DCT
1:19-cv-00899
Thompson v. TCT Mobile Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Raphael Thompson (Georgia)
- Defendant: TCT Mobile, Inc. and TCT Mobile (US) Inc. (Delaware)
- Plaintiff’s Counsel: Hill, Kertscher & Wharton, LLP
- Case Identification: 1:19-cv-00899, D. Del., 05/14/2019
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendants are Delaware corporations and therefore reside in the district, and because they allegedly maintain a regular and established place of business and conduct business within the district.
- Core Dispute: Plaintiff alleges that Defendants’ BlackBerry-branded mobile devices, which feature a "Do Not Disturb" mode, infringe two patents related to selectively filtering communications to prevent unwanted notifications.
- Technical Context: The technology at issue addresses user control over mobile device notifications, a feature of significant market importance for managing digital interruptions in an environment of constant connectivity.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendants with notice of the asserted patents and their alleged infringement in April 2019, one month prior to filing the suit. The complaint also preemptively addresses patentability by citing patents from Google, Microsoft, and BlackBerry, filed after the priority date of the patents-in-suit, as evidence of the technology's non-obviousness.
Case Timeline
| Date | Event |
|---|---|
| 2007-04-20 | Priority Date for '053 and '629 Patents |
| 2014-10-21 | '053 Patent Issued |
| 2016-10-18 | '629 Patent Issued |
| 2019-04-01 | Alleged Pre-Suit Notice Sent to Defendants |
| 2019-05-14 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,868,053 - "Communication Delivery Filter for Mobile Device", issued Oct. 21, 2014
The Invention Explained
- Problem Addressed: The patent identifies the problem of mobile phone users being disturbed by unwanted or unimportant calls and messages during nighttime hours, as phones traditionally do not differentiate between day and night operation (ʼ053 Patent, col. 1:33-44). This creates a need for a method to filter communications without turning the phone off completely (ʼ053 Patent, col. 1:45-51).
- The Patented Solution: The patent describes a "Nighttime Mode" that, when enabled, acts as a filter for incoming communications. The user pre-defines an "exempt message characteristic," such as a specific phone number from an address book (ʼ053 Patent, col. 2:3-5). When a communication arrives, the device checks for this characteristic. If present, the communication is processed normally; if absent, the device inhibits the notification, for example by remaining silent and sending a voice call directly to voicemail (ʼ053 Patent, col. 3:5-12).
- Technical Importance: The invention provided a mechanism for users to maintain connectivity for critical communications while mitigating the negative effects of constant, unfiltered digital alerts (ʼ053 Patent, col. 1:45-51).
Key Claims at a Glance
- The complaint asserts independent Claim 1 (Compl. ¶37).
- Essential elements of Claim 1 (a method claim) include:
- Receiving at least one "exempt message characteristic" (e.g., a selected telephone number).
- Enabling a "message reception notification inhibitor" that, by default, inhibits notifications for all incoming messages.
- While the inhibitor is enabled, receiving messages, including voice calls.
- Examining the received message to see if it includes the exempt characteristic.
- Bypassing the inhibitor for normal processing only if the exempt characteristic is identified.
- As a default, if the exempt characteristic is absent, inhibiting the notification for a voice call and "sending the voice call to voice mail."
- Disabling the inhibitor to return to normal processing for all messages.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 9,473,629 - "Communication Delivery Filter for Mobile Device", issued Oct. 18, 2016
The Invention Explained
- Problem Addressed: The ʼ629 Patent, a continuation of the application leading to the '053 Patent, addresses the same problem of unwanted mobile device interruptions, particularly at night (ʼ629 Patent, col. 1:37-49).
- The Patented Solution: The invention is embodied in a mobile device containing a "module" (e.g., software) that enables two distinct modes of operation. A "first mode" provides normal processing for all communications. A "second mode," when activated, operates with a default setting to inhibit user-indicators for incoming communications, unless the communication includes a "user selectable exempt characteristic" (ʼ629 Patent, Abstract; col. 2:19-29). The user can switch between these modes and define the exempt characteristics via a user interface (ʼ629 Patent, col. 3:34-54).
