1:23-cv-00802
Staton Techiya LLC v. Harman Intl Industries Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Staton Techiya, LLC (Delaware)
- Defendant: Harman International Industries, Incorporated (Delaware) and Harman-Kardon, Inc. (Delaware)
- Plaintiff’s Counsel: Ashby & Geddes; King & Spalding LLP
- Case Identification: 1:23-cv-00802, D. Del., 06/18/2024
- Venue Allegations: Venue is asserted on the basis that Defendants are incorporated in Delaware and thus reside in the district.
- Core Dispute: Plaintiff alleges that Defendant’s ear-worn audio products, including headphones under the AKG, Harman-Kardon, and JBL brands, infringe seven patents related to audio processing, noise cancellation, user interface, and environmental sound awareness.
- Technical Context: The technology at issue falls within the "hearables" or ear-worn technology domain, which integrates advanced audio processing and smart features into personal listening devices.
- Key Procedural History: The complaint alleges extensive pre-suit interaction between the parties beginning no later than September 2018, including meetings, the execution of a mutual non-disclosure agreement, and Plaintiff’s provision of prototypes, marketing materials, and technical presentations to Defendant. Plaintiff alleges that these communications included a slide deck that identified several of the asserted patents, which may be central to its claims of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2006-07-08 | U.S. Patent Nos. 8,805,692 & 11,521,632 Priority Date |
| 2007-05-04 | U.S. Patent No. 11,683,643 Priority Date |
| 2007-12-28 | U.S. Patent No. 8,150,044 Priority Date |
| 2008-09-19 | U.S. Patent No. 11,665,493 Priority Date |
| 2008-09-22 | U.S. Patent No. 11,610,587 Priority Date |
| 2012-04-03 | U.S. Patent No. 8,150,044 Issues |
| 2012-12-17 | U.S. Patent No. 11,659,315 Priority Date |
| 2014-08-12 | U.S. Patent No. 8,805,692 Issues |
| 2018-09-14 | Plaintiff and Defendant allegedly meet to discuss technology |
| 2018-10-01 | Plaintiff allegedly begins sending prototypes to Defendant |
| 2019-02-01 | Plaintiff allegedly sends "Opportunity Overview" slide deck to Defendant |
| 2019-05-15 | Plaintiff allegedly presents intellectual property valuation model to Defendant |
| 2020-03-01 | Alleged earliest release of AKG N400NC TWS Headphones |
| 2020-04-01 | Alleged earliest release of Harman-Kardon FLY TWS Headphones |
| 2020-05-04 | Defendant's parent allegedly confirms "detailed review" of Plaintiff's patent portfolio |
| 2021-03-01 | Alleged earliest release of other Accused Products |
| 2022-12-06 | U.S. Patent No. 11,521,632 Issues |
| 2023-03-21 | U.S. Patent No. 11,610,587 Issues |
| 2023-05-23 | U.S. Patent No. 11,659,315 Issues |
| 2023-05-30 | U.S. Patent No. 11,665,493 Issues |
| 2023-06-20 | U.S. Patent No. 11,683,643 Issues |
| 2024-06-18 | Amended Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,805,692 - Personal Audio Assistant Device and Method (issued Aug. 12, 2014)
The Invention Explained
- Problem Addressed: The patent family's background describes the separation between audio content players and headphone systems, which makes user interaction difficult due to the lack of an integrated interface on the earpiece itself (U.S. Patent No. US11521632B2, col. 1:28-42).
- The Patented Solution: The invention is a wearable device, such as an earpiece, that integrates a microphone, communication module, logic circuit, and user interaction element (U.S. Patent No. 11,521,632, Abstract). This configuration allows the device to initiate control of its own operations or media content by capturing audio, sending it for analysis at a remote server, and acting on instructions received back from that server (Compl. ¶51). The system architecture is illustrated in the patent family's figures, which depict the components integrated into an earpiece form factor (U.S. Patent No. 11,521,632, Fig. 5B).
- Technical Importance: This technology describes an early architecture for a "hearable" device or smart earpiece that can be controlled through voice or touch, offloading complex processing to a connected device like a server or smartphone (Compl. ¶22, ¶24).
Key Claims at a Glance
- Independent claim 1 is asserted (Compl. ¶48).
- Essential elements of claim 1 include:
- A wearable device with a housing, ambient microphone, communication module, logic circuit, memory, and an interaction element.
- The interaction element and logic circuit cooperatively initiate control of media content or device operations.
- The logic circuit is configured to initiate control of media content in response to analysis of captured audio.
