DCT

1:17-cv-00263

IPA Tech Inc v. Kyocera Intl Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:17-cv-00263, D. Del., 03/13/2017
  • Venue Allegations: Venue is alleged to be proper as Defendants are subject to personal jurisdiction in the District of Delaware, with Defendant Kyocera Communications, Inc. being a Delaware corporation.
  • Core Dispute: Plaintiff alleges that Defendants’ mobile phones and tablets incorporating the Google Now digital assistant infringe patents related to speech-based navigation of electronic data and methods for resolving user input ambiguity.
  • Technical Context: The technology concerns voice-activated digital assistants, which allow users to retrieve information from networked sources using natural language commands, a key feature in the modern smartphone market.
  • Key Procedural History: The patents-in-suit originated with SRI International, a research institute whose work contributed to the development of the Siri personal assistant, later acquired by Apple. Plaintiff IPA Technologies Inc., a subsidiary of WiLAN, acquired the portfolio from SRI in 2016. Subsequent to the filing of this complaint, both patents-in-suit were the subject of Inter Partes Review (IPR) proceedings. In March 2020, the U.S. Patent and Trademark Office issued certificates cancelling all claims of both the '061 and '021 patents.

Case Timeline

Date Event
1999-01-05 Earliest Priority Date for ’021 and ’061 Patents
2003-02-18 U.S. Patent No. 6,523,061 Issued
2004-05-25 U.S. Patent No. 6,742,021 Issued
2012-07-01 Accused Google Now Functionality Launched (approximate)
2016-05-06 IPA Technologies Inc. Acquires Patent Portfolio from SRI
2017-03-13 Complaint Filed
2020-03-09 All Claims of '061 Patent Cancelled via IPR
2020-03-12 All Claims of '021 Patent Cancelled via IPR

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"

  • Patent Identification: U.S. Patent No. 6,742,021, "Navigating Network-Based Electronic Information Using Spoken Input With Multimodal Error Feedback," issued May 25, 2004 (Compl. ¶22).

The Invention Explained

  • Problem Addressed: The patent identifies the challenge that voice-driven navigation systems must handle errors and ambiguities inherent in spoken natural language, such as misrecognized words or under-constrained requests (e.g., a query that returns too many results) ('021 Patent, col. 2:1-12). Simply forcing a user to repeat a query is frustrating and inefficient ('021 Patent, col. 2:13-24).
  • The Patented Solution: The invention describes a method where, after interpreting a spoken request, the system can resolve ambiguities by "soliciting additional clarification from the user" via a "multi-modal dialogue" ('021 Patent, col. 2:53-65). Specifically, it solicits follow-up input in a non-spoken modality, such as presenting an on-screen menu, to help the user refine the initial query without having to start over ('021 Patent, Abstract; col. 11:5-12).
  • Technical Importance: This approach enabled a more graceful and conversational user experience for voice assistants by creating an integrated framework for error correction, making the technology more viable for mainstream consumer adoption ('021 Patent, col. 2:13-24).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶25).
  • Essential elements of Claim 1 include:
    • Receiving a spoken request from a user.
    • Rendering an interpretation of the request and constructing a partial navigation query.
    • Soliciting additional input from the user in a "non-spoken modality different than the original request" without the user having to request it.
    • Refining the navigation query based on the additional input.
    • Using the refined query to select and transmit data from a network server to a client device.
  • The complaint reserves the right to assert additional claims (Compl. ¶27, fn. 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"

  • Patent Identification: 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 (Compl. ¶23).

