DCT
1:18-cv-00293
Uniloc USA Inc v. Apple Inc
Key Events
Amended Complaint
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: 1:18-cv-00293, W.D. Tex., 05/30/2018
- Venue Allegations: Plaintiff alleges venue is proper in the Western District of Texas because Defendant Apple Inc. maintains regular and established places of business in Austin, Texas.
- Core Dispute: Plaintiff alleges that a wide range of Apple’s iPhone and iPad products infringe a patent related to device-level anti-theft protection for mobile radiotelephony devices.
- Technical Context: The technology concerns methods for automatically locking a mobile device after a period of inactivity to prevent unauthorized use, a foundational security feature in modern smartphones.
- Key Procedural History: The public record for the patent-in-suit indicates that claims 10-20 were canceled as a result of Inter Partes Review (IPR) proceedings concluded in 2021. The currently asserted claims (1-5 and 7) were not canceled in those proceedings.
Case Timeline
| Date | Event |
|---|---|
| 1999-12-21 | ’654 Patent Priority Date |
| 2004-12-28 | ’654 Patent Issue Date |
| 2018-05-30 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,836,654, *"ANTI-THEFT PROTECTION FOR A RADIOTELEPHONY DEVICE,"* Issued Dec. 28, 2004
The Invention Explained
- Problem Addressed: The patent describes a problem where a stolen mobile phone, along with its legitimate user identification module (e.g., a SIM card), could be used by a thief until the owner contacted the network operator to block the module, a process that could involve a significant delay (’654 Patent, col. 1:20-35).
- The Patented Solution: The invention proposes a device-level security feature that automatically blocks the phone's normal operation, including making outgoing calls, after it has been inactive for a defined period of time. This block occurs even when the correct, "linked" user identification module is installed. To regain full functionality, a user must supply a "deblocking code" (such as a PIN) directly to the device, rendering the phone useless to a thief almost immediately. (’654 Patent, Abstract; col. 2:36-54).
- Technical Importance: This approach shifts the primary anti-theft mechanism from a reactive, network-based block to a proactive, device-based lock, thereby reducing the window of opportunity for fraudulent use. (’654 Patent, col. 2:58-63).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 2-5 and 7 (Compl. ¶14).
- Independent Claim 1 recites the following essential elements:
- A mobile radiotelephony device comprising:
- "blocking means" for preventing normal operation, including the processing of outgoing calls;
- "timing means" for activating the blocking means after the device is inactive for a defined period of time, subsequent to the mounting of a "linked user identification module"; and
- "deblocking means" for permitting normal operation in response to a "deblocking code" being supplied to the device.
III. The Accused Instrumentality
Product Identification
The complaint accuses numerous Apple products, including the iPhone (original through iPhone X) and various cellular-enabled iPad models (collectively, "Accused Infringing Devices") (Compl. ¶12).
Functionality and Market Context
The complaint targets the passcode, Touch ID, and Face ID security features of Apple's iOS operating system. It alleges that these features lock the Accused Infringing Devices and prevent normal operation, such as placing calls (Compl. ¶15). This lock is allegedly triggered by the "Auto-Lock" function, which activates after a user-defined period of inactivity (e.g., 30 seconds) (Compl. ¶16). To unlock the device and resume normal operation, a user must provide the correct passcode or biometric identifier (Compl. ¶17). These features are described as core components of the devices' security architecture.
