DCT
1:18-cv-01768
Mimzi LLC v. TripAdvisor Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Mimzi, LLC (Alabama)
- Defendant: TripAdvisor, Inc. and TripAdvisor LLC (Delaware)
- Plaintiff’s Counsel: Hardy Parrish Yang, LLP; Grant & Eisenhofer P.A.
- Case Identification: 1:18-cv-01768, D. Del., 11/09/2018
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because both Defendant entities were formed under Delaware law and conduct business in the state.
- Core Dispute: Plaintiff alleges that Defendant’s TripAdvisor mobile application infringes a patent related to systems and methods for performing location-aware searches of social network databases using spoken user requests.
- Technical Context: The technology at issue falls within the domain of mobile computing, specifically involving the integration of voice recognition, location services (e.g., GPS), and community-based or social data to provide search results.
- Key Procedural History: The complaint notes that the patent-in-suit was prosecuted and issued after the Supreme Court's decision in Alice Corp. v. CLS Bank and overcame a rejection under 35 U.S.C. § 101. Significantly, post-filing Inter Partes Review (IPR) proceedings resulted in a certificate, issued July 6, 2021, cancelling all claims (1-19) of the patent-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2008-07-29 | ’981 Patent Priority Date |
| 2015-03-21 | ’981 Patent Continuation Application Filing Date |
| 2015-09-08 | ’981 Patent Issue Date |
| 2015-09-08 | Date from which infringement is alleged to have begun |
| 2018-11-09 | Complaint Filing Date |
| 2021-07-06 | Inter Partes Review Certificate Issued Cancelling All Claims |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,128,981 - "Phone Assisted 'Photographic Memory'"
- Issued: September 8, 2015.
The Invention Explained
- Problem Addressed: The patent's background section describes the difficulty of creating a unified, searchable record of a person's life, noting that while emails are searchable, conversations by phone or in-person are "typically not recorded" and thus not searchable with the same tools ('981 Patent, col. 1:46-54). The goal is to create a "centralized computerized repository for all conversations and everything seen or read, that can be searched with a single query" ('981 Patent, col. 1:50-54).
- The Patented Solution: The invention provides a system where a user can make a spoken request to a mobile device. The system is designed to capture the speech, create a transcript, associate it with metadata (such as the user's physical location), and use this information to query a "social network database" ('981 Patent, Abstract). The system then receives and ranks information from that database to present to the user, effectively allowing spoken, location-aware queries of community-generated data ('981 Patent, Fig. 1; col. 4:8-21).
- Technical Importance: The invention addresses the convergence of mobile devices, voice input, and large-scale, user-contributed databases, aiming to make real-world, spoken queries more powerful by leveraging location and community data ('981 Patent, col. 1:21-29).
Key Claims at a Glance
- The complaint asserts independent claims 1 (a system), 10 (a method), and 16 (a method) (Compl. ¶¶ 45, 50, 53).
- Independent Claim 1, a system claim, requires the following essential elements:
- A data input port to receive speech from a mobile device user.
- A memory to store a transcript of the speech and associated metadata, including the user's location.
- An interface port to a social network database to transmit a request and receive information.
- A processor to rank the received social network information based on at least one "social network ranking factor."
- A communication port to output the ranked information to the user.
- Independent Claim 10 recites a method for presenting information, and Independent Claim 16 recites a method for mining information, both encompassing similar steps of receiving a spoken request, storing/transcribing it with location data, and querying/ranking results from a social network database.
III. The Accused Instrumentality
Product Identification
- The TripAdvisor Application ("App") for mobile operating systems such as Apple iOS and Android (Compl. ¶29).
Functionality and Market Context
- The complaint alleges the TripAdvisor App includes features that allow a user to submit a spoken search query (Compl. ¶30). The App allegedly identifies the user's location, for example by defaulting to "nearby" searches (Compl. ¶31). It then queries the TripAdvisor "social network database," which contains business listings and user-submitted reviews, based on the spoken request and location (Compl. ¶33). The results are then ranked and displayed to the user based on criteria such as proximity ("nearest") or user ratings ("three-star") (Compl. ¶34). TripAdvisor Screen 1 shows the App's search interface providing an option for verbal input via a microphone icon (Compl. ¶30).
