DCT

2:18-cv-02472

Ironworks Patents LLC v. TCL Communication Technology Holdings Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:18-cv-02472, C.D. Cal., 03/27/2018
  • Venue Allegations: Venue is alleged to be proper for Defendant TCT Mobile (US) Inc. because it has a regular and established place of business in the district. For the foreign-domiciled defendants, venue is asserted under 28 U.S.C. § 1391(c)(3), which permits suing non-U.S. residents in any judicial district.
  • Core Dispute: Plaintiff alleges that Defendant’s smartphones and other mobile wireless devices infringe three U.S. patents related to mobile device user interfaces, including methods for predictive text input, silencing incoming call alerts, and providing differentiated haptic feedback.
  • Technical Context: The technologies at issue concern fundamental user interface functionalities that became central to the operation and user experience of modern smartphones and portable electronic devices.
  • Key Procedural History: The complaint alleges that the patents' prior owner, MobileMedia Ideas, LLC ("MMI"), engaged in licensing discussions with Defendant TCL for over seven years prior to the litigation. This history, which allegedly included notice letters and the provision of claim charts beginning in 2010, is presented as the basis for the willful infringement claim.

Case Timeline

Date Event
1995-12-13 Earliest Priority Date for U.S. Patent No. RE39,231
1996-11-25 Earliest Priority Date for U.S. Patent No. 6,002,390
1999-12-14 Issue Date for U.S. Patent No. 6,002,390
2000-11-21 Earliest Priority Date for U.S. Patent No. 9,521,269
2006-08-08 Issue Date for U.S. Patent No. RE39,231
2010-09-28 MMI (prior owner) allegedly sends notice letter to TCL
2012-06-28 Alleged date of TCL's knowledge of infringement for '231 & '390 patents
2016-12-13 Issue Date for U.S. Patent No. 9,521,269
2018-03-27 Complaint Filing Date

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

U.S. Reissue Patent No. RE39,231 - “Communication terminal equipment and call incoming control method,” Issued August 8, 2006

The Invention Explained

  • Problem Addressed: The patent describes the social inconvenience of an incoming call on a mobile phone: letting the alert sound ring continuously can disturb those nearby, but abruptly taking the phone "off-hook" to silence it can give the caller the unpleasant impression that the circuit was intentionally broken. (RE39,231 Patent, col. 1:21-38).
  • The Patented Solution: The invention provides a way to discreetly manage an incoming call alert. A user performs a "predetermined operation," such as a short press of the power key, which controls the device to "change a volume of the generated alert sound" (e.g., mute it) for the current call only. This action does not affect the volume setting for future calls and, critically, leaves the "call ringing state, as perceived by the remote caller... unchanged." (RE39,231 Patent, Abstract; col. 3:1-7).
  • Technical Importance: This offered a nuanced solution to a common problem with early mobile phones, allowing users to silence an unwanted ringtone in a specific instance without rejecting the call or altering the device's general settings. (RE39,231 Patent, col. 4:1-5).

Key Claims at a Glance

  • Independent claim 12 is asserted (Compl. ¶54).
  • The essential elements of independent claim 12 are:
    • An alert sound generator for generating an alert sound for a received call.
    • Control means for controlling the alert sound generator.
    • Means for specifying a predetermined user operation.
    • Wherein the user operation causes the control means to change the alert sound's volume only for the received call, without affecting future call volumes and without changing the call ringing state perceived by the remote caller.
    • An RF signal processing means and antenna that establish the call ringing state.
  • The complaint also asserts dependent claim 2 (Compl. ¶69).

U.S. Patent No. 6,002,390 - “Text input device and method,” Issued December 14, 1999

The Invention Explained

  • Problem Addressed: The patent identifies the inefficiency of text input on early portable "pen-input" computers, which lacked hardware keyboards. Both handwritten character recognition and tapping on a small on-screen "soft keyboard" were described as slow, fatiguing, and time-consuming. ('390 Patent, col. 1:11-49).
  • The Patented Solution: The invention discloses a method to accelerate text entry. As a user inputs characters on a virtual keyboard, the device uses the partial text string as a "retrieval condition" to search a dictionary and display a list of "candidate words." The user can then select the desired full word from the list instead of typing it completely. This list of candidates "dynamically change[s]" as the user adds more characters to the input. The system also retrieves from a dictionary of "exemplary phrases" to predict subsequent words. ('390 Patent, Abstract; col. 5:32-44).
  • Technical Importance: This predictive text system provided a significant improvement in input speed and efficiency for portable devices, a critical development for the usability of PDAs and early smartphones. ('390 Patent, Fig. 24).

Key Claims at a Glance

  • Independent claim 18 is asserted (Compl. ¶77).
  • The essential elements of independent claim 18 are:
    • A display step of displaying a virtual keyboard.
    • An input step of pointing at keys on the virtual keyboard.
    • A retrieval step of retrieving candidate words from a dictionary using the key input as a retrieval condition.
    • The retrieval condition and the candidate words are dynamically changed as the key input operation state changes.

