DCT
0:23-cv-00112
Sockeye Licensing TX LLC v. Miroir USA LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Sockeye Licensing TX LLC (Texas)
- Defendant: Miroir USA, LLC (Minnesota)
- Plaintiff’s Counsel: Vidas, Arrett & Steinkraus P.A.
- Case Identification: 0:23-cv-00112, D. Minn., 01/13/2023
- Venue Allegations: Plaintiff alleges venue is proper in the District of Minnesota because Defendant maintains its principal place of business there, engages in continuous business activities, and has committed the alleged acts of patent infringement within the district.
- Core Dispute: Plaintiff alleges that Defendant’s wireless projectors infringe patents related to methods and systems for using a mobile communications device, such as a smartphone, to control and stream media to a separate, external display device.
- Technical Context: The technology concerns using a mobile device as a control hub and conduit for media content displayed on a larger screen, a paradigm central to modern consumer electronics like media streaming dongles and screen mirroring technologies.
- Key Procedural History: The two patents-in-suit share a common specification and priority date. The parent '342' Patent was subject to an inter partes review (IPR) petition, IPR2016-00989, in which the Patent Trial and Appeal Board (PTAB) declined to institute a trial on the patentability of asserted claim 21. The complaint notes that the examiner for the continuation '981' Patent considered the IPR petitions against the '342 Patent before allowing the '981 Patent to issue.
Case Timeline
| Date | Event |
|---|---|
| 2006-09-15 | Priority Date for '342 and '981 Patents |
| 2012-03-13 | U.S. Patent No. 8,135,342 Issued |
| 2016-01-01 | PTAB denies institution of IPR2016-00989 on '342 Patent |
| 2017-01-17 | U.S. Patent No. 9,547,981 Issued |
| 2023-01-13 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,547,981 - "System, Method and Apparatus for Using a Wireless Device to Control Other Devices"
- Issued: January 17, 2017
The Invention Explained
- Problem Addressed: The patent addresses the ergonomic and functional limitations of using handheld devices like cell phones as standalone media players, which have small screens and limited input capabilities (Compl. ¶10; ’981 Patent, col. 2:20-29). The prior art, according to the patent, failed to provide a system where a mobile phone could act as a "thin client" to control a full-sized desktop or media environment, instead relegating it to a "mere tether." (Compl. ¶12).
- The Patented Solution: The invention describes a method where a mobile device wirelessly couples with a separate, larger display device. The user interacts with a graphical user interface (GUI) on the large display to select media (e.g., a movie) from a remote server. The mobile device receives the selection command, downloads the media from the server, and transmits it to the display device for viewing, with the patent emphasizing that this transmission can occur simultaneously with the download from the server, enabling streaming ('981 Patent, Abstract; Compl. ¶13). The complaint references patent Figure 3D as illustrating the software and hardware "stack" that enables this functionality. (Compl. ¶11).
- Technical Importance: This approach proposed a reversal of the traditional client-server relationship, empowering the mobile phone to be the central controller of a media experience on peripherals, rather than being a passive endpoint or simple internet conduit. (Compl. ¶¶6, 14).
Key Claims at a Glance
- The complaint asserts independent method claim 1 and dependent claims 5, 15, and 16. (Compl. ¶28).
- Independent Claim 1 requires the following steps:
- electrically coupling for consumer electronic entertainment purposes a display device suitable for use in a media center environment with a mobile communications device that does not form a part of the media center environment;
- causing a first graphic user interface to be displayed on the display device that conveys information... about movies or videos that are individually downloadable from a server;
- receiving entertainment selection commands by the mobile communications device... based on visual feedback the viewer receives by... interacting with the first graphic user interface;
- receiving by the mobile communications device of the particular movie or video that is sent to it from the server;
- transmitting by the mobile communications device of at least some of the particular movie or video to the display device for display thereon simultaneously while at least some of the particular movie or video is being downloaded from the server to the mobile communications device;
- wherein the electrical coupling... allows the... movie or video to be sent... when the mobile communications device is located a distance away from the display device.
U.S. Patent No. 8,135,342 - "System, Method and Apparatus for Using a Wireless Cell Phone Device to Create a Desktop Computer and Media Center"
- Issued: March 13, 2012
The Invention Explained
- Problem Addressed: As with its continuation patent, the ’342 Patent identifies the problem of users being "confined to the use of the cell phone itself as a handheld computing device," with its small screen and keypad, preventing a full-featured desktop or media experience. ('342 Patent, col. 2:6-24).
