DCT

1:18-cv-00001

IPA Tech Inc v. Microsoft Corp

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Key Events
Amended Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:18-cv-00001, D. Del., 02/20/2018
  • Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendant Microsoft Corporation is a Delaware corporation and is therefore a resident of the district.
  • Core Dispute: Plaintiff alleges that Microsoft’s Cortana digital assistant, and the products that incorporate it, infringe three patents related to speech-based navigation of remote electronic information and agent-based software architectures.
  • Technical Context: The technology at issue concerns foundational methods for enabling conversational voice commands to search for and retrieve information from network-based sources, a core functionality of modern digital personal assistants.
  • Key Procedural History: The patents-in-suit originated with SRI International, a research institute whose work led to the spin-off of Siri, Inc. in 2007, which was subsequently acquired by Apple Inc. in 2010. Plaintiff IPA Technologies acquired the asserted patent portfolio from SRI in 2016. The complaint alleges Defendant had knowledge of the patents due to prior litigation against Original Equipment Manufacturers (OEMs) and through citations made during Microsoft's own patent prosecution. Subsequent to the filing of this complaint, Inter Partes Review (IPR) proceedings at the U.S. Patent and Trademark Office, evidenced by the provided IPR Certificates, resulted in the cancellation of all claims of U.S. Patent Nos. 6,742,021 and 6,523,061. An IPR also resulted in the cancellation of all claims of U.S. Patent No. 6,757,718. These post-filing events may substantially impact the viability of the asserted claims.

Case Timeline

Date Event
1999-01-05 Earliest Priority Date for ’021, ’061, and ’718 Patents
2003-02-18 U.S. Patent No. 6,523,061 Issued
2004-05-25 U.S. Patent No. 6,742,021 Issued
2004-06-29 U.S. Patent No. 6,757,718 Issued
2007-01-01 SRI International forms spin-off company Siri, Inc. (approx. date)
2010-04-01 Apple Inc. acquires Siri, Inc. (approx. date)
2016-05-06 IPA Technologies Inc. acquires the SRI patent portfolio
2018-02-20 Complaint Filed
2020-03-09 IPR Certificate Issued, All Claims of '061 Patent Cancelled
2020-03-09 IPR Certificate Issued, All Claims of '718 Patent Cancelled
2020-03-12 IPR Certificate Issued, All Claims of '021 Patent 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"

  • 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.

The Invention Explained

  • Problem Addressed: The patent identifies a need for technology that allows non-expert users to navigate vast amounts of electronic data using natural language input, as prior systems were too complex and not user-friendly (’021 Patent, col. 1:20-26). Existing systems struggled with errors and ambiguities in spoken requests and often required users to learn specialized command formats instead of speaking naturally (’021 Patent, col. 2:1-14; Compl. ¶¶26-28).
  • The Patented Solution: The invention proposes a method where a system receives a spoken request, interprets it, and if the request is incomplete or ambiguous, it solicits additional clarification from the user through a different, non-spoken modality (e.g., a menu on a screen). This "clarifying, multi-modal dialogue" uses any partial information already gathered to help the user refine the query, which is then used to retrieve the desired information from a remote network source (’021 Patent, Abstract; col. 2:49-65; Compl. ¶¶34-35).
  • Technical Importance: This approach represented an improvement in human-computer interaction by creating a more forgiving and intuitive interface that could handle imperfect, conversational inputs, a step beyond rigid voice command systems (Compl. ¶¶30, 33).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (Compl. ¶97).
  • Independent Claim 1 requires a method comprising the steps of:
    • receiving a spoken request for desired information from the user;
    • rendering an interpretation of the spoken request;
    • constructing at least part of a navigation query based upon the interpretation;
    • 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;
    • refining the navigation query, based upon the additional input;
    • using the refined navigation query to select a portion of the electronic data source; and
    • 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 assert additional claims (Compl. ¶99, 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"

  • 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.

The Invention Explained

  • Problem Addressed: The patent addresses the challenge of building complex, dynamic systems for speech-based navigation that can integrate multiple, distributed services and legacy applications which were not originally designed for voice control (’061 Patent, col. 13:24-34; Compl. ¶67).
  • The Patented Solution: The patent discloses a specific software architecture called the "Open Agent Architecture" (OAA). In this architecture, a central "facilitator" acts as a broker, managing data flow among a community of specialized, independent "agents" (e.g., a speech recognition agent, a database query agent, an e-mail agent). The facilitator maintains a registry of each agent's capabilities and routes tasks to the appropriate agents to fulfill a user's request, as illustrated in the patent's Figure 6 (’061 Patent, col. 13:15-51; Compl. ¶¶60, 62).
  • Technical Importance: This modular, agent-based framework provided a scalable and flexible way to build sophisticated digital assistants capable of performing diverse tasks by dynamically collaborating with various underlying services (Compl. ¶64).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (Compl. ¶109).
  • Independent Claim 1 requires a method comprising the steps of:
    • receiving a spoken request for desired information from a user;
    • rendering an interpretation of the spoken request;
    • constructing a navigation query based upon the interpretation;
    • 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
    • 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 assert additional claims (Compl. ¶111, n.2).

