Bandspeed LLC v. Telink Semiconductor Shanghai Co Ltd

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Bandspeed, LLC (Texas)
  • Defendant: Telink Semiconductor (Shanghai) Co., Ltd. (People's Republic of China)
  • Plaintiff’s Counsel: DINOVO PRICE LLP
• Case Identification: 1:23-cv-00543, W.D. Tex., 06/22/2023
• Venue Allegations: Plaintiff alleges venue is proper because Defendant is a foreign entity.
• Core Dispute: Plaintiff alleges that Defendant’s multi-standard wireless System-on-Chip (SoC) products, which are compliant with Zigbee and Bluetooth standards, infringe twelve U.S. patents related to adaptive frequency hopping in wireless communications.
• Technical Context: The technology concerns methods for wireless devices to avoid interference in crowded radio frequency bands (like the 2.4 GHz band used by Wi-Fi, Bluetooth, and Zigbee) by testing communication channels and selecting only those with good performance.
• Key Procedural History: Plaintiff alleges it provided Defendant with notice of its patent portfolio and infringing activities via letters on January 25, 2019, and November 16, 2021. This pre-suit notice forms the basis for the willfulness allegations.

Case Timeline

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

U.S. Patent No. 7,027,418 - "Approach for Selecting Communications Channels Based on Performance," issued April 11, 2006.

The Invention Explained

• Problem Addressed: The patent describes the "coexistence problem" that arises when frequency-hopping (FH) communication systems, like Bluetooth, and non-frequency-hopping (NFH) systems, like Wi-Fi, operate in the same frequency band, causing interference and degraded performance (’418 Patent, col. 3:41-54). Conventional approaches, such as simply increasing transmission power or skipping a single "bad" channel, are described as impractical or ineffective (’418 Patent, col. 4:15-34).
• The Patented Solution: The invention proposes a method where a wireless device first determines the performance of available communication channels (e.g., by measuring bit error rates). Based on this performance data and predefined criteria, the device selects a set of "good" channels. It then provides data identifying this "good" set to other devices in the network, and they communicate using only those selected channels, thereby adaptively avoiding interference (’418 Patent, Abstract; col. 7:4-24). This process can be repeated over time to adapt to changing interference conditions (’418 Patent, col. 8:5-12).
• Technical Importance: This adaptive approach allows frequency-hopping systems to maintain reliable communication in increasingly crowded unlicensed radio bands by intelligently avoiding interference rather than attempting to overpower it.

Key Claims at a Glance

• The complaint asserts independent method claim 5 (’418 Patent, col. 28:53-67; Compl. ¶78).
• Essential elements of claim 5 include:
  • Determining a performance of a plurality of communications channels at a first time.
  • Selecting, based upon the performance, a first set of two or more communications channels from the plurality of communications channels.
  • Generating first identification data that identifies the first set.
  • Providing the first identification data to a participant.
  • Communicating with the participant over the first set of two or more communications channels.
• The complaint reserves the right to assert other claims (’418 Patent, Compl. ¶78).

U.S. Patent No. 7,477,624 - "Approach for Managing the Use of Communications Channels Based on Performance," issued January 13, 2009.

The Invention Explained

• Problem Addressed: As a continuation of the ’418 Patent, the ’624 Patent addresses the same technical problem of interference in shared frequency bands between different wireless communication systems (’624 Patent, col. 3:41-54).
• The Patented Solution: The patent describes a communications device that implements a similar adaptive frequency hopping method. A device includes a processor that determines channel performance, selects a set of channels based on that performance, and generates data identifying the selected channels. A transceiver then uses this data to communicate with other devices over the selected "good" channels using a frequency hopping protocol (’624 Patent, Abstract; col. 5:2-15).
• Technical Importance: This technology provides a device-level implementation for the method described in the parent ’418 Patent, focusing on the components (processor, memory, transceiver) that enable adaptive channel selection.

