DCT
3:25-cv-02642
Avant Location Tech LLC v. Apple Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Avant Location Technologies LLC (Texas)
- Defendant: ecobee Technologies ULC d/b/a ecobee (British Columbia, Canada)
- Plaintiff’s Counsel: Fabricant LLP; Davis Firm PC
- Case Identification: 2:24-cv-00354, E.D. Tex., 12/20/2024
- Venue Allegations: Plaintiff alleges venue is proper because Defendant, a Canadian corporation, may be sued in any judicial district. Further allegations state Defendant is subject to personal jurisdiction, has committed acts of infringement, and maintains a regular and established place of business in the district. The complaint notes that Defendant has not contested venue in prior patent litigation in the same district.
- Core Dispute: Plaintiff alleges that Defendant’s smart home products and services, including thermostats and security systems, infringe five patents related to monitoring a mobile device's presence within a defined geographic area to trigger location-based services.
- Technical Context: The technology at issue involves geofencing, where a virtual boundary is used to detect a mobile device's entry or exit, which then automates functions in connected devices, a key feature in the Internet of Things (IoT) and smart home markets.
- Key Procedural History: The complaint is a First Amended Complaint in a member case (2:24-cv-00354) that is part of a lead case (2:24-cv-00757) against Apple, Inc. No prior litigation, licensing, or post-grant proceedings involving the patents-in-suit are mentioned in the complaint.
Case Timeline
| Date | Event |
|---|---|
| 2006-03-28 | Priority Date for all Patents-in-Suit |
| 2014-05-27 | U.S. Patent No. 8,738,040 Issued |
| 2015-08-25 | U.S. Patent No. 9,119,030 Issued |
| 2016-11-01 | U.S. Patent No. 9,485,621 Issued |
| 2017-04-11 | U.S. Patent No. 9,622,032 Issued |
| 2018-06-26 | U.S. Patent No. 10,009,720 Issued |
| 2024-12-20 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,738,040 - Method and System for Monitoring a Mobile Station Presence in a Special Area
The Invention Explained
- Problem Addressed: The patent's background describes prior art methods for creating special mobile service areas (e.g., for different billing rates) as inflexible, often requiring physical modification of radio broadcasting units or pre-loading those units with all potential mobile device identities, which is not scalable for large, transient populations like those in an airport (’040 Patent, col. 1:65-2:11).
- The Patented Solution: The invention proposes a system where "checking data" defining a special area is sent to and stored on the mobile station itself. The mobile station then uses this data to autonomously determine if it is receiving a "distinctive defining signal" from a local transmitter (e.g., a specific cell tower or Wi-Fi hotspot). Upon detecting its presence in the special area, the mobile station sends an "updating signal" to the mobile network to trigger a change in service, without the network's radio transmitters needing any prior knowledge of the mobile station's identity (’040 Patent, col. 2:44-64).
- Technical Importance: This approach allows for the dynamic creation and association of location-based services for any mobile device, decoupling the service logic from the fixed radio hardware of the network (Compl. ¶13).
Key Claims at a Glance
- The complaint asserts independent claim 13 (Compl. ¶30).
- Claim 13 recites a mobile station comprising:
- observing means to observe a channel and process any received signal to determine if it is receiving a defining signal;
- a processor to process any received defining signal and, based on previously obtained checking data, determine if the signal is a distinctive defining signal that defines a special area;
- the processor to determine if it is present in the special area; and
- the processor to send an updating signal to a mobile telephone network about its presence, where the signal sending is uncorrelated to any phone call and is based on the last determination of its presence.
U.S. Patent No. 10,009,720 - Method and System for Monitoring a Mobile Station Presence in a Special Area
The Invention Explained
- Problem Addressed: Like its family members, the patent addresses the inflexibility of prior art systems for establishing location-specific mobile services (’720 Patent, col. 2:6-11).
