DCT

4:18-cv-01886

Koninklijke Philips NV v. ASUSTeK Computer Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: Koninklijke Philips N.V. v. ASUSTeK Computer Inc., 1:15-cv-01125, D. Del., 11/23/2016
  • Venue Allegations: Plaintiff alleges venue is proper in the District of Delaware because Defendants place products into the stream of commerce with the knowledge they will be sold in Delaware and have derived substantial revenues from such sales.
  • Core Dispute: Plaintiff alleges that Defendant’s smartphones, tablet computers, laptops, and other consumer electronic devices infringe eleven patents related to user interfaces, content delivery, secure communications, and audio processing.
  • Technical Context: The patents-in-suit cover foundational technologies for modern smart devices, including touch-screen gestures, adaptive video streaming, secure content protection, and screen orientation control.
  • Key Procedural History: This filing is a Second Amended Complaint. The complaint alleges that Plaintiff provided Defendant with notice of infringement for many of the patents-in-suit as early as May 2013, more than two years prior to the original complaint's filing period, through letters, meetings, and presentations. These allegations form the basis for claims of willful infringement.

Case Timeline

Date Event
1995-02-13 ’797 Patent Priority Date
1998-03-19 ’695 Patent Priority Date
1999-06-08 U.S. Patent No. 5,910,797 Issues
1999-11-04 ’806 Patent Priority Date
1999-11-16 ’114 Patent Priority Date
2001-06-30 RE44,913 Priority Date
2001-12-28 ’387 & ’064 Patents Priority Date
2002-07-26 ’819 & ’809 Patents Priority Date
2003-02-18 U.S. Patent No. 6,522,695 Issues
2004-02-10 U.S. Patent No. 6,690,387 Issues
2004-08-03 U.S. Patent No. 6,772,114 Issues
2007-02-27 U.S. Patent No. 7,184,064 Issues
2009-05-05 U.S. Patent No. 7,529,806 Issues
2012-08-07 U.S. Patent No. RE43,564 Issues
2013-02-19 U.S. Patent No. RE44,006 Issues
2013-05-21 Defendant allegedly receives notice of ’913, ’387, ’064, ’695, ’006, ’114, and ’564 patents
2013-09-24 U.S. Patent No. 8,543,819 Issues
2013-11-21 Defendant allegedly receives notice of ’806 and ’797 patents
2014-05-27 U.S. Patent No. RE44,913 Issues
2015-07-XX Defendant allegedly first sold the ZenPad 8.0 tablet
2015-11-19 Defendant allegedly receives notice of ’819 patent
2016-09-06 U.S. Patent No. 9,436,809 Issues
2016-11-01 Defendant allegedly receives notice of ’809 patent
2016-11-23 Second Amended Complaint Filed

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

U.S. Patent No. RE44,913 - "Text entry method and device therefor,"

The Invention Explained

  • Problem Addressed: The patent addresses the inefficiency of traditional "multitap" methods for entering text on devices with limited keypads, where a user must press a key multiple times to cycle through associated characters (RE44913 Patent, col. 1:45-67).
  • The Patented Solution: The invention proposes a two-state keypad. In a default state, a short press on a key inputs its primary character. A key press held for a "predetermined time period" switches the keypad to a second state, where secondary characters (e.g., accented letters, symbols) associated with the pressed key are displayed on other keys. A subsequent key selection inputs the desired secondary character and returns the keypad to the default state (RE44913 Patent, col. 2:25-42).
  • Technical Importance: This "press-and-hold" interaction model provides a more intuitive and often faster alternative to repeated tapping for accessing secondary characters on compact keyboards, a common challenge in early mobile devices (Compl. ¶26).

Key Claims at a Glance

  • The complaint asserts that independent claim 1 is illustrative of the method claims (Compl. ¶41).
  • Claim 1 Elements:
    • A method for inputting a character to a device with a keypad having multiple keys, where at least one key has a primary character, multiple secondary characters, and an associated display area.
    • In a default state, displaying the primary character in the display area.
    • In the default state, returning the primary character as input in response to selecting the key for a period shorter than a predetermined time period.
    • Switching to a second state after detecting a first key selection of the key for a period longer than the predetermined time period.
    • In the second state: displaying each secondary character in a respective display area, detecting a second key selection, selecting the secondary character from the second key selection as the input character, and returning the keypad to the default state.