Key Claims at a Glance

• The complaint asserts independent method claim 15 (’624 Patent, col. 28:57-67; Compl. ¶94).
• Essential elements of claim 15 include:
  • Communicating with a first participant over a first set of two or more communications channels.
  • Determining a performance of a plurality of communications channels at a time that is later than a first time.
  • Selecting, based upon the performance, a second set of two or more communications channels from the plurality of communications channels.
  • Communicating with the first participant over the second set of two or more communications channels.
• The complaint reserves the right to assert other claims (’624 Patent, Compl. ¶94).

U.S. Patent No. 7,570,614 - "Approach for Managing the Use of Communications Channels Based on Performance," issued September 8, 2009.

• Technology Synopsis: A continuation of the same patent family, this patent further details a method for managing channel performance where a master participant selects a channel for a slave participant to use for a reply packet, based on performance data maintained in a lookup table. The system can thereby avoid degraded channels for both outgoing and incoming communications (’614 Patent, Abstract).
• Asserted Claims: Independent method claim 100 is asserted (Compl. ¶110).
• Accused Features: The complaint alleges that Defendant’s Infringing Bluetooth Classic Products, which are compliant with Bluetooth Core Specification v. 2.0+EDR or higher, practice the claimed invention (Compl. ¶¶32, 109-110).

U.S. Patent No. 7,903,608 - "Approach for Managing the Use of Communications Channels Based on Performance," issued March 8, 2011.

• Technology Synopsis: This patent describes a communications device that uses a processor to select sets of communication channels based on performance and a transceiver to communicate over the selected channels. It is a continuation of the same technology family focused on adaptive frequency hopping (’608 Patent, Abstract).
• Asserted Claims: Independent device claim 1 is asserted (Compl. ¶126).
• Accused Features: The complaint alleges that Defendant’s Infringing Bluetooth Classic and Bluetooth LE Products, which are compliant with their respective standards, practice the claimed invention (Compl. ¶¶32, 47, 125-126).

U.S. Patent No. 8,542,643 - "Approach for Managing the Use of Communications Channels Based on Performance," issued September 24, 2013.

• Technology Synopsis: This patent describes a method where a device with a default channel register can replace "bad" channels in its hopping sequence with "good" channels that are randomly selected from a separate table of good channels. This allows a device to dynamically adapt its hopping sequence to avoid interference without modifying the underlying selection kernel (’643 Patent, Abstract; Fig. 5B).
• Asserted Claims: Independent method claim 5 is asserted (Compl. ¶144).
• Accused Features: The complaint alleges that Defendant’s Infringing Bluetooth Classic and Bluetooth LE Products practice the claimed invention (Compl. ¶¶32, 47, 143-144).

U.S. Patent No. 8,873,500 - "Approach for Managing the Use of Communications Channels Based on Performance," issued October 28, 2014.

• Technology Synopsis: A continuation of the same family, this patent claims a method for reverting from an adapted hopping sequence (using "good" channels) back to a default hopping sequence after a specified period or based on monitoring results. This allows the system to periodically re-evaluate all channels (’500 Patent, Abstract).
• Asserted Claims: Independent method claim 28 is asserted (Compl. ¶162).
• Accused Features: The complaint alleges that Defendant’s Infringing Bluetooth Classic and Bluetooth LE Products practice the claimed invention (Compl. ¶¶32, 47, 161-162).

U.S. Patent No. 9,379,769 - "Approach for Managing the Use of Communications Channels Based on Performance," issued November 1, 2016.

• Technology Synopsis: This patent claims a method for managing communications where a device monitors channel performance, classifies channels as "good" or "bad," and communicates over the good channels while avoiding the bad ones. The invention is situated within the same adaptive frequency hopping technology family (’769 Patent, Abstract).
• Asserted Claims: Independent method claim 1 is asserted (Compl. ¶180).
• Accused Features: The complaint alleges that Defendant’s Infringing Bluetooth Classic and Bluetooth LE Products practice the claimed invention (Compl. ¶¶32, 47, 179-180).

U.S. Patent No. 9,883,520 - "Approach for Managing the Use of Communications Channels Based on Performance," issued January 30, 2018.

