DCT
2:23-cv-00482
Cerence Operating Co v. Samsung Electronics Co Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Cerence Operating Company (Delaware)
- Defendant: Samsung Electronics Co., Ltd. (South Korea) and Samsung Electronics America, Inc. (New York)
- Plaintiff’s Counsel: Russ August & Kabat
- Case Identification: 2:23-cv-00482, E.D. Tex., 10/13/2023
- Venue Allegations: Venue is alleged to be proper for Samsung Electronics Co., Ltd. as a foreign corporation, and for Samsung Electronics America, Inc. based on its commission of infringing acts and its regular and established place of business within the district.
- Core Dispute: Plaintiff alleges that Defendant’s Samsung Galaxy mobile devices infringe five patents related to voice messaging, handwritten character recognition, and low-power voice command monitoring.
- Technical Context: The technologies at issue concern core user interface functionalities for mobile devices, a market domain where efficiency, battery life, and ease of use are critical competitive factors.
- Key Procedural History: The complaint alleges that in June 2021, Plaintiff contacted Defendant regarding a potential license to its mobile text entry patent portfolio, providing an executive summary and access to a data room. It also alleges that Plaintiff's patents were cited numerous times during the prosecution of Defendant's own patent applications, a factor that may be relevant to allegations of pre-suit knowledge and willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2004-04-20 | Earliest Priority Date for ’078 and ’993 Patents |
| 2007-10-19 | Earliest Priority Date for ’428 Patent |
| 2008-07-01 | ’078 Patent Issued |
| 2011-12-20 | ’993 Patent Issued |
| 2013-03-12 | Earliest Priority Date for ’750 and ’461 Patents |
| 2015-05-05 | ’428 Patent Issued |
| 2021-06-01 | Pre-filing licensing communications initiated by Plaintiff |
| 2021-08-10 | ’750 Patent Issued |
| 2022-07-19 | ’461 Patent Issued |
| 2023-10-13 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,395,078 - "Voice Over Short Message Service"
The Invention Explained
- Problem Addressed: The patent describes a market environment with high costs for wireless voice calls and significant user populations who are not sufficiently literate to use text-based SMS messaging effectively, particularly in developing markets (Compl. ¶11; ’078 Patent, col. 1:13-17, col. 2:1-8).
- The Patented Solution: The invention enables sending a voice message using low-cost SMS infrastructure. It proposes a method where a user's spoken utterance is received by a mobile device, converted into a "non-text representation" such as a string of phonetic symbols, and then inserted into the body of a text message for transmission over a wireless messaging channel (’078 Patent, Abstract; col. 2:15-24). This avoids the higher cost of a traditional voice call.
- Technical Importance: The technology provided a mechanism to transmit voice-based communications over the ubiquitous and cost-effective SMS channel, potentially expanding accessibility for users constrained by call costs or literacy barriers (’078 Patent, col. 1:44-54).
Key Claims at a Glance
- The complaint asserts infringement of at least independent Claim 1 (Compl. ¶13).
- The essential elements of Claim 1 include:
- Receiving an utterance from a user of a mobile communication device.
- Generating a non-text representation of the received utterance.
- Inserting at least some of the non-text representation into a body of a text message.
- Sending the text message over a wireless messaging channel to a recipient's device.
- The complaint alleges infringement of "one or more claims" of the patent (Compl. ¶12).
U.S. Patent No. 8,081,993 - "Voice Over Short Message Service"
The Invention Explained
- Problem Addressed: As with the related ’078 Patent, this invention addresses the need for low-cost, accessible voice communication in markets where voice calls are expensive and text messaging is hindered by literacy issues (’993 Patent, col. 1:19-25, col. 2:7-14).
- The Patented Solution: This patent claims the receiving end of the voice-over-SMS system. It describes a method where a mobile device receives a text message containing the "non-text representation" of an utterance, extracts this representation, and then uses a synthesizer to create and play an audio representation of the original speech for the recipient (’993 Patent, Abstract; col. 2:44-55).