- The Patented Solution: This invention describes a method where a mobile station receives a "distinctive defining signal" that may also include information about whether the transmitting device is in a "predetermined environment." The mobile station sends an "updating signal" to servers of a "provider of presence related services," which can then adjust an "operating parameter" such as a "service flag." This architecture explicitly contemplates that the entity providing the location-based service may be separate from the mobile network carrier (’720 Patent, Abstract; col. 2:12-20).
- Technical Importance: The method provides a framework for third-party service providers to leverage mobile network location information to create and manage their own presence-based applications (Compl. ¶18).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶45).
- Claim 1 recites a method comprising:
- receiving and processing a distinctive defining signal in a mobile station, where the signal defines a special area and includes information about whether the transmitting device is in a predetermined environment; and
- sending from the mobile station, via a mobile telephone network, an updating signal to servers of a provider of presence related services about the mobile station's presence;
- the updating signal is usable by the servers to adjust an operating parameter (e.g., a tariff or service flag) and comprises the information about the predetermined environment.
U.S. Patent No. 9,119,030 - Method and System for Monitoring a Mobile Station Presence in a Special Area
- Patent Identification: U.S. Patent No. 9,119,030, "Method and System for Monitoring a Mobile Station Presence in a Special Area," Issued August 25, 2015 (Compl. ¶10).
- Technology Synopsis: This patent claims a server-centric method for a provider of presence-related services. The provider stores data linking a mobile station to a special area on its servers, transmits "checking data" to the mobile station, receives an "updating signal" from the mobile station when it enters the area, and uses that signal to enable or disable a service (Compl. ¶58).
- Asserted Claims: At least independent claim 1 (Compl. ¶58).
- Accused Features: The ecobee servers storing user account and geofence data, communicating with the ecobee app, receiving location status updates, and enabling/disabling services like Arm/Disarm Assist (Compl. ¶¶59-64).
U.S. Patent No. 9,485,621 - Method and System for Monitoring a Mobile Station Presence in a Special Area
- Patent Identification: U.S. Patent No. 9,485,621, "Method and System for Monitoring a Mobile Station Presence in a Special Area," Issued November 1, 2016 (Compl. ¶11).
- Technology Synopsis: This patent claims a method for a provider of presence-related services that is explicitly "different than the mobile telephone network." The provider's servers store linking data, receive an updating signal from a mobile station via the mobile telephone network, and use that signal to enable or disable a service based on the mobile station's presence (Compl. ¶72).
- Asserted Claims: At least independent claim 1 (Compl. ¶72).
- Accused Features: The ecobee service, as a provider distinct from the cellular carrier, using the cellular network for data communication between the ecobee app and its servers to manage smart home functions based on user location (Compl. ¶¶73, 75).
U.S. Patent No. 9,622,032 - Method and System for Monitoring a Mobile Station Presence in a Special Area
- Patent Identification: U.S. Patent No. 9,622,032, "Method and System for Monitoring a Mobile Station Presence in a Special Area," Issued April 11, 2017 (Compl. ¶12).
- Technology Synopsis: This patent claims a method where a server, after receiving an updating signal indicating a mobile station's presence, can send "second checking data" back to the mobile station to modify the special area. This provides a mechanism for dynamically updating a geofence on the device from the server side (Compl. ¶87).
- Asserted Claims: At least independent claim 1 (Compl. ¶87).
- Accused Features: The functionality within the ecobee app that allows a user to edit the geofence radius, which is then updated for use by the device after communication with ecobee's servers (Compl. ¶¶92-93).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities include ecobee’s smart home ecosystem, specifically its Smart Thermostats, SmartCameras, SmartSensors, and the associated ecobee mobile application and back-end services, such as "Smart Security" (Compl. ¶24).
