DCT

7:25-cv-00048

Ozmo Licensing LLC v. Sony Group Corp

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 7:25-cv-00048, W.D. Tex., 05/02/2025
  • Venue Allegations: Plaintiff alleges venue is proper in the Western District of Texas because Defendant does business in the district, including through authorized retailers such as Best Buy locations in Midland and Odessa, and because Defendant is a foreign entity.
  • Core Dispute: Plaintiff alleges that Defendant’s mobile phones, tablets, and televisions supporting the Wi-Fi Direct feature infringe seven patents related to technology for integrating short-range wireless personal area networks (WPANs) with wireless local area networks (WLANs).
  • Technical Context: The patented technology addresses methods for a single wireless device to maintain simultaneous connections to a standard infrastructure Wi-Fi network and a separate, direct peer-to-peer network, a capability standardized and marketed as Wi-Fi Direct.
  • Key Procedural History: The complaint references a claim construction order from a prior litigation, Ozmo Licensing LLC v. TCL Electronics Holdings Ltd et al., which construed the key term "an overlay protocol." The complaint also alleges that Plaintiff attempted to license the patent portfolio to Defendant starting in July 2020.

Case Timeline

Date Event
2005-03-14 Earliest Priority Date for all Patents-in-Suit
2013-12-03 U.S. Patent No. 8,599,814 Issues
2016-02-16 U.S. Patent No. 9,264,991 Issues
2020-07-01 Approximate date of first licensing outreach to Sony
2020-12-22 U.S. Patent No. 10,873,906 Issues
2021-05-18 U.S. Patent No. 11,012,934 Issues
2021-09-14 U.S. Patent No. 11,122,504 Issues
2022-02-15 U.S. Patent No. 11,252,659 Issues
2023-04-11 U.S. Patent No. 11,627,525 Issues
2023-07-28 Accused Product (Xperia 1 V) Official Release Date
2023-11-01 Approximate date of last licensing exchange with Sony
2025-05-02 Complaint Filing Date

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

U.S. Patent No. 8,599,814 - "APPARATUS AND METHOD FOR INTEGRATING SHORT-RANGE WIRELESS PERSONAL AREA NETWORKS FOR A WIRELESS LOCAL AREA NETWORK INFRASTRUCTURE"

  • Patent Identification: U.S. Patent No. 8,599,814, titled "APPARATUS AND METHOD FOR INTEGRATING SHORT-RANGE WIRELESS PERSONAL AREA NETWORKS FOR A WIRELESS LOCAL AREA NETWORK INFRASTRUCTURE," issued December 3, 2013 (’814 Patent).

The Invention Explained

  • Problem Addressed: The patent addresses the technical problems arising from the co-existence of short-range, low-power personal area networks (WPANs, e.g., Bluetooth) and longer-range, higher-power local area networks (WLANs, e.g., Wi-Fi), which often operate in the same frequency bands and cause mutual interference (Compl. ¶¶ 44, 49; ’814 Patent, col. 2:35-44). Prior attempts to integrate them by simply using WLAN protocols on WPAN devices were inefficient, leading to excessive power drain and undesirable latency (Compl. ¶ 46; ’814 Patent, col. 2:45-62).
  • The Patented Solution: The invention proposes a "dual-net" hub device that can simultaneously be part of both a WLAN and a WPAN (Compl. ¶ 47; ’814 Patent, col. 5:51-65). It achieves this using a novel "overlay protocol" for the WPAN that is based on, and "partially compatible with," the underlying WLAN protocol but is not identical to it. This approach allows the hub to coordinate access to the shared wireless medium, thereby minimizing interference and enabling power conservation for battery-operated WPAN devices (Compl. ¶ 48; ’814 Patent, col. 10:1-7).
  • Technical Importance: This technology provided a framework for integrating low-power peripheral devices with the broader internet-connected WLAN infrastructure, a foundational concept for the subsequent Wi-Fi Direct standard (Compl. ¶¶ 33-34, 55).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶ 59).
  • The essential elements of claim 1 include:
    • A network-enabled hub with an interface to a wireless radio circuit.
    • Logic for processing received data and generating data for transmission.
    • Logic for maintaining, at times simultaneously, a first wireless network connection (e.g., WLAN) using a first protocol and a second wireless network connection (e.g., WPAN) using a second protocol.
    • The second protocol is an "overlay protocol" with respect to the first, meaning communications using it are "partially consistent" with the first protocol.
    • Communications using the second protocol impinge on at least some antennae used for the first.
    • Data forwarding logic that forwards data between a node on the first network and a node on the second network.

