Uniloc USA Inc v. Green Tomato Ltd

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Uniloc USA, Inc. (Texas) and Uniloc Luxembourg, S.A. (Luxembourg)
  • Defendant: Green Tomato Limited (Hong Kong)
  • Plaintiff’s Counsel: Tadlock Law Firm PLLC; Cesari and McKenna, LLP
• Case Identification: 2:16-cv-00731, E.D. Tex., 07/05/2016
• Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendant is deemed to reside in the district, has committed alleged acts of infringement there, and has transacted business involving the accused product with customers in Texas.
• Core Dispute: Plaintiff alleges that Defendant’s Talkbox Voice Messenger application infringes five U.S. patents related to systems and methods for instant Voice over IP (VoIP) messaging.
• Technical Context: The technology at issue involves "push" voice messaging over packet-switched networks, combining the real-time nature of instant messaging with the expressive qualities of voice communication, particularly for mobile devices.
• Key Procedural History: The complaint does not mention any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history related to the patents-in-suit.

Case Timeline

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

U.S. Patent No. 7,535,890 - "SYSTEM AND METHOD FOR INSTANT VOIP MESSAGING"

• Patent Identification: U.S. Patent No. 7535890, titled "SYSTEM AND METHOD FOR INSTANT VOIP MESSAGING", issued May 19, 2009.

The Invention Explained

• Problem Addressed: The patent describes conventional voice messaging as cumbersome, requiring users to dial, navigate menus, and listen to greetings before recording a message. It contrasts this with instant text messaging, which is immediate but lacks vocal nuance (’890 Patent, col. 2:11-22). The invention aims to solve this by creating a system for instant voice messaging that avoids the delays of traditional voicemail while retaining the expressiveness of voice.
• The Patented Solution: The patent discloses a client-server architecture for a packet-switched network (e.g., the Internet) (’890 Patent, Fig. 2). A user on a client device selects one or more recipients, generates an instant voice message, and transmits it to a server. The server then delivers the message to the selected recipients, who can audibly play it back (’890 Patent, Abstract). A key aspect of the solution is the server's ability to temporarily store a message if a recipient is unavailable and deliver it once the recipient becomes available, mimicking the asynchronous nature of text-based instant messaging (’890 Patent, col. 8:25-30).
• Technical Importance: This approach enabled a "push-to-talk" or asynchronous voice messaging model on internet-connected devices, differing from traditional circuit-switched voicemail systems (Compl. ¶26).

Key Claims at a Glance

• The complaint asserts a wide range of claims, including independent claim 1 (Compl. ¶26).
• Independent Claim 1 requires:
  • An instant voice messaging system with a client and a server on a packet-switched network.
  • The client is used for selecting recipients, generating an instant voice message, and transmitting it.
  • The server receives the message and delivers it to recipients, who are enabled to audibly play it.
  • The server temporarily stores the message if a recipient is "unavailable" and delivers it once the recipient becomes "available."

U.S. Patent No. 8,199,747 - "SYSTEM AND METHOD FOR INSTANT VOIP MESSAGING"

• Patent Identification: U.S. Patent No. 8199747, titled "SYSTEM AND METHOD FOR INSTANT VOIP MESSAGING", issued June 12, 2012.

The Invention Explained

• Problem Addressed: As a continuation of the application leading to the ’890 Patent, the ’747 Patent addresses the same technical problem of creating an efficient and immediate voice messaging system for IP networks (’747 Patent, col. 1:12–col. 2:50).
• The Patented Solution: The patented solution is also a client-server system for instant voice messaging. The asserted claims of the ’747 Patent add a specific feature: the ability to attach one or more files to the audio file that constitutes the voice message (’747 Patent, Claim 1). The specification describes a "document handler" component within the client for managing such attachments (’747 Patent, col. 12:19-27).
• Technical Importance: This feature extended the functionality of instant voice messaging to include multimedia or document sharing, akin to features found in email and modern text-messaging platforms (Compl. ¶37).