- The complaint alleges that TripAdvisor generates revenue from the App through activities such as the sale of advertising and user-location information (Compl. ¶47).
IV. Analysis of Infringement Allegations
’981 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a data input port configured to receive speech information from the mobile-electronic-device user | The TripAdvisor App provides an interface on mobile devices, including a microphone icon, for users to input spoken search requests. | ¶30 | col. 16:11-13 |
| a memory configured to store a transcript of the spoken request and metadata associated with the spoken request comprising at least the location during the spoken request | The App is allegedly configured to store the user's request and location information, either in local memory or on a remote server. | ¶¶31-32 | col. 16:14-18 |
| an interface port to a social network database, configured to transmit a request to mine information of the social network database... and to receive social network information... | The App interfaces with the TripAdvisor database of business listings and user reviews to query for and receive information relevant to the user's spoken request. TripAdvisor Screen 3 displays a list of Chinese restaurants returned in response to a spoken query, demonstrating the interface with the underlying database. | ¶33 | col. 16:19-27 |
| at least one processor configured to... rank the received social network information... dependent on at least one social network ranking factor | The App's processor ranks search results based on factors including proximity ("nearest") and user-generated ratings ("three-star"). TripAdvisor Screens 4 and 5 show differently ranked results for distinct spoken requests, illustrating the system's ranking functionality. | ¶34 | col. 16:34-42 |
| a communication port configured to communicate at least a portion of the social-network information to the user... | The App displays the ranked search results to the user on the mobile device's screen. | ¶34 | col. 16:28-33 |
- Identified Points of Contention:
- Scope Questions: A primary question for the court would be whether the TripAdvisor database, which consists of business listings and user-generated reviews, constitutes a "social network database" as understood by the patent. The construction of this term appears central to the infringement analysis.
- Technical Questions: The complaint alleges the App is "configured to store" a transcript and location (Compl. ¶32), but provides no direct evidence of how or where a persistent transcript is stored. A point of contention may be whether the App's transient processing of voice data meets the "store a transcript" limitation. Further, a question arises as to whether the ranking criteria used by the App (e.g., "nearest," "three-star") fall within the scope of the claimed "social network ranking factor."
V. Key Claim Terms for Construction
- The Term: "social network database"
- Context and Importance: This term appears in all asserted independent claims and is foundational to the infringement theory. Whether TripAdvisor's platform of business listings and user reviews meets this definition is a critical dispute. Practitioners may focus on this term because its construction could be dispositive.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent specification refers to a "Centralized Community Search database" and "Location Blogging" where content is "contributed by multiple members of the community" ('981 Patent, col. 1:24-29; Abstract), which could support a broad interpretation that includes platforms like TripAdvisor.
- Evidence for a Narrower Interpretation: A party could argue that the common understanding of "social network" at the time of the invention implied platforms focused on interpersonal connections, rather than a user-to-business review aggregator. The specific examples in the patent do not explicitly limit the term, but its plain meaning may be contested.
VI. Other Allegations
- Indirect Infringement: The complaint alleges post-complaint inducement of infringement under Count II. The factual basis is that TripAdvisor provides the App with "instructions, encouragement and the capability to directly infringe" and will have knowledge of the alleged infringement upon service of the complaint (Compl. ¶¶ 60-61).
- Willful Infringement: While not pleaded as a separate count, the prayer for relief requests a finding that the case is "exceptional" and an award of attorney fees, which is often associated with findings of willful infringement (Compl. ¶(e), (g)). The allegation is predicated on knowledge acquired post-filing.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue at the time of filing was one of definitional scope: could the term "social network database," as used in the patent, be construed to cover TripAdvisor's platform of aggregated business listings and user reviews? The outcome of this claim construction question would have heavily influenced the infringement analysis.
- A second key question was functional mapping: does the TripAdvisor App's process of receiving a voice command, determining location, and showing ranked results perform the specific steps of "storing a transcript" and ranking by a "social network ranking factor" as required by the claims?
- The most critical question for the case now, however, is one of procedural viability: given the 2021 IPR certificate cancelling all asserted claims of the '981 patent, the central issue is whether any basis remains for the lawsuit to proceed. This post-filing development appears to render the original infringement dispute moot.