- Technical Importance: The patent claims a device architecture that provides users with direct control over notification filtering, addressing the market need for customizable communication management (ʼ629 Patent, col. 1:45-54).
Key Claims at a Glance
- The complaint asserts independent Claim 11 (Compl. ¶45).
- Essential elements of Claim 11 (a device claim) include:
- A mobile device comprising a "module" and a "user interface."
- The module is configured to enable a "first mode of operation" with normal processing.
- The module is also configured to enable a "second mode of operation" that by default inhibits the user-indicator for a communication unless it includes a "user selectable exempt characteristic."
- The user interface allows for detecting user interactions to selectively enable the first or second mode and to select the exempt characteristics.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are BlackBerry-branded mobile devices that include a "Do Not Disturb" (DND) mode, specifically identified as the Keyone series, the Key² series (including the Key2LE), and the Motion model (Compl. ¶¶ 32, 44).
Functionality and Market Context
- The complaint alleges that the DND mode in the accused devices allows a user to silence the phone for incoming calls and notifications (Compl. ¶37.c). The user can configure this mode to allow exceptions, such as permitting calls from "starred contacts" or all contacts stored in the device's address book, which is described as a "Priority only" setting (Compl. ¶37.b, ¶37.e). This functionality is presented as the core infringing feature that maps onto the patented "Nighttime Mode" (Compl. ¶¶ 31, 43).
IV. Analysis of Infringement Allegations
'053 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| receiving at least one exempt message characteristic...comprising information that identifies one or more telephone numbers... | A user selects the "starred contacts only" option, which identifies specific phone numbers stored in the device's memory as exempt. An excerpt from a web forum describes how a user can star contacts to allow them to override DND settings (Compl. ¶37.b). | ¶37.b | col. 2:3-5 |
| enabling a message reception notification inhibitor...to be active such that message notifications for any messages received at the mobile device are by default inhibited | A user enables the DND mode by tapping the "Do not disturb" icon, which by default inhibits all phone calls. A screenshot from a user guide shows the steps to "Turn on Do not disturb" (Compl. ¶37.c). | ¶37.c | col. 2:11-13 |
| while the message reception notification inhibitor is enabled...the mobile device examining the received message to determine if the received message includes the exempt message characteristic... | When DND is active with the "Priority Interruptions" set to "Starred contacts only," the device examines incoming calls to determine if the caller is a starred contact. | ¶37.e | col. 2:21-23 |
| bypassing the message reception notification inhibitor...only if the exempt message characteristic is identified... | If the incoming call is from a starred contact, the device bypasses the DND inhibitor and allows the phone to ring normally. | ¶37.e | col. 2:23-25 |
| as a default, inhibiting the message reception notification for the received message if the exempt message characteristic is absent and the message is a voice call and sending the voice call to voice mail | If the caller is not a starred contact, the phone call is inhibited by being silenced and sent to voicemail. | ¶37.e | col. 2:49-51 |
'629 Patent Infringement Allegations
| Claim Element (from Independent Claim 11) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a module, operating entirely within the mobile device, configured to enable a first mode of operation that...operates by applying normal processing... | The device's phone application and DND software operate in a normal mode (DND disabled), permitting any user to call the phone and producing a ringtone. | ¶45.b | col. 2:19-24 |
| configured to enable a second mode of operation that...operates such that the mobile device as a default, inhibits the provision of the user-indicator...unless the communication initiation includes at least one user selectable exempt characteristic | The module enables a second mode (DND enabled) where, by default, user-indicators are inhibited. A user guide screenshot shows the "Turn on Do not disturb" interface for activating this mode (Compl. ¶45.c). Notifications are only provided if the call is from a contact with an exempt characteristic (e.g., "starred contacts"). | ¶45.c | col. 2:24-29 |
| a user interface for detecting user interactions...to selectively enable operation of the mobile device in the first mode...and second mode...and to enable the selection of exempt characteristics... | The device has a touch screen and volume buttons that detect user interactions to enable or disable DND mode. The user interface also allows selection of exempt contacts (e.g., "Starred Contacts"). A screenshot shows the menu for selecting call notification options like "Anyone, Contacts Only, Starred Contacts or None" (Compl. ¶45.e). | ¶45.d, ¶45.e | col. 2:30-34 |
Identified Points of Contention
- Scope Questions: A question may arise regarding the scope of "inhibiting the message reception notification" ('053 Patent) and "inhibits the provision of the user-indicator" ('629 Patent). The complaint's evidence states that in the accused DND mode, "Your phone doesn't ring...but your device still lets you know that you missed a call" (Compl. ¶37.a). This raises the question of whether a silent, on-screen notification of a missed call falls outside the claimed "inhibition," which the patent specification suggests could include the screen remaining "dark" (ʼ053 Patent, col. 3:5-7).
