a word code, searching segments of a lookup table sequentially by size, and reducing the word code if a match is not found ('112 Patent, col. 6:11-25). A defendant could argue this detailed process is the structure, and any accused product using a different search algorithm (e.g., a trie-based search) is not structurally equivalent.

VI. Other Allegations

  • Indirect Infringement: Plaintiff alleges that Defendants have induced infringement under 35 U.S.C. § 271(b) and contributed to infringement under § 271(c) (Compl. ¶37). The complaint supports the contributory infringement claim by alleging that "The infringing products have no substantial non-infringing uses," but it provides no specific factual allegations to support inducement, such as references to user manuals or advertising materials that instruct users on an infringing method of use (Compl. ¶37).
  • Willful Infringement: The complaint does not contain an explicit allegation of willful infringement.

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

Given the early stage of the litigation and the limited detail in the complaint, the case appears to turn on two fundamental questions:

  1. A core issue will be one of definitional scope: Can the patentee-defined term "syllabic elements," which the patent describes as being combined to form words, be construed broadly enough to read on the predictive text dictionaries and ambiguity-resolution systems used in the accused early-2000s mobile phones, which may have been based on whole-word lookups?

  2. A key evidentiary question will be one of technical proof: Assuming a favorable claim construction, what evidence can Plaintiff produce to demonstrate that the specific algorithms implemented in the accused devices are the same as or equivalent to the detailed matching and reconstruction process disclosed in the '112 patent's specification and flowcharts, particularly the method of identifying and combining smaller "elements" to form a complete word?