DCT
1:18-cv-00989
Uniloc 2017 LLC v. Apple Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Uniloc 2017 LLC (Delaware)
- Defendant: Apple Inc. (California)
- Plaintiff’s Counsel: Prince Lobel Tye LLP; NELSON BUMGARDNER ALBRITTON P.C.
- Case Identification: 1:18-cv-00989, W.D. Tex., 01/08/2019
- Venue Allegations: Venue is asserted based on Defendant Apple Inc. having regular and established places of business within the Western District of Texas.
- Core Dispute: Plaintiff alleges that a wide range of Defendant’s iPhones, iPads, and Apple Watches infringe a patent related to the automatic network configuration of telephony devices.
- Technical Context: The technology concerns systems that allow a new data network telephone to automatically identify and connect to its designated service provider by first querying a central server using a unique device identifier.
- Key Procedural History: The operative pleading is an Amended Complaint, which follows an original complaint that placed Defendant on notice of the infringement allegations. The patent-in-suit was granted a 500-day term extension under 35 U.S.C. § 154(b).
Case Timeline
| Date | Event |
|---|---|
| 2000-02-29 | U.S. Patent No. 6,856,616 Priority Date |
| 2005-02-15 | U.S. Patent No. 6,856,616 Issued |
| 2019-01-08 | Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,856,616 - SYSTEM AND METHOD FOR PROVIDING SERVICE PROVIDER CONFIGURATIONS FOR TELEPHONES USING A CENTRAL SERVER IN A DATA NETWORK TELEPHONY SYSTEM, issued February 15, 2005 (’616 Patent)
The Invention Explained
- Problem Addressed: The patent describes the inflexibility of prior telephony systems where configuring a new device for a specific service provider was a cumbersome process, often requiring manufacturers to pre-program devices for a particular service, which limited consumer choice and created manufacturing hurdles (Compl. ¶6; ’616 Patent, col. 3:45-51).
- The Patented Solution: The invention discloses a system where a data network telephone, upon its first connection to a network, automatically contacts a "telephone configuration server" (’616 Patent, Abstract). The telephone provides a unique "telephone part number," such as its serial number, to the server (’616 Patent, col. 11:3-12). This server uses the part number to look up the appropriate service provider configuration—specifically, a "service provider proxy address"—and sends this information back to the telephone, which then uses it to register for service (’616 Patent, Fig. 6A; col. 14:30-49).
- Technical Importance: This method decouples the device's manufacture from its service provisioning, enabling a generic device to be easily configured for any number of service providers after purchase (’616 Patent, col. 14:50-65).
Key Claims at a Glance
- The complaint asserts independent claim 6 (’616 Patent, col. 28:50-col. 29:8).
- The essential elements of independent claim 6 are:
- a network interface to sense a network connection;
- a signaling stack operable to perform call initiation functions;
- a media engine operable to perform data communications functions, including a voice function to communicate digitized voice signals;
- a telephone configuration identifier operable to establish a connection to a telephone configuration server; and
- a telephone part number that is provided to the configuration server, which in response returns a selected service provider configuration (including a proxy address) to the telephone.
- The complaint does not assert any dependent claims.
III. The Accused Instrumentality
Product Identification
The "Accused Infringing Devices" include a broad range of Apple products capable of cellular data communication, including the iPhone 5 through iPhone XS Max, various iPad models, and Apple Watch Series 3 and 4 (Compl. ¶8).
Functionality and Market Context
- The complaint alleges the accused devices provide telephone functionality over data networks such as the AT&T 4G LTE network (Compl. ¶8, ¶10). They are alleged to include an interface (e.g., a Qualcomm modem) for detecting and connecting to a data network (Compl. ¶9).
- The core of the alleged infringing functionality involves the device activation and service provisioning process. The complaint states the devices use an AT&T-specific SIM card to connect with servers on the AT&T network (Compl. ¶11). It further alleges the devices use a "unique identifier" that is recognized by the network operator's servers, which in turn "provide a proxy server address to the telephone through which the configuration of service may be established" (Compl. ¶12).
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
Claim Chart Summary
The complaint does not contain a claim chart exhibit. The following table synthesizes the infringement allegations for the single asserted independent claim based on the complaint's narrative.
