DCT
2:17-cv-00737
Uniloc USA Inc v. Huawei Tech Co Ltd
I. Executive Summary and Procedural Information
Parties & Counsel:
- Plaintiff: Uniloc USA, Inc. (Texas) and Uniloc Luxembourg, S.A. (Luxembourg)
- Defendant: Huawei Device USA, Inc. (Texas) and Huawei Device Co. Ltd. (China)
- Plaintiff’s Counsel: Prince Lobel Tye LLP; Nelson Bumgardner PC
Case Identification: 2:17-cv-00737, E.D. Tex., 11/09/2017
Venue Allegations: Venue is based on Defendant Huawei USA, Inc. having a regular and established principal place of business in Texas and both defendants conducting business, including manufacturing and selling the accused products, in the Eastern District of Texas.
Core Dispute: Plaintiff alleges that Defendant’s smartphones, smartwatches, and associated software infringe three patents related to human activity monitoring using inertial sensors.
Technical Context: The technology involves using accelerometers in portable devices to count steps and monitor human motion, a foundational feature for the consumer market of fitness trackers and smart devices.
Key Procedural History: While not mentioned in the complaint, subsequent inter partes review (IPR) proceedings were initiated against all three patents-in-suit shortly after this case was filed. These IPRs resulted in the cancellation of all claims asserted in this complaint. The cancellation of a patent’s claims is typically case-dispositive for infringement allegations based on those claims.
Case Timeline
| Date | Event |
|---|---|
| 2006-12-22 | Earliest Priority Date for ’508, ’902, and ’723 Patents |
| 2010-01-26 | U.S. Patent 7,653,508 Issues |
| 2011-02-01 | U.S. Patent 7,881,902 Issues |
| 2014-04-29 | U.S. Patent 8,712,723 Issues |
| 2017-01-01 | Approximate Earliest Launch Year of Accused Products (e.g., 2017 models) |
| 2017-11-09 | Complaint Filed |
| 2017-12-22 | IPR Filed Against ’508 Patent (IPR2018-00387) |
| 2017-12-22 | IPR Filed Against ’723 Patent (IPR2018-00389) |
| 2018-01-05 | IPR Filed Against ’902 Patent (IPR2018-00424) |
| 2022-01-24 | Asserted Claims of ’508 Patent Cancelled via IPR Certificate |
| 2022-01-25 | Asserted Claims of ’723 Patent Cancelled via IPR Certificate |
| 2022-02-01 | Asserted Claims of ’902 Patent Cancelled via IPR Certificate |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,653,508 - "HUMAN ACTIVITY MONITORING DEVICE"
Issued January 26, 2010 (’508 Patent)
The Invention Explained
- Problem Addressed: The patent describes that conventional step-counting devices using inertial sensors are often inaccurate because they require the user to position the device in a specific orientation, are confused by motion noise, and may fail to measure steps for individuals who walk at a slow pace (ʼ508 Patent, col. 1:19-34).
- The Patented Solution: The invention claims to solve this problem with a method that continuously determines the inertial sensor's orientation, assigns a "dominant axis" (typically aligned with gravity), and then counts periodic motions by monitoring accelerations relative to this dynamically updated axis. This approach is designed to make step counting accurate regardless of how the user carries the device (ʼ508 Patent, Abstract; col. 2:6-16).
- Technical Importance: This orientation-independent approach sought to improve the reliability and usability of pedometers and other activity monitors being integrated into portable consumer electronics (ʼ508 Patent, col. 2:27-34).
Key Claims at a Glance
- The complaint asserts independent method claims 1 and 6, and independent device claim 11 (Compl. ¶12).
- Independent Claim 1 (Method): Requires the steps of (1) continuously determining an orientation of the inertial sensor; (2) assigning a dominant axis; (3) updating the dominant axis as the orientation changes; and (4) counting periodic human motions by monitoring accelerations relative to the dominant axis (’508 Patent, col. 15:10-19).
- Independent Claim 6 (Method): Requires (1) running the device in a "non-active mode" where motions are buffered; (2) switching to an "active mode" after identifying a number of motions within "appropriate cadence windows"; and (3) counting motions during the active mode (’508 Patent, col. 15:37-48).
- Independent Claim 11 (Device): Requires (1) a "dominant axis logic" to continuously determine orientation, assign a dominant axis, and update it; and (2) a "counting logic" to count motions by monitoring accelerations relative to the dominant axis (’508 Patent, col. 16:10-17).
- The complaint reserves the right to assert other claims, including dependent claims 3, 7, 13, 15, 16, 19, and 20 (Compl. ¶12).