- The audio is analyzed at a remote server, and the control is initiated in response to instructions received from that remote server.
- The complaint reserves the right to assert other claims (Compl. ¶47).
U.S. Patent No. 8,150,044 - Method and Device Configured for Sound Signature Detection (issued Apr. 3, 2012)
The Invention Explained
- Problem Addressed: The patent family's background notes that headphone users are often isolated from their environment, which can mask important sounds like warnings or alarms, and that excessive noise can cause auditory fatigue (U.S. Patent No. 8,081,780, col. 1:25-46).
- The Patented Solution: The invention is an acoustic device that uses an ambient sound microphone to monitor the environment for a "target sound" (Compl. ¶65). To do this, a processor generates a "sound signature" from the captured ambient sound and compares it to a "plurality of learned signature models." Upon detecting a match, the device adjusts the audio being delivered to the user's ear canal, thereby managing the user's acoustic experience based on environmental cues (U.S. Patent No. US8081780B2, Abstract; Compl. ¶65).
- Technical Importance: This technology enables wearable audio devices to possess situational awareness, allowing them to intelligently react to specific external sounds for purposes of safety or user convenience (Compl. ¶24).
Key Claims at a Glance
- Independent claim 1 is asserted (Compl. ¶62).
- Essential elements of claim 1 include:
- An acoustic device with an Ambient Sound Microphone (ASM) to capture ambient sound and an Ear Canal Receiver (ECR) to deliver audio.
- A processor coupled to the ASM and ECR.
- The processor monitors ambient sound for a target sound and adjusts the audio delivered to the ear canal based on detecting that target sound.
- Detection involves generating a sound signature from the ambient sound and comparing it to a plurality of learned signature models.
- The complaint reserves the right to assert other claims (Compl. ¶61).
U.S. Patent No. 11,659,315 - Methods and Mechanisms for Inflation (issued May 23, 2023)
Technology Synopsis
The patent describes an earpiece with multiple microphones (two ambient, one ear canal) and a logic circuit (Compl. ¶79). The logic circuit is configured to perform operations that include generating a noise reduction signal using signals from one or more of the microphones and mixing it with an audio signal to send to a speaker (Compl. ¶79).
Asserted Claims
At least independent claim 1 is asserted (Compl. ¶76).
Accused Features
The complaint alleges that the "Adaptive Noise Cancelling" and "Personal Sound Amplification" features of the accused products, which allegedly use at least three microphones, infringe the ’315 Patent (Compl. ¶80).
U.S. Patent No. 11,683,643 - Method and Device for In Ear Canal Echo Suppression (issued June 20, 2023)
Technology Synopsis
This patent describes a device, such as an earpiece, that includes two ambient microphones, an ear canal microphone, a speaker, and an eartip for sealing the ear canal (Compl. ¶93). A processor uses signals from these microphones to generate a background noise reduction signal, which is then mixed with an audio content signal and sent to the speaker (Compl. ¶93).
Asserted Claims
At least independent claim 1 is asserted (Compl. ¶90).
Accused Features
The "Adaptive Noise Cancelling" and "Personal Sound Amplification" features, which allegedly use at least three microphones, are accused of infringing the ’643 Patent (Compl. ¶94).
U.S. Patent No. 11,665,493 - Acoustic Sealing Analysis System (issued May 30, 2023)
Technology Synopsis
The patent describes an audio device configured to test the acoustic seal of an earphone (Compl. ¶107). The device generates a test signal with low-frequency components (30-200 Hz), sends it to the earphone's speaker, receives a signal from a microphone in the earphone, and then calculates a value based on the sent and received signals to determine the seal quality and reports it to the user (Compl. ¶107).
Asserted Claims
At least independent claim 1 is asserted (Compl. ¶104).
Accused Features
The "Check My Best Fit" feature in the accused products is alleged to infringe the ’493 Patent by performing a seal test using a test signal and microphone feedback (Compl. ¶108).
U.S. Patent No. 11,610,587 - Personalized Sound Management and Method (issued Mar. 21, 2023)
Technology Synopsis
This patent claims a system with a user interface and an audio device that detects a "sonic signature" (e.g., a user's voice) from a microphone signal (Compl. ¶122). The device buffers the microphone signal and, in response to a user request, sends a portion of the data from the buffer spanning a time period to the speaker for playback (Compl. ¶122).
Asserted Claims
At least independent claim 1 is asserted (Compl. ¶119).
Accused Features
The "VoiceAware" and "Ambient Aware" features are alleged to infringe the ’587 Patent by detecting a sonic signature like the user's voice and, upon request, sending audio data to the speaker (Compl. ¶123).