• Technology Synopsis: This patent claims a wireless communications device configured to send packet data specifying a subset of channels to be used for frequency hopping, including timing information for when to begin using the subset. The device then uses the identified channels for communication at the specified time (’520 Patent, Claim 1).
• Asserted Claims: Independent device claim 1 is asserted (Compl. ¶198).
• Accused Features: The complaint alleges that Defendant’s Infringing Bluetooth Classic and Bluetooth LE Products practice the claimed invention (Compl. ¶¶32, 47, 197-198).

U.S. Patent No. 10,602,528 - "Approach for Managing the Use of Communications Channels Based on Performance," issued March 24, 2020.

• Technology Synopsis: This patent claims a wireless communications device configured to determine a subset of available channels by excluding channels that fall outside a target performance threshold. The device then sends packet data defining this subset to another device and uses those channels for communication (’528 Patent, Claim 1).
• Asserted Claims: Independent device claim 1 is asserted (Compl. ¶216).
• Accused Features: The complaint alleges that Defendant’s Infringing Bluetooth Classic and Bluetooth LE Products practice the claimed invention (Compl. ¶¶32, 47, 215-216).

U.S. Patent No. 10,791,565 - "Approach for Managing the Use of Communications Channels Based on Performance," issued September 29, 2020.

• Technology Synopsis: This patent claims a wireless communications device configured to manage power level by determining a subset of channels with acceptable performance and using them for communication. The invention focuses on adaptively selecting channels to achieve a specified level of transmission quality (’565 Patent, Claim 1).
• Asserted Claims: Independent device claim 1 is asserted (Compl. ¶234).
• Accused Features: The complaint alleges that Defendant’s Infringing Bluetooth Classic and Bluetooth LE Products practice the claimed invention (Compl. ¶¶32, 47, 233-234).

U.S. Patent No. 10,887,893 - "Approach for Managing the Use of Communications Channels Based on Performance," issued January 5, 2021.

• Technology Synopsis: This patent claims a wireless device that performs a channel assessment to identify channels that enable "improved communications performance" compared to a presently-selected channel. It is configured to then switch to these improved channels, continuing the theme of adaptive channel selection (’893 Patent, Claim 1).
• Asserted Claims: Independent device claim 1 is asserted (Compl. ¶252).
• Accused Features: The complaint alleges that Defendant’s Infringing Bluetooth Classic and Zigbee Products practice the claimed invention (Compl. ¶¶14, 32, 251-252).

U.S. Patent No. 10,999,856 - "Approach for Managing the Use of Communications Channels Based on Performance," issued May 4, 2021.

• Technology Synopsis: This patent claims a wireless device configured to perform a channel assessment and select a subset of channels that excludes those with unacceptable performance. The device then communicates with another device using this selected subset of channels (’856 Patent, Claim 1).
• Asserted Claims: Independent device claim 1 is asserted (Compl. ¶271).
• Accused Features: The complaint alleges that Defendant’s Infringing Bluetooth Classic and Zigbee Products practice the claimed invention (Compl. ¶¶14, 32, 270-271).

III. The Accused Instrumentality

Product Identification

• The complaint names Defendant's products that comply with the Zigbee, Bluetooth Classic, and Bluetooth Low Energy (LE) standards as the "Infringing Products" (Compl. ¶¶15, 33, 48, 61). The Telink TLSR9218 is identified as the "Exemplary Infringing Product" (Compl. ¶16).

Functionality and Market Context

• The TLSR9218 is a multi-standard System-on-Chip (SoC) designed for Internet of Things (IoT) devices (Compl. ¶22). A block diagram from the product's datasheet shows the SoC integrates a RISC-V MCU, a 2.4GHz radio, memory, and various peripheral interfaces (Compl. p. 11). The complaint alleges the product supports standards including Bluetooth 5.2, Bluetooth LE, BLE Mesh, and Zigbee 3.0 (Compl. ¶22).
• The complaint alleges the TLSR9218 is marketed as a "high-performance, ultra-low-power, cost-optimized RF connectivity SoC" suitable for advanced IoT, hearable, and wearable devices (Compl. ¶27). It is allegedly for sale to customers in the United States through distributors like Mouser Electronics (Compl. ¶¶65-66). The complaint provides a screenshot from the Mouser website listing the TLSR9218 for sale (Compl. p. 13).

