DCT
1:18-cv-01015
Bandspeed LLC v. NXP Semiconductors USA Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Bandspeed, LLC (Texas)
- Defendant: NXP Semiconductors N.V. (The Netherlands); NXP Semiconductors USA, Inc. (Delaware)
- Plaintiff’s Counsel: DINOVO PRICE LLP
- Case Identification: 1:18-cv-01015, W.D. Tex., 11/27/2018
- Venue Allegations: Plaintiff alleges venue is proper in the Western District of Texas because Defendant NXP Semiconductors USA, Inc. maintains its corporate headquarters in Austin, and Defendant NXP owns and operates wafer fabrication facilities in Austin.
- Core Dispute: Plaintiff alleges that Defendant’s Bluetooth Low Energy integrated circuits infringe six patents related to adaptive frequency hopping techniques for managing interference in wireless communications.
- Technical Context: The technology at issue is adaptive frequency hopping, a method used by short-range wireless protocols like Bluetooth to avoid interference from other devices, such as Wi-Fi routers, that operate in the same crowded 2.4 GHz frequency band.
- Key Procedural History: The complaint alleges Defendant had pre-suit knowledge of the patents-in-suit and their alleged infringement from two sources: a notice letter sent by Plaintiff on June 25, 2018, and information Defendant received from Qualcomm regarding the patents in or around October 2017 during a potential acquisition.
Case Timeline
| Date | Event |
|---|---|
| 2001-01-25 | Earliest Priority Date for all Patents-in-Suit |
| 2006-04-11 | U.S. Patent No. 7,027,418 Issued |
| 2011-03-08 | U.S. Patent No. 7,903,608 Issued |
| 2013-09-24 | U.S. Patent No. 8,542,643 Issued |
| 2014-10-28 | U.S. Patent No. 8,873,500 Issued |
| 2016-06-28 | U.S. Patent No. 9,379,769 Issued |
| 2017-10-XX | NXP allegedly received information about patents from Qualcomm |
| 2018-01-30 | U.S. Patent No. 9,883,520 Issued |
| 2018-06-25 | Plaintiff sent notice letter to NXP |
| 2018-08-24 | NXP's counsel confirmed receipt of notice letter |
| 2018-11-27 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,027,418 - "Approach for Selecting Communications Channels Based on Performance"
- Patent Identification: U.S. Patent No. 7027418, "Approach for Selecting Communications Channels Based on Performance," issued April 11, 2006. (Compl. ¶2).
The Invention Explained
- Problem Addressed: The patent describes the "coexistence problem" that arises when frequency hopping (FH) communication systems, such as Bluetooth, operate in the same frequency band as non-frequency hopping (NFH) systems, such as Wi-Fi, leading to interference, data transmission errors, and reduced performance. (Compl. ¶21; ’418 Patent, col. 2:51-3:2). Conventional solutions, such as increasing transmission power or randomly skipping "bad" channels, are presented as inefficient or ineffective. (Compl. ¶¶22-23; ’418 Patent, col. 3:12-38).
- The Patented Solution: The invention discloses a method of "adaptive frequency hopping" where the performance of a plurality of communication channels is determined. (Compl. ¶24; ’418 Patent, col. 4:49-50). Based on this determination, a subset of "good" channels is selected for use, and the hopping sequence is adapted to use only this subset, thereby avoiding channels with poor performance due to interference. (Compl. ¶25; ’418 Patent, Abstract). The patent also describes a "referendum" approach in which a master and multiple slave devices vote to decide which channels are classified as "good." (Compl. ¶26; ’418 Patent, col. 16:60-67).
- Technical Importance: This adaptive technique was designed to improve the reliability of wireless protocols operating in the crowded 2.4 GHz band by enabling them to dynamically avoid interference from other co-located wireless systems. (Compl. ¶20).
Key Claims at a Glance
The complaint asserts "one or more claims" of the ’418 Patent. (Compl. ¶146). Independent claim 1 is representative:
- performing a first channel performance determination for a plurality of communications channels;
- selecting, based upon performance of the plurality of communications channels at a first time and channel selection criteria, a first set of two or more communications channels from the plurality of communications channels;
- performing a second channel performance determination for the plurality of communications channels at a second time that is later than the first time;
- selecting, based upon performance of the plurality of communications channels at the second time and the channel selection criteria, a second set of two or more communications channels from the plurality of communications channels;
- wherein the communications system is a frequency hopping communications system.