The Invention Explained

  • Problem Addressed: The patent addresses the complexity of building a voice-navigation system that can access information from numerous, disparate electronic sources, each with its own interface and data structure ('061 Patent, col. 1:47-54).
  • The Patented Solution: The invention proposes a modular, "agent-based" architecture. A central "facilitator" acts as a broker, receiving the user's interpreted request and routing it to specialized "agents" (e.g., a weather agent, a video database agent). The facilitator "manages data flow" among the agents and "maintains a registration" of each agent's specific capabilities, allowing it to coordinate a response ('061 Patent, Abstract; Fig. 6). The patent describes this system in the context of the Open Agent Architecture™ (OAA®) platform ('061 Patent, col. 13:15-24).
  • Technical Importance: This architecture provides a scalable and extensible framework for integrating a wide variety of services and data sources into a single, cohesive, voice-controlled user interface ('061 Patent, col. 13:15-24).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶36).
  • Essential elements of Claim 1 include:
    • Receiving and interpreting a spoken request to construct a navigation query.
    • Routing the query to at least one "agent" that selects data.
    • Invoking a user interface agent to output the data.
    • 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 assert additional claims (Compl. ¶38, fn. 2).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are "Kyocera Google Now-enabled products," including a list of specific Kyocera-branded mobile telephones and tablets that use the Android operating system and feature the "Google Now digital assistant" or the subsequent "Voice Actions" functionality (Compl. ¶15-16, 21).

Functionality and Market Context

  • The complaint alleges these products allow users to interact via "natural spoken language" to retrieve information such as directions, weather, and restaurant information from network sources (Compl. ¶18, 20). The results are presented to the user as "Cards," which are described as "visual representations of voice search results" that "allow further user interaction with the Google Now digital assistant through touch response" (Compl. ¶19).

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint.

'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 Kyocera products receive spoken requests for information like directions, calendar, weather, etc. ¶27 col. 4:1-4
(b) rendering an interpretation of the spoken request The products render an interpretation of the user's spoken request. ¶27 col. 4:11-13
(c) constructing at least part of a navigation query based upon the interpretation The products construct a navigation query based on the interpretation of the spoken request. ¶27 col. 4:13-15
(d) soliciting additional input from the user, including user interaction in a non-spoken modality different than the original request... The products present "Cards" which are "visual representations of voice search results" and allow "further user interaction... through touch response," which is alleged to be the non-spoken modality. ¶19, 27 col. 12:34-44
(e) refining the navigation query, based upon the additional input The complaint alleges in a conclusory manner that the products refine the navigation query based on the user's interaction with the presented information. ¶27 col. 12:45-48
(f) using the refined navigation query to select a portion of the electronic data source The products are alleged to use the refined query to select information. ¶27 col. 3:5-9
(g) transmitting the selected portion of the electronic data source from the network server to a client device of the user The products transmit the selected information from a network server to the Kyocera device for display. ¶27 col. 4:35-37
  • Identified Points of Contention:
    • Scope Question: Does the presentation of interactive "Cards" with touch-based options (Compl. ¶19) constitute "soliciting additional input" for the purpose of refinement, as required by claim 1(d)? A central dispute may be whether presenting results that a user can interact with is equivalent to the patent's concept of a "clarifying, multi-modal dialogue" to resolve ambiguity ('021 Patent, col. 3:1-5).
    • Technical Question: What evidence does the complaint provide that touch interactions on a Card are used to "refin[e] the navigation query" (element 1(e)) rather than initiating a new, separate query? The complaint's allegations on this point are conclusory (Compl. ¶27).

'061 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 a user The Kyocera products receive spoken requests for various types of information. ¶38 col. 4:1-4
(b) rendering an interpretation of the spoken request The products interpret the user's spoken request. ¶38 col. 4:11-13
(c) constructing a navigation query based upon the interpretation The products construct a navigation query based on the interpretation. ¶38 col. 4:13-15
(d) routing the navigation query to at least one agent, wherein the at least one agent utilizes the navigation query... The complaint alleges the products "route the navigation query to at least one agent that utilizes the navigation query," but does not identify the specific "agents" within the Google Now architecture. ¶38 col. 1:47-51
(e) invoking a user interface agent... wherein a facilitator manages data flow among multiple agents and maintains a registration... The complaint alleges the system uses a "facilitator" that "manages data flow" and "maintains a registration" of agent capabilities, reciting the claim language without identifying the corresponding technical components. ¶38 col. 14:35-46
  • Identified Points of Contention:
    • Scope Question: Do the terms "facilitator" and "registration," as used in the patent, read on the architecture of the accused Google Now system? The patent links these terms to a specific Open Agent Architecture™ (OAA®) with an explicit registration protocol ('061 Patent, col. 13:15-41), raising the question of whether the claim scope is limited to that specific implementation.
    • Technical Question: The complaint's allegations for elements 1(d) and 1(e) are conclusory recitations of the claim language (Compl. ¶38). A key factual question is whether the Google Now system contains distinct software components that function as the claimed "agents" and a "facilitator" that "maintains a registration," as opposed to a different, monolithic or non-registrant architecture.

