DCT

7:25-cv-00363

CommWorks Solutions LLC v. STMicroelectronics Inc

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 7:25-cv-00363, W.D. Tex., 08/25/2025
  • Venue Allegations: Plaintiff alleges venue is proper in the Western District of Texas because Defendant maintains an established place of business in Austin, Texas, has committed acts of infringement in the district, and has previously not contested venue in patent infringement actions in the district.
  • Core Dispute: Plaintiff alleges that Defendant’s Systems-on-Chips (SoCs) and related wireless devices, which support industry standards like Wi-Fi Protected Setup (WPS) and Wi-Fi Multimedia (WMM), infringe five patents related to simplifying wireless network access and managing priority network traffic.
  • Technical Context: The technologies at issue address two common challenges in wireless networking: simplifying the process for connecting new devices to a secure network and ensuring that time-sensitive data (like video or voice) receives priority over less critical data.
  • Key Procedural History: The complaint does not reference any prior litigation involving the asserted patents, nor does it mention any IPR proceedings or licensing history.

Case Timeline

Date Event
1999-12-17 Earliest Priority Date for ’465 and RE44,904 Patents
2002-06-11 ’465 Patent Application Filed
2003-01-13 Earliest Priority Date for ’285, ’596, and ’979 Patents
2004-10-08 ’285 Patent Application Filed
2006-04-11 ’465 Patent Issued
2007-02-09 ’596 Patent Application Filed
2007-02-13 ’285 Patent Issued
2008-11-25 ’979 Patent Application Filed
2008-12-09 ’596 Patent Issued
2011-03-22 ’979 Patent Issued
2011-07-19 ’979 Patent Certificate of Correction Issued
2014-05-20 RE44,904 Reissue Patent Issued
2025-08-25 Complaint Filed

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

U.S. Patent No. 7,177,285 - "Time Based Wireless Access Provisioning," issued February 13, 2007.

The Invention Explained

  • Problem Addressed: The patent describes conventional methods for provisioning wireless devices on a network as impractical, particularly for devices that lack a user interface for entering credentials (e.g., a wireless picture frame) or for users who are not technically proficient ('285 Patent, col. 3:13-36).
  • The Patented Solution: The invention proposes a provisioning system where a network access point monitors an "operating parameter" of a new wireless device, such as its power-on time or the start of its signal transmission. A user then activates a provisioning mode on the access point (e.g., by pressing a button), which opens a limited time window. If the device's operating parameter was detected within that time window, the access point automatically provisions the device, eliminating the need for manual data entry ('285 Patent, Abstract; col. 3:37-49).
  • Technical Importance: This approach simplifies the user experience for adding new devices to a network, a critical factor for the adoption of consumer electronics and "headless" Internet of Things devices ('285 Patent, col. 3:37-41).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (Compl. ¶30).
  • Claim 1 requires:
    • A process for provisioning between a wireless device and a network, comprising the steps of:
    • tracking an operating parameter of the wireless device within a service area, wherein the operating parameter of the wireless device comprises an onset of a signal transmission of the wireless device; and
    • initiating provisioning of the wireless device if the tracked operating parameter occurs within a time interval.
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 7,463,596 - "Time Based Wireless Access Provisioning," issued December 9, 2008.

The Invention Explained

  • Problem Addressed: Similar to the '285 Patent, the patent addresses the cumbersome nature of existing network provisioning systems, which were impractical for devices lacking a user interface and often required significant technical skill from the user ('596 Patent, col. 3:13-36).
  • The Patented Solution: The invention describes a time-based method for associating devices. The system tracks an operating parameter of a first device, such as when it is powered on or begins transmitting a signal. If this event occurs within a specific time interval relative to an activation event, the system automatically associates the first device with at least one other device (e.g., an access point), thereby provisioning it onto the network ('596 Patent, Abstract; col. 3:42-49).
  • Technical Importance: This invention provides a simplified provisioning process that lowers the barrier to entry for users setting up home networks with multiple wireless devices ('596 Patent, col. 3:37-41).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (Compl. ¶44).
  • Claim 1 requires:
    • A process for associating devices, comprising the steps of:
    • tracking an operating parameter of a first device, wherein the operating parameter of the first device comprises any of a power on of the first device, and an onset of a signal transmission of the first device; and
    • automatically associating the first device with at least one other device if the tracked operating parameter occurs within a time interval.
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 7,911,979 - "Time Based Access Provisioning System And Process," issued March 22, 2011.

