DCT
2:21-cv-00396
Parus Holdings Inc v. FMR LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Parus Holdings, Inc. (Delaware / Illinois)
- Defendant: FMR LLC d/b/a Fidelity Investments (Delaware / Massachusetts)
- Plaintiff’s Counsel: McKool Smith, P.C.
- Case Identification: 2:21-cv-00396, E.D. Tex., 10/22/2021
- Venue Allegations: Venue is based on Defendant allegedly transacting business, committing acts of infringement, and maintaining a physical place of business within the Eastern District of Texas.
- Core Dispute: Plaintiff alleges that Defendant’s automated telephone investment service infringes a patent related to voice-enabled systems for managing communications using natural language commands.
- Technical Context: The technology concerns unified communications systems that use speaker-independent voice recognition to allow users to access and manage information over a telephone network, intended to be more intuitive than traditional touch-tone menus.
- Key Procedural History: The asserted patent expired in March 2018; this suit seeks damages for infringement occurring within the six-year statutory period prior to the complaint's filing. The complaint also references prosecution history, specifically a 2006 Office Action response, to support its interpretation of claim terms.
Case Timeline
| Date | Event |
|---|---|
| 1997-03-03 | ’723 Patent Priority Date (Provisional Application) |
| 2008-02-05 | ’723 Patent Issue Date |
| 2015-09-07 | Date of Archived Webpage for Accused Product Functionality |
| 2018-03-02 | ’723 Patent 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 in the mid-1990s, communication technologies were fragmented, forcing users, particularly mobile professionals, to navigate "a host of phone systems, operating system platforms, databases and networks" to access information (Compl. ¶18; ’723 Patent, col. 2:6-9). This process was complex, time-consuming, and often required users to be at a physical computer or use rigid, non-intuitive telephone menus (Compl. ¶¶18, 22).
- The Patented Solution: The invention is a "unified messaging service" that provides a "single point of access to all communications" from any standard device, such as a telephone or computer (’723 Patent, col. 2:48-51). It uses speaker-independent, natural voice recognition to understand user commands, which solves the problem of needing to memorize specific phrases or navigate complex touch-tone trees (Compl. ¶20; ’723 Patent, col. 5:6-10). A core concept is the mapping of multiple, different "intuitive" voice commands to a single underlying function, making the system more flexible and user-friendly (Compl. ¶25).
- Technical Importance: The technology represented an effort to create a more natural, human-centric interface for remote information access, moving beyond the limitations of contemporaneous IVR systems (Compl. ¶¶22, 24).
Key Claims at a Glance
- The complaint asserts independent claims 1 (via dependent claim 17) and 42.
- Independent Claim 1 (as incorporated into asserted claim 17) requires, in essence:
- A computer.
- At least one set of stored commands, where each set includes a plurality of commands that correspond to a single voice-enabled function.
- Each command in the set is an "alternative intuitive description" of that single function.
- A speaker-independent speech recognition device and a voice server that compare a user's natural voice command to the plurality of stored commands to select the corresponding function for execution.
- Independent Claim 42 requires a similar system but adds a specific limitation that the voice command comprises:
- A "voice-enabled function" and a "tag."
- The "tag" is "associated with contact information stored in a database."
- The complaint reserves the right to assert various dependent claims, including 18, 31-33, 39, and 43-44 (Compl. ¶47).
III. The Accused Instrumentality
Product Identification
- Defendant’s “Fidelity's Automated Service Telephone” (“FAST”) system (Compl. ¶45).
Functionality and Market Context
- The FAST system is an automated call center service that allows Fidelity customers to manage their investments by phone (Compl. ¶43). It provides access to account information, market news, stock quotes, and trade execution (Compl. p. 17). The system is alleged to use "natural-voice speaker-independent speech recognition" and allows users to interact via "spoken commands or your telephone's keypad" (Compl. ¶43; Compl. p. 17). A screenshot from a "Frequently asked questions" page for the FAST system states, "The new system has speech recognition," and confirms that users can speak commands without waiting for a prompt to finish (Compl. p. 18).
