DCT

1:25-cv-01574

Sovereign Peak Ventures LLC v. NXP Semiconductors NV

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:25-cv-01574, W.D. Tex., 09/29/2025
  • Venue Allegations: Venue for the foreign NXP entities is alleged to be proper in any U.S. judicial district as they are not U.S. residents. Venue for NXP USA, Inc. is alleged to be proper in the Western District of Texas based on its commission of infringing acts and its regular and established place of business in the district, including its corporate headquarters in Austin.
  • Core Dispute: Plaintiff alleges that Defendant’s semiconductor products, including Wi-Fi Systems-on-Chip (SoCs), WLAN access point systems, and wireless charging components, infringe six patents related to Wi-Fi session handoff, split-architecture WLAN negotiation, and inductive wireless charging technology.
  • Technical Context: The technologies at issue involve standards-based functionalities for Wi-Fi roaming (IEEE 802.11k/r) and wireless power transfer (Qi standard), which are foundational to the modern mobile, automotive, and Internet of Things (IoT) device ecosystems.
  • Key Procedural History: Plaintiff states that it acquired a portfolio of patents invented by employees of Panasonic Corporation and has entered into license agreements with other companies. The complaint alleges that Defendant received notice of infringement on at least two occasions prior to the complaint's filing, on July 19, 2024, and January 28, 2025, which forms the basis for the willfulness allegations.

Case Timeline

Date Event
2004-03-02 Earliest Priority Date (’531, ’384 Patents)
2005-03-14 Earliest Priority Date (’512 Patent)
2010-09-14 U.S. Patent No. 7,796,512 Issues
2011-01-26 Earliest Priority Date (’684, ’490 Patents)
2011-10-25 U.S. Patent No. 8,045,531 Issues
2011-12-14 Earliest Priority Date (’282 Patent)
2012-09-18 U.S. Patent No. 8,270,384 Issues
2013-10-08 U.S. Patent No. 8,552,684 Issues
2015-02-24 U.S. Patent No. 8,963,490 Issues
2016-01-01 NXP completes merger with Freescale Semiconductor
2017-04-11 U.S. Patent No. 9,620,282 Issues
2024-07-19 First Alleged Notice of Infringement to Defendant
2025-01-28 Second Alleged Notice of Infringement to Defendant
2025-09-29 Complaint Filed

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

U.S. Patent No. 7,796,512 - "Switching Source Device, Switching Destination Device, High Speed Device Switching System and Signaling Method"

The Invention Explained

  • Problem Addressed: The patent addresses the problem of "session mobility," where moving a media session (e.g., a video stream) from one device to another, such as from a mobile phone to a TV, incurs a significant delay that disrupts the user's experience (’512 Patent, col. 2:33-39). This switching time can cause a user to miss critical moments in live content, such as a goal in a soccer match (’512 Patent, col. 2:33-39).
  • The Patented Solution: To reduce this perceptible delay, the invention proposes a "high speed device switching system" wherein the initial device (the "switching source") discovers potential new devices ("switching destination candidates") and begins transmitting the media data to them before the user finalizes the switch (’512 Patent, Abstract; Fig. 2). The candidate devices receive and buffer this data, so when one is selected as the final destination, it can begin playback immediately from its buffer, creating a seemingly instantaneous transition (’512 Patent, col. 4:1-4).
  • Technical Importance: The technology aimed to realize seamless service continuity in an emerging "ubiquitous network environment" where users interact with numerous connected devices (’512 Patent, col. 2:20-24).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶19, 119).
  • Claim 1 recites a "switching source device" comprising five key functional components:
    • A "service discovery section" for finding neighboring devices.
    • A "high speed device switching section" for determining candidate devices, generating a list, and instructing session establishment.
    • A "signaling section" for establishing the session with a selected candidate.
    • An "input section" for receiving a list request from a user.
    • An "output section" for presenting the candidate list.
  • The claim concludes with a "wherein" clause describing the process flow when the high speed section receives a switching request from a user through the input section.

U.S. Patent No. 8,045,531 - "System and Method for Negotiation of WLAN Entity"

The Invention Explained

  • Problem Addressed: The patent describes the challenge of building large-scale wireless networks (WLANs) using equipment from different manufacturers. These networks often use a "split architecture," with centralized Control Nodes (CNs) and distributed Wireless Access Points (WAPs), but incompatibilities arise because different vendors' WAPs have dissimilar functional capabilities (’531 Patent, col. 1:11-30).
  • The Patented Solution: The invention provides a system where WAPs and CNs can dynamically negotiate to determine a "function split arrangement." A "negotiation unit" allows a WAP to communicate its capabilities to a CN, which then determines how to divide the necessary WLAN functions between the two entities and provides complementary functionality to create a complete, operational system (’531 Patent, Abstract; col. 2:34-40).
  • Technical Importance: This method provides a framework for achieving interoperability in heterogeneous WLANs, enabling network operators to deploy and manage equipment from multiple vendors within a single cohesive network (’531 Patent, col. 2:5-9).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶38, 144).
  • Claim 1 recites a system comprising:
    • One or more "WAPs" for processing a "subset of complete functionality".
    • One or more "Control Nodes (CN)" for providing "a subset or complete functionalities".
    • A "negotiation unit" for the WAPs to dynamically negotiate with the CN for a secure connection and function split.
    • A "whereby" clause stating that the CN negotiates with the WAPs and provides complementary functionality to form a complete system "according to a decision of the negotiation unit."

