DCT

1:18-cv-00211

West View Research LLC v. BMW Of North America LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:18-cv-00211, S.D. Cal., 10/17/2016
  • Venue Allegations: Plaintiff alleges venue is proper in the Southern District of California based on Defendants' business contacts, activities, and commission of patent infringement within the district.
  • Core Dispute: Plaintiff alleges that Defendant’s vehicle infotainment systems (iDrive, ConnectedDrive), related mobile applications, and third-party service integrations infringe patents related to portable, location-aware service requests and computerized information display systems for transport devices.
  • Technical Context: The technology at issue involves the integration of in-vehicle computer systems with wireless networks, GPS, speech recognition, and personal electronic devices to provide information, entertainment, and remote services to vehicle occupants.
  • Key Procedural History: The complaint notes that a separate action was initiated against the same Defendants on November 10, 2014, which did not involve the patents-in-suit. It further states that the claims of the ’367 patent were allowed by the USPTO after its consideration of prior art and arguments raised by defendants in the context of the prior litigation, including art cited in Inter Partes Review petitions. This history suggests the asserted claims may have been examined against art highly relevant to the automotive industry.

Case Timeline

Date Event
1999-06-10 ’367 Patent Earliest Priority Date
2003-12-17 ’053 Patent Earliest Priority Date
2013-01-01 Accused BMW iDrive Products with ConnectedDrive launch ("2013 and later")
2014-11-10 Plaintiff initiated separate, prior litigation against Defendants
2016-01-07 Defendant demonstrated SmartThings integration at CES 2016
2016-03-29 ’053 Patent Issued
2016-08-09 ’367 Patent Issued
2016-10-17 Complaint Filed

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

U.S. Patent No. 9,299,053 - Portable Computerized Wireless Apparatus

The Invention Explained

  • Problem Addressed: The patent’s background section describes the inconvenience faced by travelers at security checkpoints who must surrender personal items (“chattel”) such as pocket knives. The patent identifies a need for improved methods of managing, tracking, and recovering such items. (’053 Patent, col. 1:65-2:11).
  • The Patented Solution: The invention is a mobile apparatus that uses a global positioning system (GPS) to determine its current location and a wireless interface to transmit a message to a third party. This message, based on the user's location and a selected service, causes the third party to provide that service at or near the user’s location. (’053 Patent, Abstract; col. 3:50-4:12).
  • Technical Importance: The technology provides a framework for location-aware mobile devices to automatically and accurately request on-demand, location-specific services from third-party providers. (’053 Patent, col. 3:50-4:12).

Key Claims at a Glance

  • The complaint asserts independent claim 23. (Compl. ¶40).
  • Claim 23 is directed to a non-transitory computer readable storage apparatus for a mobile electronic device containing a program with instructions to perform the following steps:
    • Receive a selection of a desired service via a user interface.
    • Generate current location information via an assisted GPS receiver.
    • Encode and transmit a message based on the service selection and location.
    • The message is configured to cause a third party to provide the desired service at the current location.
  • The complaint explicitly reserves the right to assert additional claims, including dependent claims. (Compl. ¶37).

U.S. Patent No. 9,412,367 - Computerized Information and Display Apparatus

The Invention Explained

  • Problem Addressed: The patent background identifies inefficiencies and security concerns associated with elevators, including long wait times, frustration from repeated stops, lack of security in adjacent areas like parking garages, and the difficulty of using static building directories. (’367 Patent, col. 3:1-4:25).
  • The Patented Solution: The invention describes a computerized information and control system, primarily for an elevator car, that integrates a display, a user input device (including speech recognition), and a network interface. This system allows occupants to access information (e.g., building directories, news, weather) from a remote server and enables the transfer of that information to a personal device. (’367 Patent, Abstract; col. 6:18-35).
  • Technical Importance: The technology aims to convert passive transit spaces into interactive environments, enhancing occupant productivity and security by providing real-time information and remote system control. (’367 Patent, col. 4:15-25).

