DCT
3:18-cv-04111
SMTM Technology LLC v. Apple Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: SMTM Technology, LLC (California)
- Defendant: Apple Inc. (California)
- Plaintiff’s Counsel: Artiga-Purcell Law Office; Gregory Law Group; Richards Patent Law, P.C.
- Case Identification: 3:18-cv-04111, N.D. Cal., 07/10/2018
- Venue Allegations: Venue is alleged to be proper in the Northern District of California because Apple resides in the district, maintains a regular and established place of business there, and has committed alleged acts of infringement in the district.
- Core Dispute: Plaintiff alleges that Defendant’s “Do Not Disturb While Driving” feature, incorporated into its iOS 11 operating system, infringes a patent related to methods for managing mobile device notifications to reduce driver distraction.
- Technical Context: The technology addresses the public safety issue of distracted driving by providing a software-based "inactive mode" for mobile devices that suppresses notifications and can automatically reply to incoming communications.
- Key Procedural History: The complaint states the patent’s inventor, Nick Bovis, first developed a related Android application called “OFF MODE” in 2013, which was subsequently released to the public. The patent-in-suit was assigned from the inventor to the Plaintiff, SMTM Technology, LLC.
Case Timeline
| Date | Event |
|---|---|
| 2013-05-01 | "OFF MODE" application released on the Android platform |
| 2013-06-14 | Earliest Priority Date (U.S. Provisional App. 61/835,234) |
| 2015-02-17 | U.S. Patent No. 8,958,853 Issued |
| 2017-09-19 | Accused Product (iOS 11) Launched by Apple |
| 2018-07-10 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 8,958,853, "Mobile Device Inactive Mode and Inactive Mode Verification," issued February 17, 2015 (the “’853 Patent”).
- The Invention Explained:
- Problem Addressed: The patent identifies driver distraction caused by mobile devices as a serious and growing problem. It notes that prior solutions, such as completely powering down a device, are inconvenient, easy for a driver to forget, and may block urgent or essential communications. (Compl. ¶16; ’853 Patent, col. 1:21-35).
- The Patented Solution: The invention is a system and method for placing a mobile device into an "inactive mode" to reduce distractions. In this mode, the device suppresses notifications (e.g., sounds, vibrations, or screen pop-ups) for incoming communications and can automatically transmit a pre-selected "away message" to the sender. (’853 Patent, col. 2:20-29). The patent describes that this mode can be initiated automatically, for example, upon the pairing of the mobile device with a vehicle via a wireless connection like Bluetooth. (’853 Patent, col. 2:35-37).
- Technical Importance: The technology provides a way to mitigate driver distraction without requiring the user to completely turn off their device, thereby preserving a record of missed communications and allowing for automated replies to inform senders of the user's unavailability. (’853 Patent, col. 2:1-8).
- Key Claims at a Glance:
- The complaint asserts infringement of at least Claim 1 of the ’853 Patent. (Compl. ¶28).
- Independent Claim 1 of the ’853 Patent recites the following essential elements for a mobile device:
- A wireless communication module, a processor, and a memory with instructions.
- Providing a graphical user interface (GUI) for a user to customize functions of the device when it is in an inactive mode.
- Receiving a user selection to automatically initiate the inactive mode in response to the pairing of the mobile device with a vehicle.
- Receiving a user selection of an away message to use when the device is in inactive mode.
- In response to the pairing of the device and vehicle, automatically initiating a process to place the device in inactive mode.
- When in inactive mode and in response to a communication, transmitting the selected away message and suppressing communication cues (sound, visual, or vibration).
- The complaint reserves the right to assert other claims of the ’853 Patent. (Compl. ¶27).
III. The Accused Instrumentality
- Product Identification: The accused instrumentality is the “Do Not Disturb While Driving” feature included in Apple’s iOS 11 operating system for mobile devices such as the iPhone and iPad. (Compl. ¶¶6, 19, 27).
- Functionality and Market Context: The complaint alleges that the accused feature, when activated, causes an iPhone to “stay silent and the screen to stay dark while the user is driving.” (Compl. ¶24). It is alleged that the feature allows a user to configure it to activate automatically when the phone connects to a car’s Bluetooth system. (Compl. p. 9). The feature is also alleged to be capable of sending an automatic reply message to incoming communications and allows the user to customize the content of that message. (Compl. ¶24, p. 9). A screenshot of the settings menu illustrates options for customizing how the feature is activated. (Compl. p. 9).