U.S. Patent No. 9,264,991 - "APPARATUS AND METHOD FOR INTEGRATING SHORT-RANGE WIRELESS PERSONAL AREA NETWORKS FOR A WIRELESS LOCAL AREA NETWORK INFRASTRUCTURE"

  • Patent Identification: U.S. Patent No. 9,264,991, titled "APPARATUS AND METHOD FOR INTEGRATING SHORT-RANGE WIRELESS PERSONAL AREA NETWORKS FOR A WIRELESS LOCAL AREA NETWORK INFRASTRUCTURE," issued February 16, 2016 (’991 Patent).

The Invention Explained

  • Problem Addressed: The ’991 patent shares a common specification with the ’814 patent and addresses the same technical problems of interference, power consumption, and latency when integrating WPAN and WLAN communications (Compl. ¶ 45, fn. 3).
  • The Patented Solution: The patented solution is functionally identical to that of the ’814 patent, centered on a dual-net device using an overlay protocol (Compl. ¶¶ 47-48). The claims of the ’991 patent are structured differently, claiming "a processor configured to" perform the required functions, rather than the "logic for" performing those functions as claimed in the ’814 patent (Compl. ¶¶ 59, 96).
  • Technical Importance: As with the ’814 Patent, this technology contributed to the development of integrated wireless communication standards like Wi-Fi Direct (Compl. ¶¶ 33-34, 55).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶ 96).
  • The essential elements of claim 1 include:
    • A network-enabled hub with an interface to a wireless radio circuit.
    • A processor configured to perform several functions, including:
      • Processing received data and generating data for transmission.
      • Maintaining, at times simultaneously, a first network connection (first protocol) and a second network connection (second protocol).
    • The second protocol is an "overlay protocol" with respect to the first, with communications being "partially consistent."
    • Communications using the second protocol impinge on at least some antennae used for the first.
    • Implementing data forwarding logic to move data between nodes on the two different networks.

U.S. Patent No. 10,873,906

  • This patent (’906 Patent), issued December 22, 2020, addresses the integration of WPAN and WLAN communications with a focus on power management (Compl. ¶¶ 125, 126). The technology allows two wireless devices to agree upon an "inactivity time" to partially disable the wireless connection, thereby reducing power consumption (Compl. ¶ 126, claim 4.h).
    • Asserted Claims: Independent claim 4 (Compl. ¶ 126).
    • Accused Features: The Wi-Fi Direct power-saving and scheduling features in Sony's Xperia phones and Bravia TVs are accused of infringement (Compl. ¶¶ 149-151, 159-163).

U.S. Patent No. 11,012,934

  • Issued May 18, 2021, this patent (’934 Patent) claims a wireless device for coordinating a WPAN that can also communicate on a WLAN (Compl. ¶¶ 172, 173). A key aspect is the processor's configuration to "participate in a coordination of usage of the wireless medium," ensuring that the simultaneous WPAN and WLAN communications occur without interference (Compl. ¶ 173, claims 1.c.4, 1.d.2).
    • Asserted Claims: Independent claim 1 (Compl. ¶ 173).
    • Accused Features: The Wi-Fi Direct protocol's use of coordination functions (e.g., carrier sense multiple access, or CSMA/CA) and coexistence parameters in Sony's Xperia phones and Bravia TVs are accused of infringement (Compl. ¶¶ 191, 197-201).

U.S. Patent No. 11,122,504

  • This patent (’504 Patent), issued September 14, 2021, is a continuation of the ’934 patent family and claims similar technology for connecting to a WPAN while managing WLAN coexistence (Compl. ¶¶ 216, 217). It differs slightly in its claim language, for instance, by claiming a processor configured to "determine...that a second wireless device corresponds to a WPAN protocol," which the complaint alleges is equivalent to the "discover" step in the parent patent (Compl. ¶¶ 217, 221).
    • Asserted Claims: Independent claim 4 (Compl. ¶ 217).
    • Accused Features: The same Wi-Fi Direct coordination and power-saving features in Sony's Xperia phones and Bravia TVs are accused of infringing the ’504 patent (Compl. ¶ 230).

U.S. Patent No. 11,252,659

  • Issued February 15, 2022, this patent (’659 Patent) claims a method for facilitating data communications using both WLAN and WPAN protocols (Compl. ¶¶ 234, 235). The claimed method involves maintaining two separate associations simultaneously and coordinating data exchanges, where the WPAN protocol is partially compliant with the WLAN protocol and uses a modified WLAN protocol frame (Compl. ¶ 235, claims 1.a, 1.b.1, 1.b.2, 1.c).
    • Asserted Claims: Independent claim 1 (Compl. ¶ 235).
    • Accused Features: The operation of the Wi-Fi Direct feature in Sony's Xperia mobile phones and tablets is accused of practicing the claimed method (Compl. ¶ 234).