U.S. Patent No. 6,690,387 - "Touch-screen image scrolling system and method,"

The Invention Explained

  • Problem Addressed: The patent identifies prior electronic list scrolling methods, such as cursor-dragging or holding down a button, as "slow and cumbersome," lacking aesthetic appeal, and requiring manipulation of a mouse device (’387 Patent, col. 1:21-44).
  • The Patented Solution: The invention describes a "natural" feeling scrolling method for touch screens. A user's finger motion imparts an initial speed and direction to the on-screen data. After the finger is lifted, the scrolling continues but its speed decays at a controlled rate. The scrolling motion can be terminated by a "substantially stationary finger touch" or when an end-of-scroll signal is reached. The system also distinguishes between different touch durations to enable item selection versus scrolling manipulation (’387 Patent, col. 2:1-12; Abstract).
  • Technical Importance: This "flick-to-scroll" or inertial scrolling mechanism became a foundational user interface paradigm for navigating long lists and web pages on touch-screen devices, offering a more fluid and efficient user experience than prior static methods (Compl. ¶26).

Key Claims at a Glance

  • The complaint asserts that independent claim 9 is illustrative of the method claims (Compl. ¶56).
  • Claim 9 Elements:
    • A method for controlling the scroll-like display of data on an electronic display screen.
    • Sensing the duration of finger touch contact time.
    • Sensing the speed and direction of motion of the finger touch contact.
    • Initiating a scrolling motion of the scrollable data in the sensed direction and at the sensed speed.
    • Slowing the speed of the scrolling motion from its initiated speed at a predetermined rate.
    • Terminating the scrolling motion when either a condition of a substantially stationary finger touch of finite duration is sensed or an end-of-scroll signal is sensed.
  • The complaint also asserts dependent claims 11 and 12, which add steps for moving the entire display or a selected item based on different finger touch durations (Compl. ¶57-58).

U.S. Patent No. 7,184,064 - "Touch-screen image scrolling system and method,"

  • Technology Synopsis: This patent, related to the ’387 Patent, claims a system for implementing inertial scrolling. It describes a microprocessor with program instructions to sense finger touch duration, speed, and direction to initiate a scrolling motion that subsequently decays over time, and can be stopped by a stationary touch (Compl. ¶73).
  • Asserted Claims: Claims 1, 2, and 3 (Compl. ¶76).
  • Accused Features: The accused functionality is the inertial or "flick" scrolling on ASUS devices, as well as moving icons with a "long press" gesture (Compl. ¶78-80).

U.S. Patent No. 7,529,806 - "Partitioning of MP3 content file for emulating streaming,"

  • Technology Synopsis: The patent describes a method for adaptive media streaming. A client device downloads a control file, which identifies multiple alternative versions (e.g., different bitrates) of media segments. The client then selects and retrieves the appropriate segment based on system constraints like network bandwidth, allowing for continuous playback that adapts to changing conditions (Compl. ¶86).
  • Asserted Claims: Claims 1 and 12 (Compl. ¶88-89).
  • Accused Features: The accused features are the accused devices' support for HTTP Live Streaming (HLS) and MPEG-DASH (Dynamic Adaptive Streaming over HTTP) technologies (Compl. ¶91).

U.S. Patent No. 5,910,797 - "Portable data processing apparatus provided with a screen and a gravitation-controlled sensor for screen orientation,"

  • Technology Synopsis: The patent claims a portable apparatus with a gravitation-controlled sensor (e.g., an accelerometer) that measures acceleration induced by user manipulation. This sensor data is used to impart an "acceleration based motion pattern" to on-screen objects, such as rotating them from a portrait to a landscape orientation (’797 Patent, col. 4:56-61; Compl. ¶101).
  • Asserted Claims: Claim 6 (Compl. ¶102).
  • Accused Features: The accused functionality is the automatic rotation of the screen display (e.g., a virtual keyboard) when the physical orientation of the ASUS device is changed (Compl. ¶104).

