DCT
2:18-cv-00475
Dale Progress Ltd v. Toyota Motor Sales USA Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Dale Progress Ltd. (Republic of Korea)
- Defendant: Toyota Motor Sales, U.S.A., Inc. (California)
- Plaintiff’s Counsel: Hansley Law Firm, PLLC
- Case Identification: 2:18-cv-00475, E.D. Tex., 11/29/2018
- Venue Allegations: Venue is alleged to be proper based on Defendant having a regular and established business presence in the district, specifically its headquarters in Plano, Texas.
- Core Dispute: Plaintiff alleges that Defendant’s vehicles equipped with MirrorLink functionality infringe patents related to remote resource access interface technology, which facilitates the integration of portable devices with external displays and controls.
- Technical Context: The technology at issue involves connecting portable electronics, such as smartphones, to vehicle infotainment systems to mirror the device's display and enable control through the vehicle's own interface.
- Key Procedural History: The filing is a Second Amended Complaint, indicating that at least two prior versions of the complaint have been filed in this action.
Case Timeline
| Date | Event |
|---|---|
| 2008-02-20 | Priority Date for ’461 and ’504 Patents |
| 2012-11-27 | U.S. Patent No. 8,320,461 Issued |
| 2017-06-20 | U.S. Patent No. 9,686,504 Issued |
| 2018-11-29 | Second Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,686,504 - “Remote Resource Access Interface Apparatus,” Issued June 20, 2017
The Invention Explained
- Problem Addressed: The patent's background describes the inconvenience resulting from the shrinking size of portable devices, which leads to smaller display screens and keypads, as well as the "waste of resources" from redundant input/output (I/O) modules across multiple personal devices ('504 Patent, col. 1:24-34).
- The Patented Solution: The invention is an external interface apparatus that connects to a portable device. This apparatus is designed to display the portable device's video on its own, typically larger, screen and receive user inputs through its own I/O components, thereby improving usability ('504 Patent, col. 1:40-49). A central feature is the system's ability to manage interactions between the two devices, which may have different screen specifications and input methods, by communicating capability information and mapping inputs accordingly ('504 Patent, Fig. 1). This patent specifically focuses on an interface with a "touch input detection unit" ('504 Patent, col. 8:8-11).
- Technical Importance: This technology provides a framework for integrating the functionality of a powerful portable device (like a smartphone) with a more user-friendly external system (like a vehicle's dashboard screen), a concept that became central to the connected-car market ('504 Patent, col. 4:30-37).
Key Claims at a Glance
- The complaint asserts dependent Claim 2.
- The essential elements of Claim 2 include:
- A "touch input detection unit" to detect touch input and generate touch position information.
- A "communication unit" to exchange information with a portable device, including receiving "supportable key information" and video, and transmitting "input key information."
- A "video output unit" with a display screen of a "different" specification than the portable device, which displays "adjusted video information."
- A "key advisor unit" that outputs the supportable key information, receives touch position information from the touch input unit, and maps the touch position to key values of the portable device, where the video is adjusted based on screen resolution information. (Compl. ¶11).
U.S. Patent No. 8,320,461 - “Remote Resource Access Interface Apparatus,” Issued November 27, 2012
The Invention Explained
- Problem Addressed: The ’461 Patent addresses the same problem as its continuation, the ’504 Patent: the usability challenges of small portable devices and the inefficiency of redundant hardware ('461 Patent, col. 1:11-34).
- The Patented Solution: The solution is also a remote interface apparatus that connects to a portable device. The apparatus initiates a connection by sending a request, and in response, receives the portable device's capabilities, such as supported keys and screen resolutions. This "handshake" allows the interface to properly display video and map its own inputs to control the portable device ('461 Patent, Abstract; Fig. 3). Unlike the ’504 patent, this patent's claims center on a "key input unit" rather than a touch-based system ('461 Patent, col. 6:31-33).
- Technical Importance: The invention provides a standardized method for a "dumb" terminal to intelligently interface with and control a "smart" portable device, a foundational concept for systems that leverage a user's phone for in-vehicle applications like navigation and media playback ('461 Patent, col. 2:48-51).
Key Claims at a Glance
- The complaint asserts independent Claim 9.
- The essential elements of Claim 9 include:
- A "key input unit" configured to generate input key values.
