Uniloc USA Inc v. Apple Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Uniloc USA, Inc. (Texas) and Uniloc Luxembourg, S.A. (Luxembourg)
  • Defendant: Apple Inc. (California)
  • Plaintiff’s Counsel: Prince Lobel Tye LLP; Nelson Bumgardner PC
• Case Identification: Uniloc USA, Inc. v. Apple Inc., 1:18-cv-00165, W.D. Tex., 02/22/2018
• Venue Allegations: Venue is based on Apple maintaining "regular and established places of business" within the Western District of Texas, specifically in Austin.
• Core Dispute: Plaintiff alleges that a wide range of Apple's electronic devices that utilize Bluetooth Low Energy (version 4.0 and above) infringe a patent related to broadcasting data by adding an extra data field to device discovery messages.
• Technical Context: The technology concerns methods for one-way data transmission between portable devices by modifying a standard communications protocol to embed broadcast data within the initial inquiry phase, thereby avoiding the need for a full, two-way connection.
• Key Procedural History: Subsequent to the complaint's filing, the asserted patent was the subject of two Inter Partes Review (IPR) proceedings (IPR2019-00965, IPR2019-01188). An IPR Certificate issued on August 30, 2021, cancelled claims 1-4, 8, and 14-16. This development significantly narrows the scope of the present litigation, as several key asserted claims, including independent claims 1 and 14, are no longer valid.

Case Timeline

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

U.S. Patent No. 6,664,891 - "DATA DELIVERY THROUGH PORTABLE DEVICES," issued December 16, 2003

The Invention Explained

• Problem Addressed: The patent identifies shortcomings in then-current short-range communication protocols like Bluetooth for enabling simple, one-way "Context-Aware" applications. Establishing a standard two-way connection was described as time-consuming (10-30 seconds), power-intensive for the listening device, and compromising to user privacy because it revealed the listener's device ID. (’891 Patent, col. 2:18-34).
• The Patented Solution: The invention proposes a method to bypass the full connection process for broadcast applications. It achieves this by "piggy-backing" a broadcast channel onto the initial "inquiry" phase, where one device searches for others. Specifically, a broadcasting device adds an "additional data field" containing the broadcast information to its standard inquiry messages. A receiving device can then simply listen for these modified inquiry messages and read the data from the additional field without needing to formally connect or respond. (’891 Patent, Abstract; col. 2:50-64). Figure 1 illustrates this concept, showing an inquiry message (INQ) combined with a broadcast data field (BCD) being transmitted from a first device (12) to a second (10).
• Technical Importance: This technique was designed to facilitate "ad-hoc encounters" and location-specific information services by allowing devices to broadcast data quickly, efficiently, and anonymously to any compatible device within range. (’891 Patent, col. 2:35-47).

Key Claims at a Glance

• The complaint asserts independent claims 1, 14, 17, 18, and 24, along with various dependent claims (Compl. ¶15). As noted, claims 1 and 14 were subsequently cancelled.
• The essential elements of independent claim 1 (now cancelled) are:
  • A communications system with a first transmitting portable device and a second receiving portable device.
  • The first device is arranged to broadcast a series of "inquiry messages" composed of "predetermined data fields" according to a communications protocol.
  • The first device is "further arranged to add" an "additional data field" to each inquiry message before transmission.
  • The second device is arranged to receive the messages and "read data from said additional data field."
• The complaint reserves the right to assert other claims, including dependent claims (Compl. ¶15).

III. The Accused Instrumentality

Product Identification

• The complaint identifies a broad set of "Accused Infringing Devices," including iPhones (4s and later), iPads, MacBooks, iMacs, Apple Watch, and AirPods, that "utilize Bluetooth Low Energy version 4.0 and above" (Compl. ¶13).

Functionality and Market Context

• The complaint alleges that these are portable electronic devices capable of wireless communication. The core accused functionality is that one device "sends a series of inquiry messages that include data fields arranged in accordance with the Bluetooth 4.0 and above protocol" and a second device "receives such a message and is capable of reading the data contained in the inquiry message" (Compl. ¶14). The complaint does not provide further technical detail on the specific operation of the Bluetooth protocol as implemented by Apple.

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint.

'891 Patent Infringement Allegations

The following chart summarizes allegations against Claim 1, which has since been cancelled by IPR but was asserted in the original complaint.

Identified Points of Contention

• Scope Questions: The complaint's theory appears to be that using the standard Bluetooth 4.0 protocol itself constitutes infringement. A central dispute, for any surviving claims, will be whether standard fields within the Bluetooth protocol (e.g., advertising data packets) meet the claim limitation of an "additional data field" that is "add[ed] to each inquiry message." The question is whether the patent claims the general concept of broadcasting during discovery, which is a feature of Bluetooth LE, or if it requires a specific modification not present in the standard.
• Technical Questions: The complaint does not identify which specific data packet, field, or bits within a Bluetooth 4.0 transmission constitute the "additional data field." A key evidentiary question is what proof exists that Apple's devices perform an act of "adding" a field to a base inquiry message, as opposed to merely populating a standard, pre-defined field within the protocol's advertising channel packet structure.

V. Key Claim Terms for Construction

• The Term: "additional data field"
• Context and Importance: This term is the inventive-step of the asserted claims. The entire infringement case hinges on whether the accused Bluetooth 4.0 communications contain a data field that qualifies as "additional." Practitioners may focus on this term because its construction will determine whether the standard Bluetooth LE protocol falls within the scope of the claims or if infringement requires a non-standard modification.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent suggests the invention is the general concept of "including a broadcast channel as part of the inquiry procedure" (’891 Patent, col. 4:51-54) and that the field can be of "any given size" (’891 Patent, col. 3:10-12). This could support an argument that any data broadcast during discovery, even using standard protocol fields, constitutes an "additional data field" relative to older protocols that lacked this capability.
  • Evidence for a Narrower Interpretation: The specification consistently describes the invention as "add[ing]" an "additional data field (BCD)" to a pre-existing "inquiry message (INQ)" (’891 Patent, Abstract; Fig. 1). This language suggests the "additional" field must be a separate component appended to what would otherwise be a complete inquiry message, not merely a pre-defined part of the message structure itself.

VI. Other Allegations

• Indirect Infringement: The complaint alleges inducement based on Apple's provision of "training videos, demonstrations, brochures, installation and user guides" that allegedly instruct customers on using the infringing functionality (Compl. ¶16). It also alleges contributory infringement, asserting the accused devices are especially adapted for infringement and are not staple articles of commerce (Compl. ¶17).
• Willful Infringement: The complaint pleads post-suit willfulness, stating Apple will have knowledge of the ’891 Patent "at the latest, the service of this complaint upon it" (Compl. ¶18). No allegations of pre-suit knowledge are made.

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

1. Viability Post-IPR: The most critical question is how the cancellation of numerous asserted claims, including foundational independent claims 1 and 14, impacts the case's viability. The litigation will now depend entirely on the remaining, un-cancelled claims and whether the infringement theory can be sustained under their potentially different scope.
2. Definitional Scope: For any surviving claims that include the "additional data field" limitation, a core issue remains: can a standard data field within the Bluetooth 4.0 protocol's advertising packet be construed as an "additional data field" that is "added" to an inquiry message, or does the patent require a non-standard modification to the protocol?
3. Evidentiary Sufficiency: A key evidentiary question will be whether the plaintiff can produce technical evidence demonstrating that Apple's implementation of Bluetooth LE performs the specific act of "adding" a data field, as opposed to simply utilizing the native, integrated advertising data structures defined by the Bluetooth standard. The complaint's current allegations lack this level of specificity.