DCT
4:22-cv-00429
FaceToFace Biometrics Inc v. Apple Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: FacetoFace Biometrics, Inc. (Delaware)
- Defendant: Apple, Inc. (California)
- Plaintiff’s Counsel: THE SIMON LAW FIRM, P.C.
- Case Identification: 4:22-cv-00429, E.D. Mo., 04/13/2022
- Venue Allegations: Venue is alleged to be proper in the Eastern District of Missouri because Apple has committed acts of infringement in the district and maintains a regular and established place of business there.
- Core Dispute: Plaintiff alleges that Defendant’s iPhone and iPad products, which feature the "Memoji" and "iMessage" functionalities, infringe a patent related to generating dynamic emoticons based on a user's real-time facial expressions.
- Technical Context: The technology at issue involves using a device's front-facing sensors to capture a user's facial movements and expressions, and then mapping those expressions onto a digital graphic or avatar for use in electronic messaging.
- Key Procedural History: The complaint does not mention any prior litigation, inter partes review proceedings, or licensing history related to the patent-in-suit. The patent-in-suit claims priority to a chain of applications originating with a provisional application filed in 2014.
Case Timeline
| Date | Event |
|---|---|
| 2014-03-10 | '623 Patent Priority Date |
| 2021-06-22 | '623 Patent Issue Date |
| 2022-04-13 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,042,623 - "Expression Recognition in Messaging Systems"
- Patent Identification: U.S. Patent No. 11,042,623, "Expression Recognition in Messaging Systems," issued June 22, 2021. (Compl. ¶7).
The Invention Explained
- Problem Addressed: The patent's background section describes concerns with privacy and security in electronic messaging, noting that conventional passcode protection is transferable and can be inconvenient, and that senders of messages lack control over their content after it is sent. (’623 Patent, col. 1:35-49).
- The Patented Solution: The invention proposes a messaging system that uses a device's sensors (e.g., a camera) to perform biometric and expression recognition. (’623 Patent, col. 1:50-55). This sensor data can be used to generate a "dynamic emoticon" that is added to a message to convey the user's expression, thereby adding context to the communication. (’623 Patent, Abstract; col. 5:5-10). The system is described as being able to capture a user's expression and add it to a message as an emoticon, which can then be sent to another user. (’623 Patent, col. 8:55-65).
- Technical Importance: The technology purports to enhance digital communications by integrating real-time user expression data directly into the messaging content, aiming to add emotional context and nuance. (’623 Patent, col. 4:21-36).
Key Claims at a Glance
- The complaint asserts independent claims 1 (a device claim) and 11 (a method claim). (Compl. ¶8).
- Independent Claim 1 recites a computer device programmed to perform the following essential steps:
- receive a selection of an emoticon;
- monitor a sensor feed from the device’s sensors to detect a plurality of human facial expression states;
- automatically generate a dynamic emoticon that simulates the detected expression states on the selected emoticon; and
- route a message containing the dynamic emoticon to another device.
- Independent Claim 11 recites a computer-implemented method with steps that functionally mirror the limitations of Claim 1.
- The complaint states that it reserves the right to assert infringement of dependent claims 2, 3, 4, 5, 7, 8, 12, 14, 15, 17, and 18. (Compl. ¶23, ¶26).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are Apple's iPhone X, iPhone XR, iPhone XS, iPhone XS Max, iPhone 11 series, iPhone 12 series, iPhone 13 series, and all generations of the iPad Pro 11-inch and 12.9-inch (the "Infringing Devices"). (Compl. ¶1, ¶12).
Functionality and Market Context
The complaint alleges that the accused devices include a "Memoji" feature within the "iMessage" application. (Compl. ¶15, ¶16). This feature is alleged to allow a user to "create an animated Memoji that uses your voice and mirrors your facial expressions." (Compl. ¶15). According to the complaint, these devices use their sensors to detect human facial expressions and generate dynamic emoticons that can be sent in messages to other devices. (Compl. ¶13, ¶18, ¶21). The complaint provides a screenshot of the iMessage interface showing a pig character as a "Memoji" with three distinct expressions, intended to demonstrate the generation of a dynamic emoticon simulating a facial expression. (Compl. p. 5, ¶21).