IV. Analysis of Infringement Allegations
’853 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| providing a graphical user interface through which a user customizes one or more functions of the mobile device when placed in an inactive mode; | Apple’s “Do Not Disturb” feature includes a GUI where a user can customize functions of the mobile device for when it is in the inactive mode. | ¶28, p. 8 | col. 2:62-65 |
| receiving a user selection to automatically initiate the inactive mode in response to the pairing of the mobile device with a vehicle; | The accused feature includes a GUI where the user can select the mode to automatically engage when the mobile device pairs to a vehicle via Bluetooth. | ¶28, p. 9 | col. 2:35-37 |
| receiving a user selection of an away message to use when the mobile device is in inactive mode; | The accused feature includes a GUI where the user can provide a selected away message to use when the mobile device is in inactive mode. A screenshot shows a customizable message field. (Compl. p. 9). | ¶28, p. 9 | col. 8:28-31 |
| in response to the pairing of the mobile device and the vehicle, automatically initiating a process to place the mobile device in inactive mode; | When the user selects the Bluetooth pairing option, the accused functionality automatically engages in response to the pairing and initiates a process to place the device in inactive mode. | ¶28, p. 10 | col. 8:58-62 |
| when the mobile device is in inactive mode, in response to receiving a communication from the wireless communication module, transmitting the user selected away message via the wireless module and suppressing one or more sound, visual, or vibration communication cues that would have accompanied the communication had the mobile device not been in inactive mode. | When accused devices are in inactive mode and receive a communication, they transmit the user-selected away message and suppress sound, visual, or vibration cues. | ¶28, p. 10 | col. 8:14-20 |
- Identified Points of Contention:
- Scope Questions: The complaint’s theory appears to equate the patent’s term "inactive mode" with Apple's "Do Not Disturb While Driving" feature. The defense may scrutinize the specification for any disclosed characteristics of "inactive mode" (e.g., specific application restrictions, certification capabilities) that are not present in Apple's feature to argue for a narrower construction of the term. (’853 Patent, col. 4:9-12).
- Technical Questions: Claim 1 recites both "receiving a user selection to automatically initiate the inactive mode in response to the pairing" and, separately, "in response to the pairing... automatically initiating a process." A question may arise as to whether a user's one-time configuration in a settings menu satisfies both of these limitations, or if the claim requires two distinct events or a more contemporaneous user selection at the time of pairing. The complaint appears to map both limitations to the single act of a user choosing the 'When Connected to Car Bluetooth' option in a settings menu. (Compl. p. 9-10).
V. Key Claim Terms for Construction
The Term: "inactive mode"
Context and Importance: This term is foundational to the asserted claim. Its scope will determine whether Apple's "Do Not Disturb While Driving" feature falls within the patent's boundaries. Practitioners may focus on this term because its definition could either be limited to the core functions recited in Claim 1 or be narrowed by other functionalities described in the specification.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Claim 1 itself defines the mode by its functions: suppressing communication cues and transmitting a user-selected away message upon a triggering event like vehicle pairing. (Compl. ¶28; '853 Patent, col. 29:56-62).
- Evidence for a Narrower Interpretation: The specification describes embodiments where "inactive mode" also restricts the user's access to other device functions like web browsers or applications, and can involve a "certification server" to verify the mode was active. (’853 Patent, col. 2:9-13, col. 9:8-14). A party could argue these are defining characteristics of the invention as a whole.
The Term: "receiving a user selection to automatically initiate the inactive mode in response to the pairing of the mobile device with a vehicle"
Context and Importance: This term is critical to the infringement analysis because the complaint's theory relies on a user's one-time configuration in a settings menu satisfying this limitation. The dispute may center on whether this is a "set-it-and-forget-it" configuration step or a more active step.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes that "inactive mode may be activated by many different mechanisms," including scheduling or pairing, which supports the idea of a pre-configured, automatic trigger. (’853 Patent, col. 7:51-67).
- Evidence for a Narrower Interpretation: The phrasing "receiving a user selection to... initiate" could be argued to imply a more direct, contemporaneous action by the user to trigger the process, rather than a one-time choice in a deep settings menu that configures a future automatic action.
VI. Other Allegations
- Indirect Infringement: The complaint’s formal cause of action is for direct infringement under 35 U.S.C. § 271. (Compl. ¶27). It does not explicitly plead the elements of knowledge and intent required for indirect infringement.
- Willful Infringement: The complaint does not include a formal allegation of willful infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: Can the term "inactive mode", as used in Claim 1, be defined solely by the functions of suppressing notifications and sending automated replies, or will its meaning be narrowed by the court to include additional functionalities described elsewhere in the patent, such as restricting user access to applications or interfacing with a certification server?
- A key infringement question will be one of action versus configuration: Does a user's one-time selection of an option in a settings menu (e.g., "Activate... When Connected to Car Bluetooth") satisfy the claim limitation of "receiving a user selection to automatically initiate the inactive mode," or does the claim language require a more direct user action closer in time to the actual initiation of the mode?