DCT
1:18-cv-03534
Zomm LLC v. Apple Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Zomm, LLC (Delaware)
- Defendant: Apple Inc. (California)
- Plaintiff’s Counsel: Kelley Drye & Warren LLP
- Case Identification: 1:18-cv-03534, S.D.N.Y., 04/23/2018
- Venue Allegations: Plaintiff alleges venue is proper in the Southern District of New York based on Defendant’s multiple regular and established places of business, specifically citing seven physical Apple Store locations in Manhattan, and its targeted business activities within the district.
- Core Dispute: Plaintiff alleges that Defendant’s Apple Watch Series 1 and 2, when running specific versions of watchOS, infringe a patent related to a wireless security device that can initiate location-aware emergency calls through a wirelessly paired smartphone.
- Technical Context: The technology relates to personal safety features in wearable electronics, enabling a user to leverage a secondary device (e.g., a watch) to control a primary communications device (e.g., a phone) for emergency situations.
- Key Procedural History: The complaint alleges a prior business relationship between the parties, beginning with a 2010 confidentiality agreement for the purpose of selling Plaintiff’s "Wireless Leash" product in Apple stores. Plaintiff claims it developed an iOS-specific version at Apple’s request, which Apple later sold, studied, and then allegedly copied for its own "Emergency SOS" feature. Notably, subsequent to the filing of this complaint, the asserted patent was the subject of Inter Partes Review (IPR) proceedings (IPR2019-00275, IPR2019-00277), which resulted in a determination that all claims (1-28) of the patent are cancelled.
Case Timeline
| Date | Event |
|---|---|
| 2009-09-04 | '895 Patent Priority Date (Application Filing) |
| 2010-07-29 | Zomm and Apple enter into a Confidentiality Agreement |
| 2011-11-01 | Zomm introduces "Wireless Leash Plus" product for Apple devices (approx. date) |
| 2012-11-01 | Apple terminates agreement to sell Zomm's product (approx. date) |
| 2013-01-08 | U.S. Patent No. 8,351,895 issues |
| 2014-09-09 | Apple announces first Apple Watch |
| 2015-04-01 | Apple begins offering Apple Watch Series 1 for sale (approx. date) |
| 2016-06-01 | Apple unveils watchOS 3 with "Emergency SOS" feature (approx. date) |
| 2018-04-23 | Complaint Filed |
| 2018-11-09 | IPR petitions filed against the '895 Patent |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,351,895 - Wireless Security Device and Method to Place Emergency Calls, Issued January 8, 2013
The Invention Explained
- Problem Addressed: The patent's background describes the increasing value of data stored on mobile phones and the need for a device to protect against loss or theft. It also identifies a need for a way to place emergency calls through a mobile phone in a "hands-free" manner, which is useful for personal security and required in situations like driving. (’895 Patent, col. 1:11-37).
- The Patented Solution: The invention is a small, secondary wireless device that pairs with a primary "telephony device" (e.g., a smartphone) using a Bluetooth connection. The security device can command the phone to request its own location information (e.g., from GPS), use that location to determine the correct local emergency number from an internal lookup table, and then command the phone to dial that number. (’895 Patent, Abstract; col. 2:38-54). After the call is placed, it can also send a "prerecorded emergency message" via the phone. (’895 Patent, col. 2:52-56).
- Technical Importance: The patented method allows a user to initiate a location-aware emergency call from a discreet secondary device, removing the need to physically access and operate the smartphone itself during a potential emergency. (’895 Patent, col. 1:31-37).
Key Claims at a Glance
- The complaint asserts independent claims 1 (a device) and 17 (a method) (Compl. ¶76).
- The essential elements of independent Claim 1 include:
- A wireless security device with a processor, transceiver, and memory.
- The device selects a Bluetooth profile and wirelessly pairs with a "Bluetooth enabled telephony device."
- It sends a command to the telephony device requesting information such as its GPS location.
- It receives a response from the telephony device with the requested information.
- It determines the current location of the telephony device based on the response.
- It accesses a "lookup table" in its memory to correlate the location with a corresponding emergency telephone number.
- It sends a command to the telephony device to place a call to that emergency number.
- After the call is placed, it sends a "prerecorded emergency message" to the telephony device for transmission.
- Independent Claim 17 recites a method comprising the sequence of steps performed by the device described in Claim 1 (Compl. ¶83).
III. The Accused Instrumentality
Product Identification
The Apple Watch Series 1 and 2, specifically when running watchOS 3 or watchOS 4 (referred to as the "Accused Devices") (Compl. ¶65).
Functionality and Market Context
- The complaint alleges the Accused Devices are wireless devices that pair with a paired iPhone (the "telephony device") via Bluetooth (Compl. ¶67, ¶79). The central accused feature is the "Emergency SOS" function, which was a "stand-out" feature of watchOS 3 and allegedly drove significant sales (Compl. ¶54, ¶57, ¶59).
- This function is activated by pressing and holding the side button on the Apple Watch (Compl. ¶54). This action allegedly causes the watch to:
- Request and receive GPS coordinates from the paired iPhone to determine the user's location (Compl. ¶68, ¶80).
- Access a lookup table to correlate this location with the correct local emergency number for the country the user is in (Compl. ¶73, ¶81).
- Send a command to the iPhone, causing it to call that emergency number (Compl. ¶73, ¶81).