U.S. Patent No. 7,903,608 - "Approach for Managing the Use of Communications Channels Based on Performance"
- Patent Identification: U.S. Patent No. 7903608, "Approach for Managing the Use of Communications Channels Based on Performance," issued March 8, 2011. (Compl. ¶3).
The Invention Explained
- Problem Addressed: As a continuation of the '418 Patent, this patent addresses the same coexistence problem between different communication systems operating in a shared frequency band. (Compl. ¶¶21, 25; ’608 Patent, col. 3:33-61).
- The Patented Solution: The invention describes a method for managing a set of communication channels by selecting a new set when a "specified criterion is satisfied." (’608 Patent, Abstract). The patent specifies that such criteria can include the expiration of a set time, the performance of a channel falling below a threshold, or a certain number of channels in the set satisfying a performance criterion. (Compl. ¶24; ’608 Patent, col. 4:64-5:6). The system classifies channels based on performance and periodically selects new sets of channels based on later performance. (’608 Patent, col. 4:22-24, 15:8-10).
- Technical Importance: This patent refines the adaptive frequency hopping concept by defining specific triggers for re-evaluating and updating the set of "good" channels, allowing a system to be more responsive to dynamic changes in the interference environment. (Compl. ¶24).
Key Claims at a Glance
The complaint asserts "one or more claims" of the ’608 Patent. (Compl. ¶163). Independent claim 1 is representative:
- using a first set of communications channels for communication between a first participant and a second participant;
- selecting another set of communications channels for communication between the first participant and the second participant when a specified criterion is satisfied;
- wherein the specified criterion is one of: after expiration of a specified length of time, when the performance of at least one of the channels in the first set of channels satisfies another performance criterion, or when a specified number of the first set of channels satisfies yet another performance criterion.
Multi-Patent Capsules
U.S. Patent No. 8,542,643: Issued September 24, 2013, with the title "Approach for Managing the Use of Communications Channels Based on Performance." (Compl. ¶4).
- Technology Synopsis: The patent describes an implementation of adaptive frequency hopping where a device maintains a default channel register and a good channel register. When the system's selection kernel addresses a "bad" channel in the default register, that channel is replaced by a "good" channel from the good channel register. (Compl. ¶27; ’643 Patent, col. 20:1-21:14).
- Asserted Claims: "one or more claims." (Compl. ¶180).
- Accused Features: The accused features include the capability of the Bluetooth LE products to use a data structure or register for indexing channels and to adjust the channel set. (Compl. ¶¶115-124).
U.S. Patent No. 8,873,500: Issued October 28, 2014, with the title "Approach for Managing the Use of Communications Channels Based on Performance." (Compl. ¶5).
- Technology Synopsis: This patent continues the family's focus on adaptive frequency hopping, describing a method that tests a plurality of channels and uses a subset of channels identified as "good" for subsequent communication. (Compl. ¶25; ’500 Patent, col. 12:34-41).
- Asserted Claims: "one or more claims." (Compl. ¶197).
- Accused Features: The accused features include the Bluetooth LE products' general capability of performing adaptive frequency hopping and using a hopping pattern that can be adapted to exclude channels based on measured interference. (Compl. ¶¶63-64, 69-70).
U.S. Patent No. 9,379,769: Issued June 28, 2016, with the title "Approach for Managing the Use of Communications Channels Based on Performance." (Compl. ¶6).
- Technology Synopsis: The patent describes a method where, based on channel performance, a new set of channels is selected and data identifying this new set is generated and provided to other participants in the network to synchronize the change in the hopping sequence. (’769 Patent, Abstract).
- Asserted Claims: "one or more claims." (Compl. ¶214).
- Accused Features: The accused features include the Bluetooth LE products' ability to update a channel map by sending a specific Link Layer Protocol Data Unit (LL_CHANNEL_MAP_REQ PDU) containing a new channel map to other devices. (Compl. ¶¶127-132).
U.S. Patent No. 9,883,520: Issued January 30, 2018, with the title "Approach for Managing the Use of Communications Channels Based on Performance." (Compl. ¶7).
- Technology Synopsis: This patent, the most recent in the asserted family, continues to claim methods for adaptively selecting and managing communication channels in a frequency hopping system to avoid interference based on channel performance. (’520 Patent, Abstract).
