Boccone LLC v. LG Electronics Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Boccone, LLC (Delaware)
  • Defendant: LG Electronics, Inc. (Korea) and LG Electronics MobileComm U.S.A., Inc. (California)
  • Plaintiff’s Counsel: TOLER LAW GROUP, Group
• Case Identification: 4:19-cv-00244, E.D. Tex., 03/29/2019
• Venue Allegations: Venue is alleged to be proper based on LG Electronics, Inc. being a foreign corporation and LG Electronics MobileComm U.S.A., Inc. maintaining a physical place of business within the Eastern District of Texas.
• Core Dispute: Plaintiff alleges that Defendants’ smartphones and tablets incorporating the Google Photos application infringe three patents related to sharing digital images using facial recognition technology.
• Technical Context: The technology at issue involves using automated facial recognition to identify individuals in digital photos, group those photos, and facilitate sharing them with relevant users or across devices.
• Key Procedural History: While the complaint was filed in March 2019, subsequent Inter Partes Review proceedings were initiated against the asserted patents. As evidenced by the provided IPR Certificates, these proceedings resulted in the disclaimer of all claims (1-30) for all three patents-in-suit in October 2021. This post-filing development raises a threshold question regarding the continued viability of the infringement claims as pleaded.

Case Timeline

Date	Event
2012-11-21	Earliest Priority Date for ’136, ’726, and ’727 Patents
2018-07-10	U.S. Patent No. 10,019,136 Issued
2018-07-17	U.S. Patent No. 10,027,726 Issued
2018-07-17	U.S. Patent No. 10,027,727 Issued
2019-03-29	Complaint Filing Date
2021-10-06	IPR Certificates issued disclaiming all claims of patents

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 10,019,136 - "Image Sharing Device, Apparatus, and Method"

• Patent Identification: U.S. Patent No. 10,019,136, "Image Sharing Device, Apparatus, and Method," issued July 10, 2018 (’136 Patent).

The Invention Explained

• Problem Addressed: The complaint alleges that conventional methods of sharing digital images are inefficient, particularly when dealing with large sets of images and contacts (Compl. ¶27). The patented invention aims to make this process more efficient by automating the identification of images and potential recipients for sharing (Compl. ¶22).
• The Patented Solution: The invention describes a device that can display "indicia" (e.g., thumbnails) of images containing faces (’136 Patent, Abstract). A user can select an indicia corresponding to a first image with a first face. In response, the device displays a set of other accessible images that also contain that recognized first face, which can then be shared with other users (’136 Patent, col. 2:4-52). The complaint reproduces Figure 31 from the patent, a flowchart which illustrates an example system flow between two users and a service for sharing media objects based on metadata (Compl. ¶23).
• Technical Importance: The technology purports to improve digital image sharing devices so that a user may more efficiently and quickly discover and share relevant groups of related digital images (Compl. ¶24).

Key Claims at a Glance

• The complaint asserts at least Claim 1 (Compl. ¶29).
• The essential elements of independent Claim 1 include:
  • displaying a plurality of indicia each including a portion of an image with a face;
  • receiving a user input selecting one of the indicia (a first image with a first face);
  • after receiving the input, displaying a set of images that each include the first face, recognized from a plurality of accessible images;
  • displaying suggested identifiers for the first face and receiving user input to create a correspondence between an identifier and the face;
  • providing an option for sharing images;
  • in connection with the sharing option, receiving input (e.g., an email address) for another person and a user selection of the first image (now associated with the identifier);
  • based on that selection, causing the sharing of at least a portion of the set of images that include the first face. (’136 Patent, col. 72:3-52).
• The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 10,027,726 - "Device, Apparatus, and Method for Facial Recognition"

• Patent Identification: U.S. Patent No. 10,027,726, "Device, Apparatus, and Method for Facial Recognition," issued July 17, 2018 (’726 Patent).

The Invention Explained

• Problem Addressed: Similar to the ’136 Patent, the invention is presented as an improvement to the efficiency of digital image sharing systems through the use of automated facial recognition technology (Compl. ¶34).
• The Patented Solution: This patent focuses on a collaborative or networked approach. It claims a device that performs image sharing using "face recognition information that is based on third party input of a third party that is provided by the third party into at least one other device" (’726 Patent, Abstract). The system leverages facial recognition data from an external source (a "third party" on "another device") to identify and display images on a user's device for potential sharing, but only if a "relation exists between the user of the device and the third party" (’726 Patent, col. 2:25-40).
• Technical Importance: The approach is alleged to improve the speed and efficiency with which users can discover and share relevant groups of digital images by leveraging externally generated facial recognition data (Compl. ¶36).

Key Claims at a Glance

• The complaint asserts at least Claim 1 (Compl. ¶41).
• The essential elements of independent Claim 1 include:
  • providing at least one option for sharing images;
  • the sharing is performed utilizing face recognition information based on third party input from a third party on at least one other device;
  • this face recognition information is only utilized if a relation exists between the user of the device and the third party;
  • in connection with the sharing option, displaying a second set of images containing a face that was recognized using the third-party face recognition information. (’726 Patent, col. 71:49-72:32).
• The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 10,027,727 - "Facial Recognition Device, Apparatus, and Method"

• Patent Identification: U.S. Patent No. 10,027,727, "Facial Recognition Device, Apparatus, and Method," issued July 17, 2018 (’727 Patent).
• Technology Synopsis: This invention addresses a similar problem of efficient image sharing (Compl. ¶46). The patented solution involves a device displaying images that are accessible via "at least one other device" and which contain the face of the user of the current device. This display is triggered by using "face recognition information of the user of the device that is based on the user input identifying the at least one image including the face of the user of the device" (Compl. ¶48; ’727 Patent, Abstract).
• Asserted Claims: The complaint asserts at least Claim 1 (Compl. ¶53).
• Accused Features: The accused features are functionalities within the Google Photos application on LG devices that allow for the identification, grouping, and sharing of photos based on facial recognition (Compl. ¶¶7, 52).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are LG smartphones and tablets, including but not limited to the LG V40, V35, and G7 series, which have the Google Photos application installed ("Accused Devices") (Compl. ¶7).