- The Patented Solution: The patent discloses a control system where a wireless device connects to and operates external peripheral devices (such as a monitor, keyboard, and speakers) to create a "desktop computing environment." ('342 Patent, Abstract). The mobile device acts as the central hub, using its network connection to access browser-based applications and media, and then employing peripheral hardware for user input and output. The complaint references patent Figure 3B as disclosing hardware interactions including multichannel USB, IEEE 1394, and IEEE 802.11 protocols to communicate with a display device. (Compl. ¶¶4-5).
- Technical Importance: The invention enabled the mobile device to become the control center for a collection of peripherals, departing from the "conventional tethering" model where the phone would merely provide internet access to a more powerful computer. (Compl. ¶14).
Key Claims at a Glance
- The complaint asserts dependent system claim 21, which depends on independent claim 20 and adds means-plus-function limitations. (Compl. ¶35.a).
- Independent Claim 20 recites a peripheral device control system comprising:
- a peripheral device;
- an interconnector... connecting, at the control of a user, a wireless device to said peripheral device, and downloading user information to said peripheral device;
- said user information being stored on a server in a communications network;
- said peripheral device, upon receipt of the downloaded user information, employing said user information at the control of said user;
- wherein said peripheral device, controlled by said user from said wireless device, is part of a separate system.
III. The Accused Instrumentality
Product Identification
- The complaint identifies the accused instrumentalities as Defendant’s "Projector Infringing Products," which are wireless projectors offered for sale in the U.S., including the "Miroir Micro Pocket Projector M76." (Compl. ¶¶26, 27).
Functionality and Market Context
- The accused projectors are described as having "WIFI built-in for screen mirroring from your smartphone or tablet to play YouTube or TikTok." (Compl. ¶30). The complaint alleges these products contain "casting circuitry." (Compl. ¶27).
- The alleged infringing use involves an end-user selecting a video on a smartphone, which downloads the video from a server (e.g., YouTube), and then wirelessly streams or "casts" the video from the smartphone to the projector for display. (Compl. ¶28). The complaint also references a patent figure, Figure 3D, which depicts the relationships between a cell phone's hardware/software components, the internet, and an external display device. (Compl. ¶11).
IV. Analysis of Infringement Allegations
'981 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| (a) electrically coupling for consumer electronic entertainment purposes a display device... with a mobile communications device... | A user's smartphone is coupled to the projector's casting circuitry via a wireless network connection. | ¶28.b | col. 3:15-24 |
| (b) causing a first graphic user interface to be displayed on the display device that conveys information... about movies or videos... | The GUI of an application like YouTube or TikTok is cast from the smartphone and displayed on the surface where the projector is aimed. | ¶28.c | col. 4:6-14 |
| (c) receiving entertainment selection commands by the mobile communications device... based on visual feedback... | The user selects a video by interacting with their smartphone, based on reading the GUI projected on the external surface. | ¶28.d | col. 4:6-14 |
| (d) receiving by the mobile communications device of the particular movie or video that is sent to it from the server... | By selecting a video, the user's smartphone signals the server to send the selected video content to the smartphone. | ¶28.e | col. 4:6-14 |
| (e) transmitting by the mobile communications device... simultaneously while... being downloaded from the server... | The selected video is streamed from the user's smartphone to the projector's casting circuitry at the same time the video is being downloaded from the server to the smartphone. | ¶28.f, ¶28.i | col. 4:20-28 |
| (f) wherein the electrical coupling... allows the... movie or video to be sent... when the mobile communications device is located a distance away... | The wireless connection between the smartphone and projector is alleged to be robust enough to function when the devices are 10-15 feet apart. | ¶28.g | col. 3:5-14 |
Identified Points of Contention
- Scope Questions: A central question may be whether a projector combined with the surface it projects onto constitutes a "display device" as the term is used in the patent, which primarily provides examples of self-contained hardware like a "desktop computer monitor" or "television set." (Compl. ¶28.b; ’981 Patent, col. 3:63-65).
- Technical Questions: The allegation of simultaneous downloading and transmitting is a critical element for infringement. A factual dispute may arise over whether the accused system buffers content in a way that breaks this simultaneity, or whether the operation is functionally consistent with the "streaming" described in the patent. (Compl. ¶28.f).