Multi-Patent Capsule: U.S. Patent No. 6,757,718 - “Mobile Navigation of Network-Based Electronic Information Using Spoken Input”

  • Patent Identification: U.S. Patent No. 6,757,718, “Mobile Navigation of Network-Based Electronic Information Using Spoken Input,” Issued June 29, 2004 (Compl. ¶79).
  • Technology Synopsis: This patent, which shares a specification with the ’021 and ’061 patents, focuses on implementing speech-based navigation in a mobile context. It claims a method where a "mobile information appliance," defined as a "portable remote control device or a set-top box for a television," is used to receive a spoken request and interact with a remote network server to retrieve data (’718 Patent, col. 18:45-56; Compl. ¶83). The key distinction is the nature of the user's device.
  • Asserted Claims: The complaint asserts at least independent claim 1 (Compl. ¶121).
  • Accused Features: The complaint alleges that Microsoft products such as the Xbox, which can be controlled by a headset, and other Cortana-enabled devices function as infringing "mobile information appliances" (Compl. ¶¶122, 124).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentality is the Microsoft Cortana digital assistant and the products that incorporate it, including but not limited to Microsoft Surface, Surface Pro, Surface Book, desktops, laptops, and tablets running the Windows 10 operating system, and the Microsoft XBOX (Compl. ¶¶98, 110, 122).

Functionality and Market Context

  • Cortana is described as a "digital agent" that helps users "get things done" by responding to spoken natural language requests (Compl. p. 35). Its alleged functions include setting reminders, tracking packages, finding facts and files, sending emails, and managing calendars (Compl. p. 36). The complaint provides a screenshot showing Cortana can be activated by voice via a microphone icon or by typing, and that it operates across a user's phone, PC, and tablet (Compl. pp. 35-37). The complaint also details Cortana's use for controlling an Xbox console for tasks like turning the console on, taking a screenshot, or sending a message to another user (Compl. p. 54).

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 Microsoft Cortana-enabled products receive spoken requests for information, such as for reminders, package tracking, or facts (Compl. p. 36). ¶99 col. 12:28-32
(b) rendering an interpretation of the spoken request Cortana-enabled products render an interpretation of the spoken request. ¶99 col. 12:32-33
(c) constructing at least part of a navigation query based upon the interpretation Cortana-enabled products construct a navigation query based on the interpretation of the request. ¶99 col. 12:35-39
(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 complaint alleges Cortana solicits additional input via a non-spoken modality. A provided screenshot shows Cortana presenting weather and Yelp results with interactive elements, which may be interpreted as a form of non-spoken solicitation (Compl. p. 35). ¶99 col. 2:49-58
(e) refining the navigation query, based upon the additional input The complaint alleges Cortana refines the navigation query based on additional input. ¶99 col. 13:13-17
(f) using the refined navigation query to select a portion of the electronic data source Cortana uses the query to select information from a data source, such as retrieving weather data or local business information (Compl. p. 35). ¶99 col. 13:15-17
(g) transmitting the selected portion of the electronic data source from the network server to a client device of the user Cortana transmits the selected portion of data from a network server to the Microsoft device being used by the user. ¶99 col. 13:19-21
  • Identified Points of Contention:
    • Scope Questions: A central question is whether the presentation of interactive results by Cortana, as shown in the complaint's visual evidence (Compl. p. 35), meets the claim limitation of "soliciting additional input...to refine the navigation query." The defense may argue this is merely a final presentation of results, not an active solicitation to resolve an ambiguity in the original query as described in the patent (’021 Patent, col. 11:3-6).
    • Technical Questions: The complaint does not provide a specific example of Cortana handling an ambiguous voice query by presenting a non-spoken clarification prompt that is then used to refine the initial query. The analysis will require evidence of whether Cortana's error-handling architecture actually performs this specific multi-step, multi-modal refinement process.

