DCT

1:17-cv-01399

Ironworks Patents LLC v. Apple Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:17-cv-01399, D. Del., 10/06/2017
  • Venue Allegations: Plaintiff alleges venue is proper in the District of Delaware because Apple has committed acts of infringement in the district and maintains a regular and established place of business in Newark, Delaware.
  • Core Dispute: Plaintiff alleges that certain models of Defendant’s iPhone infringe three patents related to mobile device user interface features, specifically the silencing of incoming call alerts and the use of varied tactile feedback patterns to convey information.
  • Technical Context: The patents relate to methods for managing user alerts on portable devices, aiming to enhance usability and discretion in various social and operational contexts.
  • Key Procedural History: This lawsuit follows a prior case (10-cv-258-SLR) where a jury found that older Apple iPhone models infringed the RE39,231 patent. The current complaint seeks damages for infringement of the same patent by subsequent iPhone models, as well as infringement of two related patents concerning haptic feedback. The complaint notes that Apple was notified of the RE39,231 and ’150 patents in 2010 and was presented with infringement contentions for the '150 and ’734 patents in 2017.

Case Timeline

Date Event
1994-12-19 RE39,231 Patent Priority Date
1999-11-26 U.S. Patent No. 6,850,150 & 8,847,734 Priority Date
2005-02-01 U.S. Patent No. 6,850,150 Issue Date
2006-08-08 U.S. Reissue Patent No. RE39,231 Issue Date
2010-02-19 Previous patent owner (MMI) notifies Apple of alleged infringement by '150 and RE39,231 patents
2010-03-31 MMI sues Apple, alleging infringement of patents including RE39,231
2014-09-30 U.S. Patent No. 8,847,734 Issue Date
2016-09-09 Jury verdict in prior case finds RE39,231 patent valid and infringed by Apple
2017-04-17 Ironworks substitutes as plaintiff in ongoing litigation
2017-05-16 Ironworks informs Apple of alleged infringement of '150 and '734 patents
2017-06-15 Final Judgment entered in prior case (1:10-cv-00258-SLR)
2017-10-06 Complaint Filing Date

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

U.S. Reissue Patent No. RE39,231 - "Communication terminal equipment and call incoming control method," Issued Aug. 8, 2006

The Invention Explained

  • Problem Addressed: The patent describes the dilemma faced by a mobile phone user receiving a call at an inconvenient time. Letting the phone ring continuously can disturb others, but forcibly ending the call (e.g., by an off-hook operation) may give the caller an "unpleasant feeling" by signaling an intentional hang-up (RE39,231 Patent, col. 1:21-36).
  • The Patented Solution: The invention is a "polite ignore" function. It allows a user to perform a "predetermined operation" (e.g., a short button press) to change the volume of an incoming call alert—including silencing it—for that specific call only. Crucially, this action does not affect the volume settings for future calls and, from the caller's perspective, the "call ringing state" remains unchanged, meaning they are not aware the alert has been silenced locally (RE39,231 Patent, Abstract; col. 3:40-50).
  • Technical Importance: This approach provided a method for discreetly managing call alerts in environments like public spaces or meetings without terminating the connection or appearing rude to the caller.

Key Claims at a Glance

  • The complaint asserts independent claim 12 and dependent claim 2 (Compl. ¶32, ¶47).
  • Independent Claim 12 requires:
    • A communication terminal with an alert sound generator and "control means" for it.
    • A "means for specifying a predetermined operation by the user."
    • When the user operates this means during an incoming call, the control means "change[s] a volume of the generated alert sound only for the received call."
    • This change must occur "without affecting the volume of the alert sound for future received calls."
    • This must also leave the "call ringing state, as perceived by the remote caller... unchanged."
    • The terminal must also include RF signal processing means and an antenna.

U.S. Patent No. 6,850,150 - "Portable device," Issued Feb. 1, 2005

The Invention Explained

  • Problem Addressed: The patent observes that conventional portable devices have limited methods for conveying operational information to users non-visually. A single, uniform vibration for all events makes it difficult for a user, particularly one with visual or auditory impairments, to understand what is happening on the device without looking at it ('150 Patent, col. 2:57-65).
  • The Patented Solution: The invention discloses using a variety of distinct, silent tactile patterns to communicate "abstract information" about "multiple internal operational events." By varying characteristics of the vibration (e.g., frequency, amplitude, duration), the device can create a "coded vibration" system that provides nuanced, non-visual feedback for different user actions or system states, such as confirming the selection of a menu item ('150 Patent, Abstract; col. 2:28-33, col. 6:36-46).
  • Technical Importance: This technology allows for a richer haptic user interface, enabling users to receive more complex information through touch, which enhances accessibility and allows for discreet operation.

