DCT

1:23-cv-01177

Universal Connectivity Tech Inc v. HP Inc

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:23-cv-01177, W.D. Tex., 09/28/2023
  • Venue Allegations: Plaintiff alleges venue is proper because HP is registered to do business in Texas, has regular and established places of business in the Western District of Texas, has transacted business in the district, and has committed acts of infringement within the district.
  • Core Dispute: Plaintiff alleges that Defendant’s products supporting industry-standard digital interfaces such as DisplayPort, USB 3.0, and USB-C infringe eight patents related to digital data packet transmission, protocol encapsulation, and device connectivity.
  • Technical Context: The technology at issue involves foundational methods for high-speed data communication between computing devices and peripherals, which are integral to widely adopted standards governing modern computer ports and displays.
  • Key Procedural History: The complaint alleges that Plaintiff’s parent company, WiLAN, sent letters to HP on June 30, 2022, and October 6, 2022, providing notice of alleged infringement of several of the asserted patents. The complaint also notes that the asserted patents were previously assigned to Lattice Semiconductor Corporation and were subject to the intellectual property rights (IPR) policies of the Video Electronics Standards Association (VESA) and the USB Implementers Forum (USB-IF), and seeks a declaratory judgment that Plaintiff has complied with its obligations under these policies.

Case Timeline

Date Event
2000-11-22 Earliest Priority Date (’905, ’798 Patents)
2001-09-20 Earliest Priority Date (’307 Patent)
2004-07-23 Earliest Priority Date (’520, ’231 Patents)
2006-12-26 '905 Patent Issued
2007-03-06 '307 Patent Issued
2008-12-11 Earliest Priority Date (’712 Patent)
2010-06-29 '798 Patent Issued
2010-12-21 '520 Patent Issued
2011-03-31 Earliest Priority Date (’265 Patent)
2011-04-05 '231 Patent Issued
2014-03-25 '712 Patent Issued
2014-04-14 Earliest Priority Date (’103 Patent)
2016-01-05 '265 Patent Issued
2017-12-26 '103 Patent Issued
2022-06-30 Plaintiff's Parent (WiLAN) Sent First Notice Letter to HP
2022-10-06 Plaintiff's Parent (WiLAN) Sent Follow-Up Letter to HP
2023-09-28 Complaint Filed

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

U.S. Patent No. 7,154,905 - "Method and system for nesting of communications packets"

The Invention Explained

  • Problem Addressed: The patent's background describes inefficiencies in prior art communication protocols, such as Fibre Channel, where large data transfers can create high overhead and block time-sensitive control messages, degrading overall system performance ('905 Patent, col. 2:32-44).
  • The Patented Solution: The invention proposes a communication architecture where the transmission of a lower-priority packet (e.g., a large data packet) can be temporarily interrupted, or "preempted," to allow for the immediate transmission of a higher-priority packet (e.g., a control packet). Once the high-priority packet is sent, the transmission of the original packet resumes ('905 Patent, Abstract; Fig. 13). This "packet nesting" is managed through specific "preempt" and "continue" primitives, ensuring that high-priority information is transmitted with minimal latency ('905 Patent, col. 20:1-25).
  • Technical Importance: This method allows for low-latency transmission of critical control information without having to wait for the completion of large, ongoing data transfers, improving the responsiveness of storage networks and other high-speed communication systems ('905 Patent, col. 19:60-20:4).

Key Claims at a Glance

  • The complaint asserts independent claim 21 ('905 Patent, col. 40:17-40).
  • Essential elements of claim 21, a communications device, include:
    • A transmission component that transmits a first packet.
    • A preemption component that signals the transmission component to stop transmitting the first packet, transmits a preempt indicator indicating a second packet is to be transmitted, transmits the second packet, and signals the transmission component to continue transmitting the first packet.
    • The packets include in-band symbols and the indicators include one or more out-of-band symbols.
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 7,187,307 - "Method and system for encapsulation of multiple levels of communication protocol functionality within line codes"

The Invention Explained

  • Problem Addressed: Traditional layered communication protocols (like the seven-layer OSI model) create functional separation but can introduce inefficiencies, as each layer adds its own overhead and processing requirements ('307 Patent, col. 1:22-35).
  • The Patented Solution: The invention describes a method to collapse functionality from multiple protocol layers into the line code itself. This is achieved by defining a data structure, or "cell," that contains both application data and various control bits. These control bits are designated to perform functions that would traditionally belong to higher layers, such as link layer flow control, network layer addressing (via an extension bit), and application layer commands ('307 Patent, Abstract; col. 5:1-14).
  • Technical Importance: By embedding higher-level protocol functions directly into the physical layer's data structures, this approach can reduce processing overhead, minimize latency, and improve the overall efficiency of a communication system ('307 Patent, col. 9:13-25).

