DCT
1:20-cv-06224
Atos LLC v. Allstate Insurance Co
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: ATOS, LLC d/b/a RideMetric (New Jersey)
- Defendant: Allstate Insurance Co. (Illinois); Esurance Insurance Services, Inc. (Delaware); Arity, LLC (Delaware)
- Plaintiff’s Counsel: Jenner & Block LLP
- Case Identification: 1:20-cv-06224, N.D. Ill., 12/07/2020
- Venue Allegations: Venue is alleged to be proper as Defendants either reside in the district or have regular and established places of business and have committed acts of infringement in the Northern District of Illinois.
- Core Dispute: Plaintiff alleges that Defendants’ "Drivewise" and "DriveSense" usage-based insurance applications infringe three patents related to using a smartphone's onboard sensors to automatically detect a vehicle's operational state and trigger corresponding actions.
- Technical Context: The technology at issue is in the field of smartphone-based telematics, which enables usage-based insurance models where driver behavior data is used to assess risk and determine premiums.
- Key Procedural History: The complaint alleges that Defendants were aware of the patents-in-suit, noting specifically that Defendant Allstate cited the parent patent of the asserted family as prior art during the prosecution of its own patents in the same technology space.
Case Timeline
| Date | Event |
|---|---|
| 2009-02-10 | Priority Date for ’140 and ’609 Patents |
| 2010 | Allstate launches "Drivewise" program (initially dongle-based) |
| 2012 | RideMetric begins developing its SDK and mobile application |
| 2013-07-12 | Priority Date for ’174 Patent |
| 2013-09-03 | ’140 Patent Issued |
| 2015-03 | RideMetric application becomes publicly available |
| 2015 | Allstate offers smartphone-based Drivewise alternative |
| 2015-10-06 | ’609 Patent Issued |
| 2016-06-01 | Esurance launches "DriveSense" mobile program |
| 2017-12-19 | ’174 Patent Issued |
| 2020-12-07 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,152,609 - "Vehicle State Detection," issued October 6, 2015
The Invention Explained
- Problem Addressed: The patent describes prior art methods for monitoring vehicles as suffering from significant drawbacks. Hardware-based solutions, like OBD-II dongles, are described as cumbersome, costly, and vehicle-specific, while GPS-based solutions are power-intensive, have privacy implications, and cannot reliably distinguish a person walking from a slow-moving vehicle (’609 Patent, col. 1:22-55).
- The Patented Solution: The invention proposes using a portable device's (e.g., smartphone) onboard sensors, such as an accelerometer, to generate "operation indicators" from environmental signals like vibrations. These indicators are then analyzed against predetermined criteria to determine a vehicle's operational state (e.g., moving, stationary, engine on/off) without relying on a direct connection to the vehicle or constant GPS polling. Based on a detected change in state, the device can automatically perform an action, such as activating GPS to record a trip or blocking a function like texting (’609 Patent, Abstract; col. 2:16-35; col. 4:1-4).
- Technical Importance: This method allows for a software-based telematics solution that is decoupled from specific vehicle hardware, offering a more universal, cost-effective, and battery-efficient approach by leveraging the sensors already present in a user's smartphone (Compl. ¶20).
Key Claims at a Glance
- The complaint asserts independent claims 1 (a method) and 25 (an apparatus) (Compl. ¶¶91, 103).
- Essential elements of independent claim 1 include: a method of monitoring an "operation indicator" transparently to the user, where the indicator is created by an "on-board component" of the portable device; determining the vehicle's operational state based on the indicator meeting "predetermined criteria"; determining an action to perform based on the operational state and a "previous change" in that state; and performing the action (Compl. ¶91).
- Essential elements of independent claim 25 include: an apparatus with a sensor that generates an "operation indicator," a monitor, and a "vehicle operational state detector" that is configured to detect when the indicator meets criteria and to perform actions based on the resulting state, all "without any connection to other apparatuses in the vehicle and outside the vehicle" (Compl. ¶103).
