DCT
4:19-cv-08133
SMTM Technology LLC v. Apple Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: SMTM Technology, LLC (California)
- Defendant: Apple, Inc. (California)
- Plaintiff’s Counsel: Cotchett, Pitre & McCarthy, LLP; Law Office of Paul W. Reidl
- Case Identification: 4:19-cv-08133, N.D. Cal., 12/13/2019
- Venue Allegations: Venue is asserted based on Defendant Apple Inc. having its principal place of business within the Northern District of California and having allegedly committed and induced acts of infringement within the district.
- Core Dispute: Plaintiff alleges that Defendant’s "Do Not Disturb While Driving" feature, introduced in its iOS 11 mobile operating system, infringes a patent related to technology for suppressing mobile device notifications to reduce driver distraction.
- Technical Context: The technology concerns software solutions for mobile phones designed to mitigate the public safety hazards of distracted driving by managing incoming communications without requiring the user to power down the device entirely.
- Key Procedural History: The complaint notes that the patent-in-suit was the subject of a post-grant challenge at the Patent Trial and Appeal Board (PTAB) initiated by Unified Patents, Inc. In a decision dated July 30, 2019, the PTAB declined to institute an inter partes review, finding the petitioner had "failed to demonstrate a reasonable likelihood that it would prevail" on its invalidity arguments.
Case Timeline
| Date | Event |
|---|---|
| 2013-05-01 | Plaintiff's "OFF MODE" application released to the public |
| 2013-06-14 | '853 Patent Priority Date (Provisional Application Filed) |
| 2014-02-09 | '853 Patent Non-Provisional Application Filed |
| 2015-02-17 | '853 Patent Issue Date |
| 2017-09-19 | Accused Apple iOS 11 launched |
| 2019-07-30 | PTAB decision denying institution of IPR |
| 2019-12-13 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,958,853 - "Mobile Device Inactive Mode and Inactive Mode Verification"
The Invention Explained
- Problem Addressed: The patent identifies the public safety hazard of "distracted driving" caused by mobile device use ('853 Patent, col. 1:21-25). It notes that simply powering down a device is an inadequate solution, as it is inconvenient and may cause a user to miss "urgent communications" ('853 Patent, col. 1:31-35).
- The Patented Solution: The invention describes a mobile device "inactive mode" that suppresses notifications for incoming communications like calls and messages. To solve the problem of senders being ignored, the system can automatically transmit a pre-selected "away message" ('853 Patent, col. 2:1-8). The inactive mode can be triggered automatically, such as by detecting the pairing of the mobile device with a vehicle's Bluetooth system ('853 Patent, col. 2:35-37).
- Technical Importance: The technology provides a method to limit driver distractions while keeping the device operational for essential functions and managing the social expectation of a prompt reply to messages ('853 Patent, col. 1:33-38).
Key Claims at a Glance
- The complaint asserts infringement of claim 1, an independent claim (Compl. ¶34).
- Essential elements of Independent Claim 1 include:
- A mobile device with a processor, memory, and wireless module.
- Instructions for:
- providing a graphical user interface (GUI) for a user to customize functions of the device in inactive mode;
- receiving a user selection to automatically initiate the inactive mode in response to pairing with a vehicle;
- receiving a user selection of an away message;
- automatically initiating the inactive mode process in response to the vehicle pairing; and
- while in inactive mode, transmitting the selected away message in response to an incoming communication while suppressing associated notification cues (e.g., sound, vibration).
- The complaint reserves the right to assert other claims and modify its infringement description (Compl. ¶34).
III. The Accused Instrumentality
Product Identification
- The "Do Not Disturb While Driving" feature incorporated into Apple's iOS 11 operating system and subsequent versions, as used on mobile devices like the iPhone (Compl. ¶26, ¶33).
Functionality and Market Context
- The complaint alleges that when activated, the feature causes the iPhone to "stay silent and the screen to stay dark" (Compl. ¶26).
- It is alleged to have the capability to send an automatic reply to incoming messages, informing the sender that the user is driving and is temporarily unavailable (Compl. ¶26). The feature allegedly can be configured to activate automatically when the device connects to a car's Bluetooth system (Compl. ¶35).
- The complaint describes the feature as one that Apple "touted as a significant new and novel application" upon its release (Compl. ¶26).