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶56).
  • Independent Claim 1 requires:
    • A portable device with "control means" and a user interface containing "alarm means" for producing a "silent, invisible, tactile sensation."
    • The control means are arranged to give the user "abstract information on multiple internal operational events" by using "various alarm patterns" of these sensations.
    • The alarm patterns must differ from one another based on at least one varying characteristic (e.g., frequency, amplitude).
    • The "abstract information" must comprise "a notification of a selected item on a menu of the user interface."

U.S. Patent No. 8,847,734 - "Method of giving the user information, portable device, and computer program product," Issued Sep. 30, 2014

  • Patent Identification: U.S. Patent No. 8,847,734, "Method of giving the user information, portable device, and computer program product," Issued Sep. 30, 2014 (Compl. ¶12).
  • Technology Synopsis: This patent, a continuation of the '150 patent, also describes providing user information via tactile alerts. The claims focus on a device with a control circuit that generates a first tactile pattern for a first event and a "distinctly humanly perceptibly different" second pattern for a second event. The patent specifically claims this capability where one of the events is the "user entry of an incorrect personal identification number code." ('734 Patent, Abstract; col. 8:1-10).
  • Asserted Claims: Independent claim 1 is asserted (Compl. ¶68).
  • Accused Features: The complaint alleges that the "System Haptics" in iPhone models 6s and later, which use the "Taptic Engine," infringe by providing distinct vibration patterns for different events, such as an incoming call versus the entry of an incorrect passcode (Compl. ¶69, ¶73-74).

III. The Accused Instrumentality

Product Identification

  • The complaint identifies several generations of Apple's iPhone, categorized into overlapping groups:
    • "Apple Accused Polite Ignore Devices" (infringing the ’231 Patent): iPhone 4s, 5, 5s, 5c, 6 (Plus), and 6s (Plus) (Compl. ¶33).
    • "Apple Accused Tactile Alert Devices" (infringing the ’150 Patent): iPhone 4s through iPhone X, including all intermediate models (Compl. ¶57).
    • "Apple Accused Haptic Feedback Devices" (infringing the ’734 Patent): iPhone 6s (Plus), SE, 7 (Plus), 8 (Plus), and iPhone X (Compl. ¶69).

Functionality and Market Context

  • The complaint alleges that the accused devices for the ’231 patent contain a feature where pressing a volume button during an incoming call silences the ringtone for that call only, without affecting future call volumes or sending the call to voicemail (Compl. ¶38-40).
  • For the ’150 and ’734 patents, the accused functionality is the "Taptic Engine" and associated "System Haptics" software, which allegedly generate "various vibration patterns" to provide users with "abstract information on internal operational events," such as selecting a menu item or entering an incorrect passcode (Compl. ¶60-63, ¶73-74). The complaint asserts that Apple designs, manufactures, markets, and sells these widely used smartphones throughout the United States (Compl. ¶3).
  • No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

RE39,231 Patent Infringement Allegations

Claim Element (from Independent Claim 12) Alleged Infringing Functionality Complaint Citation Patent Citation
means for specifying a predetermined operation by the user... when said... means... is operated by the user, said control means controls said alert sound generator to change a volume of the generated alert sound only for the received call, without affecting the volume... for future received calls The user pushing a volume button while the phone is ringing silences the ringtone for that call without changing the default ringer volume for subsequent calls. ¶38, ¶39 col. 5:56-65
while leaving a call ringing state, as perceived by the remote caller, of the call to the terminal from the remote caller unchanged Silencing the ringtone does not send the call to voicemail or otherwise terminate the call, so the remote caller's experience is unchanged. ¶40 col. 6:62-65
further comprising: RF signal processing means for transmitting and/or receiving radio waves; and an antenna The accused iPhones include standard cellular radio components for transmitting and receiving radio waves. ¶41 col. 2:31-35
  • Identified Points of Contention:
    • Scope Questions: The claim uses "means-plus-function" language (e.g., "control means"). The scope of this language is limited to the structures disclosed in the patent's specification and their equivalents. A potential dispute is whether the processors and software in the accused iPhones are structurally equivalent to the CPU and control logic described in the patent (RE39,231 Patent, col. 2:20-22).
    • Technical Questions: A key factual question is whether silencing an iPhone's ringtone truly leaves the "call ringing state... unchanged" from the caller's perspective. This may depend on specific network and carrier implementations, raising the question of what evidence the plaintiff can provide to show that no perceptible change (e.g., a different ringback tone or network signal) is communicated to the caller's device.