Multi-Patent Capsules

  • Patent Identification: U.S. Patent No. 8,270,384, "Wireless Point that Provides Functions For a Wireless Local Area Network To Be Separated Between the Wireless Point and One or More Control Nodes...", issued September 18, 2012.

  • Technology Synopsis: Continuing the technology of the ’531 Patent, the ’384 Patent claims the system from the perspective of the "wireless point" (WAP). The invention describes a WAP configured with units to send discovery requests to control nodes, select a control node based on the functions they offer in response, establish a secure session with the selected node, and negotiate the separation of functions between itself and that node (Compl. ¶50).

  • Asserted Claims: Independent claim 1 (Compl. ¶50).

  • Accused Features: The complaint accuses NXP Access Point Systems supporting the CAPWAP protocol (e.g., RDT1023WLAN) of infringement by sending discovery requests to, selecting, and negotiating function splits with Access Controllers (Compl. ¶51-61).

  • Patent Identification: U.S. Patent No. 8,552,684, "Non-Contact Charging Module and Reception-Side and Transmission-Side Non-Contact Charging Apparatuses Using the Same", issued October 8, 2013.

  • Technology Synopsis: This patent addresses non-contact (wireless) charging systems that must accommodate receiving devices that may or may not use a magnet for alignment. It claims a transmission-side module with a planar coil containing a "second hole" of a predetermined size that is both larger than the magnet in the receiving device and greater than 15.5 mm. This specific sizing allows the transmitter to function properly regardless of the presence of a magnet on the receiver side (Compl. ¶63).

  • Asserted Claims: Claim 12 (Compl. ¶63).

  • Accused Features: The complaint accuses NXP's Qi-compliant wireless charging transmitters (e.g., WCT-15W1CFFPD) of having planar coils with a central hole that meets the claimed dimensional requirements relative to Qi-specified magnets (Compl. ¶64, 72-77).

  • Patent Identification: U.S. Patent No. 8,963,490, "Non-Contact Charging Module and Reception-Side and Transmission-Side Non-Contact Charging Apparatuses Using the Same", issued February 24, 2015.

  • Technology Synopsis: In the same family as the ’684 patent, this patent claims a non-contact charging module comprising a planar coil with a "hollow portion" greater than 15.5 mm and a magnetic sheet. The module is designed to align with another module that may use a magnet ("first case") or may not use a magnet ("second case"), making it versatile for different receiver types (Compl. ¶79).

  • Asserted Claims: Independent claim 1 (Compl. ¶79).

  • Accused Features: The complaint accuses the same NXP Qi-compliant wireless charging transmitters, alleging their transmitter coils have a hollow inner portion with a diameter greater than 15.5 mm, citing Qi standard reference designs as evidence (Compl. ¶80, 86).

  • Patent Identification: U.S. Patent No. 9,620,282, "Noncontact Connector Apparatus and System Using Inductive Coupling Between Coils", issued April 11, 2017.

  • Technology Synopsis: This patent describes a power transfer system using inductive coupling between transmitter and receiver coils. The invention involves placing a magnetic body between the coils to intentionally increase the self-inductance of each coil, which in turn decreases the coupling coefficient. This change is claimed to shift the frequency response from an undesirable "double-peaked narrow-band" characteristic to a more stable "single-peaked wide-band" characteristic, thereby improving transmission efficiency (Compl. ¶92).

  • Asserted Claims: Independent claim 10 (Compl. ¶92).

  • Accused Features: The complaint accuses NXP's Qi wireless charging receivers (e.g., WPR1500-HV), which include a receiver coil and shielding material (a "magnetic body"). It is alleged that this configuration increases the coil's self-inductance, lowers the coupling coefficient, and achieves the claimed shift in frequency response characteristics (Compl. ¶93, 101-108).