U.S. Patent No. 9,521,269 - “Method of giving the user information and portable device,” Issued December 13, 2016

  • Technology Synopsis: This patent describes a system for conveying information to a user through silent, tactile alerts. The invention uses a tactile alert device (e.g., a vibration motor) to generate "distinctly humanly perceptibly different" vibration patterns in response to different events, allowing the user to understand the device's status without audio or visual cues. ('269 Patent, Abstract; col. 6:5-12).
  • Asserted Claims: The complaint asserts independent claim 1 and dependent claims 5, 9, 11, 16, and 17 (Compl. ¶¶93, 103, 108, 113, 118, 123).
  • Accused Features: The accused functionality is the use of different vibration patterns for different events on certain TCL smartphones. Specifically, the complaint alleges the devices generate a first vibration pattern for a "successful fingerprint scan" and a distinctly different second pattern for an "incoming phone call." (Compl. ¶¶94, 99).

III. The Accused Instrumentality

Product Identification

  • The complaint names a range of wireless mobile devices manufactured and sold by TCL, including smartphones under the Alcatel brand (e.g., Idol series, A-series, Go Flip, Pop4S) and the BlackBerry brand (e.g., KeyOne) (Compl. ¶¶55, 78, 94).

Functionality and Market Context

  • The complaint accuses three core functionalities across the named products:
    1. Call Silencing: The ability to silence an incoming ringtone by pressing a volume key or flipping the phone over, which allegedly changes the volume for the current call only while leaving the remote caller's "ringing state" perception unchanged (Compl. ¶¶59-62).
    2. Predictive Text: A virtual keyboard feature that dynamically displays suggested words from a dictionary as a user types, allowing for faster text entry (Compl. ¶¶81-84).
    3. Haptic Feedback: The use of distinct vibration patterns to notify the user of different events, specifically a successful fingerprint scan versus an incoming call (Compl. ¶¶99-100).
  • The complaint asserts that TCL is a major market participant, ranking as the seventh-largest global handset and tablet manufacturer and the fourth-largest handset manufacturer in North America as of 2016 (Compl. ¶¶6-7). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

RE39,231 E Infringement Allegations

Claim Element (from Independent Claim 12) Alleged Infringing Functionality Complaint Citation Patent Citation
an alert sound generator for generating the alert sound when the call is received from the remote caller; The accused smartphones include a loudspeaker and associated circuitry that generate a ringtone for incoming calls (¶58). ¶58 col. 2:40-42
control means for controlling said alert sound generator; and The accused smartphones include control means for controlling the alert sound, for example by muting the ringtone (¶59). ¶59 col. 2:20-22
means for specifying a predetermined operation by the user, wherein when said alert sound generator is generating the alert sound and said means for specifying said predetermined operation is operated by the user, said control means controls said alert sound generator to change a volume of the generated alert sound only for the received call... The user performs a predetermined operation by pressing the volume key or turning over the phone (¶60). This action silences the ringtone for the current call only, without affecting future call volumes (¶61-62). ¶60-62 col. 3:1-7
...without affecting the volume of the alert sound for future received calls, while leaving a call ringing state, as perceived by the remote caller, of the call to the terminal from the remote caller unchanged, The ringtone is silenced while "leaving a call ringing state, as perceived by the remote caller, unchanged" (¶62). ¶62 col. 3:5-7
further comprising: RF signal processing means for transmitting and/or receiving radio waves; and an antenna for transmitting and/or receiving said radio waves, wherein said call ringing state... is established by said transmitted and/or received radio waves. The smartphones include RF signal processing means and an antenna to transmit and receive radio waves, which establish the call ringing state between the device and the remote caller (¶63-64). ¶63-64 col. 2:32-35
  • Identified Points of Contention:
    • Scope Questions: Claim 12 recites "means for specifying a predetermined operation." The patent specification consistently discloses this structure as a CPU programmed to respond to a short press of the power key (RE39,231 Patent, col. 3:1-7). A central question for the court will be whether the accused operations—pressing a volume key or flipping the phone—are structurally equivalent to the disclosed power key operation under 35 U.S.C. § 112(f).
    • Technical Questions: The claim requires that the silencing action leaves the "call ringing state, as perceived by the remote caller... unchanged." A factual question is what evidence demonstrates that the accused devices' silencing function does not transmit any signal to the cellular network that would alter the ringback tone heard by the caller.