Key Claims at a Glance

  • The complaint asserts independent claim 68 ('307 Patent, col. 67:58-68:12).
  • Essential elements of claim 68, a method for encoding data, include:
    • Generating M-bit input words, where the input words are indicative of application data and control bits.
    • Encoding the input words using a block code to generate a sequence of N-bit code words (where N>M).
    • The code word sequence is indicative of at least one "cell" of the input words.
    • The cell includes at least some of the application data and at least two of the control bits.
    • The at least two control bits have "multiple levels of communication protocol functionality."
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 7,746,798 - "Method and system for integrating packet type information with synchronization symbols"

  • Patent Identification: U.S. Patent No. 7,746,798, "Method and system for integrating packet type information with synchronization symbols," issued June 29, 2010 (Compl. ¶30).
  • Technology Synopsis: The patent describes a communication system where special synchronization symbols, used for aligning data streams, are also encoded with information about the type of data packet that follows (e.g., control or data). This allows a receiving device to quickly identify the packet type at the physical or link layer without needing to first parse the packet's header ('798 Patent, Abstract; col. 14:48-61).
  • Asserted Claims: Independent claim 19 (Compl. ¶32).
  • Accused Features: HP products that support USB 3.0 and later versions (Compl. ¶31).

U.S. Patent No. 9,232,265 - "Method, apparatus and system for transitioning an audio/video device between a source mode and a sink mode"

  • Patent Identification: U.S. Patent No. 9,232,265, "Method, apparatus and system for transitioning an audio/video device between a source mode and a sink mode," issued January 5, 2016 (Compl. ¶41).
  • Technology Synopsis: The patent describes a technique for an audio/video (AV) device to determine its operational mode. The device defaults to a "sink" (receiving) mode to prevent electrical conflicts. It then detects characteristics of a connected device (e.g., presence of a supply voltage or a hot plug detect signal) to determine whether it is safe to transition into a "source" (transmitting) mode ('265 Patent, Abstract; col. 4:9-20).
  • Asserted Claims: Independent claim 8 (Compl. ¶43).
  • Accused Features: HP products that support USB-C Revision 1.0 and later (Compl. ¶42).

U.S. Patent No. 8,680,712 - "Power delivery over digital interaction interface for video and audio (DiiVA)"

  • Patent Identification: U.S. Patent No. 8,680,712, "Power delivery over digital interaction interface for video and audio (DiiVA)," issued March 25, 2014 (Compl. ¶52).
  • Technology Synopsis: The patent discloses a system for delivering power over a serial link that also carries data. It describes a power delivery circuit that includes a load detector to extract information about a connected device (such as whether it is powered on or needs power) based on the load current, and a power relay switch to control the provision of power accordingly ('712 Patent, Abstract).
  • Asserted Claims: Independent claim 1 (Compl. ¶54).
  • Accused Features: HP products that support USB-C Version 1.0 and later (Compl. ¶53).

U.S. Patent No. 7,856,520 - "Control bus for connection of electronic devices"

  • Patent Identification: U.S. Patent No. 7,856,520, "Control bus for connection of electronic devices," issued December 21, 2010 (Compl. ¶63).
  • Technology Synopsis: The patent describes a method for using a single, bi-directional line as a control bus to connect electronic devices. The system multiplexes multiple types of control signals, which would normally require separate buses, by converting them into data packets for transmission over the single-line bus. The invention includes an arbitration process for devices to gain control of the bus ('520 Patent, Abstract).
  • Asserted Claims: Independent claim 12 (Compl. ¶65).
  • Accused Features: HP products that support DisplayPort Alt Mode on USB Type-C Version 1.0 and later or HDMI Alt Mode for USB-C (Compl. ¶64).

