Hong Kong uCloudlink Network Technology Limited v. SIMO Holdings Inc.

Background

Plaintiffs, collectively called UCL, sued defendants, collectively called SIMO, for infringement of UCL’s ’780 patent, titled “Service sharing system and apparatus.” The patent describes a system that uses subscriber identity module (SIM) cards and related equipment to provide shared access to mobile-network services. The court held a claim-construction hearing on March 10, 2020. Claim construction is the court’s process for deciding what patent-claim terms mean and therefore defining the scope of the patent rights at issue.

The order addresses four disputes involving claim 1 of the ’780 patent. UCL and SIMO proposed different meanings for the disputed language. SIMO also argued that portions of claim 1 were indefinite, meaning that the patent did not describe the invention clearly enough for skilled people to determine its scope.

Rulings on the disputed terms

1. “Insertable”

The court rejected SIMO’s argument that “insertable” requires a SIM card to be actually inserted. It held that the term means the SIM card is “capable of being inserted in the at least one SIM card read-and-write device.” The court explained that claim 1 is an apparatus claim describing the system’s structure and does not require the SIM card to be inserted at all times, although a SIM card must be inserted for the invention to operate.

2. SIM card read-and-write device and “service sharing”

SIMO argued that the phrase describing a device configured to simulate a read-and-write process was indefinite. SIMO questioned what provided the “service sharing,” what “service sharing” meant, and how the word “simulate” should be understood. The court rejected those arguments and found the claim not indefinite.

The court concluded that “providing service sharing” modifies “SIM card.” It also concluded that the device simulates or imitates the read-and-write process that local user equipment would perform in connection with a physical SIM card. The court rejected SIMO’s argument that achieving the same result as the prior art would be inconsistent with “simulate,” explaining that the claim concerns imitation of the process, not necessarily a different result. The court adopted UCL’s construction rather than SIMO’s indefiniteness position.

3. SIM database and SIM data

The dispute over the word “on” concerned whether SIM data had to be stored physically on the SIM card. The court rejected SIMO’s proposed physical-location meaning and adopted UCL’s construction: a SIM database is configured to store SIM data of the SIM card stored in the SIM card read-and-write device. The court relied on the patent specification’s use of “of” and reasoned that SIMO’s interpretation would exclude disclosed embodiments of the patent.

4. “SIM function”

SIMO argued that “the SIM function” was indefinite because the claim did not specify which of the possible functions of a SIM card it meant. The court rejected that argument and held that the term was not indefinite. The court construed it as “the function of a SIM, i.e., a means by which a service provider authenticates a subscriber, thus enabling the subscriber to use her user equipment to enjoy services provided by the service provider.”

Disposition and effect

The court adopted the claim constructions described in the order. This ruling establishes how the disputed terms will be understood in the patent-infringement litigation. The opinion does not state that the court decided whether SIMO infringed the ’780 patent or whether either side was entitled to judgment on infringement.

Judge Edward M. Chen signed the order and dated it March 19, 2020.