DCT
2:22-cv-00463
Multimodal Media LLC v. TCL Technology Group Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Multimodal Media LLC (Texas)
- Defendant: TCL Technology Group Corporation, et al. (People's Republic of China)
- Plaintiff’s Counsel: Fabricant LLP
- Case Identification: 2:22-cv-00463, E.D. Tex., 01/10/2023
- Venue Allegations: Venue is alleged to be proper because the Defendants are not U.S. residents and may be sued in any judicial district, and because they are allegedly subject to personal jurisdiction and have committed acts of infringement within the Eastern District of Texas.
- Core Dispute: Plaintiff alleges that Defendant’s TCL and Alcatel brand smartphones and tablets infringe four patents related to interactive messaging, voice message integration, call completion, and gesture-based media recording.
- Technical Context: The technologies at issue concern user interface methods and systems for enhancing mobile communications, a core functional area of the modern smartphone and tablet market.
- Key Procedural History: The complaint alleges that Defendants had actual notice of the asserted patents as of November 29, 2022, the filing date of the original complaint in the action, which may form the basis for allegations of willful infringement for post-filing conduct.
Case Timeline
| Date | Event |
|---|---|
| 2004-12-21 | '949 Patent Priority Date |
| 2007-04-25 | '978 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 |
| 2022-11-29 | Original Complaint Filing Date |
| 2023-01-10 | First Amended 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 conventional mobile communication methods, noting that text messages lack interactivity and multimedia messages are static, while voicemail offers limited interaction that is controlled by a server, not the message itself (’949 Patent, col. 1:22-50).
- The Patented Solution: The invention proposes a system where a sender creates an "interactive multimodal message" which is then stored on a server. A recipient receives a notification containing a pointer, such as a hyperlink, to this stored message. When the recipient accesses the pointer, the interactive content is triggered on their device, enabling dynamic interactions and the transmission of "service information" without requiring the full message content to be stored on the device initially (’949 Patent, Abstract; Fig. 1).
- Technical Importance: This server-based architecture was designed to enable richer, more application-like messaging experiences than standard SMS or MMS, while conserving device resources and bandwidth by transmitting only a small notification pointer. (’949 Patent, col. 2:7-17).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶31).
- The essential elements of independent claim 1 are:
- creating an interactive multimodal message using a client application, wherein the message is stored at a server;
- sending a notification with a pointer to the stored message to the recipient's mobile device;
- triggering the stored message on the recipient's device by accessing the pointer; and
- transmitting service information to the recipient's device through the triggered message.
- The complaint makes general allegations of infringement of "one or more claims" (Compl. ¶30).
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. While text messages can be easily addressed using a device's native address book, existing voice SMS systems often required manual number entry, making them less convenient. (’978 Patent, col. 1:49-64).
- The Patented Solution: The invention describes a client application that integrates with the standard text messaging process. After a user composes and addresses a text message using conventional methods (e.g., selecting a contact from the address book), the client application intercepts the message and prompts the user with an option to add a voice message. If the user agrees, the system records the voice content on a server and transmits the original text message along with a notification for the recorded voice message. (’978 Patent, Abstract; Fig. 1).
- Technical Importance: This method leverages the familiar and convenient workflow of text messaging, including use of the native address book, to make the creation and sending of voice messages more seamless and user-friendly. (’978 Patent, col. 2:1-4).
Key Claims at a Glance
- The complaint asserts independent claim 10 (Compl. ¶43).
- The essential elements of independent claim 10 are:
- a client application on a mobile device that integrates voice content with a text message;
- a memory storage means for storing a list of recipient addresses;
- a user interface for the user to input voice and text messages;
- a server for remotely recording and storing the user's voice messages, with the server configured to provide access to the recipient; and
- the client application transmitting a voice message notification with an addressed text message to recipients.
- The complaint makes general allegations of infringement of "one or more claims" (Compl. ¶42).
U.S. Patent No. 9,185,227 - "Sender Driven Call Completion System," issued November 10, 2015
- Patent Identification: U.S. Patent No. 9,185,227, "Sender Driven Call Completion System," issued November 10, 2015 (Compl. ¶18).
- Technology Synopsis: This patent addresses "incomplete calls" (e.g., unanswered, busy, or short-duration calls) (’227 Patent, col. 2:55-65). The invention is a call completion application residing on the calling party's device which detects an incomplete call and, independent of any service on the recipient's network, provides the calling party with options to complete the communication, such as by sending a message or setting a reminder (’227 Patent, Abstract).
- Asserted Claims: Independent claim 1 (Compl. ¶55).