U.S. Patent No. 7,921,231 - "Discovery of electronic devices utilizing a control bus"

  • Patent Identification: U.S. Patent No. 7,921,231, "Discovery of electronic devices utilizing a control bus," issued April 5, 2011 (Compl. ¶73).
  • Technology Synopsis: The patent discloses a method for devices to discover each other's type over a control bus. A receiving device starts in a disconnect state and transitions to different states based on signals it detects on the control bus, such as a signal pulse or a predetermined voltage level. This allows it to determine whether it is connected to a standard device or a mobile device with a modified protocol ('231 Patent, Abstract).
  • Asserted Claims: Independent claim 10 (Compl. ¶75).
  • Accused Features: HP products that support DisplayPort Alt Mode on USB Type-C Version 1.0 and later (Compl. ¶74).

U.S. Patent No. 9,852,103 - "Bidirectional transmission of USB data using audio/video data channel"

  • Patent Identification: U.S. Patent No. 9,852,103, "Bidirectional transmission of USB data using audio/video data channel," issued December 26, 2017 (Compl. ¶83).
  • Technology Synopsis: The patent describes a system for half-duplex, bidirectional transmission of USB data over a multimedia link primarily used for audio/video (A/V) data. The system uses Time Division Multiplexing (TDM) to create time slots where a source device can send A/V and forward USB data, and separate time slots where a sink device can send backward USB data over the same physical channel ('103 Patent, Abstract).
  • Asserted Claims: Independent claim 21 (Compl. ¶85).
  • Accused Features: HP products that support USB 4 Version 1.0 and later (Compl. ¶84).

III. The Accused Instrumentality

Product Identification

  • The complaint accuses a broad category of HP products, including laptops, desktops, monitors, docking stations, and power adapters (Compl. ¶53). Specific representative products named include the E24 G4 FHD Monitor, the EliteDesk 805 G6 Small Form Factor PC, and the EliteBook 655 G9 Notebook PC (Compl. ¶9).

Functionality and Market Context

  • The accused functionality is the implementation of industry-standard communication protocols, namely DisplayPort (versions 1.2 and later), USB (versions 3.0 and later), USB-C (versions 1.0 and later, including DisplayPort Alternate Mode), and USB 4 (Compl. ¶9, 20, 31, 42, 53, 64, 74, 84). The complaint alleges that these standards, as implemented in HP's products, practice the patented inventions related to data packet management, protocol layering, power delivery, and device discovery. The complaint cites HP's product specifications and user guides, which advertise compatibility with and instruct on the use of these standard interfaces, as evidence supporting its infringement allegations (Compl. ¶12, 23, 34, 45, 56).

No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint alleges that the Accused Products infringe by implementing standardized communication protocols, but defers element-by-element technical mappings to exhibits not included with the complaint filing. The following charts summarize the infringement theory based on the complaint's narrative allegations and the patent specifications.

'905 Patent Infringement Allegations

Claim Element (from Independent Claim 21) Alleged Infringing Functionality Complaint Citation Patent Citation
a transmission component that transmits a first packet Transmission of data packets, such as video or other data, in accordance with the DisplayPort 1.2 standard. ¶9 col. 8:31-35
a preemption component that signals the transmission component to stop transmitting the first packet, transmits a preempt indicator..., transmits the second packet, and signals the transmission component to continue transmitting the first packet Implementation of DisplayPort 1.2 protocols that allegedly manage and prioritize different data streams in a manner that constitutes the claimed preemption and resumption of packet transmission. ¶9 col. 20:1-25
wherein packets include in-band symbols and the indicators include one or more out-of-band symbols Use of distinct symbol types for data transmission and control signaling as defined within the DisplayPort 1.2 protocol. ¶9 col. 11:49-67
  • Identified Points of Contention ('905 Patent):
    • Scope Questions: A central question may be whether the DisplayPort 1.2 standard's mechanisms for managing different data types (e.g., main link data vs. auxiliary data) constitute "preemption" of one packet for another and subsequent "continuation" as specifically defined and claimed in the patent.
    • Technical Questions: The analysis will depend on whether the DisplayPort 1.2 protocol actually uses distinct signals that function as a "preempt indicator" and a "continue indicator" to interrupt and resume a single packet, as opposed to merely scheduling different packet types for transmission.