III. The Accused Instrumentality

Product Identification

The complaint identifies three main categories of accused products:

  1. Wi-Fi SoCs: NXP Wi-Fi SoCs that support the IEEE 802.11k/r standards, including the 88W8782, 88W8977, AW611, and IW610 families, among others (Compl. ¶20). These are accused of infringing the ’512 Patent. A screenshot of an NXP webpage describes the accused 88MW32X as a microcontroller SoC for smart devices supporting 802.11n Wi-Fi (Compl. p. 8).
  2. WLAN Access Point Systems: NXP systems that support the Control and Provisioning of Wireless Access Points (CAPWAP) protocol, specifically identifying the RDT1023WLAN product code (Compl. ¶39, 51). These are accused of infringing the ’531 and ’384 Patents. The complaint includes an image of the "T1023 WLAN Access Point System" reference design board (Compl. p. 23).
  3. Wireless Charging Components: NXP wireless charging transmitters and receivers that comply with the Qi wireless charging specification. Accused transmitters include WCT-15W1CFFPD and various automotive transmitters (Compl. ¶64, 80). Accused receivers include the WRP1500-HV High Voltage Wireless Charging Receiver (Compl. ¶93).

Functionality and Market Context

The accused Wi-Fi SoCs provide the core processing for Wi-Fi roaming in devices like access points (Compl. ¶21). The WLAN Access Point Systems are reference designs demonstrating NXP's implementation of the CAPWAP protocol for split-architecture networks (Compl. ¶40, 53). The wireless charging products are components and reference designs for implementing Qi-standard inductive power transfer in consumer electronics and automotive applications (Compl. ¶64, 80, 93). The complaint alleges NXP is a global semiconductor company whose products are used in a wide range of end-market applications, including automotive, IoT, and mobile infrastructure (Compl. ¶7).

IV. Analysis of Infringement Allegations

7,796,512 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a service discovery section for obtaining information as to whether a service can be provided from a neighboring communication device; The accused SoCs support 802.11k, which includes functionality to obtain information from neighboring APs to compile a neighbor report. ¶23 col. 6:49-52
a high speed device switching section for instructing the service discovery section... determining a switching destination candidate device... generating a switching destination candidate device list... and making an instruction for establishing a session... The SoCs instruct discovery by requesting beacon reports, determine candidate APs based on information like the BSSID, generate a neighbor list, and make an instruction to establish a Fast Transition session. ¶25-29 col. 6:53-65
a signaling section for establishing a session with the switching destination candidate device when the instruction... is received... The Remote Request Broker (RRB) of an AP containing the SoC establishes a session over the Distribution System (DS) with the target AP upon receiving an instruction. ¶30 col. 7:1-5
an input section for receiving a switching destination candidate device list request from a user; and The SoCs include an input section for receiving neighbor report requests from a connected user's device. ¶31 col. 7:6-8
an output section for presenting the switching destination candidate device list... The SoC receives a switching request (FT Action Request) from a user's device and, in response, sends a RemoteRequest to the target AP, which functions to present the candidate list. ¶33 col. 7:9-13
wherein when the high speed device switching section receives a device switching request from a user... it notifies the signaling section... and the signaling section sends a switching instruction... The SoC receives an FT Action Request from a user's device, which notifies the signaling section (RRB) to send a RemoteRequest message, which contains a switching instruction, to the target AP. ¶34-36 col. 7:14-20
  • Identified Points of Contention:
    • Scope Questions: The patent's examples describe a user-centric device like a "mobile node" moving a session (e.g., phone-to-TV) (’512 Patent, col. 2:22-25). A potential dispute is whether the term "switching source device" can be construed to cover network infrastructure like a Wi-Fi Access Point, which facilitates a client's roaming session rather than being the user's primary terminal.
    • Technical Questions: Claim 1 requires an "input section for receiving a... list request from a user" and a "device switching request from a user." The complaint alleges these elements are met by automated protocol messages (a "neighbor report request" and an "FT Action Request") from a "user's device" (Compl. ¶31, 35). A key question for the court will be whether a protocol request from a device, which may occur without direct user input, satisfies the claim limitation of a request "from a user."

8,045,531 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a single or plurality of wireless access points (WAP) for processing a subset of complete functionality... NXP Access Point systems (APs) are managed by an Access Controller (AC), with WLAN functionality distributed among the APs and the AC. ¶42-43 col. 1:21-30
a single or plurality of control nodes (CN) for providing a subset or complete functionalities... An NXP Access Controller (AC) manages the APs and provides centralized and complementary functionality. ¶41 col. 1:21-30
a negotiation unit for the single or plurality of WAPs to dynamically negotiate with the control node for a secure connection and function split arrangement; The accused systems use the CAPWAP protocol's discovery phase, where NXP APs convey their capabilities to an AC, which uses this information to configure the network and establish a secure session. ¶44-46 col. 2:34-40
whereby the control node negotiates... and provides complementary functionality... to form a complete functionality... according to a decision of the negotiation unit. The AC provides complementary functions (e.g., 802.11 integration) if split MAC mode is used, and the final configuration decision is made by the negotiation unit on the AC. ¶47-48 col. 2:40-46
  • Identified Points of Contention:
    • Scope Questions: The complaint's infringement theory relies heavily on the public CAPWAP standard (RFC 5415) (Compl. ¶41, 44, 47). This raises the question of whether the patent claims a specific, novel method of negotiation that CAPWAP implements, or if it broadly covers the general concept of function-splitting negotiation in WLANs, which may be challenged on validity grounds.
    • Technical Questions: Claim 1 requires a "negotiation unit" and a "decision of the negotiation unit". A potential dispute is whether the standard exchange of messages in the CAPWAP protocol constitutes a distinct "unit" making a "decision," or if these terms require a more specific structure or logical step not present in the standard protocol flow. The complaint presents a screenshot of NXP's T1023 Access Point system, which is a reference design; a question may arise as to how this non-commercial product constitutes an act of infringement (Compl. p. 23).