IV. Analysis of Infringement Allegations

'418 Patent Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: What is the scope of the term "determining a performance"? Does a simple binary classification of channels as "good" or "bad" based on packet loss, as performed in some standard AFH implementations, meet this limitation as it is described in the patent?
  • Technical Questions: Does compliance with the Bluetooth standard inherently require performing every step of the claimed method? For instance, what evidence demonstrates that the accused products, when used by customers in the U.S., actually perform the steps of "generating" and "providing" the identification data, as opposed to merely using a pre-determined or static channel map?

'624 Patent Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: How does the temporal limitation "at a time that is later than a first time" apply to the continuous monitoring process of a modern wireless protocol? Does the simple act of removing one channel from a "good" list and replacing it with another constitute "selecting . . . a second set"?
  • Technical Questions: What evidence does the complaint provide that the accused products re-determine performance across the "plurality of communications channels" (e.g., all 79 Bluetooth channels) as required by the claim, rather than just monitoring the performance of the currently used "good" channel subset?

V. Key Claim Terms for Construction

For both the '418 and '624 Patents, the following term appears central:

• The Term: "determining a performance"
• Context and Importance: This term is the foundation of the claimed adaptive method. The scope of "performance" and what actions constitute "determining" it will be critical. The dispute may turn on whether the accused products' channel quality assessment mechanisms, as dictated by the Bluetooth standard, meet the patented definition of performance determination. Practitioners may focus on whether this requires a quantitative measurement or if a simple binary classification (usable/unusable) suffices.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification suggests performance can be determined by various methods, including "checking transmission quality based on transmission errors," which could be interpreted broadly to cover simple packet loss metrics (’418 Patent, col. 7:51-54).
  • Evidence for a Narrower Interpretation: The detailed description lists several specific, more complex performance metrics, including Received Signal Strength Indicator (RSSI), preamble correlation, Header Error Check (HEC), Cyclic Redundancy Check (CRC), Packet Loss Ratio (PLR), and Forward Error Correction (FEC) (’418 Patent, col. 13:1-col. 15:10). A defendant may argue that "determining a performance" requires one of these more sophisticated measurements, not just a simple binary check.

VI. Other Allegations

• Indirect Infringement: The complaint alleges both induced and contributory infringement for all asserted patents.
  • Inducement: Allegations are based on Defendant providing customers with products designed to perform the patented methods, along with instructional materials like datasheets, user manuals, SDKs, and driver software that instruct customers on how to set up and use the infringing Bluetooth and Zigbee functionality (Compl. ¶¶40, 62, 67, 81, 97). A screenshot from a user manual provides explicit instructions on product installation and firmware download (Compl. p. 14).
  • Contribution: Allegations are based on Defendant selling a component (the SoC) of a patented combination that constitutes a material part of the invention and is not a staple article of commerce suitable for substantial non-infringing use. The infringing functionality is allegedly specially designed to infringe the patents (Compl. ¶¶90, 106).
• Willful Infringement: The complaint alleges Defendant had pre-suit knowledge of the patents and its infringement based on notice letters sent on January 25, 2019, and November 16, 2021 (Compl. ¶¶12, 289). It is alleged that despite this knowledge, Defendant continued its infringing conduct, rendering the infringement willful (Compl. ¶¶290-291).

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

• Standard Compliance vs. Infringement: A central issue will be whether mere compliance with the adaptive frequency hopping (AFH) portions of the Bluetooth and Zigbee standards is sufficient to prove that the accused products perform every step of the asserted method claims. The analysis will likely focus on whether the standards mandate specific actions that map directly onto each claim limitation, or if they allow for non-infringing implementation options.
• Definitional Scope: The case may turn on claim construction, particularly the meaning of "determining a performance." A key question will be whether the binary "good/bad" channel classification used in standard AFH protocols constitutes "determining a performance" as taught in the patents, which also describe more granular quantitative metrics like RSSI and bit-error rates.
• Territoriality of Infringement: For the asserted method claims, a key evidentiary question will be one of territoriality: what proof demonstrates that the complete patented methods, including acts of "selecting" and "communicating" channel sets between devices, are performed by end-users within the United States, as opposed to being inherent functionalities of a chip sold globally?