- The complaint reserves the right to assert claims 2-12, 15, 17-21, and 23 (Compl. ¶90).
U.S. Patent No. 8,527,140 - "Vehicle State Detection," issued September 3, 2013
The Invention Explained
- Problem Addressed: The patent identifies the common problem of people forgetting where they have parked their cars and notes that existing solutions are cumbersome or tied to specific vehicle systems. It also describes the manual process of paying for metered parking as inefficient (’140 Patent, col. 1:13-28, 56-65).
- The Patented Solution: The invention describes a method where a portable device uses its onboard sensors to automatically detect a change in vehicle state, such as the engine turning off. Upon detecting this "parked" state, the device records its geographic location. Later, upon the user's request, the device can provide directions back to the recorded location. The patent specifically discusses using vibration sensor data to distinguish between an "engine is on" state and an "engine is off" state (’140 Patent, Fig. 7; col. 2:11-20).
- Technical Importance: This invention provides an automated "find my car" function that works passively in the background without requiring the user to manually save their location at the time of parking (Compl. ¶14).
Key Claims at a Glance
- The complaint asserts independent claims 3 and 5 (both methods) (Compl. ¶¶125-126).
- Essential elements of independent claim 3 include: a method of monitoring an "operation indicator" created by an "on-board component" to determine a vehicle's operational state and perform an action, wherein the action includes "recording at least one geographic position of the vehicle when the operational state of the vehicle is changed at least to an engine is off state" and "directing the individual upon his request... to the at least one geographic position" (Compl. ¶125).
- Essential elements of independent claim 5 include: a method with a similar preamble, wherein the determination of the action to be performed is based on both the "operational states of the vehicle" and the "location of the individual" (Compl. ¶126).
- The complaint reserves the right to assert claims 1-2, 6-9, and 15-18 (Compl. ¶124).
U.S. Patent No. 9,846,174 - "Computer-Implemented Methods And Computer Systems/Machines For Identifying Dependent And Vehicle Independent States," issued December 19, 2017
- Technology Synopsis: This patent discloses methods for distinguishing specific vehicle-dependent movements, such as a turn, from vehicle-independent movements, such as a user handling the phone. The core technical teaching involves using onboard sensors to "estimat[e] an angle of how closely a rotation vector is aligned with a gravity vector" to determine if a vehicle is turning, thereby improving the accuracy of driving event detection (’174 Patent, Abstract; col. 2:1-11).
- Asserted Claims: The complaint asserts independent claim 1 and dependent claims 2-5 (Compl. ¶146).
- Accused Features: The complaint alleges that the accused applications infringe by implementing methods to detect vehicle turning that allegedly mirror the teachings of the ’174 patent. The complaint points to a later-issued Allstate/Arity patent as evidence that Defendants use a similar technique of comparing rotation and gravity vectors (Compl. ¶¶151-153).
III. The Accused Instrumentality
Product Identification
- Allstate’s "Drivewise" mobile application and Esurance’s "DriveSense" mobile application (collectively, the "Accused Instrumentalities") (Compl. ¶90).
Functionality and Market Context
- The Accused Instrumentalities are software applications for smartphones that serve as the data-collection component of usage-based insurance programs (Compl. ¶¶38, 77). They monitor and record driver behaviors such as mileage, braking, speed, and cornering, and the resulting data is analyzed by Defendant Arity (Compl. ¶¶39, 66, 79).
- The applications are alleged to use a smartphone's internal sensors, including the accelerometer, to automatically identify the operational state of a vehicle (e.g., driving vs. parked) (Compl. ¶¶65-66, 80). Based on this state detection, the applications allegedly perform actions such as activating the phone's GPS to record trip data or logging the end-of-trip location to provide a "Parking Reminder" feature (Compl. ¶¶67, 70-71). The complaint includes a screenshot from the Drivewise settings menu which states, "When Drivewise is enabled, your phone's sensors are used to monitor driving behaviors" (Compl. ¶65, p. 15).