V. Key Claim Terms for Construction

'021 Patent: "soliciting additional input... in a non-spoken modality"

  • Context and Importance: This term is central to the infringement theory for the '021 Patent. The interpretation of "soliciting" will determine whether presenting interactive on-screen results, such as the accused "Cards" (Compl. ¶19), meets this limitation.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes the goal as a "clarifying, multi-modal dialogue" that "takes advantage of whatever partial navigational information has been gleaned" ('021 Patent, col. 3:1-5). This language may support an argument that any interactive element presented to the user after an ambiguous query serves to "solicit" clarification.
    • Evidence for a Narrower Interpretation: The patent provides an example of resolving an ambiguous movie query by displaying a "list of film titles that satisfy the user's stated constraints" from which the user can select ('021 Patent, col. 11:55-65). This may support a narrower construction requiring the system to present options aimed at resolving a specific, identified ambiguity, rather than simply presenting results.

'061 Patent: "facilitator... maintains a registration of each of said agents' capabilities"

  • Context and Importance: This limitation defines the specific agent-based architecture at the heart of the '061 Patent. Infringement hinges on whether the accused Google Now system has a component that performs this specific "registration" function.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The term could be argued to cover any system where a central component is aware of the functions of other components to coordinate a task, a common software design pattern. The summary describes the facilitator's role more generally as routing queries to agents to retrieve information ('061 Patent, col. 1:47-54).
    • Evidence for a Narrower Interpretation: The detailed description heavily references the specific "Open Agent Architecture™ (OAA®)," where agents explicitly "register" their capabilities with a facilitator using a declarative "Interagent Communication Language ('ICL')" ('061 Patent, col. 13:25-41). This suggests the possibility that the claim term is limited to systems with such an explicit, formal registration mechanism.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement of infringement for both patents. It asserts that Defendants encourage and instruct end users to perform the infringing methods through materials like user guides. The complaint specifically cites the "Kyocera DuraForce PRO User Guide" and its instructions for "Using Google Voice Search" as evidence of such inducement (Compl. ¶30, 41).
  • Willful Infringement: Willfulness is alleged based on knowledge of the patents gained "no later than the filing of this complaint or shortly thereafter" (Compl. ¶29, 40). The complaint reserves the right to amend its willfulness allegations should discovery reveal pre-suit knowledge of the patents (Compl. ¶31, 42).

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

  • Case Viability: The most critical issue is the legal status of the lawsuit itself. Given that all asserted claims of both patents-in-suit were cancelled in Inter Partes Review proceedings after the complaint's filing, the fundamental basis for the infringement action appears to have been extinguished, suggesting the case is moot.
  • Definitional Scope: Assuming the claims were valid, a core issue for the '021 patent would be one of definitional scope: can the presentation of interactive, touch-sensitive "Cards" as search results be construed as "soliciting additional input" for the purpose of refining an ambiguous query, or is it merely the display of a final answer?
  • Architectural Equivalence: For the '061 patent, a key evidentiary question would be one of architectural equivalence: does the accused Google Now system operate using a distinct "facilitator" that "maintains a registration" of agent capabilities, as described in the patent, or does it utilize a different software architecture to achieve a similar end result?