  • Technology Synopsis: This patent addresses the same technical problem as the '285 and '596 patents: the difficulty of provisioning wireless devices, especially those without user interfaces (Compl. ¶55). The proposed solution is a provisioning system that tracks an operating parameter (e.g., power-on) of a device and, if that event occurs within a designated time interval, sends a signal to initiate provisioning with a network (Compl. ¶¶56, 60).
  • Asserted Claims: At least independent claim 1 (Compl. ¶58).
  • Accused Features: The complaint accuses STMicroelectronics devices with Wi-Fi Protected Setup (WPS) functionality of infringing this patent (Compl. ¶¶49, 59).

U.S. Patent No. RE44,904 - "Method For Contention Free Traffic Detection," issued May 20, 2014.

  • Technology Synopsis: The patent addresses the problem that conventional wireless access points (APs) required complex, computationally intensive processing to analyze entire data frames to differentiate traffic based on priority (Compl. ¶69). The invention provides a more efficient method where the AP extracts a bit pattern from a predetermined, fixed position in a frame and compares it to a known search pattern, allowing for rapid and low-cost identification of priority traffic without needing to understand upper-layer protocols (Compl. ¶70).
  • Asserted Claims: At least independent claim 1 (Compl. ¶72).
  • Accused Features: The complaint accuses STMicroelectronics devices supporting Wi-Fi Multimedia (WMM) and/or 802.11-2007+ wireless Quality of Service (QoS) functionality (Compl. ¶¶63, 73).

U.S. Patent No. 7,027,465 - "Method For Contention Free Traffic Detection," issued April 11, 2006.

  • Technology Synopsis: Similar to the ’904 patent, this patent addresses the challenge for low-cost network equipment to distinguish priority traffic from normal traffic, which conventionally required complex processing of all frame headers (Compl. ¶83). The patented solution is a method for detecting priority by extracting a bit pattern from a predetermined position in a frame, defined by an offset, and comparing it to a search pattern (Compl. ¶¶84, 88).
  • Asserted Claims: At least independent claim 1 (Compl. ¶86).
  • Accused Features: The complaint accuses STMicroelectronics devices with Wi-Fi Multimedia (WMM) and/or 802.11-2007+ wireless QoS functionality (Compl. ¶¶77, 87).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are STMicroelectronics Systems-on-Chips (SoCs) and devices that support certain wireless networking standards (Compl. ¶18). Specific product families named include the CW1100 and CW1200 Wi-Fi chips, the SPWF04S series, U8500 Android Reference Designs, and the X-NUCLEO-IDW04A1 development board (Compl. ¶18).

Functionality and Market Context

  • The complaint targets two distinct functionalities implemented by the accused products:
    • Wi-Fi Protected Setup (WPS): This industry-standard feature is designed to simplify the process of connecting devices to a secure Wi-Fi network, often via a push-button method. This functionality is accused of infringing the '285, '596, and '979 patents (Compl. ¶¶18, 31, 45, 59).
    • Wi-Fi Multimedia (WMM) / 802.11-2007+ QoS: This functionality, based on the IEEE 802.11e standard, prioritizes network traffic to improve performance for latency-sensitive applications like voice and video. This functionality is accused of infringing the '904 and '465 patents (Compl. ¶¶18, 73, 87).
  • The complaint alleges that these SoCs and chips are foundational components distributed and sold in the United States for inclusion in a wide array of wireless products (Compl. ¶6). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint references Exhibits A, B, C, D, and E as containing detailed infringement analysis for each asserted patent, respectively; however, these exhibits were not filed with the complaint (Compl. ¶¶30, 44, 58, 72, 86). The narrative allegations are summarized below.

