DCT

1:22-cv-00592

SMR Innovations Ltd v. Motorola Mobility LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:22-cv-00592, D. Del., 05/02/2022
  • Venue Allegations: Plaintiff alleges venue is proper because the Defendant is incorporated in Delaware and therefore resides in the judicial district.
  • Core Dispute: Plaintiff alleges that Defendant’s smartphones and smartwatches infringe two patents related to dynamically discovering and rerouting multimedia content between nearby electronic devices.
  • Technical Context: The technology addresses methods and systems for transferring media streams, such as phone calls or video, from a device like a smartphone to a more suitable nearby device, such as a landline phone or a large-screen monitor.
  • Key Procedural History: The complaint alleges that Plaintiff provided Defendant with notice of infringement for both asserted patents via a letter received on March 5, 2021, over a year prior to the filing of the lawsuit.

Case Timeline

Date Event
2002-07-25 Priority Date for ’223 and ’648 Patents
2017-07-04 U.S. Patent No. 9,699,223 Issued
2020-01-28 U.S. Patent No. 10,547,648 Issued
2021-03-05 Defendant Allegedly Received Notice of Infringement
2022-05-02 Complaint Filed

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

U.S. Patent No. 9,699,223 - "Routing of Data Including Multimedia Between Electronic Devices" (Issued July 4, 2017)

The Invention Explained

  • Problem Addressed: The patent’s background section describes a limitation where the consumption of multimedia content is often confined to the device on which it is initially received (Compl. ¶23). This is a drawback because different devices have widely varying capabilities for playback; for example, a mobile phone has a small screen and speakers compared to a television and home stereo system (’223 Patent, col. 1:45-51).
  • The Patented Solution: The invention provides a "data rerouting apparatus" that can be associated with an electronic device to solve this problem (Compl. ¶25). The apparatus includes a "scout device" to scan the local environment for other compatible devices and an "announcer device" to signal its own availability for rerouting to nearby equipment. This allows a user to select a more suitable target device for playing media, independent of where the content originated (’223 Patent, col. 2:32-44, Abstract).
  • Technical Importance: The technology grants users the flexibility to consume media on the most appropriate available device, which can "dramatically upgrade media playing quality" (Compl. ¶32).

Key Claims at a Glance

  • The complaint asserts independent claims 1 and 21, along with dependent claims 14 and 22 (Compl. ¶75, ¶81).
  • Independent Claim 1 (Method) includes the essential elements of:
    • Wirelessly receiving a media data stream at a mobile device from an external source via a local wireless network.
    • Scanning the local network with the mobile device to identify a plurality of compatible devices.
    • Selecting one of the identified devices based on user interaction.
    • Setting up a wireless communication link with the selected device.
    • Causing a routing of the media data stream to the selected device for presentation.
  • Independent Claim 21 (Apparatus) includes the essential elements of:
    • A receiver to wirelessly receive a media data stream.
    • A "scouting detector" to scan a local wireless network and identify compatible devices.
    • A controller to select one of the devices based on user interaction and instruct the setup of a wireless link and the routing of the media stream to the selected device.
  • The complaint does not explicitly reserve the right to assert additional claims.

U.S. Patent No. 10,547,648 - "Routing of Data Including Multimedia Between Electronic Devices" (Issued January 28, 2020)

The Invention Explained

  • Problem Addressed: Similar to the ’223 Patent, the ’648 Patent addresses the problem that multimedia playback is generally limited to the originating or receiving device, which may have inferior capabilities and limit the user's enjoyment (Compl. ¶50; ’648 Patent, col. 1:47-53).
  • The Patented Solution: The invention provides a data rerouting apparatus with a "scout device" to find compatible equipment and an "announcer device" to signal its own availability (Compl. ¶55). The solution also describes functionality for informing a user that media has been successfully routed to another device and is ready for use, for example, by causing a nearby phone to ring to indicate a rerouted call (’648 Patent, col. 7:45-52).
  • Technical Importance: The patented solution provides users greater control and an enhanced experience by enabling the transfer of media to devices better suited for playback, such as routing a call from a mobile phone to a landline to improve call quality (Compl. ¶62, ¶63).

Key Claims at a Glance

  • The complaint asserts independent claims 1, 15, and 19 (Compl. ¶87, ¶93).
  • Independent Claim 15 (Apparatus) includes the essential elements of:
    • A receiver to wirelessly receive media content from an external source.
    • A controller to identify available devices on a local area network (LAN).
    • The controller is adapted to wirelessly communicate information to an "intermediate routing device" on the LAN to indirectly route the media content to one of the available devices.
    • The controller is also adapted to wirelessly signal the available devices to indicate the media content's availability at the mobile apparatus.
    • The media content originates from an external source disconnected from the LAN.
  • Independent Claim 19 (Computer Program Product) includes the essential elements of:
    • First instructions to wirelessly communicate information to an intermediate routing device on a LAN for indirectly receiving routed media content.
    • Second instructions to wirelessly receive a signal from a mobile device indicating media availability.
    • Third instructions to inform the user about the availability of the media content via a flash light, ring, or loudspeaker sound.
  • The complaint does not explicitly reserve the right to assert additional claims.

