Uniloc 2017 LLC v. HTC America Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Uniloc 2017 LLC (Delaware)
  • Defendant: HTC America, Inc. (Washington)
  • Plaintiff’s Counsel: Van Kampen & Crowe PLLC
• Case Identification: 2:18-cv-01732, W.D. Wash., 11/30/2018
• Venue Allegations: Venue is based on Defendant's status as a Washington corporation with a regular and established place of business in the district, and its alleged offers for sale and sales of accused products within the district.
• Core Dispute: Plaintiff alleges that Defendant’s smartphones and other mobile devices infringe a patent related to anti-theft protection systems for radiotelephony devices.
• Technical Context: The technology involves a time-based security feature for mobile phones designed to automatically lock the device after a period of inactivity, even when a legitimate user identification module (e.g., SIM card) is installed.
• Key Procedural History: The patent-in-suit, U.S. Patent No. 6,836,654, was the subject of two inter partes review (IPR) proceedings (IPR2019-01471 and IPR2020-00701). As a result of these proceedings, claims 10-20 were cancelled. The claims asserted in this complaint (1, 3-5, and 7) survived the IPR challenges, a fact that may be relevant to future validity arguments.

Case Timeline

Date	Event
1999-12-21	'654 Patent Priority Date
2004-12-28	'654 Patent Issue Date
2018-11-30	Complaint Filing Date
2021-11-09	'654 Patent IPR Certificate Issued

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

U.S. Patent No. 6,836,654 - ANTI-THEFT PROTECTION FOR A RADIOTELEPHONY DEVICE, issued December 28, 2004

The Invention Explained

• Problem Addressed: The patent addresses a vulnerability in then-existing mobile phone anti-theft systems. While linking a phone to a specific user identification module (SIM card) could prevent its use with an unauthorized SIM, it did not protect against theft of the phone with its linked SIM card. In such cases, a thief could use the phone until the owner reported it to the network operator, which could involve a delay (’654 Patent, col. 2:21-34).
• The Patented Solution: The invention introduces an additional layer of security that automatically activates based on user inactivity. The device detects when it has been inactive for a defined period of time, even with the correct, linked SIM card installed, and then enters a blocked state that prevents normal operation, such as making outgoing calls. To resume normal operation, the user must supply a deblocking code (’654 Patent, Abstract; col. 2:40-59). The logic flow for this process is detailed in the patent's Figure 3 (’654 Patent, FIG. 3).
• Technical Importance: This approach was designed to render a stolen device unusable almost immediately, without requiring the owner to first contact a network operator to block the associated SIM card (’654 Patent, col. 2:60-64).

Key Claims at a Glance

• The complaint asserts independent claim 1 and dependent claims 3-5 and 7 (Compl. ¶12).
• Independent Claim 1, written in means-plus-function format, recites the following essential elements:
  • blocking means for preventing normal operation, including the processing of outgoing calls
  • timing means for activating the blocking means after the device is inactive for a defined time period, subsequent to mounting a linked user identification module
  • deblocking means for permitting normal operation after a deblocking code is supplied

III. The Accused Instrumentality

Product Identification

• The complaint identifies the "Accused Infringing Devices" as HTC's electronic devices that utilize antitheft measures, including smartphones such as the HTC U11, HTC 12-plus, HTC 11, and HTC Desire 530 (Compl. ¶10, ¶19).

Functionality and Market Context

• The complaint alleges that the accused devices are "mobile radiotelephony devices incorporating antitheft technology that utilizes timing and identification codes to block and unblock normal operation of the device" (Compl. ¶11). The allegations point to standard device features, referencing HTC support webpages with titles such as "setting-a-screen-lock.html" as evidence of the infringing functionality (Compl. p. 4). The complaint does not provide further technical detail on the operation of these features.
• No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint does not contain an element-by-element claim chart. It alleges infringement through broad, narrative statements that the accused devices perform the overall function of the patented invention. The complaint asserts that HTC's devices "utilize[] timing and identification codes to block and unblock normal operation" and directs the court to user guides for features like screen locks (Compl. ¶11, p. 4). However, it does not explicitly map these features to the specific "means" limitations of the asserted claims.

