DCT

1:18-cv-00164

Uniloc USA Inc v. Apple

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Key Events
Amended Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:18-cv-00164, W.D. Tex., 05/30/2018
  • Venue Allegations: Venue is asserted based on Apple having regular and established places of business within the Western District of Texas.
  • Core Dispute: Plaintiff alleges that a wide range of Apple products implementing the Bluetooth Low Energy (BLE) protocol infringe a patent related to a method for efficiently polling secondary devices in a wireless network.
  • Technical Context: The dispute centers on short-range wireless communication protocols, specifically methods for device discovery and data exchange that balance responsiveness with power efficiency, a critical concern for battery-powered peripherals.
  • Key Procedural History: Subsequent to the filing of this complaint, the asserted patent was the subject of multiple Inter Partes Review (IPR) proceedings. An IPR certificate issued on September 28, 2021, confirmed the cancellation of claims 11 and 12. Claim 11, a method claim, was asserted in this complaint, and its cancellation may influence arguments regarding the patentability of the remaining asserted claims.

Case Timeline

Date Event
2000-06-26 '049 Patent Priority Date
2006-01-31 '049 Patent Issue Date
2018-05-30 Complaint Filing Date
2021-09-28 IPR Certificate Issued, Cancelling Claims 11-12

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-power Human Interface Devices (HIDs), such as wireless mice or keyboards, to a host system using the Bluetooth protocol of the time. Standard Bluetooth connection procedures ("inquiry" and "page") were described as being too slow for a responsive user experience, potentially taking "several tens of seconds" to establish a link. Conversely, maintaining a constant connection to ensure responsiveness would unacceptably drain the batteries of such devices (’049 Patent, col. 1:49-62, col. 2:8-12).
  • The Patented Solution: The invention proposes a system where a primary station (e.g., a host computer) piggy-backs a polling mechanism onto its standard Bluetooth "inquiry" broadcasts. It achieves this by adding an "additional data field" to the inquiry messages, which can be used to poll specific secondary stations (e.g., a mouse). This allows a secondary device to remain in a low-power state, periodically listening for a poll within the common inquiry traffic, and responding quickly only when it has data to send, without establishing a permanent link (’049 Patent, Abstract; col. 2:17-21, col. 3:14-20). Figure 5 illustrates this concept, showing a standard ID packet (502) being modified to include an additional "HID POLL" field (504) (’049 Patent, Fig. 5).
  • Technical Importance: This approach sought to provide the "best of both worlds" for wireless peripherals: the fast response time of an active link and the power savings of an inactive one, addressing a key limitation in the adoption of early wireless HID technology (’049 Patent, col. 2:17-21).

Key Claims at a Glance

  • The complaint asserts claims 1-2, 4, 8-9, and 11 (Compl. ¶14). Claims 11-12 were subsequently cancelled by an IPR certificate.
  • The complaint presents independent claim 1 as an illustrative example (Compl. ¶15).
  • The essential elements of independent claim 1 are:
    • A communications system comprising a primary station and at least one secondary station.
    • The primary station has "means for broadcasting a series of inquiry messages," structured according to a first communications protocol.
    • The primary station also has "means for adding to an inquiry message... an additional data field for polling at least one secondary station."
    • The polled secondary station has "means for determining" when the additional field has been added, determining if it has been polled, and "responding to a poll" when it has data to transmit.

III. The Accused Instrumentality

Product Identification

The complaint accuses a broad range of Apple products that "utilize Bluetooth Low Energy version 4.0 and above." This includes various models of the iPhone, iPad, Mac, Apple Watch, iPod, Magic Keyboard/Mouse, and Airpods (Compl. ¶12).

Functionality and Market Context

  • The infringement allegations focus on the devices' implementation of the Bluetooth Low Energy (BLE) protocol. The complaint describes how accused devices acting as "primary" stations (e.g., an iPhone) broadcast BLE "advertising message packets" on predefined channels (Compl. ¶15). These packets contain data that can be received by other BLE-capable devices, which can then respond with scan or connection requests (Compl. ¶17).
  • The complaint alleges that this BLE advertising functionality is central to the operation of Apple's ecosystem of interconnected wireless devices, enabling features like device pairing and data exchange (Compl. ¶22). A screenshot from Apple's developer documentation describes how peripherals use advertising packets to make their presence known to central devices (Compl. p. 18).

IV. Analysis of Infringement Allegations

The complaint alleges infringement of claim 1 by mapping functions of the BLE protocol to the claim's "means-plus-function" elements.

