Can a New Mexico nonprofit research park corporation prevail in a patent infringement lawsuit against Apple Inc. (“Apple”) for patents originally filed by a Taiwanese ‘Patent Troll’?
STC.UNM is a New Mexico nonprofit research park corporation formed, owned, and controlled entirely by the Board of Regents of the University of New Mexico (“UNM”). UNM is New Mexico’s flagship research institution with over 25,000 students and 1,700 faculty members across Albuquerque, Gallup, Los Alamos, Rio Rancho, Taos, and Los Lunas, New Mexico. STC.UNM’s intellectual property portfolio includes 1,700 inventions and over 500 United States patents.
On July 19, 2019, STC.UNM filed a complaint in the United States District Court for the Western District of Texas WACO Division, against tech-giant, Apple, alleging direct, induced, contributory, and willful infringement of United States Patent Number 8,249,204 (’204 Patent), United States Patent Number 8,265,096 (’096 Patent), and United States Patent Number (’326 Patent).
The complaint alleges Apple infringed the patents through making, using, selling, offering for sale, and/or importing 31 products. Specifically, the complaint accuses the following 31 products for infringing the patents: iPhone 6, iPhone 6 Plus, iPhone 6s, iPhone 6s Plus, iPhone SE, iPhone 7, iPhone 7 Plus, iPhone 8, iPhone 8 Plus, iPhone X, iPhone XS, iPhone XR, iPhone XS Max, iPad Pro (1st & 2nd generation), iPad (5th & 6th generation), iPad Air 2, iPad Mini 4, Apple TV (4th generation), Apple TV 4k, iPod touch, MacBook Air, MacBook, MacBook Pro (3rd & 4th generation), iMac (4th & 5th generation), iMac (5th generation), iMac Pro, MacPro (2nd generation), Mac Mini (3rd generation).
With respect to the ’204 Patent, titled an “Apparatus and method for channel state information feedback,” the complaint alleges that the 31 products are adapted to, “operate in and with wireless telecommunications networks that at least comply with the requirements of the IEEE 802.11ac wireless networking standard (referred to as “Wireless Telecommunications Networks”). The complaint provides that Apple infringes the ’204 Patent, because at least some of the 31 products infringe claims 1, 11, and 12. The claims disclose “a method for a mobile station to provide to a base station feedback of channel state information (CSI) regarding a plurality of communication channels between the mobile station and the base station, the method comprising: estimating the CSI by calculating a plurality of channel responses each for one of the communication channels; compressing the estimated CSI; and sending the compressed CSI as the feedback to the base station, wherein the estimating further comprises selecting a plurality of channel taps from each of the calculated channel responses to estimate the CSI,” a mobile station to provide a base station feedback of CSI regarding a plurality of communication channels between the mobile station and the base station, and a mobile station in an “orthogonal frequency-division multiplexing based communication system,” respectively.
With respect to the ’096 Patent, titled a “Method for constructing frame structures,” the complaint alleges that at least some of the 31 products infringe claim 8 of the ’096 Patent. Claim 8 provides “a method of constructing a frame structure for data transmission, the method comprising: generating a first section comprising data configured in a second format compatible with a second communication system using symbols; generating a second section following the first section, the second section comprising data configured in a second format compatible with a second communication system using symbols, wherein the first communication system’s symbols and the second communication system’s symbols co-exist in one transmission scheme and wherein the second communication system has pilot symbols that are denser than those in the first communication system; generating at least one non-data section containing information describing an aspect of data in at least one of the first section and the second section; and combining the first section, the second section and the at least one non-data section to form the frame structure.”
With respect to the ’326 Patent, titled a “System and method for bit allocation and interleaving,” the complaint alleges that at least claim 1 of the ’326 Patent. Generally, the ’326 Patent claims “a method for transmitting data represented by a plurality of coded bits includes: allocating the coded bits to a plurality of groups; rearranging, for a retransmission of the coded bits, ones of the coded bits allocated to a first one of the plurality of groups to a second one of the plurality of groups, and ones of the coded bits allocated to the second one of the plurality of groups to the first one or a third one of the plurality of groups; and changing, for the retransmission, a sequence of coded bits allocated to each of the plurality of groups after the rearranging.” Additionally, claim 1 discloses “a method for transmitting data represented by a plurality of coded bits, the method comprising: performing a circular shift, with a variable length related to a modulation order and a number of transmissions, on ones of the plurality of coded bits; and transmitting the circularly shifted ones of the plurality of coded bits.”
Surprisingly, STC.UNM is not the original patentee for the patents. Rather, Industrial Technology Research Institute (“ITRI”), a major Taiwanese Patent Troll which holds just under 19,000 patents, is the original patentee. ITRI transferred all rights, title, and interest in and to the patents, including the right to sue and recover for past infringement, by written assignment recorded in the USPTO. This suggests that ITRI may be using as a STC.UNM as a proxy for pursuing patent infringement claims against Apple. Several years ago, ITRI pursued similar patent infringement claims in the United States District Court for the Eastern District of Texas against another tech giant, LG. In that case, the court found in favor LG, holding that ITRI does not have an industry in the United States relating to articles allegedly protected by the patents in question and thereby limiting the jurisdiction of the patent. The court followed United States Supreme Court’s precedent, in its 2014 decision, Alice Corporation v. CLS Bank. In Alice Corporation, the United States Supreme Court reaffirmed that patents must be associated with both an idea and how the idea will be actionable. Specifically, the Supreme Court held that, “merely requiring generic computer implementation fails to transform that abstract idea into a patent-eligible invention.” Alice Corporation makes it more difficult for trolls such as ITRI to pursue infringement claims.
Generally, a patent troll is defined as an entity that owns or controls patents but that does not manufacture products. A patent troll owns or controls patents in order to sue entities for patent infringement in the hopes of making money. However, in a more positive connotation, patent trolls may be known as non-practicing entities (NPEs). NPEs acquire patents in order to license or sell them to others. This definition includes universities. Under the Bayh-Dole Act, universities are encouraged to license inventions discovered using federal funding and are even required to do so in some instances.
It remains to be seen whether STC.UNM, or perhaps ITRI, will prevail against Apple. STC.UNM seeks a judgment that Apple infringed the three patents, damages, and attorneys’ fees.