Uniloc USA Inc v. LG Electronics USA Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Uniloc USA, Inc. (Texas) and Uniloc Luxembourg, S.A. (Luxembourg)
  • Defendant: LG Electronics U.S.A., Inc. (Delaware); LG Electronics Mobilecomm U.S.A., Inc. (California); and LG Electronics, Inc. (Korea)
  • Plaintiff’s Counsel: Prince Lobel Tye LLP; Nelson Bumgardner PC
• Case Identification: 4:17-cv-00832, N.D. Tex., 02/05/2018
• Venue Allegations: Venue is based on Defendant LG Electronics U.S.A., Inc. having a place of business within the Northern District of Texas.
• Core Dispute: Plaintiff alleges that a wide range of Defendant's smartphones, smartwatches, and tablets infringe three patents related to methods for monitoring human activity using inertial sensors.
• Technical Context: The technology concerns accurately counting periodic motions like steps using sensors in portable devices, a foundational feature for the modern health and fitness functionality of smartphones and wearables.
• Key Procedural History: The complaint is an Amended Complaint filed in 2018. Significantly, subsequent inter partes review (IPR) proceedings at the U.S. Patent and Trademark Office, concluded in January and February 2022, resulted in the cancellation of all claims asserted in this complaint. One claim from one of the patents-in-suit, which was not asserted in the complaint, was found patentable. This procedural history fundamentally impacts the viability of the infringement counts as pleaded.

Case Timeline

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

U.S. Patent No. 7,653,508, “HUMAN ACTIVITY MONITORING DEVICE,” issued Jan. 26, 2010 (’508 Patent)

The Invention Explained

• Problem Addressed: The patent describes that prior art step-counting devices using inertial sensors were often inaccurate because they were confused by motion noise and required the user to position the device in a specific, limited set of orientations ('508 Patent, col. 1:19-27).
• The Patented Solution: The invention proposes a method to make activity monitoring orientation-independent. It does this by continuously determining the orientation of the device's inertial sensor, assigning a "dominant axis" (typically aligned with gravity), and then monitoring a user's accelerations relative to this dynamic axis to count periodic motions like steps ('508 Patent, Abstract; col. 2:9-16). This allows the device to be carried in a pocket, purse, or backpack and still provide an accurate count ('508 Patent, col. 2:31-35).
• Technical Importance: This approach aimed to significantly improve the usability and reliability of pedometers embedded in portable electronic devices by removing the constraint of fixed orientation (Compl. ¶10).

Key Claims at a Glance

• The complaint asserts independent claims 1 (a method) and 11 (a device) ('508 Patent, col. 15:10-18, col. 16:11-17; Compl. ¶14).
• Independent Claim 1 (method) requires:
  • continuously determining an orientation of the inertial sensor;
  • assigning a dominant axis;
  • updating the dominant axis as the orientation of the inertial sensor changes; and
  • counting periodic human motions by monitoring accelerations relative to the dominant axis.
• Independent Claim 11 (device) requires:
  • a dominant axis logic to continuously determine orientation, assign a dominant axis, and update the dominant axis; and
  • a counting logic to count periodic motions by monitoring accelerations relative to the dominant axis.
• The complaint reserves the right to assert dependent claims 3, 6-7, 13, 15-16, and 19 (Compl. ¶14).

U.S. Patent No. 8,712,723, “HUMAN ACTIVITY MONITORING DEVICE,” issued Apr. 29, 2014 (’723 Patent)

The Invention Explained

• Problem Addressed: As a continuation of the application leading to the ’508 Patent, this patent addresses the same problem of improving the accuracy of motion detectors against false positives and orientation changes ('723 Patent, col. 1:28-44; Compl. ¶24).
• The Patented Solution: The invention refines the dominant axis concept by explicitly tying it to gravity and introducing a temporal filter called a "cadence window" ('723 Patent, col. 15:16-29). The system identifies a motion as a step only if it occurs within this expected time window, which itself is updated based on the user's actual cadence. This helps differentiate rhythmic walking from other random movements (Compl. ¶24).
• Technical Importance: The introduction of a dynamic cadence window provides an additional layer of filtering to improve accuracy and reduce false positives, a key challenge for activity monitors (Compl. ¶24).

Key Claims at a Glance

• The complaint asserts independent claims 1 (a method) and 10 (a device) ('723 Patent, col. 15:16-29, col. 16:1-10; Compl. ¶27).
• Independent Claim 1 (method) requires:
  • assigning a dominant axis with respect to gravity;
  • updating the dominant axis based on orientation changes;
  • counting periodic human motions when acceleration meeting motion criteria is detected within a cadence window; and
  • updating the cadence window as actual cadence changes.
• Independent Claim 10 (device) requires:
  • a dominant axis logic to assign and update a dominant axis with respect to gravity;
  • a counting logic to count motions detected within a cadence window; and
  • a cadence logic to update the cadence window.
• The complaint reserves the right to assert dependent claims 5-6, 14, and 16-17 (Compl. ¶27).

U.S. Patent No. 7,881,902, “HUMAN ACTIVITY MONITORING DEVICE,” issued Feb. 1, 2011 (’902 Patent)

The Invention Explained

• This patent focuses on power conservation in activity monitoring devices. The invention describes using an inertial sensor to monitor for a "motion signature" indicative of an activity the device is configured to record (e.g., walking). In the absence of such a signature, the device enters a "sleep/idle mode" to conserve battery power, exiting that mode when relevant motion is detected ('902 Patent, col. 15:11-19; Compl. ¶37).