- After the emergency call, send a text message containing the user's location to pre-selected emergency contacts (Compl. ¶74, ¶82).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
'895 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| [a] wireless security device comprising: a processor; a wireless transceiver; a memory; and computer program instructions... | The Accused Devices (Apple Watch Series 1 and 2) contain an integrated S1 or S1P System in Package (processor/memory) and a Broadcom chip (transceiver). | ¶78 | col. 2:38-43 |
| wirelessly pairing, via the wireless transceiver over a personal area network, with a Bluetooth enabled telephony device... | The Accused Devices pair with an iPhone using a Bluetooth protocol. | ¶79 | col. 2:45-49 |
| sending a command to the telephony device requesting... a global positioning system (GPS) location of the telephony device... | The Accused Devices send a request to the paired iPhone for GPS data to identify its location. | ¶80 | col. 2:62-col. 3:2 |
| receiving a response from the telephony device including... the GPS location of the telephony device... | The Accused Devices receive a response from the iPhone that includes the requested GPS data. | ¶80 | col. 3:2-6 |
| determining a current location of the telephony device based on... the GPS location... | The Accused Devices use the received GPS data to determine the location of the iPhone. | ¶80 | col. 3:6-9 |
| accessing a lookup table stored in the memory including one or more location codes and one or more emergency telephone numbers... | The Accused Devices access a lookup table stored in memory to determine the local emergency number. | ¶81 | col. 3:25-27 |
| correlating the location with at least one of the one or more location codes to obtain at least one of the one or more emergency telephone numbers... | The Accused Devices correlate the location of the iPhone with a location code in the lookup table to select an emergency number. | ¶81 | col. 3:28-30 |
| sending a command, over the wirelessly paired Bluetooth connection, to the telephony device to place a telephone call to the at least one of the one or more emergency telephone numbers... | The Accused Devices send a command to the iPhone to automatically call the local emergency number. | ¶81 | col. 2:50-52 |
| once the telephone call is placed, sending a prerecorded emergency message to the telephony device... causing the telephony device to transmit the prerecorded emergency message. | After the emergency call, the Apple Watch sends the user's current location via a text message to emergency contacts, which is transmitted by the paired iPhone. | ¶82 | col. 2:52-56 |
Identified Points of Contention
- Scope Questions: A central question may be whether the accused post-call text message to personal contacts meets the claim limitation of a "prerecorded emergency message." The patent specification describes the message as being "play[ed]... through the telephony device" during the call, which may suggest an audio message to the emergency operator, not a separate text message to different recipients after the call is complete (’895 Patent, col. 13:1-4).
- Technical Questions: What is the precise division of labor between the Apple Watch and the iPhone for the "determining a current location" step? The claim requires the "wireless security device" (the watch) to perform this determination. If the iPhone performs the full location calculation and simply provides a final result to the watch, it raises the question of whether the accused device itself performs the claimed step.
V. Key Claim Terms for Construction
The Term: "prerecorded emergency message"
- Context and Importance: The definition of this term is critical to the infringement analysis. The dispute may turn on whether a post-call text message sent to a user's personal contacts qualifies as the claimed "message," or if the term is limited to a message (potentially audio) transmitted to the emergency service provider during the call itself.
- Intrinsic Evidence for a Broader Interpretation: The patent states the message "may contain data and/or audio" and is sent "to the telephony device... causing the telephony device to transmit" it, which could be argued to encompass sending text data via the phone. (’895 Patent, col. 10:11-17).
- Intrinsic Evidence for a Narrower Interpretation: The specification repeatedly suggests an audio context, stating the telephony device may "play the prerecorded emergency message" and that this may occur "over the connected emergency phone call." (’895 Patent, col. 3:2-3; col. 10:15-17). This language may support an interpretation limited to an audio message played to the emergency operator.
The Term: "determining a current location"
- Context and Importance: Practitioners may focus on this term because the infringement theory requires the Apple Watch, not the iPhone, to perform this action. The allocation of processing tasks between the two devices is a key technical fact.
- Intrinsic Evidence for a Broader Interpretation: The claim requires the device to perform the determination "based on ... the GPS location" received from the phone, which could be read to mean the watch performs the analysis using raw or semi-raw data provided by the phone. (’895 Patent, Claim 1).
- Intrinsic Evidence for a Narrower Interpretation: The patent consistently describes the "wireless security device" as the agent performing the key logical steps. If discovery shows the iPhone's operating system performs the substantive work of calculating and finalizing the location and the watch merely displays the result, a defendant may argue the watch does not "determine" the location as required by the patent.
VI. Other Allegations
- Indirect Infringement: The complaint alleges Apple induces infringement by instructing and encouraging customers to use the "Emergency SOS" feature through its website, advertisements, and other marketing materials, which allegedly causes users to practice the patented method (Compl. ¶77, ¶84).
- Willful Infringement: The complaint alleges willfulness based on Apple's alleged pre-suit knowledge of the patent and technology. The basis includes the parties' prior business and technical collaboration, a confidentiality agreement, and specific emails from Zomm's CEO to Apple's CEO informing him of the '895 Patent (Compl. ¶46, ¶48, ¶86). The complaint frames Apple's development of the accused feature as intentional copying of Zomm's technology (Compl. ¶28, ¶60).
VII. Analyst’s Conclusion: Key Questions for the Case
- Procedural Viability: The foremost question is the viability of the infringement action itself. Given that Inter Partes Review proceedings concluded after the complaint was filed and resulted in the cancellation of all claims of the '895 Patent, a threshold issue for the court is whether the plaintiff has any surviving legal basis to maintain its patent infringement claim.
- Definitional Scope: Assuming the patent were enforceable, a core issue would be one of definitional scope: can the term "prerecorded emergency message," which the patent specification suggests is an audio message transmitted during the emergency call, be construed to cover the accused feature of sending a separate text message to personal contacts after the call ends?
- Functional Mismatch: An essential evidentiary question would concern functional operation: does the Apple Watch perform the claimed step of "determining a current location," or does it merely receive a fully processed location result from the paired iPhone? This distinction is critical to establishing whether the accused "wireless security device" performs a key step required by the claims.