- Technical Questions: The infringement theory for the '053 patent relies on the allegation that the accused device, by default, sends a non-exempt call to voicemail (Compl. ¶37.e). The complaint will need to provide evidence that this specific action occurs, as opposed to the call simply being silenced or terminated without being routed to voicemail.
V. Key Claim Terms for Construction
The Term: "message reception notification inhibitor" ('053 Patent) / "inhibits the provision of the user-indicator" ('629 Patent).
- Context and Importance: The interpretation of what constitutes "inhibition" is central to the infringement analysis. Practitioners may focus on this term because the accused products allegedly provide a silent, visual "missed call" alert, which may or may not fall within the scope of the claimed inhibition.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent's stated purpose is to prevent a user from being "disturbed or awaken" (ʼ053 Patent, col. 1:42-43). This could support an interpretation where "inhibition" refers primarily to audible or haptic alerts that cause a disturbance, while a silent screen update might not be considered a "notification" in that context.
- Evidence for a Narrower Interpretation: The specification describes an embodiment where, during Nighttime Mode, the "cellular phone will remain silent and the screen will also remain dark" (ʼ053 Patent, col. 3:5-7). This language could support a narrower construction requiring the suppression of all indicators, both audible and visual.
The Term: "sending the voice call to voice mail" ('053 Patent, Claim 1).
- Context and Importance: This is a specific functional step required by Claim 1 for handling non-exempt calls. Practitioners may focus on this term because infringement requires proving that the accused devices perform this exact step as a default, not merely a similar one like silencing the ringer.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent describes this as part of the "filtering" action (ʼ053 Patent, col. 2:49-51). A party might argue this is exemplary of filtering and that other forms of call disposition that prevent user disturbance are equivalent.
- Evidence for a Narrower Interpretation: The claim language is specific and recites an affirmative step of "sending...to voice mail." The patent also states that in this mode, "Incoming callers will get the phones voicemail instantly as if the phone was actually off" (ʼ053 Patent, col. 3:7-9), suggesting this is a deliberate and key part of the claimed solution, not merely an example.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement under 35 U.S.C. § 271(b). The basis for this claim is Defendants' alleged sale of the accused devices combined with the "provision of instruction materials and customer service" that encourage and instruct consumers on how to use the DND features in a patent-infringing manner (Compl. ¶¶ 39, 40, 47, 48).
- Willful Infringement: The complaint alleges that infringement was willful because Defendants had knowledge of the patents-in-suit and their infringement "since at least as early as April 2019," when Plaintiff allegedly sent notice letters. The continuation of infringing activities after this date is asserted as the basis for willfulness (Compl. ¶¶ 40, 48).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the claimed "inhibition" of a "message reception notification" be proven when the complaint's own evidence suggests the accused devices may still provide a silent, on-screen alert for a missed call? The case may turn on whether suppressing only the primary audible alert meets this limitation, or if a stricter, total suppression of all indicators is required.
- A key evidentiary question will be one of functional precision: does the accused "Do Not Disturb" mode perform the specific functional steps recited in the claims? In particular, for the '053 patent, the analysis will require evidence that the accused devices, as a default, perform the affirmative step of "sending the voice call to voice mail" for non-exempt calls, as opposed to another form of call handling.