IV. Analysis of Infringement Allegations
’609 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method of performing one or more action[s] on a portable device... comprising: monitoring, at least one operation indicator transparently to the individual... | The Drivewise application runs on a smartphone and monitors operation indicators derived from the phone's sensors to determine the vehicle's operational state without requiring continuous user interaction (Compl. ¶¶12, 92). | ¶¶12, 92 | col. 3:51-55 |
| wherein the at least one operation indicator is created by an on-board component of the portable device when the portable device is located inside a vehicle; | The application is alleged to leverage the smartphone's internal accelerometer to create operation indicators by monitoring vibrations (Compl. ¶¶66, 98). The settings screen explicitly states that the "phone's sensors" are used (Compl. ¶65, p. 15). | ¶¶65, 66, 98 | col. 3:47-48 |
| detecting the at least one operation indicator that meets one or more predetermined criteria; determining one or more operational states of the vehicle based on the one or more predetermined criteria; | The application determines the vehicle's operational state, such as whether it is driving or parked, by analyzing the sensor data against certain criteria (Compl. ¶¶66, 92). | ¶¶66, 92 | col. 3:10-14 |
| determining at least one action to be performed on the portable device carried by the individual, based at least in part on i) the one or more operational states of the vehicle and ii) at least one previous change in the operational state of the vehicle wherein the at least one previous change... comprises... a change from the vehicle being in the stationary state to being in the moving state... | When the application detects a change from a stationary to a moving state (the beginning of a drive), it determines that an action—activating the GPS—should be performed (Compl. ¶92). | ¶92 | col. 4:1-4 |
| and performing the at least one action on the portable device. | The application activates the GPS function on the smartphone. The complaint provides visual evidence purporting to show the GPS icon appearing in the phone's status bar when inside a moving vehicle, but not when outside the vehicle (Compl. ¶69, p. 17). | ¶¶69, 92 | col. 4:37-38 |
’140 Patent Infringement Allegations
| Claim Element (from Independent Claim 3) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method of performing one or more actions on a portable device... comprising: monitoring at least one operation indicator continuously and transparently... wherein the at least one operation indicator is created by an on-board component... detecting when the at least one operation indicator meets one or more predetermined criteria; determining one or more operational states of the vehicle based on the one or more predetermined criteria... | The Drivewise application is alleged to run on a smartphone and use its onboard components to monitor the vehicle's operational state, such as detecting a transition from a driving state to a parked state (Compl. ¶¶127-128). | ¶¶127, 128 | col. 4:41-44 |
| ...performing the one or more actions on the portable device; and wherein the performing the one or more actions further comprises: recording at least one geographic position of the vehicle when the operational state of the vehicle is changed at least to an engine is off state; | Upon detecting a transition to a parked state (an "engine off operational state"), the application records the vehicle's geographic location (Compl. ¶128). The complaint provides a screenshot of a trip summary map within the application displaying a "Parking Location" icon, alleged to represent the recorded end-of-trip location (Compl. ¶72, p. 18). | ¶¶72, 128 | col. 8:14-22 |
| and directing the individual upon his request using the portable device to the at least one geographic position. | The complaint alleges that when a user taps the "Parking Location" text, the application displays a map with walking directions from the user's current location to the recorded parked location (Compl. ¶73). A screenshot of the Allstate website touts a "Parking Reminder" feature that "tells you where you parked" (Compl. ¶71, p. 18). | ¶¶71, 73, 128 | col. 2:16-20 |
- Identified Points of Contention:
- Technical Questions: A primary technical question is whether the accused applications use accelerometer data to detect vibrations for determining the primary operational states (e.g., "engine on" vs. "engine off"), as emphasized in the patents' specifications ('140 Patent, Fig. 2), or if they rely on other means, such as GPS-derived speed or cell tower data, which might not be considered an "operation indicator" as contemplated by the patents. The complaint alleges use of the accelerometer but provides limited detail on the specific criteria used to determine the "driving" state (Compl. ¶66).