’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 Cortana-enabled products receive spoken requests from a user for various types of information (Compl. p. 44). ¶111 col. 14:30-38
(b) rendering an interpretation of the spoken request Cortana-enabled products interpret the spoken request. ¶111 col. 14:38-41
(c) constructing a navigation query based upon the interpretation Cortana-enabled products construct a navigation query based on the interpreted request. ¶111 col. 14:41-43
(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 Cortana routes the query to at least one agent to select data. The complaint provides no specific evidence of this internal architectural function. ¶111 col. 14:41-45
(e) invoking a user interface agent for outputting the selected portion...wherein a facilitator manages data flow...and maintains a registration of...agents' capabilities The complaint alleges Cortana invokes a UI agent and uses a facilitator to manage data flow and maintain a registration of agent capabilities. The screenshot on p. 45 shows the Cortana UI on different devices, which may be construed as the output of a UI agent. ¶111, ¶112 col. 13:45-51
  • Identified Points of Contention:
    • Scope Questions: The infringement case for this patent appears to hinge entirely on whether Cortana's software architecture can be characterized as the specific "Open Agent Architecture" claimed, with its distinct "facilitator" and "agent" components. The defense may argue that these terms have specific meanings defined by the patent specification that do not read on Cortana's potentially different architecture.
    • Technical Questions: The complaint provides no evidence regarding the internal architecture of Cortana. The core technical question is whether discovery would reveal that Cortana actually employs a "facilitator" that "manages data flow" and "maintains a registration" of agent capabilities, as required by the claim. Without such evidence, the infringement allegation remains conclusory.

V. Key Claim Terms for Construction

  • The Term: "soliciting additional input...in a non-spoken modality" ('021 Patent, Claim 1)

    • Context and Importance: This term is the central feature of the '021 patent, distinguishing it from prior art by describing a multi-modal error-correction dialogue. The outcome of the infringement analysis for this patent will likely depend on how broadly or narrowly this term is construed.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification provides an example where, after a user provides an ambiguous request, the system "might preferably generate a display for client display device 112 showing the (relatively short) list of film titles that satisfy the user's stated constraints," from which the user can select (’021 Patent, col. 12:44-54). A party could argue this supports a construction covering any presentation of interactive search results that allows for user selection.
      • Evidence for a Narrower Interpretation: The patent repeatedly frames this step as part of a "clarifying, multi-modal dialogue" that "takes advantage of whatever partial navigational information has been gleaned" to "converge rapidly toward instantiation of a valid navigational template" (’021 Patent, col. 2:49-58). This language suggests the solicitation is a specific error-handling step to resolve an incomplete query, not merely the presentation of a final set of results.

  • The Term: "facilitator" ('061 Patent, Claim 1)

    • Context and Importance: This term defines the specific agent-based architecture that is the core of the '061 patent's claimed invention. Infringement requires showing that the accused Cortana system contains a component that meets this definition.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: A party might argue that "facilitator" should be given a broad, plain-meaning interpretation to cover any server-side logic that coordinates different software processes or microservices in a distributed system.
      • Evidence for a Narrower Interpretation: The specification provides a very specific definition: a facilitator is a component that "manages data flow among multiple agents and maintains a registration of each of said agents' capabilities" (’061 Patent, col. 15:38-41). It further explains that "an agent registers with its parent facilitator a specification of the capabilities and services it can provide" and the facilitator "delegates that sub-goal to the client agent" (’061 Patent, col. 13:34-45). This suggests a narrow construction requiring a specific registration and delegation mechanism.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges active inducement for all three patents. The factual basis is that Microsoft allegedly encourages and provides instructions for infringement through its marketing materials, websites ("How to use Cortana on your Surface"), developer documentation (APIs), and the general nature of the product, which prompts users to perform the claimed methods (Compl. ¶¶101, 113, 127).
  • Willful Infringement: Willfulness is alleged for all three patents. The basis for alleged knowledge of the '021 and '718 patents is that Plaintiff previously filed infringement complaints against OEMs that sell devices incorporating Cortana, and that Microsoft was notified by those OEMs (Compl. ¶¶102, 128). For the '061 and '718 patents, knowledge is also alleged based on Microsoft's own patent prosecution history, where the patents-in-suit were cited as prior art (Compl. ¶114, p.47; ¶128, p.58).

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

  • A primary question is one of procedural viability: given that the provided IPR certificates indicate all asserted claims of the patents-in-suit were cancelled by the USPTO after the complaint was filed, the central issue is whether any legal basis for this case remains.
  • A key evidentiary question would be one of architectural correspondence: does the internal software architecture of Microsoft's Cortana system map onto the specific "facilitator" and "agent" model described and claimed in the '061 patent, or is this an attempt to apply the patent's specific solution to a fundamentally different technology?
  • A core issue for the '021 patent would be one of functional scope: does Cortana's standard presentation of interactive search results constitute "soliciting additional input...to refine the navigation query" for error-correction purposes as required by the claim, or is there a functional mismatch between the accused product's operation and the specific problem-solving method claimed by the patent?