  • '285 Patent Infringement Allegations Summary: The complaint alleges that Defendant’s WPS-compatible products infringe at least claim 1 of the ’285 Patent (Compl. ¶¶31, 32). The infringement theory is that the WPS process performs the claimed steps of "tracking an operating parameter" of a wireless device (specifically, an "onset of a signal transmission") and "initiating provisioning" if that parameter occurs within a "time interval" (Compl. ¶32).
  • '596 Patent Infringement Allegations Summary: The complaint alleges that the accused products with WPS functionality infringe at least claim 1 of the ’596 Patent by performing a process for associating devices (Compl. ¶¶45, 46). The narrative alleges this process involves "tracking an operating parameter" (such as "power on" or "onset of a signal transmission") of a first device and "automatically associating" it with another device if the event happens within a specified "time interval" (Compl. ¶46).
  • Identified Points of Contention:
    • Scope Questions: A central question for the '285, '596, and '979 patents will be whether the standardized WPS protocol, as implemented by Defendant, falls within the scope of the claims. The analysis may focus on whether the exchange of messages in the WPS protocol constitutes "tracking an operating parameter" as described in the patents, or if it is a fundamentally different mechanism.
    • Technical Questions: For the '904 and '465 patents, a key technical question is whether the accused WMM/QoS functionality operates by matching a bit pattern at a "predetermined position" as required by the claims. The court may need to determine if the accused products achieve traffic prioritization through this specific claimed method or through alternative means allowed by the 802.11 standard. Another question is whether the accused SoCs perform all steps of the claimed methods, or if some steps are performed by external software or by the end-user, potentially raising divided infringement issues.

V. Key Claim Terms for Construction

  • Term: "tracking an operating parameter" (from claim 1 of the '285 and '596 patents)

    • Context and Importance: This term is central to the time-based provisioning patents. The infringement case depends on whether the accused WPS functionality, which typically involves user-initiated button presses and protocol-level message exchanges, can be characterized as actively "tracking" a device's "power on" or "signal transmission" as envisioned by the patent.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification describes the invention as improving on systems that require technical proficiency and notes the solution is integrated with "easily monitored parameters of a wireless device, such as the time monitoring of power on and/or start of signal transmission" ('285 Patent, col. 3:50-55). This could support a construction that covers any system aware of a device’s recent activation.
      • Evidence for a Narrower Interpretation: The description of the process mentions the access point "tracks 54 the power on time of wireless devices, whereby the powered wireless device begins transmission of a reverse link signal 28" ('285 Patent, col. 5:37-40). This may support a narrower construction requiring the access point to actively monitor for a signal that indicates a recent power-on event, rather than simply receiving a standardized connection request message at a later time.

  • Term: "automatically associating" (from claim 1 of the '596 patent)

    • Context and Importance: The definition of this term is critical because the accused WPS process requires user action (a button push on an access point) after the device is powered on. Whether this subsequent user action prevents the process from being "automatic" will be a key point of dispute.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The patent describes a user activating the provisioning access, after which the access point determines if there was a recent power-on and, if so, "initiates provisioning" ('596 Patent, Fig. 3). This may support a view that "automatically" refers to the system completing the association without requiring the user to enter passwords or other data.
      • Evidence for a Narrower Interpretation: The claim requires "automatically associating... if the tracked operating parameter occurs within a time interval." This language could suggest that the association is a direct, non-discretionary result of the timing condition being met, potentially excluding processes that require a separate, subsequent user action (like a button push) to trigger the association.

VI. Other Allegations

  • Indirect Infringement: The complaint makes a general allegation that Defendant provides "information and assistance to its customers to enable them to use the Accused Products in an infringing manner," which suggests a claim for induced infringement (Compl. ¶19). However, the complaint does not plead specific facts, such as citing user manuals or technical documentation, to support the knowledge and intent elements of such a claim.
  • Willful Infringement: The complaint does not explicitly allege willful infringement or plead facts related to pre-suit knowledge of the patents. The prayer for relief includes a request for a declaration of an "exceptional case" and attorneys' fees under 35 U.S.C. § 285, but does not request enhanced damages for willfulness (Compl. ¶91.d).

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

  • A core issue will be one of definitional scope: can the phrase "tracking an operating parameter," which the patents describe in the context of monitoring for a device's power-on or initial transmission, be construed to cover the standardized message-exchange protocol of Wi-Fi Protected Setup (WPS)? The outcome may depend on whether the accused protocol is found to be a mere design choice or a functionally distinct alternative to the claimed method.
  • A second central question will be one of technical implementation: for the patents on traffic prioritization, does the accused Wi-Fi Multimedia (WMM) functionality operate by "extracting a bit pattern from a predetermined position," as claimed, or does it use other traffic-shaping techniques available under the IEEE 802.11 standard that may fall outside the claims' scope?
  • Finally, an evidentiary question will likely concern infringement liability: does the defendant’s accused System-on-Chip, by itself, perform all the steps of the asserted method claims, or are some steps necessarily performed by third-party software, other hardware components, or the end-user? This could raise significant questions regarding direct and indirect infringement.