Intellectual Ventures I LLC v. Zebra Tech Corp

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Intellectual Ventures I LLC and Intellectual Ventures II LLC (Delaware)
  • Defendant: Zebra Technologies Corporation (Delaware)
  • Plaintiff’s Counsel: Sorey & Hoover, LLP; Prince Lobel Tye LLP
• Case Identification: 6:23-cv-00292, W.D. Tex., 04/20/2023
• Venue Allegations: Plaintiff alleges venue is proper because Defendant maintains regular and established places of business within the Western District of Texas.
• Core Dispute: Plaintiff alleges that Defendant’s tablets and other mobile devices infringe patents related to methods for improving wireless communication reliability in MIMO-OFDM systems and for automatically calibrating timing in high-speed memory circuits.
• Technical Context: The technologies at issue are foundational to modern high-performance electronics, concerning the operation of Wi-Fi (MIMO-OFDM) and high-speed DDR memory interfaces.
• Key Procedural History: The complaint notes that the '835 patent was conceived at Transmeta Corporation, which was later acquired by Novafor Inc., with Intellectual Ventures acquiring much of the patent portfolio thereafter. The complaint also references a 2006 lawsuit between Transmeta and Intel, which settled in 2007.

Case Timeline

Date	Event
2000-11-07	Transmeta Corporation initial public offering (Compl. ¶19)
2003-11-17	Earliest Priority Date for ’835 Patent ('835 Patent, (22))
2004-05-20	Earliest Priority Date for ’439 Patent ('439 Patent, (60))
2006-10-01	Transmeta sues Intel Corporation for patent infringement (Compl. ¶21)
2007-10-01	Transmeta and Intel settle litigation (Compl. ¶21)
2009-01-01	Transmeta acquired by Novafor Inc. (Compl. ¶22)
2009-11-24	U.S. Patent No. 7,623,439 issues (Compl. ¶24)
2010-01-12	U.S. Patent No. 7,646,835 issues (Compl. ¶28)
2023-04-20	Complaint Filed (Compl. p. 1)

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

U.S. Patent No. 7,623,439 - CYCLIC DIVERSITY SYSTEMS AND METHODS

Issued November 24, 2009

The Invention Explained

• Problem Addressed: In wireless systems using multiple antennas (MIMO) to transmit data (OFDM), signals can interfere with each other. Prior methods used time delays to separate the signals, but this could consume the "guard interval" designed to prevent other types of interference. A different approach, using small "cyclic delays," avoided this but created a new problem: the receiver could not distinguish this intentional delay from environmental effects, leading to incorrect signal processing and "unintentional beamforming" that degraded performance (Compl. ¶¶ 13-15; '439 Patent, col. 3:6-23).
• The Patented Solution: The patent proposes using a "cyclic advancement" instead of a delay. This involves taking a portion of the data samples from an OFDM symbol and shifting them forward into the preceding guard interval. This creates a modified signal that is transmitted substantially simultaneously with the original, non-shifted signal from another antenna. This method aims to decorrelate the two signals to prevent interference, without being misinterpreted by the receiver as a delay caused by the environment ('439 Patent, Abstract; col. 4:24-41).
• Technical Importance: This technique was designed to improve packet reception performance and reduce error rates in MIMO-OFDM systems, which form the basis for modern Wi-Fi standards like 802.11n (Compl. ¶16).

Key Claims at a Glance

• The complaint asserts at least independent claim 1 (Compl. ¶38).
• The essential elements of independent claim 1 include:
  • A method for transmitting OFDM signals.
  • Generating a first OFDM packet with a guard interval portion and a symbol data portion.
  • "Cyclically advancing" the packet by shifting samples from the symbol data portion into the guard interval portion to create a shifted version.
  • Substantially simultaneously transmitting both the original and the shifted versions of the packet.
• The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 7,646,835 - METHOD AND SYSTEM FOR AUTOMATICALLY CALIBRATING INTRA-CYCLE TIMING RELATIONSHIPS FOR SAMPLING SIGNALS FOR AN INTEGRATED CIRCUIT DEVICE

Issued January 12, 2010

The Invention Explained

• Problem Addressed: High-speed integrated circuits, particularly DDR memory, require extremely precise timing relationships between command signals, data signals, and the sampling signals (or strobes) used to read the data. Minor variations in manufacturing or operating conditions (e.g., temperature, voltage) can disrupt this timing, causing data errors and system instability ('835 Patent, col. 1:13-31; Compl. ¶54).
• The Patented Solution: The patent describes a method and system to automatically calibrate these critical timing relationships. The system systematically alters the phase shifts of the command, data, and sampling signals to search for and identify a "valid operation range" for the device, which includes an optimal operating point. This allows the system to find the best timing settings automatically, rather than relying on fixed, pre-set values that might not work under all conditions ('835 Patent, Abstract; col. 4:9-24).
• Technical Importance: By automatically finding the optimal timing, the invention provides "extra margin" to the system, increasing the reliability and maximum performance of computer systems using high-speed memory (Compl. ¶55).

