Malikie Innovations Ltd v. Ubiquiti Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Malikie Innovations Ltd. and Key Patent Innovations Ltd. (Ireland)
  • Defendant: Ubiquiti Inc. f/k/a Ubiquiti Networks, Inc. (Delaware)
  • Plaintiff’s Counsel: Reichman Jorgensen Lehman & Feldberg LLP
• Case Identification: 1:26-cv-11017, N.D. Ill., 09/10/2026
• Venue Allegations: Venue is based on allegations that Defendant maintains a regular and established place of business, including a research and development office, in Chicago, Illinois, and has committed acts of infringement within the district.
• Core Dispute: Plaintiffs allege that Defendant’s wireless networking products and video cameras infringe four patents, originally developed by BlackBerry Ltd., related to LDPC error correction, communication of cellular network information over WLANs, Quality of Service for management traffic, and video compression.
• Technical Context: The technologies at issue concern foundational elements of modern wireless communication and video coding standards (e.g., IEEE 802.11/Wi-Fi, AV1), which are critical for performance and interoperability in the market for connected devices.
• Key Procedural History: The patents-in-suit originate from BlackBerry Ltd. Plaintiffs allege that they and their predecessor-in-interest, BlackBerry, provided Defendant with notice of infringement of certain patents-in-suit beginning in March 2021. The complaint states that the patents are related to the IEEE 802.11 and Wi-Fi Alliance Passpoint standards, for which BlackBerry has made commitments to license on fair, reasonable, and non-discriminatory (FRAND) terms. Plaintiffs allege that Defendant never responded to numerous licensing outreach attempts, which forms the basis for their willfulness allegations.

Case Timeline

Date	Event
2003-10-30	Earliest Priority Date for ’311 Patent
2004-10-12	Earliest Priority Date for ’934 Patent
2010-03-15	Earliest Priority Date for ’383 Patent
2010-06-29	’934 Patent Issued
2016-02-05	Earliest Priority Date for ’989 Patent
2017-04-04	’311 Patent Issued
2017-04-04	’383 Patent Issued
2020-09-15	’989 Patent Issued
2021-03-18	First alleged notice of infringement of ’311 Patent sent to Defendant
2023-10-04	Alleged offer to license portfolio sent to Defendant
2024-09-13	Alleged specific FRAND royalty rate offered to Defendant
2025-05-09	First alleged notice of infringement of ’383 Patent sent to Defendant
2026-09-10	Complaint Filed

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

U.S. Patent No. 7,747,934 (the "’934 Patent") - "Method for selecting low density parity check (LDPC) code used for encoding of variable length data," issued June 29, 2010.

The Invention Explained

• Problem Addressed: The patent's background describes the challenge of selecting an appropriate low-density parity-check (LDPC) error correction code when dealing with data of variable lengths and different transmission mechanisms. Using standard techniques like shortening and puncturing can make it difficult to preserve coding gain while minimizing complexity Compl. ¶36 ’934 Patent, col. 1:66-2:9
• The Patented Solution: The invention discloses a method for selecting an optimal LDPC code from a plurality of available codes. The method involves systematically calculating the number of "shortening" and "puncturing" bits required for each potential code and then determining which code best meets a given performance criterion, such as preserving the original code rate or maximizing performance ’934 Patent, abstract ’934 Patent, col. 7:17-23 This selection can be based on factors like a normalized shortening-to-puncturing ratio to balance performance and complexity Compl. ¶39 ’934 Patent, col. 11:11-23
• Technical Importance: The method provides a structured approach to adapt powerful LDPC error-correction codes for real-world wireless systems where data packet sizes vary, which is essential for maintaining reliable and efficient communication Compl. ¶¶36-37

Key Claims at a Glance

• The complaint asserts independent claims 1 (a method) and 10 (a device) Compl. ¶41
• The essential elements of independent claim 1 include:
  • providing a plurality of LDPC codes of different codeword lengths and code rates;
  • calculating a number of shortening bits and puncturing bits for each of the plurality of LDPC codes;
  • providing a performance criterion;
  • determining, in a computer processor, a selected LDPC code from the plurality of codes that meets the performance criterion; and
  • encoding data using the selected LDPC code.
• The complaint reserves the right to assert additional claims Compl. ¶41

U.S. Patent No. 9,615,311 (the "’311 Patent") - "Methods and Apparatus for the Communication of Cellular Network Information Between a Wireless Local Area Network and a Mobile Station," issued April 4, 2017.