Functionality and Market Context

The complaint alleges that the Accused Devices, through the Google Photos application, practice the claimed inventions. The relevant functionality involves using automated facial recognition to identify faces in digital images, associate those faces with identifiers, and enable users to share sets of images based on the recognized faces (Compl. ¶¶25, 37, 49). The complaint does not provide further technical details on the operation of Google Photos, instead alleging that the Accused Devices practice each element of the asserted claims as demonstrated in claim charts attached as exhibits (Compl. ¶¶29, 41, 53).

IV. Analysis of Infringement Allegations

The complaint’s narrative infringement allegations are conclusory, stating that the Accused Devices infringe and directing all technical specifics to claim chart exhibits (Exhibits D, E, and F) that were not provided with the complaint (Compl. ¶¶28, 40, 52). The complaint's text does not contain factual assertions that map specific features of the Accused Devices to the elements of the asserted claims. Therefore, a detailed claim chart summary cannot be constructed based on the provided complaint.

• Identified Points of Contention:
  • Scope Questions (’136 Patent): A potential issue may arise from the claim term "indicia each including at least a portion of an image including a face." The analysis may question whether a selectable icon representing a group of photos tagged with a person’s name in Google Photos, which may itself be a cropped face, meets this limitation as described in the patent.
  • Technical Questions (’726 Patent): The infringement allegation for the ’726 Patent hinges on the use of "face recognition information that is based on the third party input of the third party that is provided by the third party into the at least one other device." A central question will be what evidence the complaint provides that Google's proprietary, server-based facial recognition constitutes input from a "third party" on "another device" as contemplated by the patent.

V. Key Claim Terms for Construction

• The Term: "indicia including at least a portion of an image including a face" (’136 Patent, Claim 1)

• Context and Importance: The definition of "indicia" is critical because it defines the user-selectable object that initiates the claimed method. Practitioners may focus on this term because the infringement theory depends on whether a user's interaction with the Google Photos interface (e.g., tapping a "person" thumbnail) corresponds to the specific type of "indicia" claimed.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification does not appear to provide an explicit, limiting definition of "indicia," which may suggest the term should be given its plain and ordinary meaning. The term is used broadly throughout the claim text.
  • Evidence for a Narrower Interpretation: The abstract describes displaying "a plurality of indicia each including at least a portion of an image including a face" as the initial step (’136 Patent, Abstract). Embodiments shown in figures like 31A and 31B depict user interfaces where individual photos or cropped faces within photos are the selectable elements, which could support a narrower construction limited to direct representations of images rather than abstract group icons (’136 Patent, Figs. 31A-B).

• The Term: "face recognition information that is based on the third party input of the third party that is provided by the third party into at least one other device" (’726 Patent, Claim 1)

• Context and Importance: This term is central to the novelty and scope of the claim, distinguishing it from a self-contained facial recognition system. The infringement case against Google Photos, a vertically integrated service, will likely depend on whether Google's own servers can be construed as a "third party" providing input from "another device" relative to the user's smartphone.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification describes system flows where a "service" with servers communicates with user devices, which could be interpreted as a distinct "third party" entity (’726 Patent, Fig. 31, col. 8:51-57).
  • Evidence for a Narrower Interpretation: The term "third party" often implies a separate commercial or legal entity. A defendant may argue that a single provider's client-server architecture does not constitute a "third party" relationship. The patent's discussion of relationships between "User 1" and "User 2" may suggest the "third party" is another human user, not the service provider itself (’726 Patent, Fig. 31).

VI. Other Allegations

• Indirect Infringement: The complaint focuses on direct infringement and does not plead specific facts to support claims of induced or contributory infringement (Compl. ¶¶28, 40, 52).
• Willful Infringement: The complaint does not contain an explicit allegation of willful infringement. It alleges that Defendants had knowledge of the patents "at least as early as the date of service of this Complaint," which would only support a claim for post-filing, not pre-filing, willfulness (Compl. ¶¶30, 42, 54).

VII. Analyst’s Conclusion: Key Questions for the Case

1. A dispositive issue is one of procedural viability: given that all asserted claims of all three patents-in-suit were disclaimed during subsequent Inter Partes Review proceedings, what is the legal basis for the continuation of this action as pleaded?
2. A key evidentiary question will be one of factual sufficiency: can the Plaintiff provide sufficient evidence to map the specific operations of the Google Photos application to the claim limitations, a burden it did not meet in the text of the complaint, which relies entirely on unprovided exhibits?
3. A core issue for claim construction will be one of entity definition: can a vertically integrated service like Google Photos, which operates across a user's device and its own servers, be considered to involve a "third party" providing input from "at least one other device" as required by the claims of the ’726 and ’727 patents?