Key Claims at a Glance

• The complaint asserts at least independent claim 1 (Compl. ¶58).
• The essential elements of independent claim 1 include:
  • A method for automatically calibrating intra-cycle timing relationships for an integrated circuit device.
  • Generating command signals to access the component.
  • Accessing data signals to convey data for the component.
  • Accessing sampling signals to control sampling of the data signals.
  • Systematically altering a phase shift of the command signals, a phase shift of the data signals, and a phase shift of the sampling signals to determine a valid operation range.
• The complaint does not explicitly reserve the right to assert dependent claims.

III. The Accused Instrumentality

Product Identification

• The complaint names Defendant’s "electronic and mobile devices," specifically identifying the ET40-HC/ET45-HC family of tablets as an exemplary accused product for both asserted patents (Compl. ¶¶ 17, 23, 38, 58).

Functionality and Market Context

• The accused functionality for the '439 Patent infringement allegation is tied to the tablets' support for IEEE 802.11n, 802.11ac, and 802.11ax wireless standards, which allegedly require a "cyclic diversity shift" feature when transmitting multiple spatial streams (MIMO) (Compl. ¶38). The complaint points to the tablets' use of a Qualcomm Snapdragon SM6375 CPU and a Qualcomm FastConnect 6200 wireless system as implementing this functionality (Compl. ¶¶ 40, p. 11-12).
• The accused functionality for the '835 Patent infringement allegation relates to the tablets' use of LPDDR4, LPDDR4X, or LPDDR5 memory, which must follow JEDEC standards. The complaint alleges these standards mandate automatic calibration procedures for command, data, and sampling signals during device initialization (Compl. ¶¶ 58-59). The complaint provides a visual from the JEDEC LPDDR5 standard describing required I/O signal training procedures (Compl. ¶¶ 37, p. 37).

IV. Analysis of Infringement Allegations

7,623,439 Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
A method for transmitting orthogonal frequency division multiplexing (OFDM) signals comprising: generating a first OFDM packet for transmission including a guard interval portion and a symbol data portion each comprised of a plurality of samples;	The 802.11 transmitter in the accused products creates an OFDM packet (e.g., an HT-SIG packet) that includes a symbol data portion and a guard interval portion. A visual from the IEEE 802.11 standard illustrates the format of such packets (Compl. p. 16, Fig. 20-1).	¶41	col. 9:32-37
cyclically advancing the first OFDM packet by shifting the samples in a first direction an amount less than a sample duration of the guard interval portion to generate a shifted version of the first OFDM packet for transmission in which at least a non-zero number of the samples from the symbol data portion of the first OFDM packet are shifted into the guard interval portion of the shifted version and a same non-zero number of samples from the guard interval portion of the first OFDM packet are shifted out of the guard interval portion of the shifted version;	The accused products allegedly implement the IEEE 802.11 standard's requirement for a cyclic shift (e.g., -50 ns to -200 ns), which the complaint characterizes as a "cyclic advance." This shift is less than the guard interval duration of 0.8 µs. A visual from the standard shows a table of required cyclic shift values (Compl. p. 23, Table 20-9).	¶42	col. 9:38-50
and substantially simultaneously transmitting the first OFDM packet and the shifted version of the OFDM packet.	The accused products, operating in MIMO mode, use multiple transmit chains that are allegedly aligned and synchronized in the time domain to transmit the original and shifted signals simultaneously. A transmitter block diagram from the IEEE standard is provided as evidence (Compl. p. 30, Fig. 20-2).	¶44	col. 9:51-53

• Identified Points of Contention:
  • Scope Questions: A central question will be whether the term "cyclically advancing" in the patent is synonymous with the "cyclic shift" (which includes negative values representing an advance) defined in the IEEE 802.11 standard. The defense may argue for a narrower construction of the patent term that does not read on the standard's implementation.
  • Technical Questions: The infringement theory relies heavily on the accused products' compliance with the IEEE 802.11 standard. A key question for the court will be whether Plaintiff must provide direct evidence of the accused products' actual operation, or if demonstrating that the standard mandates the infringing functionality is sufficient to meet the burden of proof.

