DCT

7:25-cv-00395

CommWorks Solutions LLC v. NXP USA Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 7:25-cv-00395, W.D. Tex., 09/02/2025
  • Venue Allegations: Plaintiff alleges venue is proper because Defendant maintains established and regular places of business in the Western District of Texas, has transacted business in the district, and has committed acts of infringement in the district. The complaint also notes that Defendant has previously admitted to having facilities and employees in the district in prior patent litigation.
  • Core Dispute: Plaintiff alleges that Defendant’s Systems-on-Chips (SoCs) and related devices that implement standardized Wi-Fi and networking functionalities infringe six patents related to time-based network access, traffic prioritization, and quality of service management.
  • Technical Context: The patents relate to methods for managing access and data flow in computer networks, particularly in wireless environments, technologies that are foundational to modern Wi-Fi and Ethernet communication standards.
  • Key Procedural History: The complaint references several prior patent infringement actions against Defendant in the Western District of Texas where venue was not contested, suggesting a potential strategy to preemptively address venue challenges.

Case Timeline

Date Event
2000-05-19 Priority Date for U.S. Patent No. 6,832,249
2001-05-18 Application Date for U.S. Patent No. 6,832,249
2002-06-11 Application Date for U.S. Patent No. 7,027,465
2004-10-08 Priority Date for U.S. Patent No. 7,177,285
2004-12-14 Issue Date for U.S. Patent No. 6,832,249
2006-04-11 Issue Date for U.S. Patent No. 7,027,465
2007-02-09 Priority Date for U.S. Patent No. 7,463,596
2007-02-13 Issue Date for U.S. Patent No. 7,177,285
2008-11-25 Priority Date for U.S. Patent No. 7,911,979
2008-12-09 Issue Date for U.S. Patent No. 7,463,596
2009-06-30 Issue Date for U.S. Patent No. 7,555,014 (Original of RE44,904)
2011-03-22 Issue Date for U.S. Patent No. 7,911,979
2014-05-20 Issue Date for U.S. Patent No. RE44,904
2025-09-02 Complaint Filing Date

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 that, at the time of invention, provisioning wireless devices to a network was impractical, especially for devices lacking a user interface (e.g., a wireless picture frame) from which to extract identifying information like a MAC address. Even for devices with an interface, the process was cumbersome and required technical proficiency. (Compl. ¶27; ’285 Patent, col. 3:13-36).
  • The Patented Solution: The invention proposes a time-based method for provisioning access. A network access point monitors for an operating parameter of a wireless device—such as being powered on or starting signal transmission—and if that event occurs within a designated time window after a user activates the provisioning process (e.g., by pressing a button on the access point), the device is granted access. This approach aims to simplify the process for the user and eliminate the need for manual data entry. (Compl. ¶28; ’285 Patent, col. 3:50-58).
  • Technical Importance: This solution provided a method to securely add new devices to a wireless network with minimal user interaction, a key step in making home networking more accessible to non-technical consumers. (Compl. ¶28).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1. (Compl. ¶30).
  • Claim 1 (Process):
    • A provisioning process between a wireless device and a network performed by a provisioning system.
    • Tracking an operating parameter of the wireless device within a service area.
    • The operating parameter comprises an onset of a signal transmission of the wireless device.
    • Initiating provisioning of the wireless device with the network 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 ’596 Patent addresses the impracticality of provisioning wireless devices, particularly those without user interfaces, onto a network. The background notes the difficulty of communicating device identification and the technical skill required to complete a conventional provisioning process. (Compl. ¶41; ’596 Patent, col. 3:13-36).
  • The Patented Solution: The patent describes a process for associating devices based on time. The system tracks an operating parameter of a first device, which can be either the device being powered on or the start of its signal transmission. If this event is detected within a specified time interval, the system automatically associates the first device with at least one other device (e.g., an access point). (Compl. ¶42; ’596 Patent, col. 3:50-58).
  • Technical Importance: This invention offered a simplified "push-button" style association method, lowering the barrier to entry for users setting up home networks with multiple devices. (Compl. ¶42).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1. (Compl. ¶44).
  • Claim 1 (Process):
    • A process for associating devices.
    • Tracking an operating parameter of a first device.
    • The operating parameter comprises any of a power on of the first device, and an onset of a signal transmission of the first device.
    • 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, part of the same family as the '285 and '596 patents, describes a provisioning system with logic that tracks an operating parameter of a device (e.g., power on, signal onset). The system sends a signal to initiate provisioning if the parameter occurs within a designated time interval, aiming to simplify secure network setup. (Compl. ¶¶55-56).
  • Asserted Claims: At least independent claim 1. (Compl. ¶58).
  • Accused Features: The complaint alleges infringement by NXP devices with Wi-Fi Protected Setup (WPS) functionality, which perform a time-based provisioning process. (Compl. ¶¶49, 60).

