DCT

1:17-cv-00248

IPA Tech Inc v. Huawei Tech Co Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:17-cv-00248, D. Del., 03/09/2017
  • Venue Allegations: Venue is alleged to be proper based on Defendants being subject to personal jurisdiction in the District of Delaware.
  • Core Dispute: Plaintiff alleges that Defendants’ Android-based smartphones, tablets, and smartwatches, which incorporate voice-command functionality, infringe patents related to speech-based navigation of remote electronic data sources.
  • Technical Context: The technology concerns systems for interpreting natural language voice commands to search for information on a network and using multimodal feedback to refine ambiguous or incomplete user requests, a foundational concept for modern digital assistants.
  • Key Procedural History: The complaint states the patents originated from research at SRI International, including work on the DARPA-funded CALO project, which led to the spin-off company Siri, Inc. in 2007, later acquired by Apple Inc. in 2010. The patents-in-suit were acquired by Plaintiff IPA Technologies Inc. on May 6, 2016. Notably, after this complaint was filed, both asserted patents were challenged in Inter Partes Review (IPR) proceedings. The provided patent documents include IPR certificates indicating that all claims of both the '021' and '061' patents were cancelled. These cancellations, if they withstand any appeals, would be dispositive of the infringement claims.

Case Timeline

Date Event
1999-03-17 Earliest Priority Date for '021 and '061 Patents
2003-02-18 U.S. Patent No. 6,523,061 ('061 Patent) Issued
2004-05-25 U.S. Patent No. 6,742,021 ('021 Patent) Issued
2012-07-01 Google Now digital assistant included with Android OS (approx. date)
2016-05-06 Plaintiff IPA acquires the SRI speech-based navigation portfolio
2016-10-01 Google Now functionality included in Google's Voice Actions (approx. date)
2017-03-09 Complaint Filed
2020-03-09 IPR Certificate Issued for '061 Patent (All Claims Cancelled)
2020-03-12 IPR Certificate Issued for '021 Patent (All Claims Cancelled)

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

U.S. Patent No. 6,742,021 - “Navigating Network-Based Electronic Information Using Spoken Input With Multimodal Error Feedback,” issued May 25, 2004

The Invention Explained

  • Problem Addressed: The patent describes the difficulty of navigating large, networked electronic data sources (e.g., video-on-demand libraries, the early internet) using conventional input methods ('021 Patent, col. 1:45-54). It notes that while spoken natural language is a desirable input method, such requests are often "under-constrained" or contain ambiguities that legacy systems cannot handle gracefully ('021 Patent, col. 2:1-12).
  • The Patented Solution: The invention proposes a method where the system receives a spoken request, interprets it, and if the request is incomplete, it actively "solicit[s] additional input from the user" through a "non-spoken modality" (e.g., displaying a menu of options on a screen) to clarify the user's intent. This refined query is then used to retrieve the correct information from the remote network server ('021 Patent, col. 2:53-68; Fig. 4).
  • Technical Importance: This approach enabled a more conversational and less frustrating user experience by creating a mixed-modality feedback loop, allowing a system to resolve ambiguity without forcing the user to reformulate a complex spoken command from scratch ('021 Patent, col. 2:45-52).

Key Claims at a Glance

  • The complaint asserts Independent Claim 1 (Compl. ¶29).
  • The essential elements of method Claim 1 include:
    • (a) receiving a spoken request for desired information from the user;
    • (b) rendering an interpretation of the spoken request;
    • (c) constructing at least part of a navigation query based upon the interpretation;
    • (d) soliciting additional input from the user, including user interaction in a non-spoken modality different than the original request without requiring the user to request said non-spoken modality;
    • (e) refining the navigation query, based upon the additional input;
    • (f) using the refined navigation query to select a portion of the electronic data source; and
    • (g) transmitting the selected portion of the electronic data source from the network server to a client device of the user.
  • The complaint reserves the right to identify additional asserted claims (Compl. ¶31 n.1).