- Technical Importance: This invention provides the necessary counterpart to the sending method of the ’078 Patent, enabling an end-to-end system for transmitting voice messages over SMS channels.
Key Claims at a Glance
- The complaint asserts infringement of at least independent Claim 1 (Compl. ¶22).
- The essential elements of Claim 1 include:
- Receiving a text message over a wireless messaging channel that contains a non-text representation of an utterance.
- Extracting the non-text representation from the text message.
- Synthesizing an audio representation of the utterance from the non-text representation.
- Playing the synthesized audio representation through an audio output device.
- The complaint alleges infringement of "one or more claims" of the patent (Compl. ¶21).
U.S. Patent No. 9,026,428 - "Text/Character Input System, Such As For Use With Touch Screens On Mobile Phones"
- Technology Synopsis: The patent addresses challenges in handwritten character input on touchscreens. The described system receives character input into a temporary, editable buffer and uses linguistic models to determine when a portion of the input sequence (e.g., a completed word) can be automatically "committed" to the target application, removing it from the editable buffer to prevent further modification and streamline the input process (’428 Patent, Abstract; Compl. ¶29).
- Asserted Claims: At least Claim 1 (Compl. ¶31).
- Accused Features: The complaint accuses Samsung products that "receive and recognize handwritten input from a user," such as the Samsung Galaxy Note 10+ (Compl. ¶30).
U.S. Patent No. 11,087,750 - "Methods and Apparatus for Detecting A Voice Command"
- Technology Synopsis: This patent addresses the technical challenge of enabling "always-on" voice command detection without excessively draining a mobile device's battery. The solution involves a multi-stage process for monitoring acoustic input that can operate while the device is in a low-power mode, using contextual cues (e.g., device motion, time of day) to improve the accuracy of voice command detection (’750 Patent, Abstract; Compl. ¶38).
- Asserted Claims: At least Claim 1 (Compl. ¶40).
- Accused Features: The complaint targets "voice command detection technology that allows for monitoring and detecting voice commands while in a lower power or standby mode," as found in devices like the Samsung Galaxy Note 10+ (Compl. ¶39).
U.S. Patent No. 11,393,461 - "Methods and Apparatus for Detecting A Voice Command"
- Technology Synopsis: As a member of the same family as the ’750 Patent, this patent also relates to power-efficient voice command detection. It describes a method of monitoring the acoustic environment while a mobile device is in a low-power state, detecting a voice command by performing a plurality of processing stages on the input, and using at least one contextual cue to assist in the detection (’461 Patent, Abstract; Compl. ¶47).
- Asserted Claims: At least Claim 1 (Compl. ¶49).
- Accused Features: The complaint accuses the same functionality as for the ’750 Patent: voice command detection in a low-power or standby mode in Samsung Galaxy mobile devices (Compl. ¶48).
III. The Accused Instrumentality
Product Identification
- The complaint identifies the accused instrumentalities as "Samsung Galaxy mobile devices" generally, with specific reference to the "Galaxy Note 10+" for the patents related to handwritten input and low-power voice command detection (Compl. ¶12, ¶30, ¶39, ¶48).
Functionality and Market Context
- The accused functionalities are core features of modern smartphones: (1) a voice messaging function that generates and sends a representation of a user's speech, and conversely receives and plays back such a representation (Compl. ¶12, ¶21); (2) a system for recognizing handwritten input on a touchscreen (Compl. ¶30); and (3) a low-power voice command system that continuously monitors for trigger phrases or commands (Compl. ¶39, ¶48). These features are central to the user experience on widely distributed consumer electronic devices.