'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... Accused Infringing Devices implementing the BLE protocol function as a system of primary and secondary stations (e.g., iPhone and Airpods). ¶15 col. 2:21-23
...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 station broadcasts BLE advertising message packets, which have predetermined fields (e.g., Preamble, Access address, PDU header) defined by the BLE protocol. A diagram in the complaint shows this packet structure. ¶16; p. 6 col. 2:25-29
...and means for adding to an inquiry message prior to transmission an additional data field for polling at least one secondary station... The devices add a variable "PDU Payload" field to the advertising messages, which contains advertising data. This payload is alleged to be the "additional data field for polling." ¶17 col. 2:29-31
...and wherein the at least one polled secondary station has means for determining when an additional data field has been added..., for determining whether it has been polled..., and for responding to a poll when it has data for transmission... A secondary station reads the "Length" and "PDU Type" fields in the packet header to determine the presence and type of the payload, and to determine if a response (e.g., a scan or connection request) is permitted. ¶18 col. 2:31-35

Identified Points of Contention

  • Scope Questions: The complaint equates the BLE "advertising" protocol with the patent's modified "inquiry" protocol. A central dispute may arise over whether a general BLE "advertising packet," broadcast for any device to hear, performs the same function as the patent's "inquiry message" with an "additional data field for polling at least one secondary station." The patent appears to describe a more targeted polling mechanism than a general broadcast (’049 Patent, col. 5:2-3).
  • Technical Questions: Claim 1 is composed of means-plus-function limitations. The analysis will require identifying the specific structure disclosed in the patent's specification for performing the claimed functions (e.g., the microprocessor 210 and link controller 208 in Fig. 2) and comparing it to the accused structure (Apple's BLE chipset and firmware). A key question will be whether the accused BLE advertising structure is structurally equivalent to the patent's disclosed structure of appending a field to a conventional Bluetooth inquiry packet.

V. Key Claim Terms for Construction

The Term: "inquiry messages"

  • Context and Importance: The viability of the infringement theory depends on whether BLE "advertising packets" fall within the scope of this term. The BLE protocol was developed after the patent's priority date. Practitioners may focus on this term because its construction will determine whether a newer technology can be captured by claims written for an older protocol.
  • Intrinsic Evidence for a Broader Interpretation: Plaintiff may argue that the term should be understood functionally as any broadcast message from a primary station intended to discover or elicit a response from secondary devices, a purpose shared by BLE advertising (’049 Patent, col. 3:10-14).
  • Intrinsic Evidence for a Narrower Interpretation: Defendant may argue the term is explicitly tied to the "inquiry" procedure of the pre-BLE Bluetooth specification, which the patent repeatedly uses as its technical baseline. They may point to the detailed description of the conventional inquiry process as context limiting the claim scope (’049 Patent, col. 3:21-48).

The Term: "means for adding... an additional data field for polling..."

  • Context and Importance: As a means-plus-function term, its scope is limited to the corresponding structure described in the specification and its equivalents. The infringement case hinges on whether Apple's BLE implementation is an "equivalent" of the patent's disclosed structure.
  • Intrinsic Evidence for Interpretation (Structure): The specification describes appending an extra field (504) to a standard inquiry packet (502) using a microprocessor (210) and link controller (208) (’049 Patent, Fig. 2, Fig. 5, col. 6:58-63). Defendant will likely argue that this specific act of appending a field to a known packet type is the disclosed structure. Plaintiff may argue for a more generalized processor-based structure.

VI. Other Allegations

Indirect Infringement

The complaint alleges active inducement, asserting that Apple instructs and encourages customers to use the Accused Devices in an infringing manner. The allegations are supported by references to Apple’s developer documentation, marketing materials, and product specifications (Compl. ¶20-22). The complaint includes a screenshot from Apple's developer website explaining how "peripherals broadcast some of the data they have in the form of advertising packets" (Compl. p. 18).

Willful Infringement

Willfulness is alleged based on Apple's knowledge of the '049 patent since, at the latest, the service of the original complaint in the action (Compl. ¶19, ¶26).

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

  • A core issue will be one of technological scope: Can the claims, which describe modifying the "inquiry" protocol of early Bluetooth standards, be construed to cover the fundamentally different "advertising" protocol of the later-developed Bluetooth Low Energy standard? The outcome may depend on whether BLE advertising is deemed a functional and structural equivalent of the patented method.
  • A second key question will be one of claim construction under § 112(f): Given the means-plus-function format of the asserted claims, the dispute will likely focus on the structural equivalence between the patent's disclosed embodiment (appending a data field to a classic Bluetooth inquiry packet) and the accused implementation (the self-contained packet structure of BLE advertising).
  • A final procedural question will be the impact of the IPR: How will the invalidation of method claim 11, which closely tracks the system of asserted claim 1, affect the court's and the parties' strategies regarding the validity and scope of the surviving claims?