’616 Patent Infringement Allegations
| Claim Element (from Independent Claim 6) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a network interface to sense a network connection; | The devices include hardware such as a Qualcomm MDM9655 Snapdragon X16 LTE processor and a WTR5975 LTE RF transceiver, which function as an interface to detect the presence of and connect to a data network. | ¶9 | col. 11:58-63 |
| a signaling stack operable to perform call initiation functions; | The devices include "telephone initiation capability" and are capable of receiving and sending digitized voice signals in data packets over the AT&T 4G LTE network. | ¶10 | col. 10:1-14 |
| a media engine operable to perform data communications functions, the media engine comprising a voice function operable to communicate digitized voice signals on data packets; | The devices utilize components like the Apple A11 Bionic processor and Qualcomm LTE processor to process and transmit digitized voice signals as data packets over the network. | ¶10 | col. 10:26-34 |
| a telephone configuration identifier operable to establish a connection to a telephone configuration server...; | An AT&T-specific SIM card included with iPhones obtained from AT&T allows the devices to establish a connection with servers in the AT&T 4G LTE network. | ¶11 | col. 11:30-44 |
| a telephone part number... operable to provide the telephone part number to the telephone configuration server and, in response... to receive the selected one of the at least one service provider configurations [which] includes a service provider proxy address... | The devices use a "unique identifier" recognized by the network operator's servers (such as AT&T's), which then provide a "proxy server address" to the telephone, allowing service configuration to be established. | ¶12 | col. 11:64-col. 12:4 |
Identified Points of Contention
- Scope Questions: A potential dispute may arise over whether the patent's "telephone configuration server" can be construed to read on a service provider's own network infrastructure (e.g., AT&T's servers), as the complaint alleges (Compl. ¶11). The patent specification, in contrast, depicts the configuration server as a distinct entity, potentially maintained by a manufacturer, that maps a device to one of several available service providers (’616 Patent, Fig. 1, Fig. 2A).
- Technical Questions: The complaint asserts that a "unique identifier" is used to obtain a "proxy server address" (Compl. ¶12) but does not specify what this identifier is (e.g., IMEI, IMSI) or provide technical evidence of the transaction. The case may turn on whether discovery shows that the accused devices' activation process technically matches the specific sequence of operations required by the claim.
V. Key Claim Terms for Construction
The Term: "telephone configuration server"
- Context and Importance: This term is central to the patented architecture. Its construction will determine whether the server must be a neutral, third-party entity (e.g., run by a manufacturer) that directs a phone to a service provider, or if it can be the service provider's own network server that a device connects to directly. Practitioners may focus on this term because the complaint's theory appears to equate the carrier's own network with the claimed "configuration server."
- Intrinsic Evidence for a Broader Interpretation: The claim language itself does not explicitly require the server to be separate from the service provider, referring only to "a telephone configuration server" that provides a "service provider proxy address" (’616 Patent, col. 28:54-56).
- Intrinsic Evidence for a Narrower Interpretation: The patent’s Abstract and detailed description consistently describe a system where the configuration server's function is to "retrieve[] a service provider configuration" from a database that maps a device's part number to a provider (’616 Patent, Abstract; col. 14:30-65). This suggests a role as an intermediary, distinct from the ultimate service provider's proxy server.
The Term: "telephone part number"
- Context and Importance: The infringement case depends on identifying a "unique identifier" in the accused devices that meets the definition of this term. The key question is whether an identifier used for network authentication, like an IMSI on a SIM card, qualifies as the "telephone part number" contemplated by the patent.
- Intrinsic Evidence for a Broader Interpretation: The claim itself broadly defines the term as "any combination of alphanumeric characters" associated with a service provider configuration (’616 Patent, col. 28:60-61).
- Intrinsic Evidence for a Narrower Interpretation: The specification primarily uses "a serial number" as the example for the part number, which is assigned at manufacture for the purpose of this initial lookup (’616 Patent, col. 11:3-12; col. 18:57-64). This could support an argument that the term is limited to manufacturer-assigned identifiers rather than carrier-specific identifiers like those on a SIM card.
VI. Other Allegations
Indirect Infringement
The complaint alleges inducement by stating Apple "intended that its customers use that functionality" (Compl. ¶13). It also alleges contributory infringement by asserting that Apple provides software "especially written solely for use to implement" the infringing functionality and that these software portions "have no use, other than for infringement" (Compl. ¶17).
Willful Infringement
Willfulness is alleged based on Apple's continued infringement after receiving notice of the patent and infringement allegations via the original complaint in this matter (Compl. ¶14, ¶18).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of architectural scope: can the patent’s system—which describes a device querying a central "telephone configuration server" with a "part number" to discover its service provider—be construed to cover the accused method of using a carrier-specific SIM card to connect directly to that carrier’s own network for service provisioning?
- A key evidentiary question will be one of technical implementation: beyond the conclusory allegations in the complaint, does the accused devices’ activation and provisioning process actually involve the use of a "unique identifier" to retrieve a "proxy server address" in the specific manner and sequence required by the limitations of Claim 6?