U.S. Patent No. 6,522,695 - "Transmitting device for transmitting a digital information signal alternately in encoded form and non-encoded form,"

  • Technology Synopsis: The patent describes a receiver that processes a composite signal containing portions that may be either encoded or unencoded. An identification signal indicates the type of each portion, and the receiver uses a decoder for the encoded portions while supplying the unencoded portions in a substantially unmodified form (’695 Patent, col. 2:9-24; Compl. ¶110).
  • Asserted Claims: Claim 14 (Compl. ¶111).
  • Accused Features: The accused functionality is the support for the FLAC (Free Lossless Audio Codec) format, which uses different subframe types, including encoded LPC subframes and unencoded "verbatim" subframes (Compl. ¶113).

U.S. Patent No. RE44,006 - "User interface for television,"

  • Technology Synopsis: The patent claims an electronic device with a controller that displays a "rotating elliptical menu" with a sense of perspective. The menu options appear to lie on an elliptical plane offset from the display's center, allowing some options to rotate off the edge of the screen while their shape and size change to maintain perspective (Compl. ¶119).
  • Asserted Claims: Claim 1 (Compl. ¶120).
  • Accused Features: The accused feature is the "recents screen" in Android Operating System version 5.0 and higher, which displays recently used applications in a rotating, stacked card interface (Compl. ¶122).

U.S. Patent No. 8,543,819 - "Secure authenticated distance measurement,"

  • Technology Synopsis: This patent describes a method to determine if protected content on a first device can be accessed by a second. The method involves a "round trip time measurement" between the devices using a shared secret to authenticate the second device and verify it is within a predefined distance, thereby preventing unauthorized remote access (Compl. ¶128).
  • Asserted Claims: Claims 1 and 10 (Compl. ¶130-131).
  • Accused Features: The accused functionality is the implementation of High-bandwidth Digital Content Protection (HDCP) over Miracast, which includes a "locality check" protocol that measures round-trip time to ensure the receiver is in close proximity (Compl. ¶133).

U.S. Patent No. 9,436,809 - "Secure authenticated distance measurement,"

  • Technology Synopsis: Related to the ’819 patent, this patent claims a device and method for controlling delivery of protected content. The system uses a certificate to verify the second device's compliance, and then performs a time-based check using a shared secret to confirm proximity before allowing content delivery (Compl. ¶144-145).
  • Asserted Claims: Claims 1 and 34 (Compl. ¶146-147).
  • Accused Features: The accused functionality is again the HDCP protocol's locality check used in Miracast wireless display streaming (Compl. ¶149).

U.S. Patent No. 6,772,114 - "High frequency and low frequency audio signal encoding and decoding system,"

  • Technology Synopsis: The patent describes a receiver with two decoders for an audio signal split into low and high frequency ranges. The first decoder reconstructs the low-frequency signal, while the second reconstructs the high-frequency signal by applying filters and an amplifier to a noise signal, before combining them (’114 Patent, Abstract; Compl. ¶159).
  • Asserted Claims: Claim 20 (Compl. ¶160).
  • Accused Features: The accused functionality is the support for the Adaptive Multi-Rate Wideband (AMR-WB) audio codec standard (Compl. ¶162).

U.S. Patent No. RE43,564 - "Hand-held with auto-zoom for graphical display of web page,"

  • Technology Synopsis: The patent claims a handheld device that displays an image at a first scale. A user can select a portion of the image via the touch screen, which is then rendered at a second, larger scale (zoomed-in) and substantially centered around the touch location to facilitate interaction with small features (Compl. ¶168).
  • Asserted Claims: Claims 1 and 7 (Compl. ¶170).
  • Accused Features: The accused feature is the magnification gesture (e.g., double-tap or pinch-to-zoom) functionality on web pages and other content in the Android Operating System (Compl. ¶172).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are a wide range of ASUS-branded smartphones, tablet computers, laptops, All-in-One PCs, 2-in-1 PCs, and Chromebooks (Compl. ¶8). The complaint uses the ASUS ZenPad 8.0 tablet as a primary exemplary device for many of the infringement allegations (Compl. ¶45, ¶60, ¶77).