V. Key Claim Terms for Construction

From U.S. Patent No. 7,796,512

  • The Term: "request from a user" (Claim 1)
  • Context and Importance: This term appears in two limitations defining how the switching process is initiated. The infringement allegation maps this to automated protocol messages originating from a "user's device" (Compl. ¶31, 35). Practitioners may focus on this term because its construction—whether it requires direct human interaction or can encompass automated device behavior—could be determinative of infringement for the "input section" and the final "wherein" clause.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent's objective is to make switching so fast a "user cannot perceive it," which may support the idea that automated, high-speed processes acting on the user's behalf are contemplated (’512 Patent, Abstract).
    • Evidence for a Narrower Interpretation: Claim 1 distinguishes between the "device" and the "user." The sequence diagrams also depict a "User" as a distinct entity initiating actions like "List request" (U1) and "Device selection" (U3), which are then translated into device messages (’512 Patent, Fig. 2). This suggests the "user" is the human operator, distinct from the device's internal sections.

From U.S. Patent No. 8,045,531

  • The Term: "negotiation unit" (Claim 1)
  • Context and Importance: This term defines the component responsible for the dynamic negotiation of the function split. The complaint alleges this is met by the CAPWAP discovery process (Compl. ¶44). Practitioners may focus on this term because its construction will determine whether a standard protocol exchange is sufficient to meet the limitation, or if a more discrete hardware or software module is required.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The abstract describes the invention as a "method for negotiations," and the claim describes the "negotiation unit" functionally ("for... WAPs to dynamically negotiate") (’531 Patent, Abstract). This may support a broad functional interpretation that covers the exchange of capability messages within the CAPWAP protocol.
    • Evidence for a Narrower Interpretation: Claim 1 recites the "negotiation unit" as a distinct component of the system, separate from the WAPs and CNs themselves. The specification also refers to a "decision of the negotiation unit," implying it is an actor that makes a determination, which could support a narrower construction requiring a specific decision-making module rather than just the outcome of a protocol handshake (’531 Patent, col. 2:45-46).

VI. Other Allegations

  • Indirect Infringement: The complaint alleges induced and contributory infringement for all asserted patents. For the Wi-Fi patents, inducement is based on NXP allegedly marketing the 802.11k/r and CAPWAP features and providing technical assistance, instructional materials, demos, and online community forums that direct and encourage customers to use the accused products in an infringing manner (Compl. ¶127-130, 152-155). For the charging patents, similar allegations are made regarding marketing Qi-compliant features and providing support (Compl. ¶200-203). Contributory infringement is alleged on the basis that the accused features are specially made and adapted for infringement and are not staple articles of commerce with substantial non-infringing uses (Compl. ¶135, 160).
  • Willful Infringement: Willfulness is alleged for all patents based on NXP's purported knowledge of the patents since at least the notice dates of July 19, 2024, and January 28, 2025. The complaint asserts that NXP's continued infringing conduct after receiving notice constitutes a "business decision to 'efficiently infringe'" (Compl. ¶113, 137, 162).

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

  • A core issue will be one of definitional scope: can claim terms rooted in user-centric actions, such as a "request from a user" in the '512 patent, be construed to cover the automated, device-to-device protocol messages that implement industry standards like IEEE 802.11k/r roaming?
  • A second key issue will be the role of public standards: does the accused products' compliance with the CAPWAP and Qi wireless charging standards, which the complaint heavily relies upon to show infringement, demonstrate infringement of novel patented inventions, or does it suggest the patents may broadly claim concepts that are part of the public, standardized art?
  • A central factual question for the wireless charging patents ('684 and '490) will be one of dimensional proof: can the plaintiff provide sufficient evidence that the "hollow portion" of the coils in NXP's mass-produced commercial transmitters is, in fact, "greater than 15.5 mm," a precise metric that will likely require expert measurement and analysis of the accused products?