DCT

2:13-cv-01059

Solocron Media LLC v. Verizon Communications Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:13-cv-01059, E.D. Tex., 12/20/2013
  • Venue Allegations: Venue is alleged to be proper because a substantial part of the events occurred in the district and because Defendants maintain regular and established business practices in the district, including committing acts of infringement.
  • Core Dispute: Plaintiff alleges that Defendants’ ringtone and Multimedia Messaging Service (MMS) offerings for mobile phones infringe a portfolio of seven patents related to programming user-defined information into electronic devices.
  • Technical Context: The technology concerns methods and systems for personalizing electronic devices, such as mobile phones, by allowing users to select, format, and download custom audio and video content.
  • Key Procedural History: This First Amended Complaint was filed shortly after the original complaint was served on the Defendants in early December 2013. The willfulness allegations are based on knowledge of the patents-in-suit as of the date of service of the original complaint. All seven asserted patents claim priority to the same 1999 provisional application.

Case Timeline

Date Event
1999-12-06 Earliest Priority Date for all asserted patents (’692, ’395, ’864, ’866, ’759, ’572, ’651 Patents)
2002-12-17 U.S. Patent No. 6,496,692 Issued
2007-08-14 U.S. Patent No. 7,257,395 Issued
2007-11-13 U.S. Patent No. 7,295,864 Issued
2008-01-15 U.S. Patent No. 7,319,866 Issued
2010-06-22 U.S. Patent No. 7,742,759 Issued
2012-08-21 U.S. Patent No. 8,249,572 Issued
2013-11-26 U.S. Patent No. 8,594,651 Issued
2013-12-09 Original Complaint served on AT&T, Sprint, and T-Mobile
2013-12-09 Original Complaint served on Cellco Partnerships (Verizon Wireless)
2013-12-12 Original Complaint served on Verizon Communications Inc.
2013-12-20 First Amended Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 6,496,692 - "Methods and Apparatuses for Programming User-Defined Information Into Electronic Devices," issued December 17, 2002

The Invention Explained

  • Problem Addressed: The patent's background section notes that many electronic devices, such as wireless telephones and PDAs, offer users only a "limited selection of pre-programmed information" (e.g., ringtones) from the manufacturer, which "severely limits the user's ability to customize the device to suit his or her particular taste" (’692 Patent, col. 1:30-36).
  • The Patented Solution: The invention provides a method and apparatus, referred to as a "programmer," that allows a user to select information (e.g., an audio or video file) from a source like the Internet, compare its format to the format required by the electronic device, convert the format if necessary, and then program the resulting file into the device for use (’692 Patent, col. 2:1-14; Fig. 1). This process enables deep personalization of the device's functions, such as its audible alerts.
  • Technical Importance: This approach provided a framework for moving beyond static, manufacturer-supplied alerts to a system where users could personalize their devices with a wide variety of content sourced from personal collections or the internet.

Key Claims at a Glance

  • The complaint does not identify specific asserted claims but alleges infringement of "one or more claims" (Compl. ¶58). Independent claim 1 is a representative method claim.
  • Essential elements of Independent Claim 1:
    • allowing a user to search a plurality of different locations that include audio files;
    • allowing the user to browse audio files in one of the plurality of different locations;
    • allowing the user to choose the user-defined audio file from among the browsed audio files; and
    • enabling the user of the telephone to program at least a portion of the user-defined audio file into the telephone for use as an indicia of an incoming communication.