U.S. Patent No. 11,627,525

  • This patent (’525 Patent), issued April 11, 2023, is another continuation in the family, claiming a network-enabled hub (Compl. ¶¶ 262, 263). It is similar to the ’814 patent but phrases the relationship between the two protocols as the second protocol having "aspects in common with the first network protocol" in a way that reduces interference so the networks can co-exist (Compl. ¶ 263, claims 1.d.3, 1.d.4).
    • Asserted Claims: Independent claim 1 (Compl. ¶ 263).
    • Accused Features: The complaint alleges that the Wi-Fi Direct protocol in Sony's mobile devices uses elements of the underlying IEEE 802.11x standard (such as frame formats and medium access control) to reduce interference, thereby infringing the ’525 patent (Compl. ¶¶ 276-280).

III. The Accused Instrumentality

  • Product Identification: The accused instrumentalities are Sony's wireless devices that support the Wi-Fi Direct feature. These are broadly categorized as "Hub Accused Products" (e.g., Xperia mobile phones and tablets) and "Peripheral Accused Products" (e.g., Bravia TVs) (Compl. ¶¶ 58, 125). The complaint specifically analyzes the Sony Xperia 1 V phone and various Bravia XR TV models (Compl. ¶¶ 58, 127).
  • Functionality and Market Context: The core accused functionality is Wi-Fi Direct, which enables two modes of operation concurrently. First, a device can connect to a traditional WLAN infrastructure network via an access point (AP) for internet connectivity (Compl. ¶ 60). Second, the same device can simultaneously create or join a direct peer-to-peer (P2P) network with another compatible device, bypassing the AP (Compl. ¶ 62). This dual capability is used for features like screen mirroring from a phone to a TV or streaming content (referred to as "throwing") between devices (Compl. ¶¶ 60, 127). The complaint provides a technical diagram from the Wi-Fi Direct specification illustrating this "P2P Concurrent device" architecture (Compl. p. 29).

IV. Analysis of Infringement Allegations

’814 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
logic for... maintaining at least a first wireless network connection... and a second wireless network connection... simultaneously with each other in a common wireless space The accused Xperia phone connects to a WLAN BSS via an access point and concurrently connects to another device (e.g., a TV) in a Wi-Fi Direct P2P network. ¶70 col. 5:51-65
wherein the second wireless network protocol is an overlay protocol with respect to the first wireless network protocol The Wi-Fi Direct protocol (second protocol) is based on the IEEE 802.11 standard, reusing elements like frame formats from the infrastructure-mode protocol (first protocol), thereby meeting the definition of an overlay protocol. ¶¶72, 83 col. 10:1-5
in that communications using the second wireless network protocol are partially consistent with the first wireless network protocol Communications using Wi-Fi Direct and infrastructure-mode Wi-Fi both use Management frames with the same mandatory fields defined by the IEEE 802.11x standard. However, they are not entirely consistent, as a Wi-Fi Direct Group Owner ("AP-like" entity) can enter a power-save mode while a traditional AP cannot. ¶¶77, 84, 86 col. 10:4-5
at least some of the communications using the second wireless network protocol impinge on at least some antennae used for the first wireless network The same Wi-Fi module and antenna system in the Xperia phone are used for both the infrastructure-mode WLAN connection and the Wi-Fi Direct P2P connection. The complaint includes a teardown image identifying the shared Wi-Fi antenna (Compl. p. 64). ¶¶87-88 col. 10:13-17
data forwarding logic... that forwards data between an originating node and a destination node The Xperia phone receives data from the internet via the WLAN connection (originating AP node) and forwards it to a TV via the Wi-Fi Direct connection (destination TV node) during screen mirroring. This is managed by processors using IPv4/IPv6 addressing. ¶¶90-91 col. 11:59-12:12
  • Identified Points of Contention:
    • Scope Questions: The central dispute may concern the term "overlay protocol." The complaint relies on a construction from prior litigation (Compl. ¶ 73). A key question will be whether Sony's implementation of the industry-standard Wi-Fi Direct protocol meets all elements of that specific construction.
    • Technical Questions: A potential point of contention is whether the accused devices' concurrent operation is truly "simultaneous" as required by the claim, or if it constitutes a form of time-division multiplexing that falls outside the claim's scope. The complaint's evidence of partial, but not entire, protocol consistency (Compl. ¶¶ 84, 86) may also be challenged.