U.S. Patent No. 11,521,632 - Personal Audio Assistant Device and Method (issued Dec. 6, 2022)
Technology Synopsis
The patent describes an earpiece with a tactile interface, an ambient microphone, and an ear canal microphone (Compl. ¶136). The device is configured to activate a voice-controlled interface upon manual activation of the tactile element, detect a user's voice from ambient audio, and analyze the voice signal to determine a voice command (Compl. ¶136).
Asserted Claims
At least independent claim 1 is asserted (Compl. ¶133).
Accused Features
The accused products' support for touch and voice control to activate virtual assistants or other functions is alleged to infringe the ’632 Patent (Compl. ¶137).
III. The Accused Instrumentality
Product Identification
The accused products are a line of ear-worn headphones, including the AKG N400NC TWS Headphones, Harman-Kardon FLY TWS Headphones, and several models under the JBL brand, such as the Live Pro+ TWS, Tour Pro 2, and Quantum TWS Air Headphones (Compl. ¶18, ¶40).
Functionality and Market Context
The complaint alleges the accused products incorporate advanced audio features such as "Adaptive Noise Cancelling, Ambient Aware, Talk Thru, and Voice Aware" (Compl. ¶43). These features allegedly rely on multiple microphones, including dedicated microphones for environmental noise reduction, to analyze and process sound (Compl. ¶42-¶43). The complaint also identifies specific user-facing functions, including a "Check My Best Fit" feature for ensuring a proper ear canal seal (Compl. ¶108) and user controls that can be activated by tapping the earpiece to control functions or activate voice assistants (Compl. ¶52). The "CONTROLS" diagram from a product manual for the JBL Tour Pro 2 illustrates how users can tap or hold the earpiece to toggle features like ANC, Ambient Aware, or TalkThru (Compl. p. 11). The complaint asserts that these types of technologies have become widely adopted in the rapidly developing field of ear-worn technology (Compl. ¶22, ¶25).
IV. Analysis of Infringement Allegations
U.S. Patent No. 8,805,692 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A wearable device, comprising: a housing for the wearable device; an ambient microphone within or on the housing; a communication module within or on the housing; a logic circuit communicatively coupled to the ambient microphone; a memory storage unit communicatively coupled to the logic circuit; | The accused products are earpieces containing a housing, ambient microphone, a chipset with a communication module, a logic circuit, and memory. | ¶52 | U.S. Patent No. 11521632, Fig. 5B |
| and an interaction element, the interaction element and logic circuit cooperatively initiate control of media content from the wearable device or initiate operations of the wearable device; | A user can tap the outside of the earpiece (an interaction element) to activate voice assistant controls, toggle noise cancelling, or manage calls. | ¶52 | U.S. Patent No. 11,521,632, col. 9:15-21 |
| wherein the logic circuit is configured to cooperatively initiate control of media content of the wearable device in response to analysis of audio captured at the wearable device at the ambient microphone and analyzed at a remote server in response to instructions received from the remote server. | When the interaction element is activated, a user can control functions like Ambient Aware or Adaptive Noise Cancelling through the JBL smartphone app, which the complaint alleges acts as a remote server. | ¶52 | U.S. Patent No. 11,521,632, col. 2:48-51 |
Identified Points of Contention
- Scope Questions: A central question may be whether a user's smartphone running the "JBL smartphone app," as alleged in the complaint (Compl. ¶52), qualifies as a "remote server" within the meaning of the claim. The defense may argue that a "remote server" implies a third-party network server distinct from the user's personal mobile device.
- Technical Questions: What evidence does the complaint provide that the control of media content is specifically "in response to analysis of audio captured...and analyzed at a remote server"? The complaint alleges a user activates controls via tapping and then uses the app, which raises the question of whether the control initiation is a direct result of audio analysis on the app or a result of the user's manual interaction with the app's interface after the initial tap.
