DCT
2:21-cv-00437
Multimodal Media LLC v. ZTE Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Multimodal Media LLC (Texas)
- Defendant: ZTE Corporation (China)
- Plaintiff’s Counsel: Fabricant LLP; TRUELOVE LAW FIRM, PLLC
- Case Identification: 2:21-cv-00437, E.D. Tex., 11/29/2021
- Venue Allegations: Venue is alleged to be proper on the basis that the defendant is not a resident of the United States and may therefore be sued in any judicial district.
- Core Dispute: Plaintiff alleges that Defendant’s smartphones and tablets infringe four patents related to interactive mobile messaging, voice message integration, incomplete call completion, and gesture-based media recording.
- Technical Context: The technologies at issue cover fundamental features of modern smartphone communication, including the integration of interactive elements into messages and user interface methods for handling calls and media capture.
- Key Procedural History: The complaint does not allege any significant procedural events such as prior litigation, Inter Partes Review proceedings, or licensing negotiations involving the patents-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2007-04-25 | ’978 Patent Priority Date |
| 2009-02-03 | ’949 Patent Priority Date |
| 2011-04-19 | ’949 Patent Issue Date |
| 2012-01-31 | ’978 Patent Issue Date |
| 2012-10-15 | ’030 Patent Priority Date |
| 2012-12-14 | ’227 Patent Priority Date |
| 2015-11-10 | ’227 Patent Issue Date |
| 2020-02-04 | ’030 Patent Issue Date |
| 2021-11-29 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,929,949 - "Interactive Multimodal Messaging," issued April 19, 2011
The Invention Explained
- Problem Addressed: The patent’s background section describes the limitations of existing mobile communication methods, noting that text messages lack interactivity, and both multimedia messages and voicemails are static in nature (’949 Patent, col. 1:24-58).
- The Patented Solution: The invention proposes a client-server system to overcome these limitations. A sender uses a client application to create an "interactive multimodal message," which is then stored on a server. The server sends a notification containing a "pointer" (e.g., a link) to the recipient. When the recipient accesses the pointer, the interactive message is triggered on their device, enabling interaction and the transmission of service information. (’949 Patent, Abstract; Fig. 1).
- Technical Importance: This technology aimed to merge the ubiquity of SMS notifications with the richer, interactive capabilities of web-based applications on mobile devices (’949 Patent, col. 1:59-64).
Key Claims at a Glance
- The complaint asserts independent claim 11 (Compl. ¶22).
- Claim 11 requires a system comprising:
- A client application with a message creation module for a sender to create an interactive multimodal message.
- A server with distinct modules for: storing the message, sending a notification with a pointer to the stored message, triggering the message on the recipient's device, and transmitting service information through the triggered message.
U.S. Patent No. 8,107,978 - "Addressing Voice SMS Messages," issued January 31, 2012
The Invention Explained
- Problem Addressed: The patent identifies a usability gap between text SMS and voice SMS. Text messaging applications can seamlessly use a phone's stored address book, while prior voice messaging systems often required cumbersome manual entry of the recipient's number. (’978 Patent, col. 1:47-64).
- The Patented Solution: The invention describes a client application on a mobile device that "intercepts" a text message after it has been addressed using standard methods (e.g., selecting from a contact list). The application then prompts the user with an option to add a voice component. If the user agrees, the application connects to a server to record the voice message and then sends the original text along with a notification for the recipient to access the voice content. (’978 Patent, Abstract; Fig. 1).
- Technical Importance: This solution streamlined the process of sending voice messages by integrating it into the familiar and convenient workflow of standard text messaging (’978 Patent, col. 2:4-9).
Key Claims at a Glance
- The complaint asserts independent claim 10 (Compl. ¶32).
- Claim 10 requires a system comprising:
- A client application on a mobile device that integrates voice content with a text message.
- A memory storage means on the device for storing recipient addresses.
- A user interface for inputting voice and text messages.
- A server for remotely recording, storing, and providing access to the voice messages.
- The client application transmitting a voice message notification with the addressed text message.
U.S. Patent No. 9,185,227 - "Sender Driven Call Completion System," issued November 10, 2015 (Multi-Patent Capsule)
- Technology Synopsis: This patent addresses "incomplete calls" (e.g., unanswered, busy, out of service). The invention is a "sender driven" system, where a call completion application on the calling party's device detects the incomplete call and presents the caller with options to complete the communication, such as setting a reminder or sending a message, without relying on any pre-configured service on the recipient's network or device. (’227 Patent, Abstract; col. 2:5-15).