Key Claims at a Glance

• The complaint asserts claims 1-3 and 12-14 (Compl. ¶37).
• Independent Claim 1 of the ’747 Patent is a method claim requiring:
  • Generating an instant voice message.
  • This generation step includes "recording the instant voice message in an audio file and attaching one or more files to the audio file."
  • Transmitting the instant voice message.
  • Receiving the message when a recipient is available.
  • Receiving a temporarily stored message when a recipient becomes available.

U.S. Patent No. 8,243,723 - "SYSTEM AND METHOD FOR INSTANT VOIP MESSAGING"

• Technology Synopsis: The technology described is an instant voice messaging system. The infringement allegations focus on claims requiring the system to monitor, record, and display the availability of recipient nodes, in addition to temporarily storing and delivering messages to recipients who are initially unavailable (Compl. ¶48).
• Asserted Claims: Claims 1-3 (Compl. ¶48).
• Accused Features: The Talkbox app and associated servers are accused of monitoring and displaying recipient availability and performing the store-and-forward delivery of voice messages (Compl. ¶48).

U.S. Patent No. 8,724,622 - "SYSTEM AND METHOD FOR INSTANT VOIP MESSAGING"

• Technology Synopsis: The technology relates to transmitting digitized audio files over a packet-switched network. A key element highlighted in the complaint is the display of "a list of one or more currently potential recipients" on the user's device before message transmission (Compl. ¶59).
• Asserted Claims: Claims 3, 4, 6-8, 10-19, 21-23, and 38-39 (Compl. ¶59).
• Accused Features: The Talkbox app is accused of transmitting digitized audio files and displaying a list of potential recipients to the user (Compl. ¶59).

U.S. Patent No. 8,995,433 - "SYSTEM AND METHOD FOR INSTANT VOIP MESSAGING"

• Technology Synopsis: This patent concerns an instant voice messaging system where messages are temporarily stored using a "unique identifier." The system also includes a "file manager" for storing, retrieving, and/or deleting messages based on user requests (Compl. ¶70).
• Asserted Claims: Claims 1-5, 7-12, 14-17, and 25-27 (Compl. ¶70).
• Accused Features: The Talkbox app's system is accused of using unique identifiers for temporary message storage and employing a file manager to handle user requests for storing, retrieving, or deleting messages (Compl. ¶70).

III. The Accused Instrumentality

Product Identification

The "Talkbox Voice Messenger app" and its associated back-end "GT servers" (Compl. ¶11, ¶26).

Functionality and Market Context

The complaint describes the Talkbox app as a mobile voice messenger that allows users to exchange voice messages instantly, with support for text input (Compl. ¶12). A core feature illustrated in screenshots is a "HOLD TO TALK" interface for recording messages (Compl. ¶18, ¶19, ¶20). The app is available on multiple mobile operating systems, including iPhone and Android (Compl. ¶13). It also syncs contacts from various sources to a cloud-based system (Compl. ¶17).

The complaint alleges the app and its servers work together to perform instant voice messaging over Wi-Fi and the Internet, delivering messages to recipients and providing notifications of new messages (Compl. ¶26). A screenshot shows a lock-screen notification stating, "You received a voice message from Jake Wilkes" (Compl. ¶22). Another screenshot illustrates a user testing whether a message can be delivered to a recipient who is currently offline, suggesting a store-and-forward capability (Compl. ¶21).

IV. Analysis of Infringement Allegations

’890 Patent Infringement Allegations

• Identified Points of Contention:
  • Technical Questions: The complaint alleges specific server-side functionality (temporary storage and delivery upon availability) based primarily on client-side user interface evidence and marketing statements (Compl. ¶21, ¶26). An evidentiary question will be whether discovery confirms that the "GT servers" in fact perform the specific store-and-forward function required by the claim.
  • Scope Questions: The patent describes both a "record mode" and a real-time "intercom mode" (’890 Patent, col. 11:22-54). A question of claim scope may arise as to whether the term "generating an instant voice message" covers the "hold-to-talk" functionality of the accused app, which could potentially operate by streaming buffered data rather than creating and sending a discrete, fully recorded file.