IV. Analysis of Infringement Allegations
’654 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| "blocking means for preventing a normal operation of the mobile radiotelephony device, wherein the normal operation includes a processing of outgoing calls" | The passcode security function locks the phone and prevents it from being used to place outgoing calls until unlocked. A screenshot shows the passcode entry screen after a failed attempt (Compl. p. 6). | ¶15 | col. 4:43-46 |
| "timing means for activating the blocking means in response to the mobile radiotelephony device being inactive ... for a defined period of time subsequent to a mounting of a linked user identification module..." | The iOS "Auto-Lock" feature automatically locks the device after a defined period of inactivity. This is alleged to occur subsequent to a valid SIM card being inserted when the passcode functionality is enabled. The complaint provides a screenshot of the Auto-Lock settings screen (Compl. p. 8). | ¶16 | col. 4:32-35 |
| "deblocking means for permitting the normal operation of the mobile radiotelephony device in response to a supply of a deblocking code..." | Normal operation is restored upon entry of the correct passcode. The complaint provides a screenshot illustrating the process of turning the passcode feature on (Compl. p. 5). | ¶17 | col. 4:50-52 |
- Identified Points of Contention:
- Scope Questions: Claim 1 is drafted in "means-plus-function" format. A central issue will be whether the corresponding structures disclosed in the patent (a microprocessor assembly running specific flowchart logic) are structurally equivalent to the accused iOS hardware and software architecture that implements the passcode and auto-lock features.
- Technical Questions: The "timing means" limitation requires activation "subsequent to a mounting of a linked user identification module." A key question for the court will be whether the accused "Auto-Lock" feature is functionally dependent on the presence or recent mounting of a SIM card, as the claim language suggests. The complaint's own visual evidence includes a "No SIM Card Installed" notification alongside a locked screen, which raises the question of whether the locking function operates independently of the SIM card status (Compl. p. 7).
V. Key Claim Terms for Construction
The Term: "blocking means", "timing means", "deblocking means"
- Context and Importance: Practitioners may focus on these terms because they are means-plus-function limitations governed by 35 U.S.C. § 112, ¶ 6 (pre-AIA). Their scope is not determined by the words alone, but is limited to the specific "structure, material, or acts" described in the patent's specification that perform the recited function, and their equivalents. The outcome of the case may depend heavily on the court's identification of these corresponding structures.
- Intrinsic Evidence for Interpretation: The patent specification identifies the structure corresponding to these functions as a "microprocessor assembly 20" (comprising a microprocessor, RAM, and ROM) that is programmed to execute the specific logical steps detailed in the flowchart of Figure 3 (’654 Patent, col. 2:50-54; FIG. 3). The interpretation will depend on how narrowly the "structure" is tied to this specific flowchart versus the general concept of a processor performing these functions.
The Term: "linked user identification module"
- Context and Importance: The infringement theory hinges on equating this term with a standard SIM card. The construction of "linked" will be critical. The dispute will likely focus on whether the patent requires a specific, persistent association between the device and one particular module, or if the term can be read more broadly to mean any compatible module that enables the device's operation.
- Evidence for a Broader Interpretation: The specification refers generally to accommodating a "user identification module 13," which could be argued to encompass any standard SIM card that allows the device to function (’654 Patent, col. 2:42-44).
- Evidence for a Narrower Interpretation: The specification describes a process where the device "is automatically linked" by reading and storing data from the module, such as an IMSI number, to prevent operation with other, unlinked modules (’654 Patent, col. 3:1-5). This suggests a specific binding action rather than mere operational compatibility.
VI. Other Allegations
- Indirect Infringement: The complaint alleges Apple actively induces infringement by providing instructional materials, such as online user guides and support pages, that direct customers to use the accused passcode and auto-lock features (Compl. ¶20-21).
- Willful Infringement: The willfulness allegation is based on alleged post-suit knowledge. The complaint asserts that Apple has been on notice of the patent and its alleged infringement since, at the latest, the date the original complaint was served (Compl. ¶19, ¶25).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of structural equivalence: under the rules for means-plus-function claiming, is Apple's iOS security architecture, which implements the passcode and auto-lock features, structurally equivalent to the specific microprocessor and flowchart logic disclosed in the ’654 patent?
- A key question of claim scope will be the definition of "linked": does the term "linked user identification module" require a specific, persistent binding between the device and a single SIM card, as some parts of the patent specification suggest, or can it be construed more broadly to cover a device simply operating with any valid SIM card, as the infringement allegations appear to presume?
- An underlying evidentiary question will be the technical nexus between the SIM card and the accused features: what evidence will be presented to establish that the accused timing feature (Auto-Lock) activates "subsequent to a mounting of a linked user identification module," as required by the claim, versus operating as a device function independent of the SIM card's status?