7,646,835 Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
A method for automatically calibrating intra-cycle timing relationships between command signals, data signals, and sampling signals for an integrated circuit device, the method comprising: generating command signals to access an integrated circuit component;	The accused products allegedly use Command/Address (CA) signals to access the LPDDR memory, as specified by the JEDEC LPDDR5 standard. A visual from the standard shows a table defining the CA signals (Compl. p. 40, Table 1).	¶62	col. 7:5-7
accessing data signals to convey data for the integrated circuit component;	The accused products allegedly use a bi-directional data bus (DQ) to convey data for the LPDDR memory component, as specified by the JEDEC standard.	¶63	col. 7:8-10
accessing sampling signals to control sampling of the data signals;	The accused products allegedly use data clock signals (WCK) to control the sampling of the data signals, as specified by the JEDEC standard, and utilize a "WCK2CK Leveling" procedure. A visual from the standard illustrates this leveling procedure (Compl. p. 42, Fig. 4.2.5.2).	¶64	col. 7:11-12
and systematically altering a phase shift of the command signals, a phase shift of the data signals, and a phase shift of the sampling signals to determine a valid operation range of the integrated circuit device, wherein the valid operation range includes an optimal operation point for the integrated circuit device.	The JEDEC standard allegedly requires several "training" procedures during initialization, including Command Bus training (altering CA signal phase), WCK-DQ training (altering DQ signal phase), and WCK2CK Leveling (altering WCK signal phase), to establish critical timing relationships. The complaint alleges these mandatory training procedures meet this limitation.	¶¶ 65-68	col. 7:13-19

• Identified Points of Contention:
  • Scope Questions: The dispute may focus on whether the JEDEC standard's initialization and "training" procedures constitute "systematically altering a phase shift... to determine a valid operation range" as claimed. The defense could argue the patent requires a broader, ongoing search for an optimal range during operation, whereas the standard describes a one-time calibration at power-up.
  • Technical Questions: A factual question will be how the accused products' Qualcomm processors and LPDDR memory controllers actually implement the JEDEC training sequences. The court will need to determine if the functionality mandated by the standard is technically equivalent to the specific method of searching for and finding a valid operational window as described in the '835 patent's specification.

V. Key Claim Terms for Construction

• Term ('439 Patent): "cyclically advancing"

  • Context and Importance: This term is the core of the asserted invention in the '439 patent, which distinguishes the claimed method from prior art "cyclic delay" techniques. The infringement case hinges on this term being construed to cover the negative "cyclic shift" values specified in the IEEE 802.11 standard.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes the process as shifting samples "in a first direction" where a "non-zero number of the samples from the symbol data portion... are shifted into the guard interval portion" ('439 Patent, col. 9:42-47). This functional description could be argued to encompass any shift that moves data into the guard interval, including the negative time shifts in the standard.
    • Evidence for a Narrower Interpretation: The patent repeatedly emphasizes "advance" in contrast to "delay." The defense might argue that the specific embodiments or the prosecution history (not provided) limit the term to a specific technical implementation that is distinct from the mechanism in the IEEE standard. The abstract describes it as "cyclically advance, or perform the periodic equivalent of the same" ('439 Patent, Abstract), which could be a point of dispute.

• Term ('835 Patent): "systematically altering ... to determine a valid operation range"

  • Context and Importance: This phrase captures the essence of the claimed automated calibration process. The infringement case depends on construing the mandatory "training" procedures in the JEDEC LPDDR standard as meeting this limitation.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent describes the process in general terms as a "search for and find the valid region of operation" ('835 Patent, col. 4:9-12) and notes that it can be done with coarse or fine steps ('835 Patent, col. 5:60-6:15). Plaintiff may argue that any methodical, step-by-step adjustment of phase to achieve proper timing, like the JEDEC training, falls within this broad description.
    • Evidence for a Narrower Interpretation: The specification discusses exploring a "configuration space" to find an operable region "even in those cases where no stable initial condition is known" ('835 Patent, col. 4:1-4). The defense may argue this implies a more extensive search algorithm than the more deterministic, targeted calibration steps defined in the JEDEC standard for device initialization.

VI. Other Allegations

• Indirect Infringement: The complaint alleges inducement of infringement for both patents. The theory is that Defendant requires the use of Wi-Fi and memory chipsets that must be compliant with the IEEE and JEDEC standards, respectively, and that Defendant advertises and promotes this standards compliance to customers, thereby encouraging the infringing use (Compl. ¶¶ 46, 70).
• Willful Infringement: The complaint alleges that Defendant knew or should have known of the patents but was "willfully blind to [their] existence." It further alleges knowledge will be established, at a minimum, from the service of the complaint, making subsequent infringement willful (Compl. ¶¶ 48-49, 72-73).

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

• A primary issue will be one of standards interpretation: For both patents, the case relies heavily on allegations that compliance with an industry standard (IEEE 802.11 for the '439 patent, JEDEC LPDDR for the '835 patent) amounts to infringement. A key question for the court will be whether the specific requirements of those standards map directly onto the patent claim limitations as a matter of law and fact.
• A second issue will be one of definitional scope: The outcome for the '439 patent will likely turn on the construction of "cyclically advancing." The court must decide if this term, intended to distinguish from prior art "delays," can be construed to read on the "cyclic shift" mechanism for MIMO transmissions as defined in the IEEE 802.11 standard.
• A third issue will be one of functional equivalence: For the '835 patent, the court must determine if the JEDEC standard's device "training" procedures—which are primarily for initialization—perform the same function as the claimed method of "systematically altering" phase shifts to "determine a valid operation range," which the patent specification suggests is a more comprehensive search to find an optimal operating window.