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

  • Reissued: May 20, 2014
  • Technology Synopsis: The patent addresses the problem of inefficiently identifying high-priority data traffic in a network. The invention provides a method for an access point to distinguish priority traffic from normal traffic by extracting and comparing a bit pattern from a predetermined position in a data frame, avoiding complex processing of upper-layer protocols. (Compl. ¶¶69-70).
  • Asserted Claims: At least independent claim 1. (Compl. ¶72).
  • Accused Features: The complaint alleges infringement by NXP chips with Wi-Fi Multimedia (WMM) or 802.11-2007+ Quality of Service (QoS) functionality, which are alleged to perform the claimed method of traffic detection and prioritization. (Compl. ¶¶63, 74).

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

  • Issued: April 11, 2006
  • Technology Synopsis: This patent, the original for the RE'904 patent, describes a method for detecting priority data frames by extracting a bit pattern from a predetermined position in a frame, defined by an offset, and comparing it to a search pattern. This allows low-cost network equipment to efficiently separate traffic based on priority without deep packet inspection. (Compl. ¶¶83-84).
  • Asserted Claims: At least independent claim 1. (Compl. ¶86).
  • Accused Features: The complaint alleges infringement by NXP chips with WMM and/or 802.11-2007+ compatible functionality, which are alleged to perform the claimed method for detecting priority data frames. (Compl. ¶¶77, 88).

U.S. Patent No. 6,832,249 - "Globally Accessible Computer Network-Based Broadband Communication System with User-Controllable Quality of Information Delivery and Flow Priority"

  • Issued: December 14, 2004
  • Technology Synopsis: The patent addresses network congestion and inconsistent quality of service (QoS) by proposing a system that monitors QoS events across multiple layers of the Open System Interconnection (OSI) model. When a QoS event is detected at a higher layer (Layer N), the system responds by changing network provisioning at a lower layer (less than N) to improve service delivery. (Compl. ¶¶96-97).
  • Asserted Claims: At least claims 11 and 38. (Compl. ¶99).
  • Accused Features: The complaint alleges infringement by NXP chips with IEEE 802.3ah and ITU-T (G.984/G.9807.1) support, which are alleged to perform multi-layer network monitoring and provisioning to manage broadband communications. (Compl. ¶¶91-92, 101-102).

III. The Accused Instrumentality

Product Identification

The Accused Products are NXP Systems-on-Chips (SoCs) and devices that incorporate specific networking functionalities. (Compl. ¶18). The complaint groups these products by the features they support:

  1. Chips with Wi-Fi Multimedia (WMM) and/or 802.11-2007+ wireless Quality of Service (QoS) functionality. (Compl. ¶18).
  2. Chips supporting Wi-Fi Protected Setup (WPS) functionality. (Compl. ¶18).
  3. Chips with IEEE 802.3ah (Ethernet in the First Mile) support. (Compl. ¶18).
  4. Chips with ITU-T G.984 (GPON) and/or G.9807.1 (XG-PON) functionality. (Compl. ¶¶7, 18).

Functionality and Market Context

The complaint alleges that these functionalities, which are implemented in a wide range of NXP's Wi-Fi and networking chips, are core to modern wireless and broadband communications. WPS is a widely adopted standard for simplifying the process of connecting devices to a secure Wi-Fi network. WMM is a Wi-Fi Alliance interoperability certification based on the IEEE 802.11e standard that provides basic QoS features. IEEE 802.3ah and ITU-T standards relate to "last mile" broadband access technologies. (Compl. ¶¶18, 22, 63, 91). The complaint lists numerous exemplary NXP product series, indicating an intent to accuse a broad swath of Defendant's product lines that incorporate these industry standards. (Compl. ¶¶5-6).

No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint references Exhibits A and B for detailed infringement allegations concerning the ’285 and ’596 patents, respectively, but these exhibits were not filed with the public complaint. The infringement theory must therefore be summarized from the complaint’s narrative allegations.

’285 Patent Infringement Allegations

The complaint alleges that NXP's devices compatible with Wi-Fi Protected Setup ("WPS") infringe at least claim 1 of the ’285 patent. (Compl. ¶31). The narrative theory asserts that the accused products perform a process for provisioning a wireless device to a network that involves tracking an "onset of a signal transmission" from the device. Provisioning is allegedly initiated if this event occurs within a "time interval," mirroring the limitations of claim 1. (Compl. ¶32). The infringement theory appears to equate the standardized WPS "push-button" configuration method with the patented time-based provisioning process.