U.S. Patent No. 8,712,723 - "HUMAN ACTIVITY MONITORING DEVICE"
Issued April 29, 2014 (’723 Patent)
The Invention Explained
- Problem Addressed: This continuation patent addresses the same problem of inaccurate step counting in portable devices due to orientation dependence and motion noise (ʼ723 Patent, col. 1:26-44).
- The Patented Solution: The '723 Patent builds on the "dominant axis" concept by adding a temporal filtering mechanism. The invention describes using a "cadence window"—a time interval following a detected step—to qualify subsequent steps. This window is "continuously updated as an actual cadence changes," allowing the system to distinguish rhythmic activity like walking from other motions based on both spatial orientation and timing ('723 Patent, Abstract; col. 4:22-26).
- Technical Importance: This refinement aimed to further improve accuracy by adding a layer of intelligent temporal filtering, making the device better at rejecting false positives from non-rhythmic movements ('723 Patent, col. 4:55-59).
Key Claims at a Glance
- The complaint asserts independent method claims 1 and 5, independent device claim 10, and independent non-transitory medium claim 14 (Compl. ¶23).
- Independent Claim 1 (Method): Requires (1) assigning and updating a dominant axis with respect to gravity; (2) counting motions that meet criteria within a cadence window; and (3) updating the cadence window as actual cadence changes (’723 Patent, col. 15:13-24).
- Independent Claim 5 (Method): Requires buffering motions, identifying a number of motions within a cadence window, counting them, and updating the cadence window based on the motion cycle's cadence (’723 Patent, col. 15:35-47).
- Independent Claim 10 (Device): Requires a dominant axis logic, a counting logic that uses a cadence window, and a cadence logic to update that window (’723 Patent, col. 16:1-8).
- The complaint reserves the right to assert other claims, including dependent claims 6, 12, 16, and 17 (Compl. ¶23).
U.S. Patent No. 7,881,902 - "HUMAN ACTIVITY MONITORING DEVICE"
Issued February 1, 2011 (’902 Patent)
- Technology Synopsis: This patent focuses on improving power efficiency in activity monitoring devices. It describes a method where the device enters a "sleep mode" when it detects motion that does not have a "motion signature" of an activity it is configured to monitor (e.g., non-walking movements). The device exits this power-saving mode when relevant activity is detected, balancing continuous monitoring capability with battery life preservation (Compl. ¶35; ’902 Patent, col. 15:8-17).
- Asserted Claims: The complaint asserts claims 1-4, with claim 1 being independent (Compl. ¶34).
- Accused Features: The complaint alleges that the accused devices infringe by detecting motion and entering a sleep mode when that motion does not correspond to a user activity the device is configured to monitor (Compl. ¶35).
III. The Accused Instrumentality
Product Identification
The complaint names a wide range of Huawei products, including smartphones (Nova series, Y series, P series, Mate series), smartwatches (Huawei Watch, Huawei Watch 2, Huawei Fit), and associated software applications such as "Huawei Health" (Compl. ¶11, ¶22, ¶33).
Functionality and Market Context
The complaint alleges these devices are equipped with motion sensors like pedometers, gyroscopes, and accelerometers, which are used with associated software to perform functions such as counting steps and monitoring other periodic human motions (Compl. ¶11, ¶13). The allegations describe a system that provides a calculation of distance traveled by detecting and analyzing motion (Compl. ¶13, ¶24). The breadth of products listed suggests they represent a significant portion of Defendant's consumer electronics portfolio (Compl. ¶11). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
’508 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| continuously determining an orientation of the inertial sensor; | The complaint alleges the Accused Infringing Devices use components like pedometers, gyroscopes, and accelerometers with associated software to detect motion. | ¶13 | col. 15:12-13 |
| assigning a dominant axis; | The complaint alleges the devices provide a calculation of distance by monitoring accelerations relative to the "dominant axis." | ¶13 | col. 15:14 |
| updating the dominant axis as the orientation of the inertial sensor changes; and | The complaint does not provide specific facts mapping accused functionality to this element, but generally alleges infringement. | ¶12-13 | col. 15:15-17 |
| counting periodic human motions by monitoring accelerations relative to the dominant axis. | The complaint alleges the devices perform the function of "counting steps or other periodic human motions." | ¶13 | col. 15:18-19 |
’723 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| assigning a dominant axis with respect to gravity based on an orientation of the inertial sensor; | The complaint alleges the devices use sensors and software to detect motion for calculating distance traveled. | ¶24 | col. 15:14-16 |
| detecting a change in the orientation of the inertial sensor and updating the dominant axis based on the change; and | The complaint does not provide specific facts mapping accused functionality to this element, but generally alleges infringement. | ¶23-24 | col. 15:17-18 |
| counting periodic human motions...when accelerations showing a motion cycle that meets motion criteria is detected within a cadence window; and | The complaint alleges the devices yield a result of "providing a calculation of the distance traveled when accelerations showing a motion cycle that meets motion criteria is detected." | ¶24 | col. 15:19-22 |
| updating the cadence window as actual cadence changes. | The complaint does not provide specific facts mapping accused functionality to this element, but generally alleges infringement. | ¶23-24 | col. 15:23-24 |
Identified Points of Contention
- Evidentiary Questions: The complaint's infringement allegations are conclusory and lack specific technical details about how the accused devices operate. A central issue for the court would be to determine, through discovery, the actual algorithms used by Huawei. The analysis will depend entirely on whether evidence shows those algorithms perform the functions of assigning and updating a "dominant axis" and using an adaptive "cadence window."
