DCT
3:23-cv-03287
New Millennium Software International, L.L.C. v. Starship Technologies, Inc.
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: New Millennium Software International, L.L.C. (Maryland)
- Defendant: Starship Technologies, Inc. (Delaware/California) and Starship Technologies OÜ (Estonia)
- Plaintiff’s Counsel: Kheyfits Belenky LLP
- Case Identification: 3:23-cv-03287, N.D. Cal., 06/30/2023
- Venue Allegations: Venue is alleged to be proper in the Northern District of California based on Defendant Starship Technologies, Inc. maintaining its headquarters and a regular and established place of business in the district. For the foreign defendant, Starship Technologies OÜ, venue is alleged based on its status as a foreign corporation.
- Core Dispute: Plaintiff alleges that Defendants’ robotic delivery system, which allows for remote monitoring and piloting, infringes a patent related to systems and methods for creating a remote virtual presence.
- Technical Context: The technology concerns teleoperations, specifically the remote control of robotic devices to provide a user with a real-time, interactive experience of a distant environment via streamed media.
- Key Procedural History: The complaint alleges that Plaintiff notified Defendants of the patent-in-suit and their alleged infringement via a letter on December 7, 2022. Subsequent communications are alleged, including Plaintiff providing claim charts in March 2023, followed by unsuccessful attempts to engage in licensing discussions. These allegations of pre-suit notice may form the basis for a willfulness claim.
Case Timeline
| Date | Event |
|---|---|
| 2012-07-05 | U.S. Patent No. 8,831,780 Priority Date (Application Filing) |
| 2014-09-09 | U.S. Patent No. 8,831,780 Issued |
| 2022-12-07 | Plaintiff allegedly sent notice letter to Defendants |
| 2023-03-03 | Plaintiff allegedly sent requested claim chart to Defendants |
| 2023-06-30 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,831,780 - "System And Method For Creating Virtual Presence," Issued September 9, 2014
The Invention Explained
- Problem Addressed: The patent asserts that prior art solutions like travel websites or webcams fail to provide a "true virtual experience" because the user has no meaningful control over the video feed and cannot interact with the remote environment, limiting the sense of "presence" (Compl. ¶14; ’780 Patent, col. 1:41-60).
- The Patented Solution: The invention proposes a "Global Virtual Presence" (GVP) platform that integrates telecommunications and robotics. A user operates a "Virtual Presence Terminal" (VPT) to send control directives over a network to a remote "Robotic Virtual Explorer Device" (RVED). The RVED, equipped with cameras, captures and streams media back to the user in real-time, allowing the user to control their "presence vantage point" (Compl. ¶15; ’780 Patent, col. 2:12-25). The overall system architecture, depicted in Figure 1, involves the user's terminal (VPT), a terminal control unit (VPT CCU), a robot control unit (RVED CCU), and the robot itself (RVED), connected via a Wide Area Network (WAN) (’780 Patent, Fig. 1).
- Technical Importance: The invention aimed to provide a scalable, low-cost system that would allow users to experience remote locations interactively using common personal devices like PCs and smartphones, moving beyond passive viewing (’780 Patent, col. 1:61-2:8).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 1 (Compl. ¶25).
- Independent Claim 1 (System Claim) Elements:
- At least one virtual presence terminal (VPT) configured to provide a user with a virtual presence interface;
- At least one robotic virtual explorer device (RVED) configured to acquire a virtual presence media, the RVED is controllable by the user via the virtual presence interface;
- At least one VPT Command and Control Unit (CCU) connected to the VPT, configured to process and send operational directives and receive/render the virtual presence media;
- At least one RVED Command and Control Unit (CCU) connected to the RVED, configured to process and send operational directives to the RVED and to receive/process virtual presence media from the RVED;
- Wherein the VPT CCU is connected to the RVED CCU over a wide area network;
- Wherein the user connects to the RVED via the virtual presence interface and sends operational directives to the VPT CCU;
- Wherein the VPT CCU sends the operational directives to the RVED CCU, which provides them to the RVED over a wireless connection;
- Wherein the RVED acquires and provides the virtual presence media to the RVED CCU over the wireless connection, which sends it to the VPT CCU over the wide area network;
- Wherein the VPT CCU provides the virtual presence media to the VPT virtual presence interface;
- A virtual geo-fence is mapped to a toured area containing movement of the RVED; and
- Wherein the RVED is continuously controlled via virtual reality controls and is configured to display a video feed as a virtual reality.