- Accused Features: The complaint accuses the Google Duo application on Defendants' devices, which allegedly detects when a call is incomplete and provides the caller with options to perform a call completion action, such as sending a voice or video message (Compl. ¶55). A screenshot shows a notification that a contact is unavailable, presented alongside options for a video or voice call (Compl., p. 20).
U.S. Patent No. 10,552,030 - "Multi-Gesture Media Recording System," issued February 4, 2020
- Patent Identification: U.S. Patent No. 10,552,030, "Multi-Gesture Media Recording System," issued February 4, 2020 (Compl. ¶19).
- Technology Synopsis: The patent's background describes the inconvenience of rigid media recording modes (e.g., push-to-talk versus tap-to-start) and the difficulty in switching between them or canceling a recording once initiated (’030 Patent, col. 1:13-53). The invention provides a system using multiple gestures on a graphical user interface to manage media recording, allowing a user to dynamically trigger recording, switch between communication modes, and perform other actions like canceling the recording (’030 Patent, Abstract).
- Asserted Claims: Independent claim 8 (Compl. ¶65).
- Accused Features: The complaint accuses applications like Google Messages on Defendants' devices, alleging they employ a gesture-based media recording application for audio (Compl. ¶65). A screenshot provided in the complaint highlights a microphone icon that a user can press and hold to record an audio message (Compl., p. 25).
III. The Accused Instrumentality
- Product Identification: The complaint names numerous "TCL phones and tablets" and "Alcatel brand phones and tablets," including models such as the TCL 10 Pro, 20S, and Tab 10s, and the Alcatel Go Flip V and Joy Tab 2 (Compl. ¶27). Collectively, these are referred to as the "exemplary Accused Devices" (Compl. ¶27).
- Functionality and Market Context:
- The accused products are alleged to be pre-configured with the Google Android operating system and applications including Google Messages and Google Duo (Compl. ¶27, ¶31, ¶55). The relevant functionality includes the ability to create and transmit messages that contain text, audio, and interactive elements like payment requests or map links (Compl. ¶31-32, ¶43-44). A screenshot from an accused device shows a Google Messages conversation with interactive elements, including a "G Pay" request button (Compl., p. 11). Another shows a Google Duo interface after an incomplete call, offering the user the option to send a video or voice message (Compl., p. 20).
- The complaint alleges that the TCL group of companies is one of the "world's largest manufacturers" and "leading sellers" of smartphones in the United States (Compl. ¶9).
IV. Analysis of Infringement Allegations
'949 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| creating said interactive multimodal message by a sender using a client application available to said sender, wherein said created interactive multimodal message is stored at a server; | The accused devices use a client application (e.g., Google Messages) to create interactive multimodal messages which are stored on a server. | ¶31 | col. 4:10-12 |
| sending a notification comprising a pointer to said stored interactive multimodal message to said mobile device of the recipient by said server; | The accused devices send notifications containing pointers (e.g., a hyperlink to a map) to the stored messages. A screenshot shows a message containing a google.com/maps link. | ¶32 | col. 4:13-16 |
| triggering the stored interactive multimodal message on the mobile device of the recipient by accessing said pointer in said notification; and | Accessing the pointer allegedly triggers the stored message on the recipient's device. | ¶32 | col. 4:25-30 |
| transmitting service information to the mobile device of the recipient through said triggered interactive multimodal message. | The triggered message allegedly transmits information, such as map data or G Pay payment requests, which Plaintiff characterizes as "service information." | ¶32 | col. 4:36-40 |
- Identified Points of Contention:
- Scope Questions: A central question for claim construction may be the scope of the term "service information." The complaint alleges that user-generated content like map links and payment requests meet this limitation (Compl. ¶31-32). The defense may argue that the patent specification, which provides examples like "horoscope services" and "weather update" (’949 Patent, col. 7:48-60), limits the term to commercially provided, subscription-style services.
- Technical Questions: What evidence demonstrates that the accused products "trigger" a stored message in the manner claimed? The question may arise as to whether displaying a rich link preview within a messaging app constitutes "triggering the stored interactive multimodal message" and "transmitting service information" as contemplated by the patent, or if the claims require a more distinct, application-like execution on the recipient's device.