’747 Patent Infringement Allegations

• Identified Points of Contention:
  • Evidentiary Questions: The complaint's infringement theory for the ’747 patent hinges on the limitation of "attaching one or more files to the audio file." The complaint makes a conclusory allegation that this occurs (Compl. ¶37) but provides no specific factual support, such as screenshots or descriptions showing a file attachment feature in the Talkbox app. This raises the question of what evidence, if any, supports this critical element of the infringement allegation.

V. Key Claim Terms for Construction

For the ’890 Patent:

• The Term: "unavailable"
• Context and Importance: The infringement theory for the store-and-forward limitation depends on the server storing a message when a recipient is "unavailable." The definition of this term—whether it means a device is offline, an application is closed, or a user is simply not active—will be critical to determining if the accused system meets this limitation.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification states the server temporarily saves the message if a "recipient IVM client is not currently connected to the local IVM server" (’890 Patent, col. 8:25-30). This language may support an interpretation that "unavailable" means any state in which the recipient's client application cannot immediately receive a push delivery from the server.
  • Evidence for a Narrower Interpretation: Parties may argue that in the context of modern mobile operating systems, an application can receive push notifications even when not in the foreground. A narrower construction might require the device to be fully disconnected from the network, though the specification provides limited support for such a reading.

For the ’747 Patent:

• The Term: "attaching one or more files to the audio file"
• Context and Importance: This phrase is the key distinguishing feature of asserted claim 1 of the ’747 Patent. As the complaint lacks specific factual allegations on this point, the construction of this term will be central to whether infringement can be proven. Practitioners may focus on whether this requires a user to manually select a discrete document or if it can cover automatically included data like location tags or contact cards.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification describes a "document handler" that oversees "retrieving, sending, receiving and storing of one or more documents (or files) attached to instant voice messages" (’747 Patent, col. 12:19-24). The parenthetical "(or files)" could support a broad reading that encompasses various forms of data associated with the voice message.
  • Evidence for a Narrower Interpretation: The term "attaching...files" and the reference to "documents" could support a more limited meaning that aligns with the common user understanding of manually selecting and appending a distinct item, such as a photo or PDF, to a message.

VI. Other Allegations

• Indirect Infringement: For all asserted patents, Plaintiff alleges both induced and contributory infringement. The inducement allegations are based on Defendant providing the Talkbox app along with instructional materials (user guides, videos, etc.) that allegedly encourage infringing use (Compl. ¶28, ¶39, ¶50, ¶61, ¶72). The contributory infringement allegations assert the Talkbox app is a material, non-staple component of the patented invention, especially adapted for infringing use (Compl. ¶29-30, ¶40-41, ¶51-52, ¶62-63, ¶73-74).
• Willful Infringement: The complaint does not use the term "willful," but it establishes a basis for post-suit enhanced damages by pleading that Defendant will be on notice of the patents upon service of the complaint and that any continued infringement will be knowing and intentional (Compl. ¶31, ¶42, ¶53, ¶64, ¶75).

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

• A central issue will be one of evidentiary sufficiency: can Plaintiff produce technical evidence beyond user-facing materials to prove that Defendant’s server architecture performs the specific store-and-forward and availability-monitoring functions as required by the patent claims, or will a disconnect between the complaint's allegations and the accused system's actual operation emerge?
• A second core issue will be one of definitional scope and factual support, particularly for the ’747 Patent. Can the claim term "attaching one or more files" be construed to cover a feature present in the accused product, and has the complaint provided sufficient factual matter to make such an infringement allegation plausible at the pleading stage?