'342 Patent Infringement Allegations
| Claim Element (from Independent Claim 20 & dependent 21) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| (20) a peripheral device | The projector's lens and the surface onto which it projects are alleged to collectively form a "peripheral device." | ¶35.b | col. 6:50-57 |
| (20) an interconnector... connecting... a wireless device to said peripheral device... | The "casting circuitry" within the projector is alleged to be the interconnector that links the user's smartphone to the peripheral device. | ¶35.d | col. 3:15-24 |
| (20) said peripheral device... employing said user information at the control of said user | The projector, controlled by user commands on the smartphone, displays the video received from the smartphone. | ¶35.g | col. 15:57-62 |
| (21) means for receiving, at said peripheral device, a wireless communication... | The "casting circuitry" of the projector is alleged to be the structure that performs the function of receiving the wireless communication from the smartphone. | ¶35.k | col. 8:59-67 |
| (21) means for employing, at said peripheral device, said downloaded user information | The projector's lens and its connection to the casting circuitry are alleged to be the structure that performs the function of employing the user information (i.e., displaying the video). | ¶35.l | col. 10:14-19 |
Identified Points of Contention
- Means-Plus-Function: Claim 21 is drafted in means-plus-function format. Infringement will require a two-step analysis: the court must first construe the function and then determine whether the accused structure (the "casting circuitry") is the same as or equivalent to the corresponding structure disclosed in the specification (e.g., the "multiport wireless physical interface"). (Compl. ¶35.k; ’342 Patent, Fig. 2C, 106).
- Scope Questions: Similar to the '981 patent, a dispute may arise over whether using a smartphone with a pocket projector creates a "desktop computing environment" or "media center environment" as required by the claims, or if this represents a different use case than what the patent describes. (Compl. ¶35.i; ’342 Patent, col. 18:35-39).
V. Key Claim Terms for Construction
The Term: "display device" (’981 Patent) / "peripheral device" (’342 Patent)
Context and Importance: The complaint's infringement theory hinges on construing these terms to cover a projector in combination with an external projection surface. (Compl. ¶28.b, ¶35.b). The viability of the case may depend on whether this interpretation is accepted, as the patents frequently use examples of conventional, self-contained hardware.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states the invention can connect to a "desktop monitor or other full-size digital display device" and "consumer display devices, e.g., television," where the use of "other" and "e.g." suggests the examples are not exhaustive. (’981 Patent, col. 2:11-13, col. 3:63-65).
- Evidence for a Narrower Interpretation: The patent's figures and detailed descriptions consistently refer to discrete hardware components like a "desktop monitor," "digital display device," "keyboard," and "mouse," which could suggest the invention is limited to such tangible peripherals. (’342 Patent, Fig. 1). A projection surface is not a device in the same way a monitor is.
The Term: "simultaneously" (’981 Patent, Claim 1)
Context and Importance: This term was used during prosecution to distinguish the invention from prior art that required a full download before transfer. (Compl. ¶13). Proving that the accused products operate "simultaneously" is therefore critical to the infringement allegation for the '981 patent.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not provide an explicit definition, so its plain and ordinary meaning of "at the same time" would likely apply. The specification’s discussion of "streaming video" supports this interpretation. (’981 Patent, col. 4:25-28).
- Evidence for a Narrower Interpretation: Given its importance in overcoming prior art, a defendant may argue for a strict interpretation where any meaningful buffering or delay in the process (e.g., the phone downloading a small chunk completely before transmitting it) would fall outside the claim scope, breaking strict simultaneity.
VI. Other Allegations
- Indirect Infringement: The complaint focuses on induced infringement, alleging that Defendant encourages and instructs its customers to infringe. (Compl. ¶31, ¶38). The alleged acts of inducement include marketing statements on Defendant's website, such as promoting the projectors' "WIFI built-in for screen mirroring from your smartphone... to play YouTube or TikTok." (Compl. ¶30, ¶37).
- Willful Infringement: While not pleaded as a separate count, the prayer for relief requests treble damages, indicating an allegation of willfulness. (Compl. p. 20, ¶C). The complaint alleges Defendant has had knowledge of the patents "since at least the filing date of this Complaint," which would only support a claim for post-suit willful infringement. (Compl. ¶32, ¶39).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this case may turn on the answers to several key questions:
- A core issue will be one of definitional scope: Can terms like "display device" and "peripheral device," which are rooted in the patent's description of a desktop computing environment with monitors and keyboards, be construed broadly enough to read on a portable projector used in conjunction with a passive projection surface?
- A second issue will be one of claim construction and equivalence for the '342 patent: For the means-plus-function limitations in claim 21, is the accused "casting circuitry" structurally the same as or equivalent to the specific "multiport wireless physical interface" and other hardware disclosed in the patent specification?
- A key evidentiary question for the '981 patent will be one of technical operation: Does the accused system of a smartphone streaming to a Miroir projector in fact perform the downloading and transmitting steps "simultaneously," or does the underlying software architecture introduce a sequence or delay that falls outside the scope of this critical claim limitation?