- A "communication unit" that transmits a connection request, receives a response with screen resolution and "supportable key information," and subsequently exchanges input key and video information.
- A "video output unit" with a display screen "larger than the portable device."
- A "key advisor unit" that extracts the supportable key information, displays the portable device's keys on its screen (if in a "key configuration mode"), receives corresponding key inputs, and maps the input key value to a key value on the portable device. (Compl. ¶16).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are Toyota RAV4 and C-HR vehicles that are equipped with "MirrorLink Functionality" in their infotainment head units (Compl. ¶12, 17).
Functionality and Market Context
The complaint alleges that the MirrorLink feature allows a vehicle's head unit to connect to a user's smartphone, display a version of the smartphone's screen on the larger in-dash display, and accept user input via the head unit's touchscreen to control the smartphone (Compl. ¶13, p. 7). The complaint supports these allegations by referencing technical specifications for the MirrorLink standard, including diagrams that depict communication between a "Consumer Electronics Device" (the smartphone) and an "Automotive Head Unit" (the accused interface). A diagram from a MirrorLink technical presentation shows a "Head Unit" as a "VNC Client" communicating with a "VNC Server" on a mobile device to enable display and control functions (Compl. ¶13, p. 7, "Figure 1: MirrorLink VNC Setup"). The complaint does not contain specific allegations regarding the market share or commercial success of the accused vehicles or the MirrorLink feature.
IV. Analysis of Infringement Allegations
’504 Patent Infringement Allegations
| Claim Element (from Independent Claim 2) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a touch input detection unit configured to detect touch input on a display screen and to generate touch position information... | The automotive head unit includes a touch screen that detects single and multi-touch events, which the MirrorLink standard defines as "pointer events" and "touch events." | ¶13 (p. 6) | col. 4:26-30 |
| a communication unit configured to receive supportable key information from a compatible portable device...transmit input key information...and to receive video information... | The head unit communicates with a smartphone using protocols like USB or Wi-Fi to exchange event configuration messages (containing key information) and display configuration messages (containing video and resolution information). A diagram shows the various connectivity protocols available in the MirrorLink architecture. | ¶13 (p. 8-10) | col. 4:46-65 |
| a video output unit configured to display adjusted video information...having a display screen having a screen specification different from a screen specification of the portable device... | The head unit displays video from the smartphone on its screen, which has a different resolution. The system allegedly scales the video based on framebuffer resolution information exchanged between the devices. A graphic illustrates a phone's navigation screen mirrored on a car's dashboard display. | ¶13 (p. 11-12) | col. 4:18-25 |
| a key advisor unit configured to...receive the touch position information...and the touch position information is mapped to one of key values indicated by the supportable key information... | A unit in the head unit allegedly receives touch coordinates and maps them to key events. The complaint cites a MirrorLink specification for a "PointerEvent" message that transmits x-y position and button-mask data to the portable device. | ¶13 (p. 13-14) | col. 8:31-40 |
- Identified Points of Contention:
- Technical Question: The claim requires mapping a "touch position" to "key values." The complaint alleges this is performed via "PointerEvent" messages. A central question will be whether the evidence shows that the accused system performs the specific mapping logic as claimed, or if it simply passes raw coordinate data to the portable device, which then interprets the touch on its own.
- Scope Question: The allegations rely heavily on the public MirrorLink standard. A potential point of dispute is whether Toyota's specific implementation of MirrorLink in the accused vehicles practices every element of the claim, or if it deviates from the standard in a way that is material to the infringement analysis.