Functionality and Market Context
- The complaint alleges that the accused products provide an automated home management service called "Arm/Disarm Assist," which works with a feature named "Autopilot" (Compl. ¶31). This system uses a combination of the user's phone location (geofencing), its connection to a home Wi-Fi network, and data from in-home ecobee sensors to determine if the user is "Home" or "Away" (Compl. ¶31). A screenshot from an ecobee support article describes this multi-factor approach to determining user presence (Compl. p. 10). Based on this presence determination, the system automatically adjusts thermostat settings or changes the state of the security system (Compl. ¶32). The user defines the geofence (the "special area") within the ecobee app, which communicates the user's location status to ecobee's servers via the cellular data network (Compl. ¶¶33-34).
IV. Analysis of Infringement Allegations
'040 Patent Infringement Allegations
| Claim Element (from Independent Claim 13) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| observing means to observe a channel and process any received signal in order to determine whether or not it is receiving a defining signal | The ecobee app running on a smartphone uses the phone's radios (e.g., GPS, Wi-Fi) to receive signals related to its location. | ¶31 | col. 6:61-65 |
| a processor to process any received defining signal and to determine, based on a previously obtained checking data, whether or not the defining signal received is a distinctive defining signal that at least partially defines a special area | The app's processor uses the defined geofence boundary (the "checking data") to determine if the phone's current location signals (GPS, Wi-Fi, ecobee sensor signals) indicate presence within that "special area." A screenshot shows the app interface for setting actions upon entering or leaving the geofence (p. 11). | ¶32 | col. 6:1-12 |
| to send an updating signal ... to a mobile telephone network about its presence in one or more of the special areas | The app sends a signal indicating the phone has entered or exited the geofence to ecobee's servers via the cellular network. An architectural diagram shows this communication path to back-end servers (p. 13). | ¶33, ¶34 | col. 2:33-36 |
| where said updating signal sending is uncorrelated to any mobile station phone call establishment and is based on the last determination performed by the mobile station about its presence in the special areas | The updating signal is alleged to be a data transmission over the cellular network, not a phone call, and is sent based on the app's most recent determination that it has crossed the geofence boundary. The complaint cites a user's account of hearing a "little ping" notification as evidence of a non-call data event. | ¶37 | col. 9:52-57 |
- Identified Points of Contention:
- Scope Questions: Claim 13 is a means-plus-function claim. A key question will be whether the structure disclosed in the patent's specification for the "observing means" (e.g., a radio receiver processing cellular or Wi-Fi identification codes) is structurally equivalent to the accused functionality, which relies on a smartphone's GPS receiver and software processing location coordinates against a stored map boundary.
- Technical Questions: The complaint alleges the "defining signal" is a composite of phone location, Wi-Fi status, and sensor data. The court may need to determine if "a defining signal" as required by the claim can be read on such a combination of inputs processed by the mobile station, or if it requires a single, discrete signal transmitted by an external device.
'720 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| receiving and processing the distinctive defining signal in the mobile station, the distinctive defining signal at least defining a special area... | The ecobee app (mobile station) processes the phone's location via geofencing and signals from ecobee Smart Sensors to determine its presence within the "home" location (special area). | ¶46, ¶47 | col. 2:21-28 |
| the distinctive defining signal including information indicating whether or not the radio communication defining device is in a predetermined environment | The complaint alleges that the ecobee app uses stored location data as the information indicating the device's environment. | ¶47 | col. 21:8-14 |
| sending from the mobile station via a mobile telephone network an updating signal to one or more servers of a provider of presence related services about the mobile station's presence... | The ecobee app sends updated location information to ecobee's servers (the provider of presence related services) over the mobile network when the user's location status changes relative to the geofence. | ¶48 | col. 2:29-33 |
| the updating signal being useable by the one or more servers ... to adjust an operating parameter, which comprises one or more of a tariff and a service flag... | The ecobee servers use the updating signal from the app to set a "Home/Away" parameter, which the complaint equates to a "service flag," that adjusts the operation of the smart home system. | ¶49 | col. 2:34-39 |
- Identified Points of Contention:
- Scope Questions: The claim requires that the "distinctive defining signal" itself includes information about the "predetermined environment." The complaint's allegation maps this function to "stored location data" used by the app. A central dispute may be whether this meets the claim limitation, as the accused implementation appears to perform this check on the mobile station rather than receiving it as part of the signal.