’596 Patent Infringement Allegations

The infringement theory for the ’596 patent is substantially similar, also targeting NXP's WPS-compatible devices. (Compl. ¶45). The complaint alleges these products perform a process for associating devices that involves tracking an operating parameter, specified as either a "power on" or an "onset of a signal transmission" of the device. The association is alleged to occur automatically if the tracked parameter is detected within a "time interval." (Compl. ¶46). This theory likewise maps the functionality of the WPS standard to the elements of asserted claim 1 of the '596 Patent.

Identified Points of Contention

  • Scope Questions: A central question may be whether the process described in the patents, invented prior to the finalization of the WPS standard, can be read to cover the specific, standardized steps of WPS. The defense may argue that WPS operates in a technically distinct manner or that the patent claims are limited to the specific embodiments disclosed and do not cover the industry standard.
  • Technical Questions: The analysis may focus on what constitutes "tracking an operating parameter" in the accused devices. The question could be raised whether the accused WPS devices actively "track" a "power on" or "signal transmission" event for any device in the manner described by the patent, versus merely listening for a specific WPS protocol exchange that is initiated by a user action on both the device and the access point within a predefined window.

V. Key Claim Terms for Construction

"tracking an operating parameter"

(from claim 1 of both '285 and '596 patents)

  • Context and Importance: This term is the core of the asserted claims. Its construction will determine whether the passive listening state of a WPS-enabled access point constitutes the active "tracking" required by the claims. Practitioners may focus on this term because the infringement allegation hinges on whether the accused device's function is equivalent to the claimed action.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification states the network access point "monitors operation of wireless devices within a service region." ('285 Patent, col. 4:1-2). This could be argued to support a broader definition of "tracking" that includes monitoring for any relevant device activity.
    • Evidence for a Narrower Interpretation: The detailed description repeatedly links the tracking to a specific event noted by the provisioning logic, such as "notes the power on time" ('285 Patent, col. 4:9-10) or "tracks 54 the power on time of wireless devices" ('285 Patent, col. 5:39-40). This may support a narrower interpretation requiring a more active and specific monitoring function than what is implemented in the WPS standard.

"time interval"

(from claim 1 of both '285 and '596 patents)

  • Context and Importance: The definition of "time interval" is critical for determining when the condition for provisioning is met. The dispute may turn on how this interval is initiated and defined in the accused products versus the patent's disclosure.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim language itself is broad, not specifying how the interval is started or its duration. This may support an interpretation that covers any fixed or variable window of time during which the system is receptive to provisioning, such as the typical two-minute window for WPS.
    • Evidence for a Narrower Interpretation: The patent's figures and description illustrate an "acceptance time interval" that begins at a specific "start time" and ends at an "end time," initiated by the "provisioning activation." ('285 Patent, col. 6:4-7 and Fig. 5). This could support a narrower construction requiring the interval to be explicitly tied to the user's activation of the provisioning logic on the access point, potentially creating a distinction from the WPS standard's process.

VI. Other Allegations

Indirect Infringement

The complaint alleges that Defendant contributes to and induces infringement by third parties. (Compl. ¶11). It further alleges Defendant "provides information and assistance to its customers to enable them to use the Accused Products in an infringing manner." (Compl. ¶19). This suggests a theory of inducement based on Defendant supplying infringing chips along with instructions or technical support for implementing the accused functionalities.

Willful Infringement

The complaint does not contain specific factual allegations to support a claim of willful infringement, such as allegations of pre-suit knowledge of the patents or egregious conduct. The prayer for relief includes a request to declare the case "exceptional" under 35 U.S.C. § 285, but the basis for this is not detailed in the body of the complaint. (Compl. ¶105.d).

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

  • A core issue will be one of standards equivalence: can the claims, which describe a novel method for time-based device provisioning, be construed to cover the standardized and widely adopted Wi-Fi Protected Setup (WPS) and Wi-Fi Multimedia (WMM) protocols as implemented in the accused NXP chips? The case may depend on whether the specific technical operations of these standards fall within the scope of the patent claims as properly construed.
  • A second key question will be one of technical implementation: what is the precise mechanism by which the accused products identify and prioritize data or provision new devices? The outcome may turn on evidentiary findings regarding whether the accused systems perform the specific "tracking" and "extracting" steps as claimed, or if they operate on fundamentally different principles inherent to the design of the industry standards they practice.
  • A third central question addresses multi-layer interaction: for the '249 patent, can the plaintiff demonstrate that the accused devices perform the claimed method of detecting a quality of service event at a higher OSI layer and responsively altering provisioning at a lower layer? This raises a complex evidentiary challenge requiring proof of a specific cross-layer cause-and-effect relationship within the accused systems.