6,002,390 Patent Infringement Allegations

Claim Element (from Independent Claim 18) Alleged Infringing Functionality Complaint Citation Patent Citation
a display step of displaying a virtual keyboard having at least a plurality of keys for character input; The accused smartphones display a virtual keyboard with keys for character input (¶81). ¶81 col. 4:50-54
an input step of pointing at least each key on the virtual keyboard to perform key input by the virtual keyboard; and Users "point to" keys on the virtual keyboard to input text (¶82). ¶82 col. 5:10-21
a retrieval step of retrieving a plurality of candidate words from a dictionary storing a plurality of candidate words and a plurality of exemplary phrases, using the key input performed from the virtual keyboard... as a retrieval condition; The devices retrieve candidate words from a dictionary using the typed characters as a retrieval condition (¶83). ¶83 col. 6:10-21
the retrieval condition and the candidate words being dynamically changed in accordance with a change in a key input operation state of the virtual keyboard at the input step. The suggested candidate words change dynamically as the user types more characters (¶84). ¶84 col. 6:22-25
  • Identified Points of Contention:
    • Scope Questions: The '390 patent, filed in 1996, is grounded in the technology of that era, repeatedly referencing a "pen-input computer" and a "pointing device" like a stylus ('390 Patent, col. 1:11-14). This raises the question of whether the claim term "pointing," in the context of the specification, can be construed to cover modern finger-based input on a capacitive touchscreen.
    • Technical Questions: Claim 18 requires retrieving words from a dictionary that stores "a plurality of exemplary phrases." The complaint alleges retrieval of "candidate words from a dictionary" (Compl. ¶83) but does not specify that the dictionary contains "exemplary phrases" used for prediction. An evidentiary question is whether the accused devices' dictionaries function as required by the claim or use a different predictive model (e.g., word frequency alone).

V. Key Claim Terms for Construction

Term from the ’231 Patent: "means for specifying a predetermined operation" (Claim 12)

  • Context and Importance: This is a means-plus-function limitation under 35 U.S.C. § 112(f). Its scope is not its plain meaning but is restricted to the specific structure disclosed in the specification for performing the function, and its equivalents. The infringement case for this patent may turn on whether the accused "volume key" or "phone flip" gestures are deemed equivalent to the patent's disclosed structure.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A party might argue the function is primary: to provide a simple, single user action to temporarily silence a call without rejection. The specification's focus on user convenience (RE39,231 Patent, col. 1:44-48) could support interpreting "equivalents" to include other simple hardware inputs that achieve the same user-friendly result.
    • Evidence for a Narrower Interpretation: The specification repeatedly and exclusively discloses the structure as a CPU programmed to differentiate between a short press and a long press of the power key (RE39,231 Patent, col. 3:1-7, Fig. 3). A party may argue that a volume key is a non-equivalent structure, as it is a physically separate component with a different primary purpose.

Term from the ’390 Patent: "pointing at least each key on the virtual keyboard" (Claim 18)

  • Context and Importance: Practitioners may focus on this term because the patent's technological context is "pen-input" devices. The construction of "pointing" will determine if the claim, drafted in 1996, can reach modern finger-touch interfaces.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A party could argue that "pointing" should be given its ordinary meaning of "indicating" a target, regardless of the instrument. The objective of the invention—efficient text entry on a screen—is technology-agnostic and applies equally to pen and finger input.
    • Evidence for a Narrower Interpretation: The specification is replete with references to "pen-input computer," "pointing device," "input pen," and a "pressure-sensitive tablet" ('390 Patent, col. 1:11, 4:55-58, Abstract). A party could argue these repeated descriptions limit the scope of "pointing" to the use of a stylus-like instrument, distinguishing it from finger input on a capacitive screen.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement to infringe. It claims TCL provides user guides, technical documentation, and other support materials that instruct and encourage customers to use the accused features, such as predictive text and call silencing, thereby causing direct infringement by end-users (Compl. ¶¶31, 91).
  • Willful Infringement: The willfulness allegation is based on alleged pre-suit knowledge. The complaint asserts that TCL was notified of the '390 and '231 patents as early as September 2010 by the previous patent owner, and that claim charts demonstrating infringement were presented in a meeting in June 2012. TCL's continued sales of accused products despite this alleged long-standing knowledge form the basis of the claim for willful and deliberate infringement (Compl. ¶¶33-40, 128).

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

This case presents several classic patent litigation questions concerning claim scope, technological evolution, and pre-suit conduct. The outcome will likely depend on the court's resolution of these central issues:

  1. A core issue will be one of structural equivalence: for the '231 patent, can the accused acts of pressing a volume button or flipping a phone be deemed equivalent under § 112(f) to the patent’s disclosed structure of a CPU programmed to respond specifically to a power key press?

  2. A key question will be one of definitional scope: for the '390 patent, does the term "pointing", which is rooted in the 1996 technological context of "pen-input computers," encompass modern finger-based input on capacitive touchscreens, or is its meaning limited by the patent's specific disclosures?

  3. A significant evidentiary battle may concern willfulness: given the detailed allegations of notice dating back to 2010, the court will have to weigh the evidence regarding TCL's state of mind and decide whether its conduct rose to the level of egregious misconduct justifying enhanced damages.