- Technical Questions: A key evidentiary question will be identifying the "radio communication defining device that transmits a distinctive defining signal." The complaint points to a combination of phone location and sensor signals. The court will have to determine if this architecture, where the mobile station determines its own location, maps to the claimed method of a separate device transmitting a signal that the mobile station receives.
V. Key Claim Terms for Construction
Term: "distinctive defining signal" (’040 Patent, Claim 13; ’720 Patent, Claim 1)
- Context and Importance: This term is the lynchpin of the infringement allegations for all asserted patents. Its construction will determine whether the accused geofencing system, which relies on a mobile device's self-determined GPS location relative to a stored map boundary, falls within the scope of claims that appear to describe the reception of a broadcasted radio signal.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patents state the signal "defines the special area by its coverage" (’720 Patent, Abstract). A plaintiff may argue that a GPS coordinate set, when processed, effectively defines a location within a "coverage" area (the geofence), and thus constitutes such a signal.
- Evidence for a Narrower Interpretation: The specifications consistently provide examples of the "distinctive defining signal" as a radio signal transmitted by an external device, such as a "special mobile telephone network identification code" from a base station or a signal from a Wi-Fi, Bluetooth, or DECT device (’040 Patent, col. 6:23-27; col. 7:42-50). A defendant may argue the term is limited to such externally transmitted radio signals.
Term: "provider of presence related services" (’720 Patent, Claim 1)
- Context and Importance: Several patents distinguish between the "mobile telephone network" and the "provider of presence related services." This term's construction is important for establishing the claimed architecture, particularly for patents like the ’621 Patent that require the provider to be "different than the mobile telephone network." Practitioners may focus on this term to analyze whether ecobee's integrated hardware-software-service model fits the claimed separation of roles.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent suggests the special operating means "may be at least partly included in the data processing means of the mobile telephone network" or "be own or operate by an external provider" (’720 Patent, col. 4:31-35). This allows for flexibility where the service provider could be the network operator or a third party.
- Evidence for a Narrower Interpretation: The specific language in claims of related patents, such as the ’621 Patent, explicitly requires the provider to be "different than the mobile telephone network" (’621 Patent, Claim 1). This suggests the patent family as a whole contemplates a distinct third-party entity, which a defendant might argue is not met by a vertically integrated system.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement for all five patents-in-suit. The allegations are based on Defendant manufacturing and selling the accused products while also providing instructions, user manuals, marketing materials, and online documentation that allegedly encourage and instruct end-users on how to set up and use the accused geofencing features (e.g., Compl. ¶¶38, 51, 65, 80, 94).
- Willful Infringement: The complaint alleges Defendant had "actual notice of the Asserted Patents, at least as of the filing date of this Complaint" (Compl. ¶25). No facts supporting pre-suit knowledge are alleged. The inducement counts include allegations of "willful blindness" but do not provide a factual basis for it beyond the general provision of product documentation (e.g., Compl. ¶39).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "distinctive defining signal," rooted in the patents’ examples of discrete, broadcasted radio signals (e.g., cell IDs, Wi-Fi beacons), be construed to encompass a mobile device's internally-calculated location state derived from GPS data and compared against a stored digital map boundary (a geofence)?
- A second primary question will be one of architectural mapping: do the accused ecobee products, where a smartphone app determines its own location and reports a status to a server, align with the claimed architecture of a "mobile station" receiving a signal transmitted by a separate "radio communication defining device"? The case may turn on whether the Plaintiff can successfully argue that inputs like GPS satellite signals and local sensor data satisfy the role of the claimed "defining device" and "defining signal."
- For the means-plus-function limitations, a key question of structural equivalence will arise: is the multi-sensor data fusion and software logic in a modern smartphone, as used by the ecobee app, structurally equivalent to the specific radio-signal-processing components disclosed in the patents' specifications from the mid-2000s?