DCT

6:21-cv-01063

Buffalo Patents LLC v. OnePlus Technology Shenzen Co Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 6:21-cv-01063, W.D. Tex., 10/13/2021
  • Venue Allegations: Plaintiff alleges venue is proper in any U.S. judicial district because the defendant is a foreign entity not resident in the United States, pursuant to 28 U.S.C. § 1391(c)(3).
  • Core Dispute: Plaintiff alleges that Defendant’s smartphones and other devices supporting Voice over Wi-Fi (VoWi-Fi) infringe four patents related to internet and wireless network telephony.
  • Technical Context: The technology at issue is Voice over Wi-Fi (VoWi-Fi), which enables voice calls to be transmitted as data packets over wireless local area networks (WLANs), such as home or public Wi-Fi, rather than traditional cellular networks.
  • Key Procedural History: The complaint notes that the inventions disclosed in the patents-in-suit have been cited during the patent prosecution of applications by numerous leading telecommunications companies. No prior litigation, inter partes review proceedings, or licensing history is mentioned in the complaint.

Case Timeline

Date Event
2000-09-01 Earliest Priority Date for ’670, ’915, ’328, ’816 Patents
2007-03-06 U.S. Patent No. 7,187,670 Issues
2008-08-05 U.S. Patent No. 7,408,915 Issues
2013-12-17 U.S. Patent No. 8,611,328 Issues
2015-04-07 U.S. Patent No. 9,001,816 Issues
2021-10-13 Complaint Filed

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

U.S. Patent No. 7,187,670 - "Communications Terminal, a System and a Method for Internet/Network Telephony"

The Invention Explained

  • Problem Addressed: The patent’s background section identifies the high cost of traditional long-distance telephony and the inflexibility of early Voice over IP (VoIP) systems, which required specialized, proprietary equipment like base stations or gateways to connect a wireless terminal to the internet ('670 Patent, col. 1:12-23; col. 2:14-22).
  • The Patented Solution: The invention describes a portable, electronic communications terminal (e.g., a headset) that contains its own "protocol means" to independently handle standardized network protocols like TCP/IP. This terminal communicates wirelessly with a generic "connecting unit" (such as a computer or router) whose only role is to provide a connection to the internet. This architecture decouples the telephony logic from the network access point, allowing the terminal to function with any standard internet connection. ('670 Patent, Abstract; Fig. 1; col. 3:39-51).
  • Technical Importance: This approach aimed to increase user mobility and device interoperability by removing the dependency on specific, manufacturer-controlled base stations for making internet-based calls ('670 Patent, col. 2:49-62).

Key Claims at a Glance

  • The complaint asserts at least independent Claim 1 (Compl. ¶16).
  • Essential elements of Claim 1 include:
    • An electronic portable communications terminal
    • "audio means" for reproducing and recording sound
    • "converting means" for converting between analog sound signals and digital transmission/received data
    • "protocol means" for handling communication according to a standardized network protocol, including embedding and extracting data from a "first data packet format"
    • "wireless near field communications means" connected to the protocol means, which:
      • embeds transmission data into a "wireless second data format"
      • extracts received data from the "wireless second data format"
      • performs wireless communication with a "connecting unit" to establish a network connection
      • whereby the data exchanged with the connecting unit consists of packets in the "first data packet format" embedded in the "wireless second data format"
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 7,408,915 - "Communications Terminal, a System and a Method for Internet/Network Telephony"

The Invention Explained

  • Problem Addressed: As a continuation of the application leading to the ’670 Patent, this patent addresses the same technical problem: the cost and inflexibility of prior art telephony systems requiring specialized hardware for internet access ('915 Patent, col. 1:12-25; col. 2:25-30).
  • The Patented Solution: The invention describes a method for network telephony focused on the reception of data. The method involves receiving wireless data (e.g., an 802.11 frame) formatted according to a first network protocol, where that wireless data contains an embedded data packet (e.g., an IP packet) formatted according to a second, different network protocol. The method then calls for extracting the embedded data packet and generating sound from it. ('915 Patent, Abstract; col. 6:42-53).
  • Technical Importance: This method provides a framework for how a portable device can receive and process layered communication protocols to enable functionalities like VoIP over a generic wireless link ('915 Patent, col. 2:50-57).

Key Claims at a Glance

  • The complaint asserts at least independent Claim 29, a method claim (Compl. ¶44).
  • Essential steps of Claim 29 include:
    • receiving, via a near field network, wireless data that accords to a first network protocol, wherein the wireless data includes a data packet that accords to a second network protocol
    • extracting the data packet from the wireless data
    • generating a sound based on the data packet
  • The complaint notes that Plaintiff is only asserting method claims for the ’915 Patent (Compl. ¶67).

