DCT

2:18-cv-00290

Uniloc USA Inc v. Amazon.com Inc

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:18-cv-00290, E.D. Tex., 07/13/2018
  • Venue Allegations: Venue is alleged based on Amazon's transaction of business in the district, commission of infringing acts in the district, and maintenance of a regular and established place of business in the district, including distribution facilities and data centers.
  • Core Dispute: Plaintiff alleges that Defendant’s Alexa Voice Service and associated devices infringe a patent related to instant voice messaging over a packet-switched network.
  • Technical Context: The technology concerns Voice over IP (VoIP) systems that enable users to send recorded voice messages instantly, akin to text-based instant messaging, rather than using traditional voicemail systems.
  • Key Procedural History: Post-filing administrative proceedings at the U.S. Patent and Trademark Office appear central to this case. An Inter Partes Review (IPR) certificate issued in March 2023 and an Ex Parte Reexamination certificate issued in March 2024 indicate that Claim 1—the primary claim asserted in the complaint—has been cancelled, along with nearly all other claims of the patent. The complaint was filed in 2018, before these cancellations. The survival of the lawsuit may depend on whether the Plaintiff can proceed on any of the very few remaining claims, which were not explicitly asserted in the original complaint.

Case Timeline

Date Event
2003-12-18 U.S. Patent No. 8,724,622 Priority Date
2014-05-13 U.S. Patent No. 8,724,622 Issue Date
2018-07-13 Complaint Filing Date
2023-03-29 Inter Partes Review Certificate (K1) issues, cancelling claims 3-8, 10-35, 38, and 39
2024-03-18 Ex Parte Reexamination Certificate (C1) issues, cancelling claims 1, 2, and 9

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

U.S. Patent No. 8,724,622 - System and Method for Instant VoIP Messaging (Issued May 13, 2014)

The Invention Explained

  • Problem Addressed: The patent identifies the inefficiency of traditional voice messaging, which involves dialing a number, waiting for a connection, and navigating menus, a process that lacks the immediacy of modern instant text messaging ('622 Patent, col. 2:26-34). The patent notes a need for a system that provides "instant VoIP messaging over an IP network" to combine the speed of instant messaging with voice communication ('622 Patent, col. 2:48-53).
  • The Patented Solution: The invention proposes a client-server system for sending voice messages over a packet-switched network like the Internet ('622 Patent, Abstract). A user on a client device can see a list of other users who are currently "online," select one or more recipients, record a voice message, and send it immediately ('622 Patent, col. 2:35-48). The server receives the digitized audio message and delivers it to the selected, available recipients for playback, temporarily storing the message if a recipient is unavailable ('622 Patent, col. 8:31-41).
  • Technical Importance: The technology sought to bridge the gap between asynchronous, cumbersome voicemail and synchronous, real-time voice calls by creating a new "push-to-talk" style messaging paradigm for IP networks.

Key Claims at a Glance

  • The complaint asserts "at least Claims 1" of the ’622 Patent (Compl. ¶17).
  • Independent Claim 1, a system claim, requires:
    • A network interface connected to a packet-switched network.
    • A messaging system for communicating with a plurality of instant voice message client systems.
    • A communication platform system for maintaining connection information for each client, indicating "whether there is a current connection" to each.
    • A user database storing user records, where each record includes a user name, a password, and a "list of other users selected by a user."
  • The complaint reserves the right to assert additional claims (Compl. ¶17).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are collectively referred to as the "Alexa Voice Service," which includes the "Alexa Calling and Messaging" client and is associated with devices such as the "Alexa mobile app, Echo, Echo Dot, and Echo Show" (Compl. ¶16).

Functionality and Market Context

The complaint alleges that the accused system allows for the sending and listening of voice messages between users of Alexa-enabled devices (Compl. ¶16). These communications are managed via Amazon's Amazon Web Services (AWS) platform over Wi-Fi and the Internet (Compl. ¶16, ¶17). The allegations focus on the system's function as a "voice and mobile messaging system" where digitized audio files are transmitted between recipients (Compl. ¶16, ¶17).