Functionality and Market Context

  • The complaint alleges that these devices incorporate various versions of the Android, Microsoft Windows, or Chrome operating systems, which provide the accused functionality (Compl. ¶47, ¶64). The accused features represent core user interface and media consumption functions central to the modern smart device market, including touch-screen text entry and navigation, video streaming, screen rotation, and audio playback (Compl. ¶26). The complaint alleges these devices have been sold in substantial numbers in the District of Delaware and throughout the United States (Compl. ¶7).

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint.

RE44,913 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a method for inputting a character to a device including a keypad... at least one of the keys has a primary character, a plurality of secondary characters, and an associated display area The ASUS ZenPad 8.0 has a virtual keypad where keys (e.g., the "a" key) have a primary character ('a') and secondary characters ('à', 'á'). ¶46 col. 2:25-30
in a default state... displaying the primary character associated with the at least one key in the associated display area In the default state, the "a" character is displayed on the key. ¶46 col. 2:31-33
in the default state, returning the primary character as an input character in response to selection of the at least one key for a period shorter than a predetermined time period A short press on the "a" key inputs the "a" character. ¶46 col. 2:33-36
switching to a second state responsive to a first key selection of the at least one key... for a period longer than the predetermined time period Pressing and holding the "a" key switches the keypad to a second state. ¶46 col. 2:36-39
in the second state, displaying... each of the secondary characters... in a respective display area In the second state, secondary characters like 'à' and 'á' are displayed in a pop-up menu or on other keys. ¶46 col. 2:39-42
detecting a second key selection... selecting as the input character the secondary character associated with the second key selection, and returning the keypad to the default state Selecting the key associated with 'á' inputs that character, and the keypad returns to the default state. ¶46 col. 2:40-42
  • Identified Points of Contention:
    • Scope Questions: A potential issue may be whether the term "keypad" and "keys" as used in the patent, which illustrates a physical keypad, can be construed to read on the virtual, software-based keyboard and keys implemented in the Android operating system.
    • Technical Questions: The claim requires secondary characters to be displayed in a "respective display area." The analysis may question whether the pop-up panel of secondary characters that appears on Android devices meets this limitation, or if the claim requires the characters to appear on the main keys of the keypad itself.

6,690,387 Infringement Allegations

Claim Element (from Independent Claim 9) Alleged Infringing Functionality Complaint Citation Patent Citation
A method for controlling the scroll-like display of data on an electronic display screen. The ASUS ZenPad 8.0 controls the scroll-like display of data (e.g., website content or app icons) on its touch screen. ¶61 col. 2:1-3
sensing the duration of finger touch contact time with an electronic display screen... The device's hardware and software sense the duration of a user's finger touch on the screen. ¶61 col. 4:45-48
sensing the speed and direction of motion of the finger touch contact with the display screen. The device's hardware and software sense the speed and direction of a finger's "flick" motion across the screen. ¶61 col. 2:6-8
initiating a scrolling motion of the scrollable data on the display screen in the sensed direction and at the sensed speed. A finger flick initiates scrolling of the content (e.g., a web page) in the direction and at a speed corresponding to the flick. ¶61 col. 2:8-12
slowing the speed of the scrolling motion from its initiated speed at a predetermined rate. After the finger is lifted, the scrolling motion slows down at a predetermined rate until it stops (inertial scrolling). ¶61 col. 2:20-23
terminating the scrolling motion when a condition of a substantially stationary finger touch having a finite duration is sensed or a condition of an end-of-scroll signal is sensed. The scrolling motion stops either when the user touches the screen again or when the end of the content is reached. ¶61 col. 2:35-43
  • Identified Points of Contention:
    • Scope Questions: The term "predetermined rate" may become a point of contention. The question may arise as to whether the physics-based inertial scrolling algorithm in Android, which may have a variable rate of deceleration based on initial velocity, meets the requirement of a "predetermined rate" as disclosed in the patent.
    • Technical Questions: Claim 9 requires terminating motion upon sensing a "substantially stationary finger touch having a finite duration." The court may need to determine what qualifies as "substantially stationary" and what "finite duration" is required to distinguish a stopping touch from an item selection touch, and whether the accused devices perform this specific check.