U.S. Patent No. 6,523,061 - “System, Method, and Article of Manufacture For Agent-Based Navigation in a Speech-Based Data Navigation System,” issued February 18, 2003

The Invention Explained

  • Problem Addressed: The patent addresses the need for a "methodology and apparatus for rapidly constructing a voice-driven front-end atop an existing, non-voice data navigation system" that can handle intuitive but imprecise natural language input ('061 Patent, col. 2:21-28).
  • The Patented Solution: The invention describes a modular software architecture where tasks are handled by distinct "agents." A central "facilitator" receives an interpreted voice query and routes it to the appropriate agent (e.g., a web database agent, an email agent) based on a registry of agent capabilities. This facilitator manages the data flow between agents to fulfill the request and sends the result to a "user interface agent" for presentation to the user ('061 Patent, Abstract; col. 13:15-51, Fig. 6).
  • Technical Importance: This agent-based architecture provides a flexible and extensible platform for voice-enabled services, allowing new capabilities to be added by developing and "plugging in" new agents without fundamentally altering the core system ('061 Patent, col. 14:48-65).

Key Claims at a Glance

  • The complaint asserts Independent Claim 1 (Compl. ¶41).
  • The essential elements of method Claim 1 include:
    • (a) receiving a spoken request for desired information from a user;
    • (b) rendering an interpretation of the spoken request;
    • (c) constructing a navigation query based upon the interpretation;
    • (d) routing the navigation query to at least one agent, wherein the at least one agent utilizes the navigation query to select a portion of the electronic data source; and
    • (e) invoking a user interface agent for outputting the selected portion of the electronic data source to the user, wherein a facilitator manages data flow among multiple agents and maintains a registration of each of said agents' capabilities.
  • The complaint reserves the right to identify additional asserted claims (Compl. ¶43 n.3).

III. The Accused Instrumentality

Product Identification

  • The complaint names two categories of accused products: "Huawei Google Now-enabled products" (mobile phones and tablets) and "Huawei Android Wear products" (smartwatches) (Compl. ¶¶ 23, 25).

Functionality and Market Context

  • The accused products operate on the Android operating system, which incorporates the "Google Now digital assistant" or its successor functionality within "Google's Voice Actions" (Compl. ¶¶ 17-18). The complaint alleges that this functionality allows users to use "natural spoken language" to perform voice searches (Compl. ¶20). The results are presented as "visual representations" called "cards," which allow for "further user interaction... through touch response" (Compl. ¶21). The system can retrieve information such as directions, weather, and restaurant information from remote servers (Compl. ¶22). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

’021 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
(a) receiving a spoken request for desired information from the user The products receive spoken requests for information like directions, calendar, weather, flight, sports, and restaurant information. ¶31 col. 11:56-62
(d) soliciting additional input from the user, including user interaction in a non-spoken modality... without requiring the user to request said non-spoken modality The products solicit additional input via user interaction with "cards," which are visual representations of search results that allow for touch response. ¶¶ 21, 31 col. 10:5-12
(e) refining the navigation query, based upon the additional input The system is alleged to refine the query based on the user's interaction with the presented non-spoken options. ¶31 col. 10:1-4
(g) transmitting the selected portion of the electronic data source from the network server to a client device of the user The system transmits the selected information from a network server to the Huawei products. ¶31 col. 4:35-38
  • Identified Points of Contention:
    • Scope Questions: A central question is whether merely presenting selectable on-screen results (the "cards") meets the claim limitation of "soliciting additional input." The defense may argue that "soliciting" requires an active prompt or question for more information, not just the passive display of results that a user can optionally interact with.
    • Technical Questions: What specific evidence shows that a user's touch interaction with a "card" is used to "refin[e] the navigation query" as opposed to simply initiating a new, separate query? The complaint's allegations are conclusory on this point.