Key Claims at a Glance

  • The complaint asserts independent claim 10. (Compl. ¶68).
  • Claim 10 is directed to a computerized information and display apparatus for a transport device, comprising:
    • A wireless network interface, processing apparatus, display device, and data interface for a portable electronic device.
    • A storage apparatus with a computer program.
    • The program is operative to obtain digitized speech from a user, access a network entity to perform an action based on the speech, receive information from that entity, and provide a portion of that information to the portable electronic device.
  • The complaint explicitly reserves the right to assert additional claims, including dependent claims. (Compl. ¶66).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are BMW vehicles from model year 2013 and later equipped with the iDrive infotainment system, which includes services such as BMW ConnectedDrive, BMW Assist, and BMW Online. The allegations also cover related software, such as the BMW Roadside Assistance, BMW Connected, and BMW Remote mobile applications, and integrations with third-party platforms like IFTTT ("If-this-then-that") and Samsung SmartThings. (Compl. ¶¶13-14).

Functionality and Market Context

  • The complaint alleges these systems provide integrated navigation, communication, and entertainment functions. (Compl. ¶¶70, 72).
  • The BMW Roadside Assistance Application is alleged to use a smartphone's GPS to determine the user's location and transmit a request for emergency services to BMW or a designated third-party provider. (Compl. ¶¶44, 48).
  • The BMW iDrive 5.0 system, found in vehicles like the 2016 7-Series, is alleged to use speech recognition for user commands (e.g., navigation requests), access remote servers via an LTE interface to retrieve information (e.g., maps, points of interest), and transfer data to portable user devices such as smartphones or a "Touch Command" tablet. (Compl. ¶¶70, 72, 76, 78). The complaint provides a marketing image of the "BMW Car Hotspot LTE" feature, described as providing high-speed internet via a new LTE standard. (Compl. p. 33).

IV. Analysis of Infringement Allegations

’053 Patent Infringement Allegations

Claim Element (from Independent Claim 23) Alleged Infringing Functionality Complaint Citation Patent Citation
a non-transitory computer readable storage apparatus...for use in a mobile electronic apparatus... The BMW Roadside Assistance Application, which is a computer program stored on the program memory of a smartphone. ¶43 col. 3:50-52
a user interface configured to receive a selection of a desired service from a user The application presents user interface screens that allow a user to select a specific type of roadside assistance, such as towing, fuel delivery, or tire service. A screenshot in the complaint displays the app confirming "SERVICE PROVIDER FOUND" and showing an ETA for Mobile Assistance. ¶45, ¶49, p. 25 col. 4:1-5
an assisted global positioning system (A-GPS) receiver...configured to generate data related to a current location... The application utilizes the host smartphone’s GPS receiver to determine the user's precise location for dispatching service. ¶44 col. 3:57-61
encode and enable transmission of a message...configured to cause provision by a third party of said desired service...at said current location The application transmits the user's service request and GPS coordinates over a network to BMW or its designated service provider, which then dispatches assistance to the user's location. ¶48 col. 4:5-12
  • Identified Points of Contention:
    • Scope Questions: The ’053 Patent’s specification is heavily focused on managing "chattel" confiscated at airport security checkpoints. A central question may be whether the term "desired service", as used in the claims, can be construed broadly to cover emergency "roadside assistance", or if it should be limited by the narrower context of the written description.

