DCT
2:21-cv-00394
Parus Holdings Inc v. Bank Of America
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Parus Holdings, Inc. (Delaware)
- Defendant: Bank of America Corporation (Delaware)
- Plaintiff’s Counsel: McKool Smith, P.C.
- Case Identification: 2:21-cv-00394, E.D. Tex., 10/22/2021
- Venue Allegations: Plaintiff alleges venue is proper because Defendant transacts business, has committed acts of infringement, and maintains physical places of business in the Eastern District of Texas.
- Core Dispute: Plaintiff alleges that Defendant’s automated call centers using natural voice recognition infringe a patent related to voice-enabled systems for managing communications over a network.
- Technical Context: The technology concerns unified communication systems that allow users to interact with remote databases and services using speaker-independent, natural-language voice commands over a telephone network.
- Key Procedural History: The asserted patent expired in March 2018; Plaintiff seeks damages for infringement occurring within the six-year statutory period prior to the complaint's filing. The complaint also references arguments made by the inventor in a 2006 response to a USPTO Office Action to define the scope of certain technical terms.
Case Timeline
| Date | Event |
|---|---|
| 1997-03-03 | U.S. Patent No. 7,327,723 Priority Date |
| 2006-08-21 | Inventor's Response to Office Action referenced in complaint |
| 2008-02-05 | U.S. Patent No. 7,327,723 Issue Date |
| 2018-03-02 | U.S. Patent No. 7,327,723 Expiration Date |
| 2021-10-22 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,327,723 - Computer, Internet and Telecommunications Based Network
The Invention Explained
- Problem Addressed: At the time of the invention, information and communication channels were fragmented across numerous, isolated devices and platforms (e.g., phone systems, pagers, email, faxes), making it difficult and inefficient for users, particularly mobile professionals, to access and manage information from a single point (Compl. ¶19; ’971 Patent, col. 2:5-12).
- The Patented Solution: The patent describes a unified messaging service that provides a "single point of access to all communications" from standard devices like a telephone or computer (’971 Patent, col. 2:48-49). The system uses speaker-independent voice recognition, allowing a user to issue "intuitive voice command[s]" to access information, manage messages, and conduct transactions without being tied to a keyboard or navigating complex touch-tone menus (Compl. ¶20-21; ’971 Patent, col. 2:33-39). A key feature is the ability to recognize a "multitude of commands for each voice-enabled function," with the different commands being "synonymous with each other" (Compl. ¶32).
- Technical Importance: The invention sought to provide users with mobile access to information stored in distributed databases by using natural voice commands over a standard telephone connection, a significant shift from the then-dominant methods of computer-and-keyboard or touch-tone-based interaction (Compl. ¶22-23).
Key Claims at a Glance
- The complaint asserts claims 17 and 18, which are dependent on independent claim 1 (Compl. ¶42-43).
- Independent Claim 1 recites the core system, with its essential elements being:
- A computer.
- At least one set of stored commands, where each set includes a "plurality of stored commands" that are each an "alternative intuitive description" of a single, corresponding voice-enabled function.
- A voice server connected to the computer and a network, configured to compare natural voice commands from a user to the plurality of stored commands.
- A speaker-independent speech recognition device to receive the voice command, which is used by the voice server to select the single voice-enabled function, which the computer is then configured to execute.
- The complaint explicitly asserts dependent claims 17 and 18, which add limitations related to providing "a set of prompts audible to said user" and "a logic flow for transmitting said prompts" (Compl. ¶42-43; Relief Requested ¶a).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are Bank of America's call centers that utilize "automated phone systems and natural-voice speaker-independent speech recognition" (Compl. ¶40). The complaint specifically references the system accessible via the general Account Information phone number, also referred to as "Bank of America by Phone" (Compl. ¶42a, ¶42g).
Functionality and Market Context
- The accused system allows customers to call a toll-free number and interact with an automated system using natural voice commands to perform banking functions, such as obtaining an account balance or hearing recent transactions (Compl. ¶42a, ¶42c).
- The complaint alleges that the system is configured to understand multiple, different voice commands as corresponding to a single function (e.g., "balance information" and "Repeat balance" both for obtaining an account balance) and to respond with audible prompts that guide the user through a "logic flow" (Compl. ¶42c, ¶42g).
IV. Analysis of Infringement Allegations
The complaint reproduces a flowchart from the patent, Figure 4A, which illustrates the logic of the 'First Menu' a caller encounters, showing how the system processes initial voice commands or timeouts (Compl. p. 11). This figure visually supports the allegations related to the claimed "logic flow" for transmitting prompts to a user.