IV. Analysis of Infringement Allegations
’723 Patent Infringement Allegations (Claim 17)
| Claim Element (from Independent Claim 1 and Dependent Claim 17) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a computer; | The FAST system operated on a computer owned and/or controlled by Fidelity. | ¶45b | col. 9:2 |
| at least one set of stored commands operatively associated with said computer, each said set including a plurality of stored commands... | The complaint alleges sets of commands exist for single functions, such as the set {"repeat", "go back"} for the function of returning to a previous question. | ¶45c | col. 9:5-8 |
| each said command in said set being an alternative intuitive description of said single voice-enabled function; | The commands "repeat" and "go back" are alleged to be alternative intuitive descriptions for a single function. A screenshot from a FAST system guide shows the system instructing users, "If you miss something, you can always say 'Repeat' or 'Go back.'" (Compl. p. 20). | ¶45c | col. 9:11-13 |
| a speaker-independent speech recognition device... configured to receive at least one natural voice command... | The FAST system is alleged to use a speaker-independent speech recognition device to receive user commands. | ¶45e | col. 9:16-19 |
| said computer being configured to execute said selected voice-enabled function... | The FAST system's computer is alleged to be configured to execute the function selected by the voice command (e.g., repeating a question or placing a trade). | ¶45e | col. 9:24-26 |
| a set of prompts audible to said user, and a logic flow for transmitting said prompts... in response to said user accessing said system or... providing a natural voice command. | Upon receiving a command like "trading," the FAST system is alleged to provide a series of audible prompts (e.g., asking for the stock name, number of shares) in a logical flow to complete the trade. | ¶¶45f-g | col. 10:1-6 |
’723 Patent Infringement Allegations (Claim 42)
| Claim Element (from Independent Claim 42) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| at least one set of stored commands... each said command in said set being an alternative intuitive description of said single voice-enabled function; | The complaint repeats the allegations made for Claim 1, citing the {"repeat", "go back"} example and alleging, on information and belief, a set of commands for trading: {"trading," "can I place a trade," "trade a stock," and "trade a security"}. | ¶46c | col. 13:9-12 |
| said voice command comprising said voice-enabled function and a tag, said tag associated with contact information stored in a database, said database associated with said computer... | The complaint alleges that when a user requests a stock quote, the "voice-enabled function" is obtaining the quote, and the "tag" is the company name or symbol (e.g., "GE" or "Walt Disney"). This tag is alleged to be "contact information" stored in a database associated with the FAST system's computer. | ¶46e | col. 14:1-5 |
| said voice server being configured to compare said natural voice command to said plurality of stored commands to select said single voice-enabled function... | The voice server is alleged to compare a natural voice command like "trading" to the plurality of stored commands (e.g., "can I place a trade," "trade a security") to select the single function of trading a stock. A "Navigational Tips" guide shows various speech commands mapped to functions like "Trading" or "Get stock quotes" (Compl. p. 19). | ¶46e | col. 14:5-8 |
- Identified Points of Contention:
- Technical Questions: A central factual question is whether the FAST system is actually architected to map a plurality of commands to a single function, as required by the claims. While the complaint provides a strong example with "repeat" and "go back" from user documentation (Compl. p. 20), its examples for more complex functions like "trading" are made "on information and belief" (Compl. ¶45c) and will likely depend on evidence obtained in discovery.
- Scope Questions: The infringement theory for Claim 42 raises a significant question of claim scope. The complaint alleges that a public stock ticker symbol ("GE") constitutes a "tag associated with contact information." However, the patent specification's examples for this feature describe retrieving personal contact data, such as "call Harry Newton at the office" (’723 Patent, col. 5:47-55; Compl. ¶32). The dispute may turn on whether "contact information" can be construed to cover public data identifiers or is limited to information in a user's personal/business directory.
V. Key Claim Terms for Construction
The Term: "alternative intuitive description"
Context and Importance: This term is the technological core of Claim 1 and its dependents. Its construction will determine the breadth of the claim and what types of command variations constitute infringement. Practitioners may focus on this term because it directly addresses the alleged novelty over prior art systems that used rigid, non-intuitive commands.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The complaint cites prosecution history where the inventor described the system's ability to "understand and accept a multitude of commands for each voice-enabled function, the commands being synonymous with each other and being intuitive of the desired function" (Compl. ¶31). This suggests "intuitive" should be viewed from the user's perspective and could encompass a wide range of synonymous phrases.
- Evidence for a Narrower Interpretation: A defendant could argue that the detailed flowcharts in the patent (e.g., Figs. 4A-4R) depict a system that, while using voice, still guides the user through structured menus. This might suggest the "intuitive description" must operate within a more constrained context than truly open-ended natural language, potentially limiting the scope to closely related synonyms.
The Term: "tag associated with contact information"
Context and Importance: This term is dispositive for infringement of Claim 42. Its definition will determine if the claim reads on systems that access public data (like stock quotes) or is confined to systems that access personal/corporate address books.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself does not explicitly limit "contact information" to personal contacts. A plaintiff may argue that any identifier used to access data from a source (including a financial data system) is a form of "contact information" for that source.
- Evidence for a Narrower Interpretation: The specification provides specific examples of this feature, such as a user providing the voice command "CALL HARRY NEWTON AT THE OFFICE," where the system uses the tag to search the "user's contact information" (’723 Patent, col. 5:47-55). This explicit example tying the feature to a user's personal contacts could support a narrower construction.
VI. Other Allegations
- Indirect Infringement: While the complaint makes a general reference to inducement (Compl. ¶8), the substantive allegations in Count I focus exclusively on direct infringement by Defendant under 35 U.S.C. § 271(a) through its own design, implementation, and use of the FAST system (Compl. ¶44). The complaint does not plead specific facts to support a claim of indirect infringement.
- Willful Infringement: The complaint does not contain allegations of willful infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this dispute may turn on two central questions:
- A key evidentiary question will be one of technical implementation: Does discovery evidence show that Fidelity's FAST system was, in fact, architected to map multiple, distinct voice commands to a single underlying function as required by the claims, or does it utilize a simpler one-to-one command structure? The complaint's allegations for more complex functions rely on "information and belief" and will require factual validation.
- A core issue will be one of definitional scope: Can the claim term "contact information," which the patent specification exemplifies with personal address book entries like "Harry Newton at the office," be construed to cover a generic, public data identifier like a stock ticker symbol? The answer will likely determine the viability of the infringement allegations regarding Claim 42.