V. Key Claim Terms for Construction

  • For the ’913 Patent:

    • The Term: "predetermined time period"
    • Context and Importance: This term is critical as it defines the boundary between two distinct user actions: a short press that inputs a primary character and a long press that enters a secondary character selection mode. The infringement analysis hinges on whether the accused Android keyboard's press-and-hold delay meets this definition.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification does not assign a specific numerical value to the time period, suggesting it could be any set duration that allows the system to distinguish between a brief tap and an intentional hold (RE44913 Patent, col. 2:33-39).
      • Evidence for a Narrower Interpretation: The context implies a specific, programmed threshold. A defendant might argue this requires a fixed, explicitly coded value rather than a potentially dynamic or context-aware delay, raising questions about how the accused software implements this timing.

  • For the ’387 Patent:

    • The Term: "slowing the speed of the scrolling motion... at a predetermined rate"
    • Context and Importance: This term is central to the inertial scrolling claim. The infringement analysis will depend on whether the "friction" or "decay" algorithm used in the accused Android devices, which causes scrolling to slow down, operates at a "predetermined rate." Practitioners may focus on this term because modern physics-based UI animations may not use a single, constant rate of deceleration.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification describes the goal as making the scrolling motion appear "natural," which could support construing "predetermined rate" to cover any programmed deceleration algorithm that achieves this effect, even if the rate is not constant (’387 Patent, col. 2:25-31).
      • Evidence for a Narrower Interpretation: The claim language specifies "a" predetermined rate, which could be interpreted more narrowly to mean a single, constant rate of decay. The patent states the speed slows "at a constant rate until it ultimately comes to rest" which could support a narrower reading (’387 Patent, col. 2:28-31).

VI. Other Allegations

  • Indirect Infringement: For each asserted patent, the complaint alleges induced infringement, stating that Defendant provides instructions, user manuals, advertising, and marketing materials that encourage and direct end-users to use the infringing functionalities (Compl. ¶48, ¶65, ¶93). The complaint also pleads contributory infringement, alleging that the accused software components have no substantial non-infringing use and are especially made or adapted for use in an infringing manner (Compl. ¶51, ¶68, ¶96).
  • Willful Infringement: The complaint alleges willful infringement for all asserted patents. The basis for this allegation is Defendant's alleged knowledge of the patents since as early as May 2013, based on letters, communications, and presentations from Plaintiff. The complaint further alleges that Defendant continued and escalated its infringing activities, for example by releasing the ZenPad 8.0 tablet in July 2015, long after receiving notice (Compl. ¶53, ¶70, ¶83).

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

  • A core issue will be one of claim scope versus standardized technology: Many of the accused functionalities, such as adaptive video streaming (HLS/DASH), secure content transfer (HDCP), and audio codecs (FLAC, AMR-WB), are based on industry standards. A central question for the court will be whether the patent claims, drafted in some cases years before these standards were mature, can be construed broadly enough to cover the specific, standardized implementations in Defendant's products.
  • A key evidentiary question will be one of technical implementation: For user interface patents like those covering inertial scrolling (’387 patent) and elliptical menus (’006 patent), the case may turn on whether the general-purpose software architecture of the Android operating system performs the exact steps or contains the specific "program instructions" recited in the claims. For example, does the accused inertial scrolling slow at the "predetermined rate" required by claim 9 of the ’387 patent, or does its physics-based algorithm differ in a legally significant way?
  • A critical question for damages will be willfulness based on pre-suit notice: Plaintiff alleges a multi-year history of notifying Defendant of the asserted patents prior to litigation. The court will likely examine the content and specificity of these notices to determine whether Defendant's continued sales of the accused products after this date constituted objective recklessness, which could support a finding of willful infringement and potential enhancement of damages.