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is "Starship's Remote Monitoring and Piloting System" (the "Accused System"), which the complaint characterizes as a "Global Virtual Presence (GVP) system" (Compl. ¶¶1, 25).
Functionality and Market Context
- The complaint alleges the Accused System is a Teleoperated Driving (ToD) solution for remotely monitoring and operating delivery robots (Compl. ¶25). This system allows remote operators to use a terminal to control the robots over a network, such as a 5G network, and receive video feeds from the robots' cameras (Compl. ¶¶25-27). The complaint references visual evidence described as showing Starship's delivery robots being monitored and operated by remote operators (Compl. ¶25, Exs. 1-4). The system is alleged to implement features of 5G Automotive Association (5GAA) standards (Compl. ¶25).
IV. Analysis of Infringement Allegations
’780 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| at least one virtual presence terminal (VPT) configured to provide a user with a virtual presence interface | The "ToD Operator Terminal," which provides an operator with an interface including video feed, audio, and control software (the "ToD Operator App"). The complaint includes a visual described as showing this terminal. | ¶26 | col. 18:46-52 |
| at least one robotic virtual explorer device (RVED) configured to acquire a virtual presence media... | The "Starship Robot," which is allegedly configured to acquire virtual presence media (e.g., video feed from its cameras) and is controllable by the operator. | ¶27 | col. 18:53-58 |
| at least one VPT Command and Control Unit (CCU) connected to the VPT... | The "Starship ToD Application Server (AS)," which is allegedly connected to the operator terminal and configured to process and send operational directives (e.g., trajectory instructions) and receive/render media. | ¶28 | col. 18:59-64 |
| at least one RVED Command and Control Unit (CCU) connected to the RVED... | A "User Plane Function (UPF)" connected to the Starship Robot via a 5G Radio Access Network (RAN), allegedly configured to process and send directives to the robot and process media received from it. | ¶29 | col. 18:65-col. 19:6 |
| the VPT CCU is connected to the RVED CCU over a wide area network | The VPT CCU (ToD Application Server) is allegedly connected to the RVED CCU (UPF) over a WAN, such as a "WAN-cloud exchange." | ¶30 | col. 19:7-9 |
| a virtual geo-fence is mapped to a toured area containing movement of the RVED | The Accused System allegedly includes a "virtual geo-fence, such as geo-fence mapped closed environments and/or predetermined routes." | ¶35 | col. 19:11-13 |
| the RVED is continuously controlled via virtual reality controls, and is configured to display a video feed as a virtual reality | The Starship Robot is allegedly continuously controlled via "virtual reality controls" (e.g., manual takeover controls) and displays a video feed (e.g., 360-stereo video) as a "virtual reality." | ¶36 | col. 19:14-17 |
- Identified Points of Contention:
- Scope Questions: A central question may be whether the term "robotic virtual explorer device" (RVED), described in the patent in the context of exploring "unreachable and beautiful places on earth" ('780 Patent, col. 4:17-19), can be construed to read on a commercial delivery robot whose primary function is logistics rather than exploration. Similarly, the interpretation of "toured area" as used in the geo-fence limitation may be disputed, raising the question of whether a predetermined commercial delivery route qualifies.