U.S. Patent No. 7,257,395 - "Methods and Apparatuses for Programming User-Defined Information Into Electronic Devices," issued August 14, 2007

The Invention Explained

  • Problem Addressed: As a continuation of the application leading to the '692 Patent, this patent addresses the same problem: the limited, pre-programmed, and non-customizable nature of audio and video alerts on electronic devices like wireless phones (’395 Patent, col. 1:29-41).
  • The Patented Solution: The patent describes a system for customizing a wireless telephone by connecting it to a remote database of digital audio files. The system includes a mobile browsing application on the phone that allows a user to browse and view lists of selectable files from the database, and processing circuitry to program a selected file into the phone's memory for use as a ringtone (’395 Patent, col. 12:50-67). The specification also discloses downloading user-selected information from the Internet via a computer programmed to function as the "programmer" device (’395 Patent, Fig. 4a).
  • Technical Importance: This system claim builds on the method of the parent '692 Patent by claiming the specific components of a wireless telephone system that enables the downloading and programming of custom audio files.

Key Claims at a Glance

  • The complaint does not identify specific asserted claims but alleges infringement of "one or more claims" (Compl. ¶66). Independent claim 1 is a representative system claim.
  • Essential elements of Independent Claim 1:
    • a communications link capable of connecting substantially directly to a remote database with a plurality of lists of digital audio files;
    • a display screen and a mobile browsing application that allows a user to browse at least one of the lists and view selectable files;
    • a speaker and processing circuitry configured to allow the user to optionally review a selected file before downloading; and
    • a programmable memory circuit for the user to optionally store the selected file for use as an indicia of an incoming communication.

Multi-Patent Capsule: U.S. Patent No. 7,295,864

  • Patent Identification: U.S. Patent No. 7,295,864, "Methods and Apparatuses for Programming User-Defined Information Into Electronic Devices," issued November 13, 2007.
  • Technology Synopsis: This patent, from the same family, claims a system for providing a polyphonic audio file to a wireless telephone for use as a ringtone. It describes a remote computer with access to a database of such files that can be browsed and downloaded by a user of the wireless telephone (Compl. ¶33, 74).
  • Asserted Claims: The complaint asserts infringement of "one or more claims" (Compl. ¶74).
  • Accused Features: The accused features are Defendants' ringtone products and services (Compl. ¶74).

Multi-Patent Capsule: U.S. Patent No. 7,319,866

  • Patent Identification: U.S. Patent No. 7,319,866, "Methods and Apparatuses for Programming User-Defined Information Into Electronic Devices," issued January 15, 2008.
  • Technology Synopsis: This patent claims a wireless telephone system customized by programming an audio file for use as an indicia of an incoming communication. The claims focus on the components of the system, including means for connecting to a remote database and browsing audio files (Compl. ¶35, 82).
  • Asserted Claims: The complaint asserts infringement of "one or more claims" (Compl. ¶82).
  • Accused Features: The accused features are Defendants' ringtone products and services (Compl. ¶82).

Multi-Patent Capsule: U.S. Patent No. 7,742,759

  • Patent Identification: U.S. Patent No. 7,742,759, "Methods and Apparatuses for Programming User-Defined Information Into Electronic Devices," issued June 22, 2010.
  • Technology Synopsis: This patent claims a method for providing a video file to a wireless multimedia device. The method includes steps of converting the selected video file to a native playback format usable by the device and downloading it for subsequent use (Compl. ¶37, 90).
  • Asserted Claims: The complaint asserts infringement of "one or more claims" (Compl. ¶90).
  • Accused Features: The accused features include Defendants' Multimedia Messaging Service ("MMS") and ringtone products and services (Compl. ¶90).

Multi-Patent Capsule: U.S. Patent No. 8,249,572

  • Patent Identification: U.S. Patent No. 8,249,572, "Methods and Apparatuses for Programming User-Defined Information Into Electronic Devices," issued August 21, 2012.
  • Technology Synopsis: This patent claims a method of providing an audio file to a wireless communications device, where a party initiating a communication can browse and select a file to be sent to the receiving device to alert the user of the incoming communication (Compl. ¶39, 98).
  • Asserted Claims: The complaint asserts infringement of "one or more claims" (Compl. ¶98).
  • Accused Features: The accused features are Defendants' ringtone products and services (Compl. ¶98).