U.S. Patent No. 8,611,328 - "Communications Terminal, a System and a Method for Internet/Network Telephony"

  • Patent Identification: U.S. Patent No. 8,611,328, "Communications Terminal, a System and a Method for Internet/Network Telephony," issued December 17, 2013 (Compl. ¶68).
  • Technology Synopsis: This patent, from the same family as the ’670 and ’915 patents, claims a method for internet telephony. The method involves converting a sound signal into digital data, converting that digital data into network protocol packets (e.g., IP packets), embedding those packets into wireless data frames (e.g., 802.11 frames), and transmitting the wireless data.
  • Asserted Claims: At least independent Claim 8 (Compl. ¶71).
  • Accused Features: The complaint alleges infringement by the OnePlus 8 smartphone when making a VoWi-Fi call, specifically the process of converting a user's voice into digital data, encapsulating it into IP packets, and embedding those packets into 802.11 frames for transmission via its Wi-Fi chipset (Compl. ¶73-80).

U.S. Patent No. 9,001,816 - "Communications Terminal, a System and a Method for Internet/Network Telephony"

  • Patent Identification: U.S. Patent No. 9,001,816, "Communications Terminal, a System and a Method for Internet/Network Telephony," issued April 7, 2015 (Compl. ¶83).
  • Technology Synopsis: Also from the same patent family, this patent claims a method for receiving data for internet telephony. The method comprises receiving wireless data (formatted according to a first protocol like 802.11) that contains an embedded data packet (formatted according to a second protocol like IP), extracting the data packet, and generating sound from it.
  • Asserted Claims: At least independent Claim 10 (Compl. ¶86).
  • Accused Features: The complaint alleges infringement by the OnePlus 8 smartphone when receiving a VoWi-Fi call, specifically the process of receiving 802.11 frames, extracting the embedded IP voice packets, converting the digital voice data to an analog signal with a codec, and generating sound with a speaker (Compl. ¶88-94).

III. The Accused Instrumentality

Product Identification

  • The OnePlus 8 smartphone is identified as an exemplary accused product, along with other OnePlus products that support Voice over Wi-Fi (VoWi-Fi) or Wi-Fi calling (Compl. ¶15, ¶17).

Functionality and Market Context

  • The complaint focuses on the VoWi-Fi feature of the accused products, which allows a user to make and receive calls over the internet via a Wi-Fi connection (Compl. ¶19). A visual from a T-Mobile support page for the OnePlus 8 5G is provided to illustrate the feature. (Compl. p. 6). The accused technical functionality involves the interplay of the device's microphone and speaker, a codec for converting analog voice to digital data (and vice versa), a processor for handling IP packetization, and a Wi-Fi chipset for transmitting and receiving data in the IEEE 802.11 frame format to and from a Wi-Fi access point (Compl. ¶18, ¶23, ¶29, ¶32).
  • The complaint alleges that OnePlus is one of the leading manufacturers of smartphones in the United States and abroad (Compl. ¶3).

IV. Analysis of Infringement Allegations

’670 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
audio means reproducing sound...and to record sound... The OnePlus 8 device includes a speaker to reproduce sound and a microphone to record sound for VoWi-Fi calls. ¶18, ¶20-21 col. 8:5-13
converting means converting...transmission data...and...received data... The device includes a codec (coder/decoder) to convert analog voice signals from the microphone into digital transmission data, and to convert received digital data into analog signals for the speaker. ¶22-25 col. 8:14-28
protocol means...handling and controlling communication of said received and transmission data in accordance with a standardized network protocol, thereby embedding and extracting...in/from a data packet format... The device's processor splits, encapsulates, and extracts voice data into and from IP packets in accordance with the Internet Protocol. ¶26-29 col. 8:30-44
wireless near field communications means...receiving/sending said received and transmission data in said first data packet format from/to said protocol means... The device includes a Wi-Fi chipset that receives IP packets from the processor for transmission and sends received IP packets to the processor for processing. A diagram shows the data encapsulation flow from the network layer (IP) to the physical layer. ¶30-33, p. 18 col. 8:45-58
...the near field communications means embedding said transmission data...in a wireless second data format and to extract said received data...from said wireless second data format... The Wi-Fi chipset embeds the IP packets into IEEE 802.11 frames (PPDUs) for wireless transmission and extracts IP packets from received 802.11 frames. ¶32-33 col. 4:16-24
...the wireless near field communications means performing wireless near field communication...with a connecting unit...to establish a connection to a network... The Wi-Fi chipset transmits and receives the 802.11 frames to/from an 802.11 router/access point, which is connected to the internet. ¶36-37 col. 4:26-34
whereby the resulting data exchanged...consist of packets in said first data packet format embedded in said wireless second data format. The data exchanged between the phone's Wi-Fi chipset and the router consists of IEEE 802.11 frames (the "wireless second data format") which contain embedded IP packets (the "first data packet format"). A visual shows a phone communicating with a router connected to the internet. ¶36, p. 23 col. 4:26-34

Identified Points of Contention

  • Scope Questions: A central question may be whether the term "wireless near field communications means", described in a patent with a 2000 priority date that emphasizes Bluetooth, can be construed to read on a modern Wi-Fi chipset operating in a Wireless Local Area Network (WLAN). While the specification mentions IEEE 802.11, the repeated use of "near field" may become a point of contention regarding the intended scope of the invention.
  • Technical Questions: What evidence does the complaint provide that the accused product's architecture contains distinct "converting means", "protocol means", and "wireless... means" that operate in the sequential and modular fashion depicted in the patent's Figure 1? A defendant may argue that these functions are deeply integrated within a modern System-on-a-Chip (SoC) and do not map cleanly onto the claimed elements.