’461 Patent Infringement Allegations
| Claim Element (from Independent Claim 9) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a key input unit configured to generate input key values; | The complaint alleges that the head unit's touch screen, which supports "Touch Events" and "Key Events," serves as the key input unit. A provided graphic illustrates "Single/Multi-touch event" and "Key Events" as inputs. | ¶18 (p. 19) | col. 6:31-33 |
| a communication unit configured to transmit a connection establishment request message...and...to receive a connection establishment response message including screen resolution information and supportable key information... | The head unit is alleged to communicate with a smartphone to establish a connection and exchange configuration messages that include information on supported keys and display resolution, consistent with the MirrorLink VNC setup. | ¶18 (p. 20-21) | col. 6:34-46 |
| a video output unit configured to display the video information...having a display screen larger than the portable device... | The head unit display screen is larger than a smartphone screen and displays video from the phone, which is adjusted for resolution based on information exchanged between the devices. | ¶18 (p. 22-23) | col. 6:47-52 |
| a key advisor unit...displays on a display screen...keys of the portable device and is configured to receive corresponding keys through the key input unit...and wherein key values...match key values of the portable device... | A unit in the head unit is alleged to manage the display of and input for on-screen keys. The complaint alleges that event configuration messages are used to match touch position information from the head unit to the key values of the portable device. A photo shows a user touching a head unit, with the corresponding portable device screen visible. | ¶18 (p. 25) | col. 6:55-66 |
- Identified Points of Contention:
- Scope Question: A critical issue is whether a "key input unit" can be interpreted to cover a touch screen. The patent family includes the ’504 patent, which explicitly claims a "touch input detection unit". This may suggest that the patentee considered these to be distinct concepts, potentially limiting the scope of "key input unit" in the ’461 patent to non-touch or physical key systems.
- Technical Question: The claim requires the "key advisor unit" to display "keys of the portable device" and receive "corresponding keys." The complaint's evidence primarily concerns the transmission of touch coordinates. It may be disputed whether transmitting a touch location is equivalent to receiving a "corresponding key" as required by the claim's specific matching and mapping language.
V. Key Claim Terms for Construction
The Term: "key advisor unit" (in ’504 Claim 2 and ’461 Claim 9)
- Context and Importance: This term appears to describe the core processing module of the invention, responsible for the intelligent coordination between the interface and the portable device. Its construction will likely dictate whether the high-level architecture of the accused MirrorLink system meets the specific functional requirements of the claims.
- Evidence for a Broader Interpretation: The specification describes the unit's function as "extracting supportable key information" and "output[ting]" it to the video unit ('461 Patent, col. 2:63-65). This functional language could support a construction covering any software component that performs these roles, regardless of its specific implementation.
- Evidence for a Narrower Interpretation: The specification also describes the "key advisor unit" as displaying keys "if a key configuration mode is activated" ('461 Patent, col. 6:57-59). This could support a narrower construction requiring a distinct, user-activated mode for configuring keys, which may or may not exist in the accused system.
The Term: "key input unit" (in ’461 Claim 9)
- Context and Importance: The infringement reading for the ’461 patent appears to depend on this term covering the accused touchscreen interface. Practitioners may focus on this term because the patent family distinguishes between a "key input unit" and a "touch input detection unit" (claimed in the ’504 patent).
- Evidence for a Broader Interpretation: A party could argue that a virtual button on a touchscreen is a "key" and that touching it is a "key input." The specification mentions that the I/O device can be a "keypad-type device" ('461 Patent, col. 2:50-51), which might be argued to encompass virtual keypads.
- Evidence for a Narrower Interpretation: The figures in the patent depict embodiments with physical keys, such as an alphanumeric keyboard (Fig. 2b, element 272) and directional buttons (Fig. 2c, elements 282, 283). The existence of the separate ’504 patent with its explicit "touch input detection unit" claim provides intrinsic evidence that the patentee may have intended the terms to be mutually exclusive.
VI. Other Allegations
- Indirect Infringement: The complaint states it is an action for violation of 35 U.S.C. § 271(b) and the prayer for relief requests an injunction against inducement (Compl. ¶1; Prayer ¶B). However, the body of the complaint does not appear to set forth specific factual allegations to support a claim of induced infringement, such as knowledge of the patents combined with specific acts of encouragement directed at third parties.
- Willful Infringement: The complaint alleges that any infringement found should be held willful "from the time that Defendant became aware of the infringing nature of their actions, which is the time of filing of Plaintiff's Original Complaint at the latest" (Compl. Prayer ¶D). This is a claim for post-suit willfulness.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim scope and differentiation: can the term "key input unit" in the ’461 patent be construed to cover the accused touchscreen interface, particularly when the co-pending ’504 patent from the same family explicitly recites a "touch input detection unit"? The resolution of this question may be dispositive for the ’461 patent.
- A key evidentiary question will be one of implementation versus standard: does the accused MirrorLink functionality in Toyota's vehicles perform the specific, multi-step process of extracting, displaying, receiving, and mapping inputs as required by the "key advisor unit" limitations, or does the complaint's reliance on the general MirrorLink standard fail to capture material differences in Toyota's actual product?