’367 Patent Infringement Allegations

Claim Element (from Independent Claim 10) Alleged Infringing Functionality Complaint Citation Patent Citation
a computerized information and display apparatus for a transport device The BMW iDrive 5.0 system installed in BMW vehicles, which are alleged to be transport devices. ¶70 col. 6:18-20
a wireless network interface The iDrive system's integrated LTE cellular modem and Wi-Fi hotspot, which provide access to the internet and remote servers. ¶71 col. 12:4-15
a data interface...to transfer data...to a portable electronic device... The system’s ability to connect with smartphones and tablets via Bluetooth, USB, and Wi-Fi to exchange data. The complaint includes a marketing video showing the Samsung SmartThings app installed and operating on a BMW ConnectedDrive system. ¶74, p. 14 col. 6:22-25
...a computer program...operative to...obtain digitized speech...from a user... The system's voice control function, which accepts spoken commands such as navigation queries. A screenshot shows a list of Starbucks locations returned by the system after a voice query. ¶79, p. 39 col. 6:29-30
cause access of a network entity to perform a desired action based at least in part on the digitized speech The system processes the voice command and uses its wireless interface to contact remote servers (e.g., for map data or with service provider Nuance) to fulfill the user's request. ¶76, ¶77 col. 6:30-32
receive information obtained via the access...and provide at least a portion of the information to the portable electronic device The system receives data from the remote server (e.g., search results) and is alleged to be able to provide this information to a connected smartphone or tablet. ¶78 col. 6:33-35
  • Identified Points of Contention:
    • Scope Questions: The ’367 Patent’s background and detailed description are almost exclusively devoted to an elevator system. This raises the question of whether the term "transport device" should be construed narrowly to cover only elevators or similar environments, or if its plain and ordinary meaning, which would include an automobile, should control.

V. Key Claim Terms for Construction

  • Term: "desired service" (’053 Patent, Claim 23)
  • Context and Importance: The viability of the infringement case for the ’053 patent may depend on whether this term is construed broadly to cover any type of requested service, or narrowly to cover only the chattel management and shipping services that dominate the patent's written description.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim language itself is open-ended ("a desired service"). The Abstract also uses general language, referring to a device "useful for obtaining services wirelessly." (’053 Patent, Abstract).
    • Evidence for a Narrower Interpretation: The "Field of the Invention" section states the invention relates to "management, tracking and recovery of chattel at e.g., transportation facilities such as airports." (’053 Patent, col. 2:60-63). The "Description of Related Technology" section is entirely focused on this problem. (’053 Patent, col. 1:65-2:65).
  • Term: "transport device" (’367 Patent, Claim 10)
  • Context and Importance: This term is critical to determining whether the patent applies to the accused BMW automobiles. Practitioners may focus on this term because the patent's specification provides extensive, specific details about an elevator environment, which could be used to argue that the invention is limited to that context.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The ordinary meaning of "transport device" includes a car. The claim itself does not contain language limiting the term to an elevator.
    • Evidence for a Narrower Interpretation: The "Background of the Invention" section exclusively discusses the problems of elevators. (’367 Patent, col. 3:1-4:25). The detailed description repeatedly uses the term "elevator car" to describe the invention's environment. (’367 Patent, col. 7:18, 7:21).

VI. Other Allegations

  • Indirect Infringement: The complaint alleges that Defendants induce infringement by providing customers with user manuals, online instructional videos, promotional materials, and mobile application download portals that actively encourage and instruct users on how to operate the accused features in an infringing manner. (Compl. ¶¶17-27, 51-55).
  • Willful Infringement: The complaint alleges that Defendants have induced and continue to induce infringement "since receiving notice of the filing and/or service of this Complaint," establishing a basis for post-suit knowledge and potential willfulness. (Compl. ¶¶51, 84).

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

  • A core issue will be one of definitional scope: can the term "transport device," rooted in the ’367 patent’s detailed description of an elevator system, be construed to cover a personal automobile?
  • A second key issue of definitional scope will be for the ’053 patent: can the term "desired service", described in the specification almost exclusively in the context of shipping confiscated airport items, be construed broadly enough to read on the provision of emergency roadside assistance?
  • A central evidentiary question for the ’367 patent will be one of technical operation: what evidence demonstrates that the accused iDrive system "provide[s] at least a portion of the information to the portable electronic device," as required by the claim, versus merely displaying information on its own screens or receiving commands from the device?