No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

’622 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A system comprising: a network interface connected to a packet-switched network; The accused Alexa system performs messaging "over Wi-Fi and the Internet," which are packet-switched networks. ¶17 col. 1:40-44
a messaging system communicating with a plurality of instant voice message client systems via the network interface; The "Alexa Voice Service" is identified as a "voice and mobile messaging system" that communicates with client devices like the Alexa app, Echo, and Echo Dot. ¶16 col. 12:7-11
a communication platform system maintaining connection information for each of the plurality of instant voice message client systems indicating whether there is a current connection...; The complaint alleges that a "list of one or more currently potential recipients is displayed on the device," suggesting the system has information about recipient availability. ¶17 col. 23:1-6
and a user database storing user records identifying users of the plurality of instant voice message client systems, wherein each of the user records includes a user name, a password and a list of other users selected by a user. The system's ability to transmit messages "between a plurality of recipients" implies the existence of user records and lists of contacts, though the complaint does not specify the architecture of the user database. ¶17 col. 23:7-12

Identified Points of Contention

  • Procedural Question: The primary point of contention is procedural: given that post-grant proceedings have resulted in the cancellation of Claim 1, it raises the question of whether Plaintiff has a viable claim for infringement to pursue in court.
  • Scope Questions: Assuming a claim survived, a key dispute would concern the scope of "maintaining connection information... indicating whether there is a current connection." The court would need to determine if this requires a specific, real-time "online/offline" status indicator (as described in the patent's background) or if it can be read more broadly to cover any system that determines recipient availability before sending a message.
  • Technical Questions: A factual question would be whether Amazon's architecture includes a "user database" that stores a user-selected "list of other users" in the manner claimed. The analysis may explore whether the Alexa system's use of a device's general contact list meets this limitation, or if the claim requires a dedicated contact list created and stored within the messaging system itself.

V. Key Claim Terms for Construction

  • The Term: "maintaining connection information ... indicating whether there is a current connection" (Claim 1)

    • Context and Importance: The definition of this term is critical for determining whether the accused Alexa system, which may not display a traditional "buddy list" with online/offline status, falls within the claim's scope. Practitioners may focus on this term because the infringement case depends on whether Alexa's method for handling user availability is equivalent to the patent's specific disclosure of tracking "online" users.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The body of Claim 1 itself does not specify how the connection information must be maintained or displayed, only that it is maintained. This could support an argument that any method of determining availability (e.g., checking if a device is registered and reachable) meets the limitation.
      • Evidence for a Narrower Interpretation: The specification repeatedly frames the invention in the context of traditional instant messaging, describing a server that presents the user with "a list of persons who are currently 'online' and ready to receive text messages" ('622 Patent, col. 2:39-42). This context could support a narrower construction requiring real-time presence detection and display.

  • The Term: "a list of other users selected by a user" (Claim 1)

    • Context and Importance: This term's construction is central to whether the accused system's contact management infringes. The dispute may turn on whether pulling contacts from a phone's address book, as many modern apps do, constitutes a "list... selected by a user" and stored within the claimed "user database."
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The phrase "selected by a user" could be interpreted broadly to include a user's affirmative act of granting an application access to their existing contacts, thereby "selecting" them for use in the app.
      • Evidence for a Narrower Interpretation: The claim structure places the "list of other users" as an element within the "user record" stored in the "user database" of the messaging system itself ('622 Patent, col. 23:7-12). This may support an argument that the list must be created and maintained within the accused service's own database, not merely accessed from an external source like a phone's operating system.

VI. Other Allegations

Indirect Infringement

The complaint alleges induced infringement, asserting that Amazon "intentionally instructs its customers to infringe" by providing "training videos, demonstrations, brochures, installation and/or user guides" (Compl. ¶19). It also pleads contributory infringement, alleging the Alexa app is a material component "especially made or especially adapted for use in infringing" and is not a staple article of commerce (Compl. ¶20, ¶21).

Willful Infringement

The complaint alleges willfulness based on post-suit knowledge, stating that "Amazon will have been on notice of the ’622 Patent since, at the latest, the service of this complaint" (Compl. ¶22).

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

  • A dispositive threshold question will be one of case viability: Following the cancellation of the asserted Claim 1 (and most other claims) in post-grant administrative proceedings, does Plaintiff possess a valid and surviving legal basis to continue its infringement action against Amazon?
  • A core issue of claim scope (had the asserted claim survived) would be: Can the limitation "maintaining connection information indicating... a current connection," which is rooted in the patent's description of online/offline instant messaging, be construed to cover the more generalized availability and contact management functions of the modern Alexa voice-assistant ecosystem?
  • A key evidentiary question for infringement would be one of architectural mapping: Does the accused Alexa Voice Service contain the specific, distinct components required by Claim 1—particularly a "user database" storing a user-created "list of other users"—or is its functionality achieved through a different architecture that falls outside the literal bounds of the claim?