IV. Analysis of Infringement Allegations
'623 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| receive a selection of an emoticon | The Infringing Devices allow a user to use the iMessage application, which "contains a selection of emoticons" and allows users to choose a "Memoji" to animate. | ¶15, ¶17 | col. 12:1-2 |
| monitor a sensor feed provided by one or more sensors of the computer device to detect a plurality of human facial expression states | The devices' sensors are used to "detect a plurality of human facial expressions," and the "Memoji" feature "mirrors your facial expressions." | ¶13, ¶15 | col. 12:3-5 |
| automatically generate a dynamic emoticon that simulates the detected plurality of human facial expression states on the selected emoticon based on the sensor feed of the plurality of the human facial expression states | The devices "automatically generate a dynamic emoticon that simulates a detected human facial expression." | ¶21 | col. 12:6-10 |
| and route a message with the dynamic emoticon to a second computer device | The iMessage application "allows a user to send the created dynamic emoticons to other Apple devices." | ¶18 | col. 12:11-12 |
Identified Points of Contention
- Scope Questions: A central question may be whether Apple's "Memoji," which are described in Apple's marketing as customizable animated avatars, meet the claim limitation of an "emoticon." The defense may argue that an "emoticon" implies a simpler, static graphic icon, whereas Plaintiff may argue for a broader construction that covers any graphical representation of emotion, including Memoji. The claim language "on the selected emoticon" may suggest an operation where expressions are mapped onto a pre-existing base graphic, raising questions about how this maps to the creation of an animated Memoji from a user-customized avatar.
- Technical Questions: The complaint alleges the accused products "simulate" the user's facial expressions, but the required technical fidelity of this "simulation" under the claims is an open question. It will be a factual dispute whether the accused functionality, which mirrors certain facial movements, meets the limitation of simulating a "plurality of human facial expression states" as understood in the context of the patent, which also discusses recognizing "mood" and "emotion." (’623 Patent, col. 4:24, col. 4:65-67).
V. Key Claim Terms for Construction
The Term: "emoticon"
- Context and Importance: The construction of this term is fundamental to the infringement analysis. The outcome may depend on whether Apple's complex, user-configurable 3D "Memoji" avatars fall within the scope of what the patent claims as an "emoticon." Practitioners may focus on this term because of the potential technological gap between the common understanding of "emoticon" at the time of the invention's priority date (2014) and the advanced nature of the accused "Memoji" feature.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification lists "emoticons" as part of a broad list of electronic communication content, including "text, photos, audio clips, videos, links, images, or any combination thereof," which may support a broad definition not limited to a specific format. (’623 Patent, col. 5:21-23).
- Evidence for a Narrower Interpretation: The structure of claim 1 recites "receiv[ing] a selection of an emoticon" and then "generat[ing] a dynamic emoticon that simulates the detected... expression states on the selected emoticon." This phrasing could be argued to describe a process of animating a pre-existing, likely simpler, base graphic, rather than creating a complex animated avatar.
The Term: "simulates the detected plurality of human facial expression states"
- Context and Importance: This term defines the functional heart of the invention. The dispute will likely focus on what actions constitute "simulation" and how many different "states" must be detected and simulated to meet the claim.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not appear to quantify the "plurality" or specify a required degree of accuracy for the "simulation." This could support an argument that mirroring any two or more distinct facial movements (e.g., a smile and a wink) is sufficient to infringe.
- Evidence for a Narrower Interpretation: Dependent claim 4 lists specific expressions: "a smile, a laugh, a grimace, a frown, a pout." (’623 Patent, col. 12:18-21). A party could argue this list informs the meaning of "expression states," suggesting the system must be capable of simulating distinct, recognizable emotions rather than just physical movements. The specification's reference to recognizing a user's "mood" could further support a narrower interpretation requiring a more sophisticated level of emotional simulation. (’623 Patent, col. 4:65-67).
VI. Other Allegations
Indirect Infringement
The complaint alleges induced infringement, stating that Apple "actively and knowingly" induces owners of the accused devices to infringe. (Compl. ¶22, ¶27). The factual basis for this allegation appears to rest on Apple providing instructions and documentation to users, such as the support webpage cited in the complaint, that teach how to use the accused "Memoji" feature in an infringing manner. (Compl. ¶15, n.1).
Willful Infringement
The complaint does not explicitly allege willful infringement or plead facts showing Apple had pre-suit knowledge of the ’623 Patent. The prayer for relief includes a request that the court declare the case "exceptional" and award attorney fees pursuant to 35 U.S.C. § 285, but makes this request contingent on what "Discovery and Evidence in this matter so warrants." (Compl., Prayer for Relief ¶E).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this case may depend on the court's determination of the following open questions:
- A core issue will be one of definitional scope: can the term "emoticon," as used in the patent and understood in light of its 2014 priority date, be construed to read on the accused "Memoji" functionality, which involves customizable 3D avatars?
- A key evidentiary question will be one of functional performance: what is the precise technical standard for "simulat[ing] the detected plurality of human facial expression states" as required by the claims, and does the evidence show that Apple's "Memoji" feature meets that standard?