’061 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
(d) routing the navigation query to at least one agent, wherein the at least one agent utilizes the navigation query to select a portion of the electronic data source The complaint alleges that the Huawei products "route the navigation query to at least one agent that utilizes the navigation query." ¶43 col. 13:40-48
(e) invoking a user interface agent for outputting the selected portion... wherein a facilitator manages data flow among multiple agents and maintains a registration of each of said agents' capabilities The complaint alleges the products "invoke a user interface agent for outputting the selected portion... wherein a facilitator manages data flow among multiple agents and maintains a registration." ¶43 col. 13:15-21
  • Identified Points of Contention:
    • Technical Questions: The complaint provides no specific facts about the internal software architecture of Google Now or Android Wear. The infringement theory for elements (d) and (e) rests on the conclusory assertion that the accused products use an "agent-based" system managed by a "facilitator" that maintains a "registration" of agent capabilities.
    • Evidentiary Questions: A key issue will be whether the plaintiff can obtain evidence through discovery to support its allegations regarding this specific backend architecture. Without such evidence, the infringement claim may fail, as the public-facing operation of a digital assistant does not reveal its internal software structure.

V. Key Claim Terms for Construction

For the ’021 Patent:

  • The Term: "soliciting additional input from the user"
  • Context and Importance: This term is the core of the multimodal feedback invention. Its definition determines whether displaying selectable results is an infringing act. Practitioners may focus on this term because infringement hinges on whether the accused "cards" constitute "soliciting."
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification gives an example where, after an ambiguous request, the system "might preferably generate a display... showing the... list of film titles," which the user can then select from. This could support a reading where presenting options is a form of "soliciting" ('021 Patent, col. 12:54-58).
    • Evidence for a Narrower Interpretation: The flowchart in Figure 4 contains a distinct step labeled "SOLICIT ADDITIONAL... USER INPUT" (412), which suggests an active, discrete step. This could support a narrower reading that requires an explicit prompt for information, rather than just presenting results.

For the ’061 Patent:

  • The Term: "facilitator"
  • Context and Importance: This term defines the specific, modular architecture claimed by the patent. Infringement of Claim 1 depends entirely on whether the accused system contains a component that performs the role of the claimed "facilitator."
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent does not provide a standalone definition in a glossary. A party might argue that any central process that coordinates tasks between software modules could be a "facilitator."
    • Evidence for a Narrower Interpretation: Claim 1(e) itself provides a functional definition: a facilitator "manages data flow among multiple agents and maintains a registration of each of said agents' capabilities." The specification, particularly in the context of the Open Agent Architecture, further describes it as a component that receives goals and "delegates that sub-goal to the client agent" based on its registered capabilities, implying a specific, structured delegation and registration system ('061 Patent, col. 13:40-48).

VI. Other Allegations

  • Indirect Infringement: The complaint alleges active inducement for both patents, stating that Defendants encourage and instruct end users to infringe through "product manuals and technical information" (Compl. ¶¶ 35, 47). It provides a specific URL to a Huawei product page as an example of such materials, which provides a factual basis for the allegation (Compl. ¶35).
  • Willful Infringement: The complaint makes a standard allegation of willfulness, asserting that Defendants had knowledge of the patents "no later than the filing of this complaint or shortly thereafter" (Compl. ¶¶ 34, 46). It also reserves the right to prove pre-suit willfulness based on facts learned in discovery (Compl. ¶¶ 36, 48).

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

  1. Mootness and Viability: The most critical issue is the viability of the case itself. The provided IPR certificates show all asserted claims of both patents have been cancelled. Unless those decisions are reversed on appeal, the infringement claims are moot, and the litigation cannot proceed.

  2. Evidentiary Architecture: For the ’061 patent, a central question is evidentiary: can the plaintiff produce evidence that Google's and Android's backend architecture employs the specific "agent-based" system with a "facilitator" that "maintains a registration" of agent capabilities, as claimed? The complaint's allegations on this point lack factual support.

  3. Definitional Scope: For the ’021 patent, a key question is one of definitional scope: does the claim term "soliciting additional input" require an active, explicit prompt for clarification, or can it be construed to cover the passive display of selectable visual "cards" as alleged in the complaint? The answer to this claim construction question would be highly influential in determining infringement.