'307 Patent Infringement Allegations

Claim Element (from Independent Claim 68) Alleged Infringing Functionality Complaint Citation Patent Citation
generating M-bit input words, wherein the input words are indicative of application data and control bits Generation of data structures within the Accused Products that combine application data (e.g., video streams) with control information for transmission, as specified by the DisplayPort 1.0 standard. ¶20 col. 5:1-14
encoding the input words in accordance with a block code to generate a code word sequence of N-bit code words...the cell includes...at least two of the control bits, and said at least two of the control bits have multiple levels of communication protocol functionality Use of the 8b/10b line code and packet structure in the DisplayPort 1.0 standard, which the complaint alleges constitutes the claimed "cell" and encapsulates control bits that perform functions across multiple protocol layers (e.g., physical, link, and higher). ¶20 col. 5:1-14
  • Identified Points of Contention ('307 Patent):
    • Scope Questions: A key dispute may center on the definition of a "cell." The infringement theory depends on whether the packet structures defined in the DisplayPort standard meet the specific structural and functional requirements of a "cell" as described in the patent.
    • Technical Questions: The complaint does not specify which control bits in the DisplayPort standard are alleged to perform "multiple levels of communication protocol functionality." A point of contention will be whether the standard's control bits operate beyond the conventional link layer to perform functions attributable to network or application layers.

V. Key Claim Terms for Construction

  • For the '905 Patent:

    • The Term: "preempt indicator"
    • Context and Importance: The infringement case for the '905 patent may turn on this term. The outcome depends on whether a feature of the DisplayPort standard can be shown to be a specific signal for interrupting a packet, as opposed to a more general flow-control or scheduling signal. Practitioners may focus on this term because it defines the core mechanism of the invention.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification describes transmitting a "preempt primitive" without being strictly limited to one embodiment, which could support an argument that any signal causing a packet interruption for a higher-priority transmission qualifies ('905 Patent, col. 20:31-33).
      • Evidence for a Narrower Interpretation: The patent's figures and detailed descriptions show a specific sequence involving a "Preempt" primitive followed later by a "continue" primitive to resume the exact same packet, suggesting a structured and specific type of indicator rather than a general-purpose signal ('905 Patent, Fig. 13).

  • For the '307 Patent:

    • The Term: "multiple levels of communication protocol functionality"
    • Context and Importance: This term is critical because infringement requires showing that the accused DisplayPort standard does more than just use control bits for typical link-layer functions (like framing or error checking). The complaint must demonstrate that these bits also perform functions of higher protocol layers (e.g., network, transport, or application).
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The patent references the OSI seven-layer model and suggests the invention applies broadly to collapsing its functions, which could support a wide reading of what constitutes a "level" of functionality ('307 Patent, col. 1:24-35).
      • Evidence for a Narrower Interpretation: The patent's examples describe specific higher-level functions like network-layer addressing via an "XTND" bit and application-layer flow control via a "FLOW" bit, which may suggest that the term requires discrete, identifiable functions attributable to distinct, recognized protocol layers ('307 Patent, Fig. 2; col. 6:49-56).

VI. Other Allegations

  • Indirect Infringement: The complaint alleges induced infringement for all asserted patents. The basis for this allegation is that HP provides product documentation, user guides, and marketing materials that instruct and encourage customers to use the Accused Products in a manner that directly infringes, specifically by connecting them via the accused standard interfaces (e.g., DisplayPort, USB-C) (Compl. ¶12, 23, 34, 45, 56, 66, 76, 86).
  • Willful Infringement: Willfulness is alleged based on pre-suit knowledge. The complaint asserts that HP knew of its infringement of at least the '905, '307, '798, '265, and '712 patents as of June 30, 2022, the date of a notice letter from Plaintiff's parent company, and continued its infringing activities thereafter (Compl. ¶16, 27, 38, 49, 60). Willfulness is also alleged based on knowledge obtained from the filing of the complaint itself.

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

  • A core issue will be one of technical mapping: can the specific operations of standardized protocols like DisplayPort and USB-C, which are designed for interoperability, be shown to practice the particular, and potentially proprietary, methods of packet preemption ('905 Patent) and multi-layer protocol encapsulation ('307 Patent) described in the patents-in-suit? The case may depend on whether the standards' functions are merely analogous or technically identical to the claimed inventions.
  • A significant legal question will be one of licensing obligations: the complaint's request for a declaratory judgment regarding its compliance with VESA and USB-IF IPR policies indicates that HP may have a defense based on standards-essential patent (SEP) and FRAND licensing principles. The resolution of this issue could determine the availability of injunctive relief and the ultimate measure of damages, independent of the technical infringement analysis.
  • The dispute will likely feature a substantial claim construction battle over the scope of foundational terms. The definitions of "preempt indicator" ('905 Patent) and "cell" having "multiple levels of communication protocol functionality" ('307 Patent) will be central, as their construction will likely determine whether the claims read on the functionality of the accused industry standards.