DCT
1:19-cv-00274
Mimzi LLC v. HTC Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Mimzi LLC (Alabama)
- Defendant: HTC America Inc Corporation (Taiwan)
- Plaintiff’s Counsel: Grant & Eisenhofer PA; Hardy Parrish Yang LLP
- Case Identification: 1:19-cv-00274, D. Del., 02/08/2019
- Venue Allegations: Venue is asserted based on Defendant HTC being a foreign entity, which may be sued in any U.S. judicial district, and on allegations that HTC transacts business in Delaware.
- Core Dispute: Plaintiff alleges that Defendant’s mobile devices, which incorporate Google or Microsoft voice assistant technology, infringe a patent directed to systems and methods for performing location-aware searches using spoken requests to query a social network database.
- Technical Context: The technology at issue involves the integration of voice recognition, geolocation, and database searching on mobile devices to provide contextually relevant information, a foundational feature of modern smartphone virtual assistants.
- Key Procedural History: The complaint notes that during prosecution, the patent overcame a patent-eligibility rejection under 35 U.S.C. § 101 in light of the Supreme Court's Alice decision, as well as an obviousness rejection. Subsequent to the filing of this complaint, the U.S. Patent and Trademark Office instituted Inter Partes Review (IPR) proceedings against the patent-in-suit. These proceedings concluded on July 6, 2021, with a certificate cancelling all claims (1-19) of the patent.
Case Timeline
| Date | Event |
|---|---|
| 2008-07-29 | '981 Patent Priority Date |
| 2012-07-01 | Alleged launch of infringing Google voice assist functionality |
| 2015-03-21 | '981 Patent continuation application filed |
| 2015-09-08 | '981 Patent Issue Date |
| 2019-02-08 | Complaint Filing Date |
| 2021-07-06 | Inter Partes Review certificate issued cancelling all claims of the '981 Patent |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,128,981 - Phone Assisted 'Photographic Memory'
The Invention Explained
- Problem Addressed: The patent's background section identifies the difficulty of creating a searchable, unified record of life events, noting that while emails are searchable, phone calls, in-person conversations, and visual information are typically ephemeral and not easily archived or queried ('981 Patent, col. 1:44-54).
- The Patented Solution: The invention proposes a system for a mobile device to capture a user's spoken request, associate it with metadata including the user's physical location, and use this information to query a "social network database" or a "Centralized Community Search database." The system then receives and ranks information from this database to present to the user ('981 Patent, Abstract; col. 15:1-16:8). The process aims to create a "collective photographic memory" by leveraging community-contributed, location-specific data ('981 Patent, col. 1:23-28).
- Technical Importance: The complaint alleges that combining mobile voice input with location-aware searching of social databases was an unconventional improvement in computer capabilities at the time of the invention ('981 Patent, col. 4:1-16; Compl. ¶19).
Key Claims at a Glance
- The complaint asserts direct and indirect infringement of at least independent claims 1 (system), 10 (method), and 16 (method) (Compl. ¶60, ¶67).
- Independent Claim 1 (System) requires:
- A data input port for receiving speech information.
- A memory for storing a transcript and location metadata.
- An interface port to a social network database.
- A processor to transmit a request and receive information.
- A communication port to output the information.
- The processor is further configured to rank the received information from the social network database based on at least one "social network ranking factor."
- Independent Claim 10 (Method) requires steps of:
- Receiving speech information.
- Storing a transcript and location metadata.
- Automatically selecting information records from a social network database by searching with the location and transcript.
- Ranking the selected records based on a "social network ranking factor."
- Communicating the selected records to the user.
- Independent Claim 16 (Method) requires steps of:
- Receiving user-generated speech and a location.
- Automatically transcribing the speech and associating the location.
- Automatically generating a query of a social information search engine.
- Automatically ranking the resulting records based on a ranking factor including physical distance and user ratings.
- Outputting the ranked records.
- The complaint does not explicitly reserve the right to assert dependent claims, though this is standard practice.
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are mobile devices manufactured and sold by HTC, such as the "HTC U11," "Nexus 9," and "HTC One M8," that incorporate either Google's voice assist functionality (on Android OS 4.1 or later) or Microsoft's "Cortana" voice assist functionality (on Windows 10, Windows 10 Mobile, or Windows Phone 8.1) (Compl. ¶25, ¶42-43, ¶61-62, ¶85).
Functionality and Market Context
The complaint alleges that the accused devices utilize their respective voice assistants to perform the patented methods. This includes capturing spoken requests via the device microphone, identifying the user's location via GPS, transmitting a query to a server, receiving location-dependent information derived from social network databases (e.g., business listings with user ratings), and displaying ranked results to the user (Compl. ¶28-32, ¶45-49). The complaint provides screenshots to illustrate this functionality, such as a search for "Chinese restaurant" that returns a map with businesses ranked by user ratings from a social network (Compl. p. 8, "Google Voice Assist Screen 1").