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
’078 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| receiving an utterance from a user of the mobile communication device | Samsung devices’ microphones receive user speech for voice messaging functionality. | ¶12 | col. 2:16-17 |
| generating a non-text representation of the received utterance | The accused devices are alleged to generate a non-text representation of the user’s spoken utterance. | ¶12 | col. 2:17-18 |
| inserting at least some of the non-text representation into a body of a text message | The generated representation is allegedly inserted into the body of a message for sending. | ¶12 | col. 2:19-20 |
| sending the text message over a wireless messaging channel from the mobile communication device to a recipient's device | The devices allegedly send the message containing the non-text representation via a wireless channel. | ¶12 | col. 2:20-23 |
’993 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| over a wireless messaging channel receiving a text message that contains a non-text representation of an utterance | Samsung devices are alleged to receive messages containing a non-text representation of a spoken utterance. | ¶21 | col. 2:44-48 |
| extracting the non-text representation from the text message | The accused devices allegedly extract this non-text representation from the received message. | ¶21 | col. 2:48-49 |
| synthesizing an audio representation of the spoken utterance from the non-text representation | The devices allegedly synthesize an audio representation using the extracted non-text data. | ¶21 | col. 2:49-52 |
| playing the synthesized audio representation through an audio output device on the mobile communication device | The devices allegedly play the resulting synthesized audio to the user. | ¶21 | col. 2:52-55 |
Identified Points of Contention
- Technical Questions: For the ’078 and ’993 patents, a central question may be how Samsung’s voice messaging functionality actually operates. The complaint does not specify whether the "non-text representation" is a phonetic string as detailed in the patent, or a modern compressed audio file (e.g., AAC, AMR) sent via MMS or a data-based service. This distinction raises the question of whether there is a fundamental mismatch in technical operation between the patented method and the accused functionality.
- Scope Questions: The infringement analysis for the ’078 and ’993 patents may depend on whether the claim term "text message," described in the patent in the context of SMS, can be construed to read on modern messaging protocols such as MMS, RCS, or proprietary data-based messaging services.
V. Key Claim Terms for Construction
- The Term: "non-text representation" (’078 Claim 1; ’993 Claim 1)
- Context and Importance: This term is the core technical element of the voice-over-SMS invention. Its construction will be critical to determining infringement, as it will establish whether modern digital audio formats fall within the claim scope, which is heavily specified around phonetic encoding. Practitioners may focus on this term because the viability of the infringement case for the ’078 and ’993 patents hinges on its breadth.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent claims the term without explicit limitation to phonemes, and the specification describes the representation as a "string of symbols" (’078 Patent, col. 2:28-30). This could support an argument that any symbolic or digital representation of an utterance that is not plain text meets the limitation.
- Evidence for a Narrower Interpretation: The specification consistently describes the generation of this representation using a "phoneme recognizer" to create a "phoneme string" (’078 Patent, Fig. 1; col. 4:11-20, col. 4:50-53). This repeated emphasis on phonetic encoding could support a narrower construction limited to phonetic or similar symbolic representations, potentially excluding standard compressed audio files.
VI. Other Allegations
- Indirect Infringement: The complaint makes general allegations of induced infringement for all asserted patents, stating that Samsung encourages and instructs customers to use the accused products in an infringing manner (Compl. ¶14, ¶23, ¶32, ¶41, ¶50). The complaint does not cite specific evidence such as user manuals or marketing materials to support these allegations.
- Willful Infringement: Willfulness is alleged for all five patents. For the ’078, ’993, and ’750 patents, the basis for knowledge is alleged to arise "at least" from the filing of the complaint (Compl. ¶14, ¶23, ¶41). For the ’428 and ’461 patents, the complaint alleges pre-suit knowledge based on licensing communications dating back to 2021 and on citations to these patents during the prosecution of Samsung's own patent applications (Compl. ¶2, ¶32, ¶50).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "non-text representation," which is described in the ’078 and ’993 patents in the context of phonetic strings, be construed to cover the modern compressed audio file formats likely used in Samsung's current voice messaging services?
- A key evidentiary question will be one of technical implementation: what evidence will be presented to establish that Samsung's accused features, such as its "always-on" voice assistant and handwritten input systems, practice the specific multi-stage processing, use of contextual cues, and editable buffer management techniques required by the claims of the ’750, ’461, and ’428 patents?
- A central dispute regarding damages may turn on willfulness: do the allegations of pre-suit notice through licensing negotiations and patent prosecution citations provide a sufficient basis to establish that any potential infringement by Samsung was knowing and willful, thereby exposing it to the possibility of enhanced damages?