IV. Analysis of Infringement Allegations
’853 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a mobile device, comprising: a wireless communication module; a processor, controlling the wireless communication module; and a memory controlled by the processor... | The accused products are Apple's mobile devices (e.g., iPhones) running iOS 11, which contain the requisite hardware components including a microprocessor, memory, and wireless communication modules for cellular and other communications (e.g., SMS, MMS). | ¶35, pp. 8-9 | col. 11:5-10; 51-52 |
| ...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 iOS provides a GUI where a user can customize the text of the auto-reply message sent when the "Do Not Disturb" feature is active. The complaint provides a screenshot of the "Auto-Reply" settings screen where a user can edit the message text. (Compl. p. 10). | ¶35, p. 10 | col. 2:62-63 |
| ...receiving a user selection to automatically initiate the inactive mode in response to the pairing of the mobile device with a vehicle; | The "Do Not Disturb" feature includes a GUI setting that allows a user to select an option for the mode to engage automatically "When Connected to Car Bluetooth." The complaint includes a screenshot showing this user-selectable option. (Compl. p. 9). | ¶35, p. 9 | col. 8:59-62 |
| ...receiving a user selection of an away message to use when the mobile device is in inactive mode; | The accused feature provides a GUI where a user can input and save a "user-customizable" away message for use during the inactive mode. | ¶35, p. 10 | col. 8:25-30 |
| ...in response to the pairing of the mobile device and the vehicle, automatically initiating a process to place the mobile device in inactive mode; | The complaint alleges that after the user makes the selection to enable automatic activation, the feature "automatically engages in response to the pairing of the mobile device and the vehicle." | ¶35, p. 10 | col. 8:59-62 |
| ...when the mobile device is in inactive mode...transmitting the user selected away message via the wireless module and suppressing one or more sound, visual, or vibration communication cues... | When the feature is active, Apple's devices are alleged to transmit the user-selected away message in response to incoming communications while suppressing the standard notifications (sounds, screen activation) that would otherwise occur. | ¶35, p. 10 | col. 8:14-24 |
- Identified Points of Contention:
- Scope Questions: Claim 1 recites "receiving a user selection to automatically initiate the inactive mode in response to the pairing of the mobile device with a vehicle." The complaint points to a one-time setup screen where a user selects "When Connected to Car Bluetooth." A question for the court may be whether this pre-configuration satisfies a limitation that could be interpreted to require the user's selection to occur contemporaneously with, or as a direct result of, the pairing event itself.
- Technical Questions: The claim requires "providing a graphical user interface through which a user customizes one or more functions of the mobile device." The complaint's evidence focuses on customizing the auto-reply text. This raises the question of whether editing a message string constitutes "customiz[ing] one or more functions," especially as the patent specification contemplates more extensive customization, such as selecting which applications (e.g., navigation) remain accessible during inactive mode ('853 Patent, col. 2:56-62).
V. Key Claim Terms for Construction
The Term: "in response to the pairing of the mobile device with a vehicle"
- Context and Importance: This phrase defines the trigger for the automated functionality. Its construction is critical because the infringement allegation hinges on Apple's feature that activates based on a Bluetooth connection. Practitioners may focus on whether "in response to" requires an immediate, interactive user choice following a pairing event, or if it encompasses a pre-set condition that is later triggered by pairing.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states in general terms that "the inactive mode may be automatically initiated upon the pairing of the mobile device and a vehicle," which may support an interpretation that covers any logical link between pairing and initiation, including pre-configuration ('853 Patent, col. 2:35-37).
- Evidence for a Narrower Interpretation: Figure 4d of the patent depicts a "Bluetooth Device Detected" screen with "Connect" and "Cancel" buttons, which could be argued to illustrate a more interactive, real-time user decision at the moment of pairing, potentially narrowing the scope of the claim ('853 Patent, FIG. 4d, col. 8:59-62).
The Term: "customizes one or more functions of the mobile device"
- Context and Importance: This term appears in the first step of the claimed method. The viability of the infringement claim may depend on whether Apple's auto-reply text editor is deemed to meet this limitation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes creating and selecting custom away messages, an action that could be described as customizing a function ('853 Patent, FIGS. 5a-5c, col. 8:25-44). Plaintiff will likely argue this is sufficient.
- Evidence for a Narrower Interpretation: The specification also states, "It is contemplated that the user may customize the allowed functionality during inactive mode... For example, when driving, mapping and navigation functionality may remain accessible" ('853 Patent, col. 2:62-65). This language suggests a more substantive customization, such as whitelisting or blacklisting specific applications, rather than merely editing a text string.
VI. Other Allegations
- Indirect Infringement: The complaint includes a general allegation that Apple has "induced acts of patent infringement" (Compl. ¶20), but it does not plead specific facts to support the knowledge and intent elements of inducement separately from its allegations of direct and willful infringement.
- Willful Infringement: Willfulness is alleged based on Apple's purported knowledge of the '853 Patent (Compl. ¶37). The complaint alleges this knowledge arises from Apple's general awareness of the "personal computing devices industry," its alleged knowledge of Plaintiff's pre-existing "OFF MODE" application, and from direct pre-suit contact initiated by the inventor to request a royalty (Compl. ¶28, ¶37).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction: can the phrase "receiving a user selection... in response to the pairing" be construed to cover a one-time user setting that pre-configures the device to automatically enter an inactive mode upon a future Bluetooth connection, or does it require a more contemporaneous user interaction with the pairing event?
- A central evidentiary question will be one of infringement scope: does the ability to edit the text of an auto-reply message, as provided in Apple's accused feature, satisfy the claim limitation of a GUI that "customizes one or more functions of the mobile device," or does that term, in the context of the patent, require more extensive control over application accessibility and behavior?
- A third key issue will relate to damages and willfulness: assuming infringement is found, the court will have to consider what evidence supports the plaintiff's claim that Apple had pre-suit knowledge of the patent or the inventor's specific application, particularly given the crowded field of "do not disturb" technologies.