- Asserted Claims: "one or more claims." (Compl. ¶231).
- Accused Features: The accused features include the overall adaptive frequency hopping functionality alleged to be present in Defendant's Bluetooth LE products, including the use of channel maps and hop indices to select channels for communication. (Compl. ¶¶133-134, 139).
III. The Accused Instrumentality
Product Identification
The complaint names Defendant's "Infringing Bluetooth LE Products," defined as integrated circuits that comply with the Bluetooth low energy protocol as described in Version 4.0 or any later version of the Bluetooth Core Specification. (Compl. ¶28). The NXP KW41Z microcontroller is identified as an "Exemplary Infringing Bluetooth LE Product." (Compl. ¶30).
Functionality and Market Context
The accused products are single-chip microcontrollers that enable Bluetooth Low Energy and other wireless connectivity for embedded systems. (Compl. ¶137). The complaint references a screenshot from Defendant's website, which describes the KW41Z as "Bluetooth® Low Energy v4.2... Compliant" with "Excellent coexistence performance." (Compl. ¶¶137-138). Plaintiff cites an NXP application note stating that for the KW41Z, "an adaptive frequency hopping mechanism is implemented for all data channels." (Compl. ¶139). The complaint alleges these products are capable of classifying channels based on performance, adapting their frequency hopping pattern to exclude poorly performing channels, and communicating updated channel maps to other devices. (Compl. ¶¶73-74, 87-88, 127).
IV. Analysis of Infringement Allegations
’418 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| performing a first channel performance determination for a plurality of communications channels | The accused products are capable of classifying channels "based at least in part on performance measurements." | ¶87-88 | col. 4:1-3 |
| selecting, based upon performance . . . and channel selection criteria, a first set of two or more communications channels | The accused products use a frequency hopping pattern that is "capable of being adapted to exclude channels based at least in part on the performance of those channels," which constitutes selection of a subset of channels. | ¶73-74, ¶115-116 | col. 4:4-7 |
| performing a second channel performance determination for the plurality of communications channels at a second time that is later | The accused products are capable of updating the subset of channels used for communication, which implies an ongoing or subsequent performance determination that triggers the update. | ¶125-126 | col. 4:8-9 |
| selecting, based upon performance . . . a second set of two or more communications channels from the plurality of communications channels | The accused products are capable of sending and receiving an LL_CHANNEL_MAP_REQ PDU containing a "new channel map," which constitutes the selection and communication of a new (second) set of channels. | ¶127, ¶129 | col. 4:10-12 |
’608 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| using a first set of communications channels for communication between a first participant and a second participant | The accused products use a frequency hopping transceiver and a frequency hopping pattern for data transmission. | ¶59-62, ¶69 | col. 4:51-54 |
| selecting another set of communications channels for communication between the first participant and the second participant when a specified criterion is satisfied | The products are capable of adapting the hopping pattern to exclude channels where interference is "observed or measured," thereby selecting a new set. This adaptation occurs when a performance-based criterion (observed interference) is satisfied. | ¶69-72, ¶115-116 | col. 4:64-67 |
| wherein the specified criterion is one of: after expiration of a specified length of time, when the performance of at least one of the channels in the first set of channels satisfies another performance criterion, or when a specified number of the first set of channels satisfies yet another performance criterion | The complaint alleges the products adapt the channel set based on "performance measurements" and update the channel map by sending a new map that takes effect at a specific "Instant," which alleges satisfaction of both performance-based and time-based criteria. The screenshot of the KW41Z product page notes "Excellent coexistence performance." (Compl. p. 20). | ¶87, ¶131, ¶137 | col. 4:67-5:6 |
Identified Points of Contention
- Scope Questions: The patents-in-suit claim priority to 2001, a time when the Bluetooth 1.x standard (with 79 channels) was prevalent. The accused products implement Bluetooth Low Energy (from standard 4.0 and later), which uses a different architecture (40 channels). A potential point of dispute may be whether the term "plurality of communications channels" and the methods of selecting subsets, as described in the patents, can be read to cover the specific channel management and hopping mechanisms of the accused Bluetooth LE protocol.