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 microphone on HTC's mobile devices, which receives spoken requests after a wake-command (e.g., "Okay Google") or button press. | ¶28, ¶45 | col. 15:11-13 |
| 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 storage of the user's request and location data in the device's memory or on a remote server as part of the query process. | ¶30, ¶47 | col. 15:14-18 |
| an interface port to a social network database, configured to transmit a request to mine information... and to receive social network information... | The capability of the accused devices to connect to and query Google's or Microsoft's servers, which allegedly access social network databases to retrieve information like user reviews. A screenshot of the Microsoft Voice Assist shows results explicitly sourced from Yelp, a social network (Compl. p. 13, "Microsoft Voice Assist Screen 1"). | ¶31, ¶48 | col. 15:19-25 |
| at least one processor configured to transmit the request through the interface port dependent on at least the transcript and the metadata, to receive the social network information from the interface port; | The processor in the accused devices and/or associated servers that is configured to execute the query and process the received information from the social network database. | ¶32, ¶49 | col. 15:26-31 |
| wherein the... processor [is] being further configured to rank the received social network information... dependent on at least one social network ranking factor... | The system's ability to rank results differently based on user criteria. For example, a search for the "nearest Chinese restaurant" provides a different ranked list than a search for "three-star Chinese restaurants" at the same location (Compl. p. 8, "Google Voice Assist Screen 2" and "Google Voice Assist Screen 3"). | ¶32, ¶49 | col. 15:36-46 |
| a communication port configured to communicate at least a portion of the social-network information to the user... | The screen on the accused HTC devices, which displays the ranked list of results to the user. | ¶31, ¶32, ¶48, ¶49 | col. 15:32-35 |
Identified Points of Contention
- Scope Questions: A central dispute may arise over the definition of "social network database." The defense may argue that Google's and Microsoft's general-purpose search engines, which crawl and index the entire public web, do not constitute the more specific "Centralized Community Search database" described in the patent's specification ('981 Patent, col. 2:42-43). The complaint's position appears to be that any system providing information sourced from social platforms (e.g., Yelp reviews) meets this limitation.
- Technical Questions: The claims require ranking to be "dependent on at least one social network ranking factor." A technical question is whether the accused systems' complex ranking algorithms perform this specific function, or whether social signals are merely one of many factors in a general relevance score. The complaint's evidence, showing different results for "nearest" versus "three-star" queries, suggests the possibility that these are user-selected filters applied post-search, rather than the core ranking methodology required by the claims.
V. Key Claim Terms for Construction
- The Term: "social network database"
- Context and Importance: The construction of this term is critical to the infringement analysis. The case may turn on whether the vast, aggregated data indexes of Google and Microsoft can be properly characterized as a "social network database" within the meaning of the claims. Practitioners may focus on this term because it appears to be the primary point of mismatch between the patent's specific disclosure and the accused general-purpose search technology.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification provides a broad definition for a "Search Database," which can include a "Customer Relationship Management system, Document Management system, Enterprise Content Management system, or 'specialized audio search' database" ('981 Patent, col. 4:11-16). Plaintiff may argue this expansive language supports construing "social network database" broadly to encompass any database that contains and provides social- or community-generated data.
- Evidence for a Narrower Interpretation: The patent repeatedly uses the specific term "social network" and describes a "community or collective photographic memory" and "Location Blogging" ('981 Patent, col. 1:23-28). The abstract refers to a "Centralized Community Search database." A defendant may argue these passages and the overall context limit the term's scope to purpose-built, community-centric platforms, not general web indexes that happen to include social data among myriad other types of information.
VI. Other Allegations
Indirect Infringement
The complaint alleges post-complaint inducement of infringement. It asserts that upon being served with the complaint, HTC gained knowledge of the alleged infringement and continued to encourage its users' infringing acts by selling the accused devices with instructions and marketing materials for the voice-assist features (Compl. ¶78-82, ¶101-105).
Willful Infringement
While not pleaded as a separate count, the complaint establishes a basis for willfulness by alleging knowledge of infringement as of the date of service of the complaint (Compl. ¶79, ¶102). The prayer for relief seeks a finding that the case is exceptional and requests enhanced damages and attorneys' fees, which are remedies for willful infringement (Compl. p. 25-26).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "social network database", which the patent links to a "Centralized Community Search database," be construed to cover the general-purpose, web-wide search indexes operated by Google and Microsoft that aggregate data from countless sources, including social platforms?
- A key evidentiary question will be one of functional operation: does the accused voice assistants' use of filters like "nearest" or "three-star" constitute the claimed "ranking... dependent on at least one social network ranking factor," or is this functionality distinct from the underlying, multi-faceted algorithms that generate the initial set of search results?
- The most significant question impacting the litigation is one of procedural finality: given that all asserted claims of the '981 patent were cancelled in a post-filing Inter Partes Review, the analysis of the complaint's allegations may be a purely academic exercise, as the statutory basis for the infringement claims no longer exists.