'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... | The accused devices use client applications like Google Messages to integrate and transmit voice content within a text-based message. | ¶43 | col. 3:1-5 |
| a memory storage means on said mobile device for storing a list of addresses of recipients; | The accused devices include memory for storing contacts, such as a native address book. | ¶44 | col. 1:57-64 |
| a user interface on the mobile device for said user to input voice messages and text messages; and | The accused devices include a touch screen and microphone allowing users to input text and voice. | ¶44 | col. 5:21-25 |
| a server for remotely recording and storing said voice messages...wherein said server is configured to provide access to said recipient for listening...; and | The accused devices use a network server to record and store audio messages, which can then be accessed and played by the recipient. A screenshot shows a playable "Audio message" within a chat interface. | ¶45 | col. 4:5-8 |
| said client application for transmitting a voice message notification with an addressed text message to said recipients. | The client application sends a text message that includes a voice message notification, allowing the recipient to listen to the recorded voice content. | ¶42-43 | col. 4:8-11 |
- Identified Points of Contention:
- Technical Questions: The patent's inventive concept appears to be a client application that intercepts a standard, addressed text message and then prompts the user to add voice (’978 Patent, Fig. 1, steps 104a-104b). The complaint accuses an integrated messaging application (Google Messages) where adding voice is a built-in feature choice, not a sequential interception and prompt. This raises the question of whether the integrated functionality of the accused products is technically equivalent to the specific intercept-and-prompt process described and claimed in the patent.
V. Key Claim Terms for Construction
For the '949 Patent:
- The Term: "service information" (Claim 1)
- Context and Importance: This term's definition is critical to the infringement analysis. The Plaintiff's theory requires that user-generated, peer-to-peer content like map links or payment requests fall within its scope. Practitioners may focus on this term because its construction could either broadly cover modern messaging features or narrowly restrict the claim to the commercial broadcast-style services detailed in the patent's examples.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification provides a list of examples including "advertisements, alerts, or service content previews" (’949 Patent, col. 7:38-40). The general term "service content" could be interpreted broadly to encompass any information provided as a service through the message, including location data or payment processing.
- Evidence for a Narrower Interpretation: The detailed embodiments in the specification focus on examples of commercial, third-party services like "horoscope services" and "weather update" for which a user might be billed (’949 Patent, col. 7:48-67). This could support an argument that the term is limited to this commercial context and does not cover peer-to-peer data sharing.
For the '978 Patent:
- The Term: "a client application...integrates voice content to a text message...using methods of recipient addressing as used by text short message service messaging" (Claim 10)
- Context and Importance: The patent was filed when voice SMS and text SMS were often distinct processes. The claim language attempts to capture a system that leverages the convenience of standard text message addressing for voice messages. Its construction will determine whether it reads on modern, fully integrated messaging apps where text and voice are simply different media types in a single workflow.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim is for a system, not a method, and recites "a client application...integrates." This could be argued to cover any application that combines voice and text addressed using a device's contact list, regardless of the precise technical mechanism.
- Evidence for a Narrower Interpretation: The specification repeatedly describes the process as involving the "intercept[ion]" of a "normal text SMS" message, after which the user is prompted to add voice (’978 Patent, col. 3:1-4, col. 3:42-45). This suggests a two-step process where the "methods of...addressing as used by text short message service messaging" are distinct from and precede the voice integration step, potentially creating a mismatch with the single-step, integrated functionality of the accused products.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement for all asserted patents. Inducement is primarily based on allegations that Defendants provide product manuals and online documentation that instruct end-users on how to use the accused messaging and call features in an infringing manner (Compl. ¶37, ¶47, ¶58, ¶66). Contributory infringement is based on allegations that the accused components are material to the inventions, are not staple articles of commerce, and are known by Defendants to be especially adapted for infringement (Compl. ¶35, ¶48, ¶59, ¶68).
- Willful Infringement: The complaint alleges that Defendants have had knowledge of the patents-in-suit "at least as of November 29, 2022, the filing date of the Original Complaint" (Compl. ¶15). This alleged post-suit knowledge forms the basis of the willfulness allegations for any ongoing infringement (Compl. ¶36, ¶47, ¶57, ¶67).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "service information" from the '949 Patent, which is rooted in the patent's examples of commercial content, be construed to cover the user-generated, peer-to-peer data (e.g., map links, payment requests) common in modern messaging applications?
- A key evidentiary question will be one of technical equivalence: does the integrated functionality of the accused messaging applications, where a user selects to add voice as a media type, perform the same function in substantially the same way to achieve the same result as the '978 Patent's claimed system, which describes intercepting an already-addressed text message to prompt for voice?
- A central dispute for the '030 Patent will likely involve functional comparison: does the simple "press and hold" gesture for recording audio in the accused products perform the complex, multi-modal switching functions required by the asserted claims, or is there a fundamental mismatch in the technical operation and purpose of the accused gesture versus the patented invention?