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are various Motorola smartphones (including the razr, MOTO g, MOTO g100, MOTOROLA ONE, and MOTOROLA EDGE models) and the Moto 360 smartwatch (Compl. ¶76, ¶88).

Functionality and Market Context

  • The complaint alleges that these products provide functionality for media routing that infringes the patents-in-suit (Compl. ¶76, ¶88). Specific functionality is not described in detail in the body of the complaint, but an allegation of induced infringement points to user instructions for a feature described as "cast your screen to hdtv with chromecast" (Compl. ¶81). This suggests the core accused functionality involves discovering and streaming media content from a Motorola device to a separate display, such as a television. The complaint makes no specific allegations regarding the products' market positioning beyond their general sale in the United States (Compl. ¶4).

IV. Analysis of Infringement Allegations

The complaint does not contain detailed narrative infringement allegations or claim charts in its body, instead referencing external Exhibits C and D, which were not provided with the pleading (Compl. ¶76, ¶88). The complaint alleges that these exhibits demonstrate infringement of the asserted patents either literally or under the doctrine of equivalents.

Based on the identification of the accused products and the single external reference to instructions for a "Chromecast" feature, the plaintiff's infringement theory appears to be that the functionality for wirelessly mirroring or "casting" a smartphone's screen to a television or other monitor practices the claimed inventions (Compl. ¶81). Under this apparent theory, a Motorola smartphone would perform the steps of scanning a local network for a compatible display device (e.g., a Chromecast-enabled TV), allowing the user to select that device, and subsequently routing the phone's audio and video content to that selected display.

No probative visual evidence provided in complaint.

V. Key Claim Terms for Construction

  • The Term: "scout device for scanning surroundings" (’223 Patent, claim 21) / "scanning said local wireless communication network" (’223 Patent, claim 1).

    • Context and Importance: This term is central to the infringement analysis, as it defines the mechanism for discovering other devices. Practitioners may focus on whether the accused products' use of standard Wi-Fi or Bluetooth discovery protocols to find known device types (like a Chromecast) meets the patent's requirement of "scanning surroundings," which could be interpreted to imply a more open-ended or active search.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification discloses a wide array of potential transmission technologies for the scout, including "Infra-red (IR), Microwave, Radio (any suitable frequency), Sound waves," and others, suggesting the term is not limited to one specific technology (’648 Patent, col. 9:1-9).
      • Evidence for a Narrower Interpretation: The use of the word "scout" and the phrase "to find other devices therein" could be argued to imply a more proactive discovery process within a physical vicinity, rather than merely identifying devices that have announced themselves on a structured logical network (’648 Patent, col. 8:1-3).

  • The Term: "intermediate routing device" (’648 Patent, claims 15, 19).

    • Context and Importance: The definition of this term is critical for claims of the ’648 Patent, which require an "indirect" routing architecture. The dispute may turn on whether elements of a standard Wi-Fi network, such as a router, or the Chromecast dongle itself, can be considered an "intermediate routing device" as claimed, or if the patent requires a more specific component.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The patent distinguishes "direct (local) routing" from "indirect non-local routing," which "relies on external service provider services, network and infrastructure." A third mode uses "local network infrastructure" (’648 Patent, col. 9:18-41). This suggests that standard network components could fulfill the "intermediate" role.
      • Evidence for a Narrower Interpretation: The claims require communicating information to an intermediate routing device for indirectly routing content. A defendant may argue this requires a device that actively receives instructions and then performs the routing, potentially distinguishing it from a passive network component like a router that simply forwards all traffic.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement of infringement for the ’223 Patent. It asserts that Motorola instructs customers and end-users on how to use the accused products in an infringing manner, citing as an example a support webpage with instructions on how to "cast your screen to hdtv with chromecast" (Compl. ¶81). Similar general allegations are made for the ’648 patent (Compl. ¶93).
  • Willful Infringement: Willfulness is alleged for both patents based on pre-suit knowledge. The complaint states that Plaintiff sent a notice letter detailing the infringement, which was received by Defendant on March 5, 2021, more than a year before the complaint was filed, and that Defendant's infringing activities continued after receiving notice (Compl. ¶77, ¶89).

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

  • A core issue will be one of technical and definitional scope: Can the patent claims, which describe a self-contained "apparatus" with specific "scout" and "announcer" components, be construed to read on the accused system, which appears to be a distributed software feature (Motorola's "cast" function) operating over a standard Wi-Fi network to communicate with a third-party device (a Chromecast-enabled display)?
  • A second key question will involve validity in context: The case may hinge on whether the inventions, which claim a 2002 priority date, represent a specific, patentable improvement over the prior art. The court will likely need to determine whether the accused functionality is an implementation of the patented technology or an application of network discovery and streaming protocols that were well-understood, routine, or conventional, a point the complaint directly disputes.