DCT
8:19-cv-02404
Hypertext Tech LLC v. Apple Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Hypertext Technologies, LLC (Delaware)
- Defendant: Apple Inc. (California)
- Plaintiff’s Counsel: BURKE, WILLIAMS & SORENSEN, LLP
- Case Identification: 8:19-cv-02404, C.D. Cal., 12/12/2019
- Venue Allegations: Plaintiff alleges venue is proper in the Central District of California because Apple has committed acts of infringement in the district and maintains "several established places of business," including numerous "Apple Store" retail locations within the district.
- Core Dispute: Plaintiff alleges that Defendant’s devices equipped with SMS messaging applications, such as iMessage, infringe a patent related to using embedded links in text messages to retrieve data from the internet, thereby overcoming the size limitations of the SMS protocol.
- Technical Context: The technology addresses the inherent data size constraints of the Short Message Service (SMS) by enabling a small text message to trigger a separate, high-capacity data download from a web server via a wireless internet connection.
- Key Procedural History: The patent-in-suit was originally assigned to KTFreetel Co., Ltd., a South Korean telecommunications company that was later merged into Korea Telecom. The complaint alleges that no product practicing the patent was ever sold by a prior owner, and therefore no patent marking was required.
Case Timeline
| Date | Event |
|---|---|
| 2001-02-06 | ’801 Patent Priority Date |
| 2006-09-26 | ’801 Patent Issue Date |
| 2019-12-12 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,113,801 - "Method For Receiving Data Using SMS And Wireless Internet And System Thereof," issued September 26, 2006
The Invention Explained
- Problem Addressed: At the time of the invention, the Short Message Service (SMS) was limited in its utility because messages had a very small data size (e.g., 140-160 bytes), which prevented the transmission of rich content like images or extensive information (Compl. ¶¶ 29, 31; ’801 Patent, col. 1:43-46). Accessing richer content via the wireless internet was a separate, manual process requiring user initiation (’801 Patent, col. 1:62-65).
- The Patented Solution: The invention describes a method where a user terminal receives an SMS that contains specific instructions: an "application protocol identifier" (e.g., "http") and "URL information." Upon receiving such a message, the terminal is designed to automatically recognize these components, execute a corresponding "IP channel connecting program," and use the URL to connect to a web server and download data, effectively using the SMS as a trigger for a much larger data transfer (’801 Patent, Abstract; col. 4:20-27). This process is intended to automate the bridging of the limited-data SMS world with the rich-data internet world.
- Technical Importance: This technology provided a method to circumvent the inherent size limitations of SMS, allowing it to serve as a gateway to virtually unlimited internet content, which the complaint alleges was a "revolutionary" advance that "opened the door to modern SMS mobile marketing" (Compl. ¶¶ 37, 39).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 5 (Compl. ¶ 53).
- Independent Claim 1 (method):
- Receiving a short message at a user terminal from an SMS server, where the message comprises an "application protocol identifier and URL information."
- Determining an "IP channel-connecting program" that corresponds to the identifier.
- Executing that connecting program.
- Determining an "application program" that corresponds to the identifier.
- Connecting to the web server using the URL and the application program.
- Receiving data from the web server.
- Independent Claim 5 (computer-readable medium): This claim recites a user terminal-readable medium with instructions for performing the same essential method steps outlined in claim 1.
- The complaint alleges infringement of "one or more claims... including independent claims 1 and 5," which preserves the option to assert dependent claims (Compl. ¶ 53).
III. The Accused Instrumentality
Product Identification
- The accused products are "Apple iPhones, which include one or more web browsers and one or more SMS messaging applications, such as the iMessage SMS application" (Compl. ¶¶ 2, 8).
Functionality and Market Context
- The complaint alleges that the accused devices implement functionality to receive an SMS message containing a URL. The messaging application recognizes the URL, making it a "clickable link" (Compl. ¶¶ 34-35). When a user taps the link, the device launches a web browser, which connects to the web server indicated in the URL and retrieves the associated data (e.g., a website) (Compl. ¶ 2). The complaint asserts this feature greatly enhanced the utility of SMS and has been commercially successful (Compl. ¶¶ 36, 40).
IV. Analysis of Infringement Allegations
The complaint alleges that when an Apple device receives a text message containing a URL, the messaging application identifies the "application protocol identifier" (e.g., "http://") and the "URL information." It further alleges that the device's operating system and applications perform the steps of determining and executing programs to connect to the specified web server and receive data, thereby infringing the ’801 Patent. The complaint reproduces Figure 2 from the patent, a block diagram illustrating the components of a user terminal designed to process a short message containing site information (Compl. ¶ 43, p. 9).