U.S. Patent No. 8,150,044 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An acoustic device, comprising: an Ambient Sound Microphone (ASM) configured to capture ambient sound; at least one Ear Canal Receiver (ECR) configured to deliver audio to an ear canal; and a processor operatively coupled to the ASM and the ECR, | The accused products are earpieces that include at least three microphones (at least one of which captures ambient sound), an ear canal receiver (speaker), and an internal processor. | ¶66 | U.S. Patent No. 8081780, Fig. 2 |
| where the processor monitors the ambient sound for a target sound and adjusts the audio delivered to the ear canal based on the target sound, | The accused products' "VoiceAware" feature captures the "target sound of the user's own voice and adjusts the playback to the user based on the user's voice." | ¶66 | U.S. Patent No. 8,081,780, Abstract |
| the processor generating a sound signature from the ambient sound and comparing the sound signature to a plurality of learned signature models to detect the target sound. | The complaint alleges the processor "generates a sound signature from the captured ambient sound" to implement features like VoiceAware. The "VOICEAWARE" diagram provided in the complaint shows a setting to adjust sensitivity to the user's voice (Compl. p. 13). | ¶66 | U.S. Patent No. 8,081,780, col. 7:48-60 |
Identified Points of Contention
- Technical Questions: What evidence does the complaint provide that the accused products' processor detects the user's voice by "generating a sound signature... and comparing the sound signature to a plurality of learned signature models"? The infringement allegation may turn on whether the "VoiceAware" feature operates using this specific claimed method or employs a different technology, such as a simpler voice activity detector that does not rely on "learned signature models."
- Scope Questions: Does the phrase "adjusts the audio delivered to the ear canal" read on the alleged functionality of adjusting the playback of the user's own voice for sidetone, or does the claim require adjustment of separate media content being played?
V. Key Claim Terms for Construction
For the ’692 Patent
- The Term: "remote server"
- Context and Importance: The infringement theory for the '692 Patent hinges on construing the defendant's smartphone application as the claimed "remote server" (Compl. ¶52). This term's definition will likely be dispositive for this patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent family's specification refers to communication with a "Server system" and a separate "Client's computer," suggesting the patent contemplates various external computing entities (U.S. Patent No. 11,521,632, Fig. 4). This could support an interpretation where any separate processing device, including a smartphone, qualifies.
- Evidence for a Narrower Interpretation: The specification's discussion of a subscription service managed from a "Server system" to download audio content to the earpiece could suggest a more traditional, centralized network server architecture, not a user's personal device (U.S. Patent No. 11,521,632, col. 2:42-52).
For the ’044 Patent
- The Term: "learned signature models"
- Context and Importance: This term distinguishes the claimed invention from more generic forms of sound detection. Plaintiff must prove that the accused products use a system of comparison against pre-learned models, not merely a simple acoustic filter or energy detector. Practitioners may focus on this term because it defines the core technical mechanism of the claimed invention.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The complaint does not provide sufficient detail from the patent's intrinsic evidence for analysis of this element. A party might argue that any system that is calibrated or trained, even in a simple way, to recognize a sound is using a "learned model."
- Evidence for a Narrower Interpretation: The term "plurality of learned signature models" suggests a system trained on a dataset of sounds to create distinct, stored profiles for comparison, a more complex process than simple signal processing. The patent's specification likely contains embodiments that define the nature of these models more concretely.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement by users of the accused products (Compl. ¶53, ¶67, ¶81, ¶95, ¶110, ¶124, ¶138). The basis for this allegation includes Defendant’s user manuals and guides, which allegedly instruct users on how to operate the infringing features, such as tapping the earpieces to activate various audio modes (Compl. p. 11).
- Willful Infringement: The complaint makes detailed allegations of willful infringement based on alleged pre-suit knowledge (Compl. ¶58, ¶72). It asserts that Defendant had notice of the patents as early as February 2019, when Plaintiff allegedly sent Defendant a slide deck that explicitly identified several of the Asserted Patents (Compl. ¶32, ¶49, ¶63). The complaint includes an excerpt of this slide, which maps patent numbers to specific audio features (Compl. p. 6). The allegations also detail meetings, prototype testing, and confirmation from Defendant’s parent company of a "detailed review" of Plaintiff's patent portfolio prior to the launch of most of the accused products (Compl. ¶27-¶36).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of pre-suit knowledge and intent: The complaint presents detailed factual allegations and visual evidence regarding pre-suit discussions and disclosures. The case will likely feature a significant dispute over what precisely Defendant knew about the Asserted Patents and their technology, and when they knew it, which will be critical for the determination of willful infringement.
- A key legal question will be one of definitional scope: The infringement allegation against the '692 Patent turns on whether a user’s smartphone running an application can be construed as a "remote server." The resolution of this claim construction issue may be dispositive for that patent.
- A core evidentiary question will be one of technical implementation: Do the accused products' "VoiceAware" and "Adaptive Noise Cancelling" features function by "comparing a sound signature to a plurality of learned signature models" as required by the '044 Patent, or do they use alternative, unclaimed methods? The case will require evidence detailing the specific algorithms and operational logic of the accused systems.