- Technical Questions: The complaint maps the patent's "VPT CCU" and "RVED CCU" to specific components of a 5G network architecture (ToD Application Server and User Plane Function, respectively) (Compl. ¶¶28-29). A key technical question will be whether these accused components, as they actually function within the Accused System, perform all the processing, sending, and receiving functions required by the claim limitations for a "VPT CCU" and "RVED CCU". The complaint alleges these functions based on 5GAA technical documents, but the specific implementation by Defendants will be scrutinized.
V. Key Claim Terms for Construction
The Term: "robotic virtual explorer device (RVED)"
- Context and Importance: This term's construction is critical because it defines the nature of the remote device. The infringement case depends on whether Defendants' commercial delivery robots fall within this definition. Practitioners may focus on this term because the patent's specification repeatedly frames the invention in the context of tourism and exploration of remote or inaccessible places.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Claim 1 itself simply recites "at least one robotic virtual explorer device," without imposing a specific purpose. The body of the claim requires it to be "controllable by the user" and to "acquire a virtual presence media," functions which a delivery robot could perform.
- Evidence for a Narrower Interpretation: The specification describes RVEDs as being used for "video capturing at the remote locations, most unreachable and beautiful places on earth and in space" ('780 Patent, col. 4:16-19) and gives examples like Aerial, Marine, and Land "Virtual Explorers" ('780 Patent, col. 4:23-26). This repeated emphasis on "exploration" could support an argument that the term implies a purpose beyond routine commercial delivery.
The Term: "virtual reality"
- Context and Importance: Claim 1 requires the RVED to be "continuously controlled via virtual reality controls" and to "display a video feed as a virtual reality." The definition of "virtual reality" will be pivotal. The complaint alleges that "manual take over direction controls" and "360-stereo video" meet these limitations (Compl. ¶36). Whether these common teleoperation features constitute "virtual reality" as understood in the patent will be a key issue.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not appear to provide an explicit definition of "virtual reality." It mentions "virtual reality helmets" as one possible implementation of a VPT ('780 Patent, col. 4:62-63), but does not limit the term to such hardware. The term could be argued to encompass any system that provides an immersive, first-person control experience.
- Evidence for a Narrower Interpretation: Defendants may argue that at the time of the invention, "virtual reality" implied a more specific set of technologies (e.g., stereoscopic displays, head tracking) than simple remote video monitoring and joystick-style control. The use of the term in conjunction with "3D glasses" and "virtual reality helmets" ('780 Patent, col. 4:61-63) may be used to argue for a narrower construction requiring specific immersive hardware.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement under 35 U.S.C. § 271(b), asserting that Defendants actively encourage and instruct partners, customers, and end users to use the Accused System in an infringing manner. This is allegedly done through the provision of the system itself, along with instructions, manuals, marketing materials, and technical assistance (Compl. ¶37). The complaint references marketing materials as evidence (Compl. ¶37, Exs. 1-4).
- Willful Infringement: The complaint alleges willful infringement based on pre-suit knowledge. It specifically pleads that Plaintiff sent a notice letter on December 7, 2022, identifying the patent and the accused product, and that subsequent communications, including the provision of claim charts, occurred without resolution (Compl. ¶¶18-22, 39). These allegations suggest Defendants continued their allegedly infringing activities despite being aware of the patent and Plaintiff's claims.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: Can the term "robotic virtual explorer device", which the patent repeatedly associates with exploring remote and scenic locations, be construed to cover a commercial delivery robot operating on predetermined urban or campus routes? The outcome of this claim construction dispute could be dispositive.
- A second key issue will be the technical mapping of claim terms: Does the accused system's architecture, allegedly based on 5GAA standards with components like a "ToD Application Server" and "User Plane Function," actually perform the specific combination of processing, routing, and control functions recited for the "VPT CCU" and "RVED CCU" elements in Claim 1?
- A third question will concern the term "virtual reality": Does the accused system's remote operator interface, which allegedly includes "manual take over" controls and video feeds, meet the claim requirements of being "controlled via virtual reality controls" and displaying a feed "as a virtual reality," or does the patent's context imply a more specific, immersive technology?