Multi-Patent Capsule: U.S. Patent No. 8,594,651

  • Patent Identification: U.S. Patent No. 8,594,651, "Methods and Apparatuses for Programming User-Defined Information Into Electronic Devices," issued November 26, 2013.
  • Technology Synopsis: This patent claims a method of format-converting a video file received from a first wireless device for communication to a second wireless device. The method involves determining the format requirements of the second device and converting the file to a compatible format before sending (Compl. ¶41, 106).
  • Asserted Claims: The complaint asserts infringement of "one or more claims" (Compl. ¶106).
  • Accused Features: The accused features include Defendants' Multimedia Messaging Service ("MMS") and ringtone products and services (Compl. ¶106).

III. The Accused Instrumentality

Product Identification

  • The complaint identifies two main categories of accused instrumentalities: (1) "ringtone products and services including ringtone stores," and (2) "Mobile Messaging Service (or 'MMS') services" (Compl. ¶51, 56). Specific examples of ringtone stores are provided for each defendant, such as the "Verizon Media Store" and AT&T's "AppCenter" (Compl. ¶52-55).

Functionality and Market Context

  • The accused ringtone services allegedly provide an interactive store where customers can connect over a network (Internet or cellular) to browse, purchase, receive, and program audio files into their mobile phones for use as notifications for incoming calls (Compl. ¶51).
  • The accused MMS services allegedly allow customers to send text, picture, video, and audio messages between mobile devices (Compl. ¶56). The complaint specifically highlights an alleged functionality to "modify the content of an MMS message so that it is appropriate to the capabilities of...a customer's MMS client device," a process it refers to as content adaptation performed by a Mobile Messaging Service Center ("MMSC") (Compl. ¶56).
  • No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

’692 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
allowing a user to search a plurality of different locations that include audio files; Defendants' systems provide interactive stores enabling customers to connect over a network to browse audio files available for purchase. ¶51 col. 11:43-52
allowing the user to browse audio files in one of the plurality of different locations that include audio files; Defendants' ringtone stores display a variety of audio files that customers can browse. ¶51 col. 11:43-52
allowing the user to choose the user-defined audio file from among the browsed audio files; and Customers can select and purchase specific audio files from the interactive stores. ¶51 col. 11:43-52
enabling the user of the telephone to program at least a portion of the user-defined audio file into the telephone... The selected audio files are received by the customer's mobile phone and programmed into the device for use as an audio notification for incoming calls. ¶51 col. 11:58-67

Identified Points of Contention

  • Scope Questions: A central question may be whether the term "telephone" as used in claim 1, in the context of a method where the user is "enabled" to program a file "into" it, can be read on the distributed systems alleged, where Defendants' servers and network infrastructure perform many of the core functions. The patent's figures depict a distinct "programmer" device, which may raise questions about whether a carrier's server-side system meets the claim limitations ('692 Patent, Fig. 1-3).
  • Technical Questions: Does a commercially licensed music clip offered in a carrier's store qualify as a "user-defined audio file" under the claim's meaning? The dispute may turn on whether "user-defined" requires user creation or simply user selection for a particular purpose.

’395 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a communications link capable of connecting substantially directly to a remote database... Defendants' systems allow a customer's mobile phone to connect over a cellular or internet network to an interactive store (database) displaying audio files. ¶51 col. 5:25-33
a display screen and a mobile browsing application that allows a user...to browse at least one of the plurality of lists... Customers use the screen on their mobile devices and a browsing interface (application) to view and select from the variety of audio files offered in the ringtone store. ¶51 col. 5:48-56
a speaker and processing circuitry configured to allow the user to optionally review a selected digital audio file... The complaint does not explicitly allege a "review" or "preview" function for the accused ringtone stores. N/A col. 6:49-55
a programmable memory circuit for allowing the user to optionally store the selected digital audio file... Once purchased, the audio files are received and programmed (stored) into the mobile phone's memory for use as a ringtone. ¶51 col. 6:53-57