The Invention Explained

• Problem Addressed: The patent identifies a lack of existing protocols for a Wireless Local Area Network (WLAN), such as a Wi-Fi hotspot, to advertise the availability of nearby cellular networks to a mobile device Compl. ¶47 ’311 Patent, col. 1:31-35 This makes it difficult for a device to efficiently discover and switch to a cellular network.
• The Patented Solution: The invention describes a method where a WLAN obtains information about available cellular networks (e.g., Mobile Country and Network Codes, or MCC/MNC pairs) and transmits this information to a mobile station inside a "generic container." This transmission occurs during a standard WLAN procedure, such as the Extensible Authentication Protocol (EAP), allowing the mobile device to learn about and select a cellular network without conducting a conventional, power-intensive cellular scan ’311 Patent, abstract ’311 Patent, col. 10:60-66
• Technical Importance: This technology facilitates seamless handoffs between Wi-Fi and cellular networks, a feature integral to modern mobile user experiences like Wi-Fi calling and automatic, secure connection to public Wi-Fi hotspots via standards like Passpoint Compl. ¶48

Key Claims at a Glance

• The complaint asserts at least independent claim 1 (a method) Compl. ¶50
• The essential elements of independent claim 1 include:
  • obtaining, by a WLAN, cellular network information (including MNC and MCC) for an available 3GPP network;
  • transmitting a "generic container" from the WLAN to a mobile station during a process such as EAP;
  • wherein the generic container is defined by an IEEE 802.11 standard and includes a container field holding the cellular network information (e.g., the MNC/MCC pair); and
  • the mobile station uses this information to select a 3GPP network to access.
• The complaint reserves the right to assert additional claims Compl. ¶50

U.S. Patent No. 9,615,383 (the "’383 Patent") - "Negotiation of Quality of Service (QoS) Information for Network Management Traffic in a Wireless Local Area Network (WLAN)," issued April 4, 2017.

• Technology Synopsis: The patent addresses an issue in WLANs where all network management frames are handled with the highest priority, which can adversely affect the quality of service for time-sensitive data traffic like voice calls Compl. ¶57 The invention provides a method for a station and an access point to negotiate a Management Frame Quality of Service (MFQ) policy, allowing for different types of management frames to be assigned different priorities, thereby improving overall network performance and QoS Compl. ¶57
• Asserted Claims: At least independent claim 7 (a method for an access point) is asserted Compl. ¶59
• Accused Features: Ubiquiti products that implement 802.11 standards, such as the Unifi AC Pro and Unifi U6 Pro, are accused of infringing by allegedly implementing the claimed method for handling QoS for management frames Compl. ¶59

U.S. Patent No. 10,778,989 (the "’989 Patent") - "Rolling intra prediction for image and video coding," issued September 15, 2020.

• Technology Synopsis: The patent addresses inefficiencies in the "intra-prediction" stage of video compression, where predicting pixel values based only on neighboring, previously reconstructed blocks can lead to visual artifacts Compl. ¶66 ’989 Patent, col. 1:49-52 The invention proposes a "rolling intra prediction" method where, to predict a pixel's value, the encoder can use other pixels that have already been predicted within the same block, in addition to pixels from neighboring blocks. This process is alleged to reduce discontinuities and allow for more parallel processing ’989 Patent, abstract Compl. ¶66
• Asserted Claims: At least independent claim 10 (a method for encoding) is asserted Compl. ¶67
• Accused Features: Ubiquiti cameras that support AV1 video encoding are accused of infringing, with the complaint alleging that the AV1 standard implements the claimed rolling intra-prediction process Compl. ¶67

III. The Accused Instrumentality

Product Identification

• The complaint identifies a broad range of Ubiquiti's networking and camera products, including various models from the UniFi series of access points (e.g., UAP-AC-PRO, U6-Lite, U7-Pro), gateways (UniFi Express Gateway), and cameras that support AV1 video encoding Compl. ¶¶41, 50, 59, 67

Functionality and Market Context

• The accused products are hardware and software for wireless networking and video surveillance. The complaint alleges that these products gain their functionality by implementing industry standards such as IEEE 802.11 (Wi-Fi), Wi-Fi Alliance Passpoint, and AV1 video coding Compl. ¶¶5, 41, 50, 67 The infringement allegations are premised on the theory that compliance with these standards requires the use of Plaintiffs' patented technologies. The products operate in the large and competitive markets for enterprise/prosumer networking equipment and security cameras.

IV. Analysis of Infringement Allegations

The complaint references exemplary claim charts in Exhibits 5, 6, 7, and 8, which were not provided as part of the filed complaint document. As such, a tabular analysis is not possible. No probative visual evidence provided in complaint. The narrative infringement theories are summarized below.

• ’934 Patent Infringement Allegations
  The complaint alleges that Defendant’s products supporting IEEE 802.11 standards, which use LDPC coding, directly infringe at least claims 1 and 10 of the ’934 Patent Compl. ¶41 The infringement theory suggests that to comply with the standard for variable-length data transmission, these products must necessarily practice the claimed method of selecting an LDPC code by calculating shortening and puncturing bits to meet a performance criterion Compl. ¶¶36-40 The specific mapping of product functions to claim elements is referenced in the unprovided Exhibit 5 Compl. ¶41