- Technical Questions: The complaint frequently alleges the accused products are "capable of" performing certain functions. A central question for the court will be whether this alleged capability translates to actual performance of the claimed method steps during the normal, intended operation of the devices. For example, what evidence does the complaint provide that the accused products perform a "channel performance determination" that is distinct from, and serves as an input to, the "selection" step, as required by claims like Claim 1 of the ’418 Patent?
V. Key Claim Terms for Construction
Term: "channel performance determination" (from ’418 Patent, Claim 1)
- Context and Importance: This term is foundational to the claimed adaptive process, as it provides the data upon which channel selection is based. Practitioners may focus on this term because its definition will be critical to distinguishing the patented invention from routine, non-adaptive frequency hopping. The dispute may center on whether the Bluetooth LE protocol's inherent channel management constitutes a "determination" of "performance" as taught in the patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification discloses numerous metrics for channel performance, including bit error rate (BER), packet loss, and received signal strength indicator (RSSI), suggesting "performance" is a broad concept covering any measure of communication quality. (Compl. ¶25; ’418 Patent, col. 3:17-20).
- Evidence for a Narrower Interpretation: The detailed description emphasizes active testing procedures, such as sending "master test packet 360 and slave test packet 380" to evaluate channels, which could support an argument that "determination" requires a specific, explicit testing step rather than passive monitoring. (Compl. ¶26; ’418 Patent, col. 12:34-36).
Term: "selecting another set of communications channels ... when a specified criterion is satisfied" (from ’608 Patent, Claim 1)
- Context and Importance: This term defines the trigger for adapting the channel set. The infringement analysis will likely depend on whether the accused products' channel map updates are performed in response to a "specified criterion" being "satisfied." A defendant may argue that its operation is a continuous or protocol-mandated process, not one contingent on satisfying a distinct criterion as claimed.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim itself provides three alternative types of criteria: a time expiration, a performance threshold for one channel, or a performance threshold for a number of channels. (’608 Patent, col. 4:67-5:6). This suggests the trigger can be event-based, time-based, or performance-based, affording the term a degree of flexibility.
- Evidence for a Narrower Interpretation: The use of "when" and "satisfied" suggests a discrete event or a condition being met, which could be contrasted with a system that continually and gradually adapts its hopping sequence without a specific triggering event. The patent's examples focus on a distinct decision point to "select another set." (’608 Patent, col. 4:64-65).
VI. Other Allegations
Indirect Infringement
The complaint alleges inducement of infringement for all six patents. The allegations are based on Defendant manufacturing and selling the accused integrated circuits with knowledge of the patents and with the specific intent that its customers (e.g., manufacturers of end-user devices) would incorporate them into products that operate in an infringing manner. (Compl. ¶¶149-156). Plaintiff alleges Defendant provides instructions, firmware, source code, and marketing materials that encourage and enable this infringement. (Compl. ¶¶135-136, 155).
Willful Infringement
The complaint alleges willful infringement based on Defendant's alleged pre-suit knowledge of the patents and its ongoing infringement despite this knowledge. (Compl. ¶¶247-251). This knowledge is alleged to have been established through two events: (1) information about the patents and infringement NXP allegedly received from Qualcomm in October 2017, and (2) a notice letter Plaintiff sent to NXP on June 25, 2018. (Compl. ¶¶248-249).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of protocol mapping: Can the patent claims, which originate from the context of early Bluetooth standards, be construed to read on the specific technical implementation of adaptive frequency hopping in the accused Bluetooth Low Energy protocol (Bluetooth 4.0 and later)? The outcome will depend on whether the functions described in the patent, such as "performance determination" and "selection," are functionally equivalent to the channel management procedures defined and executed by the accused standard-compliant products.
- A key evidentiary question will be one of operational infringement: The complaint heavily relies on the alleged "capability" of Defendant's products to perform the claimed methods. The case will likely turn on whether Plaintiff can present evidence that the accused integrated circuits, as sold and implemented by Defendant's customers, actually perform the complete, ordered steps of the asserted method claims in their normal operation.
- A central dispute regarding damages will be one of pre-suit knowledge: The allegation that NXP gained knowledge of the patents and infringement via discussions with Qualcomm in 2017, well before receiving a notice letter, will be critical to the willfulness claim. The court will need to determine if the information allegedly conveyed was sufficiently specific to put NXP on notice of infringement, potentially exposing it to enhanced damages.