’723 Patent Infringement Allegations
| Claim Element (from Independent Claim 1, as incorporated into Claim 17) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a computer; | Bank of America's speech recognition system operated on a computer owned or controlled by Bank of America. | ¶42b | col. 8:6 |
| at least one set of stored commands... each said set including a plurality of stored commands each of said commands in said set corresponding to a single voice-enabled function for managing communications, each said command in said set being an alternative intuitive description of said single voice-enabled function; | The system allegedly includes sets of commands for single functions, such as the set for obtaining an account balance including the commands: "balance information," "Can you repeat the balance again?," and "Repeat balance." | ¶42c | col. 8:7-13 |
| a voice server operatively connected to said computer and to said network, said voice server configured to compare said natural voice commands to said plurality of stored commands; | Bank of America allegedly owned or controlled a voice server that was connected to the computer and network and was configured to compare a user's natural voice command to the plurality of stored commands. | ¶42d | col. 8:14-17 |
| a speaker-independent speech recognition device... configured to receive at least one natural voice command, said voice server being configured to compare said natural voice command to said plurality of stored commands to select said single voice-enabled function, and said computer being configured to execute said selected voice-enabled function... | Bank of America allegedly controlled a speaker-independent device that receives a voice command, compares it to the stored commands to select a function (e.g., obtaining an account balance), and directs a computer to execute that function. | ¶42e | col. 8:18-26 |
| [From Claim 17] a set of prompts audible to said user, and | The system allegedly stored and provided audible prompts to the user, such as prompting the user to say "activity" in response to a request to "hear transactions." | ¶42f | col. 10:1-2 |
| [From Claim 17] a logic flow for transmitting said prompts to said user in a pre-determined manner... | The system allegedly included a logic flow to transmit prompts, such as responding to a command with further audible prompts directed to the user's selection (e.g., about deposits, checks, etc.). | ¶42g | col. 10:3-9 |
Identified Points of Contention
- Technical Questions: A central question is whether Bank of America's modern natural language understanding (NLU) system operates in the manner claimed. The complaint's allegations regarding the internal architecture—specifically the use of discrete "sets of stored commands"—are made on "information and belief." Discovery will be needed to determine if the accused system functions by mapping command strings to functions as claimed, or if it uses a more fundamentally different, non-infringing technology (e.g., a probabilistic or neural network-based model).
- Scope Questions: The case raises the question of whether a patent with a 1997 priority date, describing a system with pre-defined command synonyms and rule-based logic flows, can be read to cover a modern, large-scale banking IVR system. The defense may argue that the accused technology is a significant evolution beyond, and qualitatively different from, what was contemplated and enabled by the patent.
V. Key Claim Terms for Construction
The Term: "alternative intuitive description"
- Context and Importance: This term is at the heart of the infringement allegation. The case may turn on whether the various phrases a user can speak to the accused system (e.g., "balance information," "Repeat balance") are considered "alternative intuitive descriptions" under the patent's claims, or if the accused NLU technology that processes them is fundamentally different from the claimed structure.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The complaint cites the prosecution history, where the inventor stated the system is configured to "understand and accept a multitude of commands for each voice-enabled function" so a user "does not have to utter one specific word or phrase" (Compl. ¶32). This may support a broad, functional definition focused on the user experience rather than the specific underlying software architecture.
- Evidence for a Narrower Interpretation: The patent specification provides specific examples of command sets, such as multiple phrases for making a telephone call (’971 Patent, col. 6:25-41). A party could argue that the term is limited to the disclosed embodiment of pre-defined, synonymous command lists, rather than a system that might dynamically or probabilistically interpret a wider range of unforeseen phrasing.
The Term: "logic flow"
- Context and Importance: Asserted claim 17 requires "a logic flow for transmitting said prompts." The parties will likely dispute whether the interactive, conversational nature of the accused call center constitutes the claimed "logic flow."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent describes the system as "dynamically" responding to requests with prompts governed by a logic flow that "reacted to and adjusted the prompts" (Compl. ¶23). This could support an interpretation covering any system that interactively guides a user with prompts based on their input.
- Evidence for a Narrower Interpretation: The patent includes numerous, detailed flowcharts (Figs. 4A-4R) that depict specific, structured, and deterministic processes. A party may argue that "logic flow" should be construed more narrowly to mean these state-machine-like diagrams, potentially distinguishing it from a more flexible, modern conversational AI. The inclusion of Figure 4A in the complaint highlights the importance of these diagrams to the patent's disclosure (Compl. p. 11).
VI. Other Allegations
- Indirect Infringement: The complaint makes a passing allegation of induced infringement (Compl. ¶8), but it does not plead a separate count for inducement or provide specific factual allegations detailing how Bank of America would have induced its customers to infringe (e.g., through user manuals or instructions).
- Willful Infringement: The complaint does not allege willful infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of technological equivalence: does Bank of America's modern, and likely AI-driven, voice-response system operate according to the specific architecture required by the '723 patent? The case may turn on whether the accused system's method for understanding natural language is equivalent to the patent's disclosure of mapping multiple pre-defined "alternative intuitive descriptions" to a single function.
- A second key question will be evidentiary: given that the complaint's allegations about the internal workings of the accused system are made on "information and belief," a central challenge for the plaintiff will be to obtain and present evidence from discovery that proves the accused system actually contains the "sets of stored commands" and "logic flow" structures as recited in the claims.