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Uniloc USA, Inc. v. HTC America, Inc.

United States District Court, W.D. Washington, Seattle

June 14, 2018

UNILOC USA, INC., et al., Plaintiffs,
v.
HTC AMERICA, INC., Defendant.

          ORDER GRANTING MOTION TO DISMISS

          JAMES L. ROBART, United States District Judge

         I. INTRODUCTION

         Before the court is Defendant HTC America, Inc.'s (“HTC”) motion to dismiss Plaintiffs Uniloc USA, Inc. (“Uniloc USA”) and Uniloc Luxembourg, S.A.'s (“Uniloc Luxembourg”) (collectively, “Uniloc”) amended complaint. (MTD (Dkt. # 33).) Uniloc opposes the motion. (Resp. (Dkt. # 39).) The court has considered the motion, the submissions in support of and in opposition to the motion, the relevant portions of the record, and the applicable law. Being fully advised, [1] the court grants HTC's motion for the reasons set forth below.

         II. BACKGROUND

         A. Factual Background

         1. The Parties

         On October 20, 2017, Uniloc filed this patent infringement case. (See Compl. (Dkt. # 1); see also Am. Compl. (Dkt. # 29).) Uniloc Luxembourg owns U.S. Patent No. 6, 622, 018 (“the '018 Patent” or “the Patent”), entitled “PORTABLE DEVICE CONTROL CONSOLE WITH WIRELESS CONNECTION, ” which issued on September 16, 2003. (Am. Compl. ¶ 5.) Uniloc USA is the exclusive licensee of the '018 Patent. (Id. ¶ 6.) HTC makes and sells smartphones. (See Id. ¶ 10.)

         2. The Asserted Patent

         The '018 Patent describes and claims “in various ways and at different levels of specificity” an invention that provides “a way to wirelessly control remotely located devices.” (Id. ¶ 7.) More specifically, the patent claims “a method and system for controlling remote devices over a wireless connection.” (Compl. ¶ 8, Ex. A (“Patent”) (Dkt. # 1-1) at 1:9-10; see also Am. Compl. ¶ 5 (referencing Exhibit A to the original complaint).)[2]

         The patent discusses the background art, first addressing that many office and household items “are or can be remotely controlled” and listing “televisions, stereos, and the like” as examples. (Patent at 1:26-28.) However, “[r]emote control devices in each of their present forms have a number of associated shortcomings.” (Id. at 1:31-32.) Those shortcomings include that “a separate remote control device may be required for each device to be controlled”; the “limited range” of existing devices; and the “cumbersome and complex” cabling required to wire such devices together through a central location like a personal computer. (Id. at 1:32-33, 45-46, 53-57.) Although “[i]n some instances the separate remotes can be replaced with a universal remote control, ” such a solution does “not have the resources . . . to allow them to be used with all devices, or they may not be capable of controlling a new device.” (Id. at 1:34-35, 37-40.) Thus, the patent purports to address a need for a device and method that “can be used to remotely control a variety of different devices and appliances, ” and is “relatively simple to introduce into existing homes and businesses, ” “user-friendly, ” “portable, ” and “not limited to line-of-sight applications.” (Id. at 1:66-68, 2:2-6.) Thus, Uniloc asserts that “[t]he invention represented a technological solution to a technological problem.” (Am. Compl. ¶ 9.)

         Figure 11 of the Patent illustrates how the claimed method and system work:[3]

         (Image Omitted)

         (Patent at 14, fig. 11.) Figure 6 further illustrates one part of that process-“the flow of messages between a controlling device and remote devices in accordance with one embodiment of the present invention” (id. at 16)-as follows:

         (Image Omitted)

(id. at 9, fig. 6).

         The Patent provides that in the present embodiment, the “invention pertains to a system and method for controlling remote devices over a wireless connection (e.g., using a radio signal).” (Id. at 2:17-19.) Further, in “one embodiment, a portable computer system (e.g., a palmtop or hand-held computer) having a transceiver is used to control compliant devices.” (Id. at 2:19-23.) That embodiment also involves “a wireless connection between the portable computer system and one or more remote devices is established, ” and each of those devices “is manifested on a display device of the portable computer system, and one of the devices is selected.” (Id. at 2:25-29.) And finally, in a preferred embodiment, “the transceiver and the remote devices are Bluetooth-enabled devices.” (Id. at 2:23-35.) The patent also lists a few additional possible embodiments, involving a stylus element, a rendering of the remote device displayed on the display device, and the movement of the stylus recognized as a command. (See Id. at 2:31-32, 41-43, 51-53.)

         Uniloc alleges that the invention “improved upon existing remote control technology by allowing a wide variety of devices to be controlled from a single portable device and without being in the line of sight of the device desired to be controlled.” (Am. Compl. ¶ 7.) According to Uniloc, “the methods and systems the '018 Patent claims” were not “conventional or generic in the industry in 1999” but instead involved novel programming that “other companies in this field had not reduced to practice.” (Id. ¶ 8.)

         3. The Asserted Claims

         Uniloc asserts claims 1, 5-7, 9-11, 15-17, and 19-20 of the '018 Patent. (Id. ¶¶ 10-11.) Of those claims, claims 1 and 11 are independent method and system claims. (See Patent at 12:6-20, 13:1-24.) Those claims are as follows:

1. A method for controlling a remote device over a wireless connection, said method comprising:
a) establishing said wireless connection between a transceiver and said remote device by: broadcasting a message, said message for locating remote devices within range of said transceiver; and receiving a response from said remote device;
b) manifesting said remote device on a display device;
c) registering a position where contact is made with a surface of an input device, wherein a particular position on said input device is translated into a particular command for controlling said remote device; and
d) transmitting a command to said remote device over said wireless connection.

(Id. at 12:6-20.)

         11. A computer system comprising: a bus; a processor coupled to said bus; a transceiver coupled to said bus; a display device coupled to said bus; and an input device coupled to said bus; said processor for performing a method for controlling a remote device over a wireless connection, said device comprising the computer-implemented steps of:

a) establishing said wireless connection between said transceiver and said remote device by: broadcasting a message, said message for locating remote devices within range of said transceiver; and receiving a response from said remote device;
b) manifesting said remote device on a display device;
c) registering a position where contact is made with a surface of an input device, wherein a particular position on said input device is translated into a particular command ...

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