- Scope Questions: Key disputes in claim construction and infringement would likely concern the precise meaning of "dominant axis" and "cadence window." It raises the question of whether Huawei's method for orientation-independent tracking, if one exists, falls within the patent's specific definition of a "dominant axis," or whether its method for filtering valid steps constitutes an updating "cadence window."
V. Key Claim Terms for Construction
The Term: "dominant axis"
- Context and Importance: This term is the central technical concept for the '508, '723, and '902 patents. The infringement case hinges on whether the accused devices' method for achieving orientation-independent step counting can be shown to meet the specific meaning of this term. Practitioners may focus on this term because it is the core novelty asserted by the patentee.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification suggests the term is not limited to a physical sensor axis, stating it may be the axis "most influenced by gravity" or even a "virtual axis" that is a component of a "virtual coordinate system" (’508 Patent, col. 6:15-17, 6:29-31). This may support a construction covering a variety of algorithmic approaches for establishing a gravitational reference frame.
- Evidence for a Narrower Interpretation: The patent describes determining the dominant axis by creating "rolling averages of accelerations" (’508 Patent, col. 5:40-45). A defendant could argue the term should be limited to this more specific implementation disclosed in the preferred embodiments.
The Term: "cadence window"
- Context and Importance: This term is critical to the infringement allegations for the '723 Patent, which adds a layer of temporal filtering. The dispute will likely turn on whether the accused devices' logic for validating steps meets the definition of this term.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent describes the term generally as "a window of time since a last step was counted that is looked at to detect a new step" (’723 Patent, col. 3:64-66). This language could support a broad interpretation covering any time-based filter used to qualify a step.
- Evidence for a Narrower Interpretation: The specification also describes a "dynamic cadence window that continuously updates as a user's cadence changes" based on a "rolling average of the stepping periods" (’723 Patent, col. 4:23-26, 5:55-61). This may support a narrower construction requiring a specific, adaptive timing mechanism.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement, stating that Huawei intentionally instructs its customers to infringe by providing materials such as "training videos, demonstrations, brochures, installation and/or user guides" on its corporate and consumer websites (Compl. ¶14, ¶25, ¶36). It also alleges contributory infringement, asserting that Huawei provides a material component of the invention (the accused devices) that is not a staple article of commerce and is especially adapted for infringement (Compl. ¶15, ¶26, ¶37).
- Willful Infringement: The complaint alleges that Huawei will be on notice of the patents "since, at the latest, the service of this complaint" and that its continued infringing actions are intentional, which provides a basis for post-suit willful infringement (Compl. ¶16, ¶27, ¶38). No allegations of pre-suit knowledge are made.
VII. Analyst’s Conclusion: Key Questions for the Case
- Mootness: The primary question governing this litigation is one of viability: given that all asserted claims of the '508, '723, and '902 patents were cancelled in inter partes review proceedings that concluded after the complaint was filed, does a legally sufficient cause of action for infringement remain?
- Technical Equivalence: Should the case proceed, a key evidentiary question will be one of algorithmic mapping: does the specific software logic within Huawei's accused devices for tracking motion perform the claimed functions of assigning and dynamically updating a "dominant axis" and employing an adaptive "cadence window," or is there a fundamental mismatch in technical operation?
- Definitional Scope: A central legal issue would be one of claim construction: can the term "dominant axis," which is rooted in the patent's specific disclosure of using rolling averages of acceleration, be construed broadly enough to read on the potentially different methods of orientation-agnostic tracking implemented in the accused products?