Identified Points of Contention

• Scope Questions: As the asserted claim is in means-plus-function format, a central dispute will involve defining the corresponding structures in the '654 Patent's specification for the claimed "means." The infringement analysis will then focus on whether the accused HTC devices contain structures that are identical or structurally equivalent.
• Technical Questions: A key technical question will be whether the accused devices' standard screen lock feature, which is typically triggered by a period of inactivity, performs the specific function claimed by the patent. The claim requires the "timing means" to operate "subsequent to a mounting of a linked user identification module" (’654 Patent, col. 5:48-53). The court will need to determine if the accused functionality is tied to the verification of a specific SIM card in the manner required by the claim, or if it is a generic timeout function independent of the SIM card's identity. The complaint does not provide evidence to resolve this question.

V. Key Claim Terms for Construction

As Claim 1 is drafted in means-plus-function format, the construction of the functional "means" terms will be dispositive.

The Term: "timing means for activating the blocking means in response to the mobile radiotelephony device being inactive... for a defined period of time subsequent to a mounting of a linked user identification module..."

• Context and Importance: This limitation is the core of the claimed invention. Its construction will determine whether a generic screen timeout feature can be considered an infringing structure. Practitioners may focus on this term because the infringement case depends on whether the accused device's timeout function is equivalent to the specific, SIM-linked timing logic disclosed in the patent.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification describes the function generally as looking "whether the device has remained in the state of availability for a certain period of time T" (’654 Patent, col. 5:32-35). This language, in isolation, could be argued to encompass any inactivity timer.
  • Evidence for a Narrower Interpretation: The corresponding structure is the logic in Figure 3, where the timer check (box K10) occurs only after the system verifies that a linked identification module is present (the path from box K4 via arrow Y4) (’654 Patent, FIG. 3). This suggests the structure is not a simple timer but a conditional logic block that is functionally dependent on the prior SIM verification step.

The Term: "blocking means for preventing a normal operation... wherein the normal operation includes a processing of outgoing calls"

• Context and Importance: The definition of this term will determine what level of device restriction meets the claim limitation. The key question is whether a standard lock screen that prevents access to the dialer is structurally equivalent to the "blocking means" disclosed.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent describes entering a "second blocking state" where outgoing calls are prevented, which could be argued to read on any function that has this effect (’654 Patent, col. 5:36-47).
  • Evidence for a Narrower Interpretation: The specification describes a specific structure for this state: a "second blocking state" (box K11) that permits incoming calls (box K13) and potentially emergency calls (box K14) but blocks other outgoing calls (’654 Patent, col. 5:44-47). This detailed description could be used to argue that the "blocking means" is limited to a structure that implements this specific set of permissions and restrictions, rather than a general-purpose screen lock.

VI. Other Allegations

Indirect Infringement

• The complaint alleges that HTC induces infringement by providing "user guides and instructional and marketing materials" that instruct customers on how to use the accused features, such as setting a screen lock (Compl. ¶14-15, p. 4).

Willful Infringement

• The complaint makes a standard allegation of post-suit willfulness, asserting that HTC's knowledge of its alleged infringement began, at the latest, upon service of the complaint (Compl. ¶17).

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

• A core issue will be one of claim construction under 35 U.S.C. § 112(f): The case will likely turn on the court's identification of the specific structures in the '654 Patent's specification corresponding to the claimed "timing means" and "blocking means," as this will define the scope and limit of the asserted claim.
• A key evidentiary question will be one of structural equivalence: Does the software architecture of HTC's screen lock and security features constitute a structure that is identical or equivalent to the specific, multi-step logic disclosed in the '654 Patent, especially the claimed functional dependency between the inactivity timer and the verification of a linked SIM card?
• A central factual dispute will be one of technical operation: The complaint's theory appears to equate a generic screen timeout with the patent's claimed security method. The case will require a determination of whether the accused device's functionality is merely a time-based lock or if it performs the specific, SIM-aware security check required by the claim language and patent specification.