’801 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| receiving a short message at said user terminal from said SMS server, wherein said short message comprises at least an application protocol identifier and URL information; | Apple's devices receive SMS text messages via the iMessage application, which can include a URL containing an application protocol identifier (e.g., "http://"). | ¶2 | col. 7:22-25 |
| determining an IP channel-connecting program in correspondence with the application protocol identifier; | The device's software determines the appropriate program (e.g., a web browser) to handle the connection based on the protocol identifier in the URL. | ¶2 | col. 7:26-28 |
| executing the IP channel-connecting program in correspondence with the application protocol identifier; | The device executes the program, for instance when a user taps the link, to initiate the connection to the internet. | ¶2 | col. 7:29-31 |
| determining an application program in correspondence with the application protocol identifier; | The device's software determines the specific application, such as a web browser, to use for connecting to the web server. | ¶2 | col. 7:32-34 |
| connecting said web server in correspondence with said URL using the application program in correspondence with the application protocol identifier; and | The web browser connects to the web server specified in the URL to request data. | ¶2 | col. 7:35-38 |
| receiving said data in correspondence with the application protocol identifier from the web server. | The web browser receives data, such as a webpage, from the web server for display to the user. | ¶2 | col. 7:39-41 |
- Identified Points of Contention:
- Scope Questions: Claim 1 recites two distinct steps: "determining an IP channel-connecting program" and "determining an application program." A potential issue is whether the accused functionality—where the operating system recognizes a URL and launches a single web browser—performs two distinct determination steps as required by the claim, or if it is a single, integrated function.
- Technical Questions: The patent describes a system that may "execute automatically the IP channel connecting program" (’801 Patent, col. 5:52-54). The complaint’s theory appears to rely on a user tapping a link. This raises the question of whether a user-initiated action satisfies the "executing" limitation, or if the claim, read in light of the specification, requires a fully automated process upon message receipt without user intervention.
V. Key Claim Terms for Construction
The Term: "executing the IP channel-connecting program"
Context and Importance: The interpretation of this term is central to infringement. The dispute may turn on whether a user action, such as tapping a link, constitutes "executing" the program, or if the claim requires the program to run automatically upon receipt of the SMS.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself does not explicitly forbid user interaction to trigger the execution. A party could argue that any action that causes the program to run meets the plain meaning of "executing."
- Evidence for a Narrower Interpretation: The specification repeatedly refers to automation. It describes a program that "connects a communication channel automatically according to the short messages" (’801 Patent, col. 4:23-25) and a system that "may execute automatically the IP channel connecting program" (’801 Patent, col. 5:52-54). This could support a construction requiring execution without user input.
The Term: "application protocol identifier"
Context and Importance: The scope of this term defines what type of content within an SMS can trigger infringement. Practitioners may focus on this term because its construction will determine if it covers any standard web protocol (like "http") or is limited to a more specific set of identifiers contemplated by the patent.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Dependent claim 3 explicitly lists "hypertext (HTTP)," "game (GAME)," and "advertisement (ADVER)" as examples, suggesting the term is meant to encompass a variety of known protocol types (’801 Patent, col. 8:46-50).
- Evidence for a Narrower Interpretation: The specification discusses a system where the application protocol "should be registered in the user terminal 410 in advance" and that the terminal determines if the received protocol "is comprised in the application protocol list" (’801 Patent, col. 5:15-19, 5:42-44). This may suggest a more structured system where only pre-defined, registered identifiers qualify, not any arbitrary protocol string.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement, stating that Apple "actively induces, encourages and urges users" to use the accused functionality with knowledge that their actions will constitute infringement (Compl. ¶ 56). It also alleges contributory infringement by asserting there is "no substantial non-infringing use" for the feature of including clickable URLs in messages to overcome SMS byte limits (Compl. ¶ 57).
- Willful Infringement: The complaint alleges that Apple had pre-suit knowledge of the ’801 Patent or was willfully blind to its existence (Compl. ¶ 60). It further contends that any continued infringement after Apple received the complaint would be willful, potentially justifying enhanced damages (Compl. ¶¶ 58, 61).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim interpretation concerning automation: must the claimed method for connecting to the internet be fully automated upon message receipt, as language in the patent specification suggests, or can the "executing" step be satisfied by a user-initiated action, such as tapping a link in the accused iMessage application?
- A key evidentiary question will be one of functional distinction: does the accused iOS software perform two separate and distinct steps of "determining an IP channel-connecting program" and "determining an application program" as required by the claim, or is the process of identifying a URL and launching a web browser a single, integrated function that does not map to the claim’s multi-step language?