- Scope Questions: The infringement analysis may turn on the scope of the term "operation indicator." Defendants may argue for a narrow construction limited to the high-frequency vibration signatures described as the solution to prior art problems, while Plaintiff may advocate for a broader meaning encompassing any processed data from an onboard sensor (like an accelerometer) that is used to infer vehicle state ('140 Patent, col. 3:57-61).
V. Key Claim Terms for Construction
The Term: "operation indicator" (asserted in claims of both ’609 and ’140 Patents)
- Context and Importance: This term defines the fundamental data input for the claimed methods and apparatus. The viability of the infringement claim depends on whether the data monitored by the accused applications (e.g., from an accelerometer) qualifies as an "operation indicator." Practitioners may focus on this term because its construction will determine whether the accused system's reliance on general motion detection, as opposed to the specific vibration analysis detailed in the patent, falls within the claims.
- Intrinsic Evidence for a Broader Interpretation: The specification states that an onboard sensor "converts" signals from the environment—including "vibrations, acceleration, change in forces, noise, etc."—into "operation indicators" ('140 Patent, col. 3:57-61). This language may support an interpretation that the term is not limited to just vibration data but can encompass a wider range of sensor outputs.
- Intrinsic Evidence for a Narrower Interpretation: The patents repeatedly emphasize using vibration analysis to distinguish an "engine on" state from an "engine off" state as a novel solution to the shortcomings of GPS ('140 Patent, Fig. 2; col. 2:21-34). This focus on a specific type of signal (engine vibration) to solve a specific problem (distinguishing driving from walking) could support a narrower construction tied to that embodiment.
The Term: "transparently to the individual" (asserted in claims of both ’609 and ’140 Patents)
- Context and Importance: This term addresses the user-interaction aspect of the monitoring process. Its definition is critical because the accused applications require user opt-in and provide notifications.
- Intrinsic Evidence for a Broader Interpretation: The patent specification contrasts the invention with prior art requiring "manual intervention" for tasks like paying for parking or logging a trip's end ('140 Patent, col. 1:56-65). This context suggests "transparently" means the monitoring functions automatically during a trip without requiring discrete actions from the user for each state change.
- Intrinsic Evidence for a Narrower Interpretation: A defendant may argue that a process is not "transparent" if the user must first actively enable the feature in a settings menu (Compl. p. 15, "Drivewise is active") and is explicitly informed that their "phone's sensors are used to monitor driving behaviors" (Compl. ¶65). This active enablement and disclosure, they may argue, makes the process conspicuous, not transparent.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendants actively induce infringement by instructing customers on how to install and use the accused applications through online documentation, in-app instructions, and customer support, thereby encouraging them to perform the steps of the patented methods (Compl. ¶¶109-110, 131-132).
- Willful Infringement: Willfulness is alleged based on Defendants' purported knowledge of the patents-in-suit since at least their issue dates. The complaint specifically alleges that Defendant Allstate cited the '140 Patent as prior art in the prosecution of its own later patents, which may serve as evidence of pre-suit knowledge of the patented technology (Compl. ¶¶112, 134, 158).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of technical mechanism: Does the evidence show that the accused applications use the analysis of high-frequency vibrations from an accelerometer to make the primary determination between "driving" and "parked" states, as detailed in the patents' specifications? Or do they primarily rely on other data sources, like GPS velocity, raising the question of whether their method aligns with the patented invention?
- A key legal battle will likely be over claim construction: Can the term "operation indicator," which the patents describe as a solution to the flaws of GPS, be construed broadly enough to read on a system that may use GPS-derived data as a primary input for determining a vehicle's operational state?
- A critical question for damages will be willfulness: To what extent can the Plaintiff use evidence, such as Allstate's citation to the '140 patent in its own patent filings, to establish that any infringement was committed with knowledge, potentially exposing Defendants to enhanced damages?