• ’311 Patent Infringement Allegations
  The complaint alleges that Defendant's products compliant with the Wi-Fi Alliance Passpoint standard directly infringe at least claim 1 of the ’311 Patent Compl. ¶50 The theory is that Passpoint-compliant devices, by definition, must perform the claimed method. Specifically, an access point must obtain cellular network information (e.g., MCC/MNC pairs) and transmit it to a mobile station within a "generic container" during an authentication procedure to enable seamless network discovery and selection Compl. ¶¶47-48 The detailed infringement mapping is located in the unprovided Exhibit 6 Compl. ¶50

• Identified Points of Contention:

  • Standards-Essentiality: For the ’934, ’311, and ’383 patents, a primary point of contention will likely be whether compliance with the relevant IEEE 802.11 and Wi-Fi Alliance standards requires the practice of the claimed inventions. The complaint’s theory relies on this premise (Compl. ¶¶41, 50, 59), but a key question for the court will be whether the standards permit non-infringing alternative implementations.
  • Technical Operation: For the ’989 Patent, a core technical question will be whether the AV1 video encoding standard, as implemented in Defendant's cameras, actually performs the "rolling intra prediction" as defined by the claims. The analysis will likely focus on whether the accused prediction mechanism uses previously predicted pixels from the same block as inputs in the specific manner required by the patent.

V. Key Claim Terms for Construction

• From the ’934 Patent:

  • The Term: "performance criterion" (from claim 1)
  • Context and Importance: The selection of the LDPC code is entirely dependent on meeting this "criterion." Its construction will determine whether the logic used in the accused products to select an error correction code falls within the scope of the claim. Practitioners may focus on this term because its functional nature makes its scope—whether broad and goal-oriented or narrow and specific—a central point of dispute.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes the criteria in general terms, such as to "Keep the performance i.e. the coding gain as high as possible," "Use as few modulated symbols as possible," and "Keep the overall complexity at a reasonable level" ’934 Patent, col. 12:26-34 This language may support a construction covering any selection process that balances these competing technical goals.
    • Evidence for a Narrower Interpretation: The patent also discloses highly specific criteria, such as "a maximum for normalized shortening to puncturing ratio" or "a minimum for N_punctured" Compl. ¶¶38-39 A party may argue that the term should be limited to these or similarly specific mathematical or algorithmic benchmarks disclosed in the patent.

• From the ’311 Patent:

  • The Term: "generic container" (from claim 1)
  • Context and Importance: The invention's method of communicating cellular data relies on this "container." The definition of "generic" is critical to determining whether the data structures used in Passpoint-compliant products, like those of the Defendant, infringe.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification states that the message is "not technology or standard-specific and therefore it may contain cellular network information from a variety of different cellular networks" (’311 Patent, col. 11:61-12:9, as cited in Compl. ¶48). This could support a broad definition where any data structure capable of encapsulating information from different cellular standards qualifies as "generic."
    • Evidence for a Narrower Interpretation: A party could argue that the claim itself limits the term by requiring the container to be "defined by an IEEE 802.11 standard" and its content "configured according to a 3GPP cellular standard" ’311 Patent, claim 1 This language may support a narrower construction tied to the specific data formats defined or contemplated by those standards bodies.

VI. Other Allegations

• Indirect Infringement: Plaintiffs allege both induced and contributory infringement for all four patents. The inducement claims are based on allegations that Defendant provides instructions and marketing materials that encourage customers to use the accused products in an infringing manner Compl. ¶¶43, 52, 61, 69 The contributory infringement claims are based on allegations that Defendant's products are a material part of the invention, are not staple articles of commerce, and have no substantial non-infringing uses due to their compliance with the allegedly infringing standards Compl. ¶¶44, 53, 62, 70
• Willful Infringement: Plaintiffs allege that Defendant's infringement was willful, pointing to a series of letters sent starting in March 2021 that allegedly provided pre-suit notice of infringement for the ’311 and ’383 patents Compl. ¶¶15-18 The complaint asserts that Defendant never responded to any of these communications, which included offers to license on FRAND terms, yet continued its alleged infringement Compl. ¶19 Compl. ¶54 Compl. ¶63

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

• A central issue will be one of standards-essentiality: For the patents related to wireless networking ('934, '311, '383), can Plaintiffs demonstrate that compliance with the IEEE 802.11 and Wi-Fi Alliance Passpoint standards necessarily results in infringement, or can Defendant show that its products utilize non-infringing implementations permissible under those same standards?
• A key evidentiary question will be one of technical equivalence: For the video coding patent ('989), does the AV1 compression algorithm, as implemented in Defendant's cameras, perform the specific "rolling intra prediction" method recited in the claims, or is there a fundamental mismatch in technical operation between the patent's disclosure and the accused functionality?
• A third question concerns FRAND obligations and willful conduct: The case will likely examine the interplay between the patents' alleged standards-essential status and the parties' conduct. A court may need to determine if Plaintiffs' licensing offers were consistent with their FRAND commitments and whether Defendant's alleged refusal to engage in negotiations constitutes bad faith, which could significantly influence remedies, including the availability of an injunction and the potential for enhanced damages.