- Asserted Claims: At least claim 1 is asserted (Compl. ¶43).
- Accused Features: The complaint accuses call completion applications, such as Google Duo, on ZTE devices that detect an incomplete call and then provide the caller with options to perform an action, such as sending a voice or video message (Compl. ¶43). A screenshot in the complaint shows a "Brian Blase is unavailable" message, which represents the detection of an incomplete call (Compl. p. 13).
U.S. Patent No. 10,552,030 - "Multi-gesture Media Recording," issued February 4, 2020 (Multi-Patent Capsule)
- Technology Synopsis: This patent describes a user interface for recording media (e.g., audio) that responds to multiple, distinct gestures. The system can detect a first gesture (e.g., press-and-hold) to initiate an action like recording, and a second gesture (e.g., swipe-and-hold) to initiate a different action, such as switching recording modes or canceling the recording, providing a more versatile control scheme than a simple button. (’030 Patent, Abstract; col. 1:51-col. 2:2).
- Asserted Claims: At least claim 8 is asserted (Compl. ¶52).
- Accused Features: The complaint accuses gesture-based media recording applications, such as Google Messages, on ZTE devices. These applications allegedly support a user interface that detects a first and second gesture to control audio recording (Compl. ¶52). The complaint provides a screenshot highlighting a microphone icon used for recording audio within a messaging application (Compl. p. 17).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are a range of ZTE smartphones and tablets, with the ZTE Quest 5 and ZTE Blade Vantage 2 cited as specific examples (Compl. ¶¶ 5, 18, 22, 32).
Functionality and Market Context
- The complaint alleges that the accused products, running Google’s Android operating system, incorporate applications and functionalities that infringe the patents-in-suit (Compl. ¶¶ 22, 32, 43, 52). These functionalities include sending messages with interactive elements like payment requests or location data, integrating recorded audio into text-based chats, offering follow-up actions after an incomplete call, and using gestures to control media recording (Compl. ¶¶ 22-23, 32-34, 43, 52). A screenshot provided in the complaint depicts a messaging interface with options to send a G Pay request, which is an example of an alleged interactive element (Compl. p. 6). Another screenshot shows a map link with a preview, illustrating the transmission of service information (Compl. p. 8). The complaint positions ZTE as a "leading manufacturer and seller of smartphones and tablets" globally and in the U.S. (Compl. ¶2).
IV. Analysis of Infringement Allegations
’949 Patent Infringement Allegations
| Claim Element (from Independent Claim 11) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a client application comprising a message creation module for creating said interactive multimodal message by a sender | ZTE products use applications on the mobile device to create interactive multimodal messages. | ¶22 | col. 5:10-13 |
| a server comprising: a storage module for storing said created interactive multimodal message | The system utilizes a network server with a module for storing messages. | ¶23 | col. 6:3-4 |
| a notification module for sending a notification comprising a pointer to said stored interactive multimodal message to a mobile device of a recipient | The network server sends notifications with pointers to the stored messages. | ¶23 | col. 6:5-8 |
| a triggering module for triggering the stored interactive multimodal message on the mobile device of the recipient | The network server triggers the stored multimodal messages on the recipient's mobile device. | ¶23 | col. 6:9-11 |
| a transmission module for transmitting service information to the mobile device of the recipient through said triggered interactive multimodal message | The system transmits information through the triggered interactive message. | ¶23 | col. 6:12-15 |
- Identified Points of Contention:
- Scope Questions: A central question may be whether the term "interactive multimodal message", which the patent describes in the context of VXML scripts, can be construed to cover the app-based interactive elements (e.g., payment requests) in modern messaging systems.
- Technical Questions: The analysis may focus on whether the general architecture of the accused Android messaging system, with its reliance on APIs and cloud services, maps onto the patent’s more explicitly defined client-server structure with distinct "storage", "notification", "triggering", and "transmission" modules.