’915 Patent Infringement Allegations

Claim Element (from Independent Claim 29) Alleged Infringing Functionality Complaint Citation Patent Citation
receiving, via a near field network, wireless data that accords to a first network protocol... The OnePlus 8 device's Wi-Fi chipset receives PPDUs (Physical Layer Protocol Data Units) that accord to the IEEE 802.11 protocol via a Wi-Fi network. ¶90, ¶92 col. 8:60-63
...wherein the wireless data includes a data packet that accords to a second network protocol... The received IEEE 802.11 PPDUs include embedded IP packets, which correspond to the Internet Protocol. ¶90 col. 8:30-35
extracting the data packet from the wireless data... The device's Wi-Fi chipset and/or processor remove the Physical and MAC layer headers from the received PPDUs to extract the embedded IP packet containing voice data. ¶92 col. 10:3-6
and generating a sound based on the data packet. The extracted IP packet is processed by a codec to convert the digital voice data into an analog signal, which is then fed to the device's speaker to generate sound. ¶94 col. 8:5-28

Identified Points of Contention

  • Scope Questions: As with the ’670 Patent, the interpretation of "near field network" will be critical. Does a standard home or public Wi-Fi network qualify as a "near field network" as the term would have been understood in the context of the patent's 2000 priority date?
  • Technical Questions: The claim recites discrete method steps. A key evidentiary question will be whether the accused device's software and hardware perform the "extracting" and "generating" steps in a manner that corresponds to the claim language, or if the process is accomplished in a technically distinct way not contemplated by the patent.

V. Key Claim Terms for Construction

  • The Term: "wireless near field communications means" (’670 Patent, Claim 1) / "near field network" (’915 Patent, Claim 29)
  • Context and Importance: These related terms appear central to the infringement analysis for all asserted patents. Their construction will likely determine whether modern Wi-Fi technology falls within the scope of the claims. Practitioners may focus on whether "near field," in the context of a 2000 priority date, implies a shorter-range Personal Area Network (PAN) technology like Bluetooth, as opposed to a longer-range Wireless Local Area Network (WLAN) like Wi-Fi.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specifications explicitly state that the communications means may use protocols including "Bluetooth, DECT, IEEE802.11 or other wireless protocols" (’670 Patent, col. 8:60-63; ’915 Patent, col. 8:60-63). This suggests the inventors contemplated protocols beyond short-range PANs.
    • Evidence for a Narrower Interpretation: Both patents repeatedly use Bluetooth as the preferred and primary example ('670 Patent, col. 4:5-6; ’915 Patent, col. 4:5-6). A defendant might argue that the consistent emphasis on Bluetooth, a technology defined by its short-range operation, limits the scope of the broader term "near field."

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement of infringement of the '670 patent based on Defendant allegedly advising, directing, and distributing instructions (e.g., user manuals) that guide customers to use the accused VoWi-Fi features in an infringing manner (Compl. ¶98, ¶100). Contributory infringement is also alleged, based on the assertion that the accused products contain special features for VoWi-Fi that are not staple articles of commerce and have no substantial non-infringing uses (Compl. ¶115-117).
  • Willful Infringement: Willfulness is alleged based on knowledge of the patents-in-suit acquired at least as of the filing of the complaint (Compl. ¶38, ¶119). The complaint further alleges willful blindness, asserting that Defendant has a "policy or practice of not reviewing the patents of others" and was objectively reckless as to the risk of infringement (Compl. ¶121-122).

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

  • A core issue will be one of definitional scope: can the term "near field", rooted in a 2000-priority-date patent that frequently uses Bluetooth (a Personal Area Network technology) as its prime example, be construed to cover the accused functionality operating over modern Wi-Fi (a Wireless Local Area Network technology)? The patents' explicit mention of the IEEE 802.11 standard will be a key piece of intrinsic evidence in this dispute.
  • A second central question will be one of technological mapping: does the highly integrated System-on-a-Chip (SoC) architecture of a modern smartphone map onto the distinct "audio means", "converting means", "protocol means", and "wireless... means" elements as claimed in the patents, or has the technology evolved in a way that the accused products operate in a manner fundamentally different from the modular system described in the specification?