’991 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a processor configured to: ... process data received via the wireless radio circuit The Snapdragon processor and/or the ARM Cortex processor within the Wi-Fi module chipset (e.g., CYW43022) in the Xperia phone perform baseband operations like demodulation (e.g., 256-QAM) on received Wi-Fi data. ¶¶103-104 col. 6:4-6
a processor configured to: ... generate data to be transmitted by the wireless radio circuit The same processors modulate data for transmission (e.g., using 256-QAM) to be sent over the wireless radio circuit. ¶¶105-106 col. 6:7-8
a processor configured to: ... maintaining at least a first network connection... and a second network connection... simultaneously with each other The Xperia processor executes the Wi-Fi driver and firmware logic of the Wi-Fi module to facilitate concurrent connections to the WLAN and the Wi-Fi Direct P2P network. ¶¶109-112 col. 6:11-16
wherein the second network protocol is an overlay protocol... The Xperia processor executes software that implements the Wi-Fi Direct protocol, which is alleged to be an overlay protocol relative to the infrastructure-mode WLAN protocol for the same reasons as asserted against the ’814 patent. ¶¶113-115 col. 6:17-25
  • Identified Points of Contention:
    • Scope Questions: Similar to the ’814 patent, the meaning of "overlay protocol" will be critical. The shift in claim language from "logic for" to "a processor configured to" is unlikely to create a substantially different scope but may introduce arguments about whether specific processing tasks are performed by the claimed "processor" versus other dedicated hardware.
    • Technical Questions: A defendant may question whether the general-purpose Snapdragon processor and the Wi-Fi module's embedded processor are both properly considered "the processor" configured to perform all the claimed steps, or if the functions are distributed in a way that avoids infringement of the single claimed processor.

V. Key Claim Terms for Construction

  • The Term: "overlay protocol" (asserted in ’814 Patent, Claim 1; ’991 Patent, Claim 1)

    • Context and Importance: This term is central to the patented invention and the infringement case. Its definition determines whether a standardized protocol like Wi-Fi Direct, which reuses many elements of standard Wi-Fi, falls within the claims. Practitioners may focus on this term because the complaint explicitly cites a construction from a prior case in the same court, making its application to the current facts a primary battleground (Compl. ¶ 73).
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification, incorporating a parent application by reference, describes an overlay protocol as one that "has elements that are reuses of elements of a [primary wireless network] protocol" (Compl. ¶ 38). This suggests a broad definition based on reuse of protocol components.
      • Evidence for a Narrower Interpretation: The specification states the overlay protocol is "partially compatible with the WLAN protocol, but not entirely" (’814 Patent, col. 10:4-5). A defendant might argue this requires a specific degree of incompatibility, or that the term should be limited to protocols that achieve the specific power-saving and coordination benefits described in the patent's embodiments.

  • The Term: "maintaining... simultaneously" (asserted in ’814 Patent, Claim 1; ’991 Patent, Claim 1)

    • Context and Importance: The requirement of simultaneous connections is critical to distinguishing the invention from prior art systems that could only switch between networks. The infringement analysis depends on whether the accused Wi-Fi Direct devices, which may share a single radio, are technically operating "simultaneously."
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The patent's abstract describes connecting to a WPAN "without losing connectivity (such as association and synchronization) to the WLAN," which could be interpreted to mean any functional state where both connections are logically active, even if not physically transmitting at the same microsecond (’906 Patent, Abstract).
      • Evidence for a Narrower Interpretation: A defendant may argue that a single radio physically cannot transmit or receive on two different channels at the exact same instant and that the "concurrent" operation described in the Wi-Fi Direct standard (Compl. p. 29) is a form of rapid time-sharing, not true simultaneity as required by the plain meaning of the term.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges Sony induces infringement by providing instructions, user manuals, and advertising that encourage and direct customers to use the accused Wi-Fi Direct functionality for screen mirroring and content streaming (Compl. ¶¶ 288-289). It also alleges contributory infringement, asserting that the Wi-Fi Direct hardware and software are not staple articles of commerce and have no substantial non-infringing use (Compl. ¶ 290).
  • Willful Infringement: Willfulness is alleged based on pre-suit knowledge. The complaint states that Plaintiff made attempts to license the patents to Sony starting around July 2020, with the last exchange occurring around November 2023, thereby allegedly making Sony aware of the patent portfolio long before the suit was filed (Compl. ¶ 289).

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

  • A core issue will be one of definitional scope and judicial precedent: Can the term "overlay protocol," as previously construed by the court in a separate case, be applied to Sony’s implementation of the industry-standard Wi-Fi Direct protocol, or will Sony successfully distinguish the specific operation of its devices from the claim language and prior construction?
  • A key technical question will be one of operational concurrency: Does the accused devices' method of managing two wireless links with a shared radio system meet the claim requirement of "maintaining" connections "simultaneously," or does it represent a form of time-division multiplexing that falls outside the scope of the claims?
  • A central question for damages will be willfulness and pre-suit knowledge: What was the substance of the alleged licensing discussions between 2020 and 2023, and does the evidence show that Sony acted with objective recklessness toward the risk of infringing a known patent portfolio?