Identified Points of Contention

  • Scope Questions: The construction of "connecting substantially directly" will be critical. Defendants may argue that the series of intermediaries in a modern cellular and internet network connection (cell towers, backhaul, internet exchanges, servers) is not "substantially direct." Plaintiff may point to specification language describing internet connectivity to support a broader interpretation ('395 Patent, col. 2:2-6).
  • Technical Questions: The complaint does not provide sufficient detail for analysis of the "review" limitation. A key factual question will be whether the accused ringtone services actually offered a pre-purchase preview function that meets this claim element.

V. Key Claim Terms for Construction

For the ’692 Patent:

  • The Term: "user-defined audio file"
  • Context and Importance: This term's construction is central to whether the patent covers the sale of pre-existing, commercially licensed ringtones. The dispute will likely focus on whether a user merely "selecting" a file makes it "user-defined" for the purpose of the claim. Practitioners may focus on this term because its scope determines whether the patent applies to the primary business model of the accused ringtone stores.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification repeatedly refers to the user "selecting" information from a source, such as an "audio sample of a popular song," suggesting the act of selection, not creation, is the defining action (’692 Patent, col. 3:30-35).
    • Evidence for a Narrower Interpretation: The patent also discusses a user recording their own "verbal message or sound effect" for use as a signature file, which could support an argument that "user-defined" implies some level of user creation or originality (’692 Patent, col. 9:14-17).

For the ’395 Patent:

  • The Term: "a communications link capable of connecting substantially directly to a remote database"
  • Context and Importance: The viability of the infringement allegation for this system claim hinges on this term encompassing a modern cellular/internet connection between a mobile phone and a server. If construed narrowly to require a more direct connection, the claim may not read on the accused systems.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification, incorporated by reference from the parent '692 Patent, explicitly contemplates using the "Internet" as a source for information, which inherently involves a complex, non-direct network path (’692 Patent, col. 5:25-30).
    • Evidence for a Narrower Interpretation: Embodiments described in the specification show more localized connections, such as a "programmer" connected to a personal computer, which in turn connects to the internet ('395 Patent, Fig. 3). This could be used to argue that the "substantially direct" connection is between the device and a local computer/programmer, not a remote server across the public internet.

VI. Other Allegations

Indirect Infringement

  • The complaint alleges that all Defendants induce infringement by encouraging customers to use the accused ringtone and MMS services through advertising and by providing instructions (Compl. ¶59, 67). It further alleges contributory infringement by supplying the material components of the infringing systems, namely the servers, network infrastructure, and mobile phones, which allegedly have no substantial non-infringing use when combined to provide the accused services (Compl. ¶61, 69).

Willful Infringement

  • Willfulness is alleged against all Defendants based on their having received actual notice of the asserted patents and the alleged infringement upon service of the original complaint on or about December 9-12, 2013 (Compl. ¶63, 71). The allegations are thus based on post-suit knowledge.

VII. Analyst’s Conclusion: Key Questions for the Case

  • A core issue will be one of definitional scope: can terms like "programmer" and "telephone" from a patent family originating in 1999 be construed to cover the distributed, server-client architecture of modern mobile content delivery systems, where network servers perform the key processing steps and the user's handset is primarily an endpoint?
  • A key evidentiary question will be one of technical implementation: for the patents targeting MMS, what is the specific mechanism of the "content adaptation" alleged to be performed by Defendants' MMSCs? The case may turn on whether discovery shows this function performs the specific format comparison and conversion steps recited in the claims, or a different technical function.
  • A third central question will be one of claim construction: does a "user-defined audio file" encompass a pre-recorded, commercially licensed ringtone that a user merely selects from a carrier's store, or does the term imply a degree of user creation or modification? The answer will determine the applicability of several patents to the Defendants' primary ringtone business model.