’978 Patent Infringement Allegations
| Claim Element (from Independent Claim 10) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a client application on a mobile device, wherein said client application integrates voice content to a text message created by a user using methods of recipient addressing as used by text short message service messaging | ZTE products use a client application to integrate and transmit voice content in a text message. | ¶32 | col. 9:11-16 |
| a memory storage means on said mobile device for storing a list of addresses of recipients | The accused products include memory to store phone numbers and addresses. | ¶33 | col. 9:17-18 |
| a user interface on the mobile device for said user to input voice messages and text messages | The accused products include a touch screen and microphone for user input. A screenshot shows a chat interface containing a playable audio message alongside text (Compl. p. 10). | ¶33 | col. 9:19-21 |
| a server for remotely recording and storing said voice messages of the user, wherein said server is configured to provide access to said recipient for listening to said recorded voice message | The accused products use a network server to store audio messages and provide access to recipients for playback. | ¶34 | col. 9:22-26 |
| and said client application for transmitting a voice message notification with an addressed text message to said recipients. | The system sends a text message containing a notification that allows the recipient to listen to the recorded voice content. | ¶32 | col. 9:27-29 |
- Identified Points of Contention:
- Scope Questions: A potential dispute may arise over the meaning of "integrates voice content to a text message". The patent describes a process of intercepting an already-addressed text message to add voice, which may differ from the unified media composition process in modern messaging apps where users can choose to add voice, text, or images from the outset.
- Technical Questions: What evidence does the complaint provide that the accused client application performs the specific act of "intercepting" a text message, as opposed to simply providing a unified interface for composing a message that can contain multiple media types?
V. Key Claim Terms for Construction
Patent ’949: "interactive multimodal message"
- Context and Importance: This term defines the core of the invention. Its construction will determine whether the claim is limited to the specific type of scripted, dialog-based interactions detailed in the patent or if it is broad enough to cover the more dynamic, embedded application features common in modern messaging.
- Intrinsic Evidence for a Broader Interpretation: The specification provides a high-level definition as a "seamless combination of graphics, text, and audio output" combined with various input modes (’949 Patent, col. 3:9-15).
- Intrinsic Evidence for a Narrower Interpretation: The detailed description and figures heavily reference specific technologies like VoiceXML (VXML) for scripting prompts and dialogs, suggesting a more structured and pre-defined form of interaction (’949 Patent, Fig. 3; col. 7:12-16).
Patent ’978: "intercepts the addressed text SMS message"
- Context and Importance: This term is critical to the infringement theory, as it describes the mechanism that links standard text messaging with the patented voice messaging system. Practitioners may focus on whether this requires an active interruption of a separate, native SMS process or if it can describe how an integrated messaging application handles user input.
- Intrinsic Evidence for a Broader Interpretation: The term could be interpreted to mean that the client application simply receives and processes the user's text and address input before transmission begins.
- Intrinsic Evidence for a Narrower Interpretation: The abstract and Figure 1 both depict a linear process where a user first creates and addresses a text message, which is then intercepted by the client application as a distinct step before a voice prompt is offered (’978 Patent, Abstract; Fig. 1, step 104a). This suggests an action taken upon a fully-formed message, rather than as part of its initial composition.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that ZTE induces infringement by its customers, end-users, and network operators by providing products with the accused functionalities (Compl. ¶¶ 24, 35, 44, 53). The complaint does not allege specific facts, such as references to user manuals or marketing materials, to support the element of intent.
- Willful Infringement: Willfulness is alleged based on Defendant’s knowledge of the patents "at least as of the date of this Complaint" (Compl. ¶¶ 25, 36, 45, 54). This allegation primarily supports a claim for post-suit willful infringement, as no facts suggesting pre-suit knowledge are provided.
VII. Analyst’s Conclusion: Key Questions for the Case
- Architectural Mapping: A core issue will be one of technical correspondence: can the integrated software architecture of Google's Android OS and its messaging applications be mapped onto the specific, modular client-server systems recited in the '949 and '978 patents? This will likely require a detailed analysis of how the accused systems technically implement functions described in the claims as being performed by, for example, a "triggering module" or through the "interception" of a message.
- Evolution of Technology: A key question of definitional scope will be whether claim terms rooted in the technology of the mid-to-late 2000s (e.g., "interactive multimodal message" described with VXML, "Voice SMS") can be construed to read on the more fluid and integrated functionalities of modern smartphone platforms, or if the accused products represent a technological evolution that operates in a fundamentally different way.
- Obviousness and Prior Art: Given that the patents cover functionalities that are now common in smartphones, a central defense may revolve around validity challenges. The case may turn on whether the specific implementations claimed in the patents were truly non-obvious improvements over the prior art at the time of invention, or if they were predictable combinations of existing technologies.