’150 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
control means are arranged to give the user abstract information on multiple internal operational events of the device by using various alarm patterns of silent, invisible sensations The iPhone's microprocessor and iOS are arranged to provide abstract information to the user via "various vibration patterns produced by the Taptic Engine." ¶61 col. 4:58-65
the alarm patterns differing from one another such that at least one alarm pattern characteristic sensed by the user varies The vibration patterns differ from one another, causing the vibration characteristics sensed by the user to vary. ¶62 col. 4:10-15
said abstract information comprising a notification of a selected item on a menu of the user interface The "System Haptics" feature gives users abstract information, including notification when selecting an item such as a date or letter in an app. ¶63 col. 6:36-46
  • Identified Points of Contention:
    • Scope Questions: The infringement analysis may turn on the definition of "abstract information." A question for the court is whether the haptic feedback provided by an iPhone for menu selection constitutes "abstract information" as contemplated by the patent, or if the term requires a more complex, symbolic, or "coded" form of communication suggested by the specification's references to Braille and character strings ('150 Patent, col. 2:32-33, col. 4:45-46).
    • Technical Questions: What evidence does the complaint provide that the accused devices provide "various alarm patterns" for "multiple internal operational events"? The complaint alleges this functionality exists (Compl. ¶61), but a factual dispute could arise over whether the number and variety of distinct haptic patterns and their linkage to specific internal events meet the requirements of the claim.

V. Key Claim Terms for Construction

For the ’231 Patent:

  • The Term: "call ringing state, as perceived by the remote caller... unchanged" (Claim 12)
  • Context and Importance: This limitation is the core of the "polite ignore" feature, distinguishing it from simply rejecting a call. Infringement hinges on whether the accused functionality is imperceptible to the remote caller.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim language itself is the primary guide. The absence of a specific technical definition in the specification could support an interpretation based on the plain and ordinary meaning: the caller continues to hear a standard ringback tone and is not prematurely sent to voicemail.
    • Evidence for a Narrower Interpretation: The patent's background emphasizes avoiding the "unpleasant feeling" that a caller gets when they "notice that the circuit was broken off intentionally" (RE39,231 Patent, col. 1:28-32). This could support a construction that "unchanged" means the absence of any network-level signal or other indication that the call has been actively managed or screened by the user.

For the ’150 Patent:

  • The Term: "abstract information" (Claim 1)
  • Context and Importance: This term defines the nature of the communication conveyed by the haptic feedback. The case may turn on whether simple confirmation feedback (e.g., a buzz when a setting is toggled) qualifies, or if a more complex, coded meaning is required. Practitioners may focus on this term because the patent contrasts its "coded vibration" with simpler, pre-existing vibration alerts.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification states that abstract information can "symbolize an event of the device" ('150 Patent, col. 4:49-50), which could be interpreted broadly to include simple notifications like error messages or confirmation of a user's selection.
    • Evidence for a Narrower Interpretation: The specification provides context suggesting a richer, more symbolic system, likening the invention to a "limited application of Braille system by means of vibration" and describing how patterns could form "a character string" ('150 Patent, col. 2:32-33; col. 4:45-46). This could support a narrower construction requiring the feedback to convey a meaning that is "abstracted" from a more complex state, rather than being a simple 1:1 confirmation.

VI. Other Allegations

  • Indirect Infringement: The complaint focuses on direct infringement under 35 U.S.C. § 271(a) and does not contain separate counts for indirect infringement (inducement or contributory).
  • Willful Infringement: The complaint alleges willful infringement, entitling Ironworks to enhanced damages (Compl. ¶79). The allegations are based on Apple’s alleged knowledge of the patents, which stems from:
    • A notification letter from the previous patent owner in February 2010 regarding the '150 and ’231 patents (Compl. ¶78).
    • The prior litigation and jury verdict finding older iPhones infringed the ’231 patent (Compl. ¶78).
    • A meeting in May 2017 where Ironworks presented Apple with claim charts alleging infringement of the ’150 and ’734 patents (Compl. ¶28, ¶78).

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

  • A central issue will be one of technological continuity and preclusion: To what extent does the prior jury verdict that older iPhones infringe the ’231 patent impact the current allegations against newer models? The court will likely examine whether the accused "polite ignore" feature in the newer iPhones is materially unchanged from the previously adjudicated devices.
  • A key question of definitional scope will drive the analysis of the '150 and '734 patents: Can the term "abstract information", which the patent specification links to concepts like a "coded vibration" and a "Braille system," be construed to cover the generalized "System Haptics" feedback in iOS, or did the inventors claim a more structured and symbolic communication system?
  • The case may also turn on a question of functional proof: For the ’231 patent, what factual evidence will demonstrate that the accused feature leaves the "call ringing state... unchanged" from the remote caller's perspective? For the ’150 and ’734 patents, what evidence will show that the accused haptic patterns are sufficiently "various" and "distinctly... different" to meet the claim limitations?