Key Claims at a Glance

• Independent claims 1 and 5 (both method claims) are asserted ('902 Patent, col. 15:11-19, col. 15:46-56; Compl. ¶40).

Accused Features

• The accused devices are alleged to implement power-saving modes that are responsive to data from their motion sensors, thereby infringing the claimed methods for entering and exiting a sleep mode based on detected motion signatures (Compl. ¶¶13, 37, 40).

III. The Accused Instrumentality

Product Identification

• The complaint names a broad range of LG's electronic products, including smartphones (e.g., V10, V20, V30, G series, K series), smartwatches (e.g., LG G Watch, Watch Urbane series, Watch Sport), and tablets (e.g., G Pad II 8.3 LTE), collectively termed the "Accused Infringing Devices" (Compl. ¶13).

Functionality and Market Context

• The complaint alleges that these devices are equipped with motion sensors like pedometers, gyroscopes, and accelerometers, along with processors that run associated software, such as "LG Health" (Compl. ¶13). The relevant functionality is the capacity of this hardware and software combination to count steps and monitor other periodic human motions by processing acceleration data (Compl. ¶¶13-14). These features are central to the health and fitness-tracking capabilities marketed with these widely sold consumer devices.

IV. Analysis of Infringement Allegations

The complaint references claim chart exhibits (Exhibits 1, 2, and 3) that are not attached to the publicly filed document; therefore, the infringement allegations are summarized based on the complaint's narrative.

'508 Patent Infringement Allegations

The complaint alleges that the Accused Devices practice the patented method by using their inertial sensors and processors to "constantly [monitor] the orientation of an inertial sensor by identifying and updating a dominant axis, and determining the motion of a user by reference to that axis" (Compl. ¶10). This theory directly maps the alleged functionality of the LG devices—specifically their ability to count steps regardless of how they are carried—onto the elements of asserted claims 1 and 11.

'723 Patent Infringement Allegations

The infringement theory for the ’723 Patent builds on the '508 allegations, adding that the Accused Devices improve accuracy by "assigning the dominant axis of an inertial sensor with respect to gravity" and "determining motion of a user based on reference to the dominant axis and cadence of the movement" (Compl. ¶24). This alleges that the devices' software uses not only a dominant axis but also a timing or "cadence" filter to reduce false positives, mapping to the "cadence window" limitation in asserted claims 1 and 10 of the ’723 Patent.

No probative visual evidence provided in complaint.

Identified Points of Contention

• Scope Questions: Had the claims remained valid, a central dispute would have concerned the construction of key terms. For instance, what degree of monitoring is required to meet the "continuously determining an orientation" limitation of the ’508 Patent? For the ’723 Patent, a key question would be whether the accused software's filtering logic constitutes a "cadence window" that is "continuously updated as an actual cadence changes."
• Technical Questions: The complaint does not provide specific evidence regarding the actual algorithms used in LG's software (e.g., LG Health). A primary factual question would be whether LG's software architecture actually calculates and updates a "dominant axis" as described in the patents, or if it employs an alternative, non-infringing mathematical method to achieve orientation-agnostic step counting.

V. Key Claim Terms for Construction

The Term: "dominant axis" (’508 and ’723 Patents)

Context and Importance

• This term is the technological core of the asserted patents. The entire infringement case rests on whether the accused devices can be shown to "assign" and "update" a "dominant axis." Practitioners may focus on this term because its construction dictates whether a simple gravity vector suffices or if a more complex, calculated virtual axis is required.

Intrinsic Evidence for Interpretation

• Evidence for a Broader Interpretation: The specification suggests the dominant axis can be the one "most influenced by gravity," which could be interpreted broadly to mean the axis most aligned with the force of gravity at any given moment ('508 Patent, col. 5:15-18).
• Evidence for a Narrower Interpretation: The specification also describes the dominant axis as potentially corresponding to a "virtual axis that is a component of a virtual coordinate system," which could support a narrower construction requiring a specific type of coordinate transformation or calculation ('508 Patent, col. 5:28-31).

The Term: "cadence window" (’723 Patent)

Context and Importance

• This term is a key element distinguishing the ’723 Patent's claims. Its definition is critical for determining if the temporal filtering in the accused devices infringes.

Intrinsic Evidence for Interpretation

• Evidence for a Broader Interpretation: The patent describes a cadence window as "a window of time since a last step was counted that is looked at to detect a new step," which could be read broadly on any system that expects the next step within a set time frame ('723 Patent, col. 3:64-col. 4:2).
• Evidence for a Narrower Interpretation: Claim 1 requires "updating the cadence window as actual cadence changes." This could be construed to require a dynamic window that continuously adapts, potentially excluding systems that use fixed time windows or update them infrequently ('723 Patent, col. 15:28-29).

VI. Other Allegations

Indirect Infringement

• The complaint alleges active inducement, stating that LG "intentionally instructs its customers to infringe" by providing materials such as "training videos, demonstrations, brochures, and installation and user guides" on its websites and other platforms (Compl. ¶¶15, 28, 41). It also alleges contributory infringement, asserting that the software in the Accused Devices is a material component especially made for practicing the invention and not a staple article of commerce (Compl. ¶¶16-17, 29-30, 42-43).

Willful Infringement

• The allegations of willfulness are based on post-suit knowledge. The complaint asserts that LG has been on notice of the patents "since, at the latest, the service of the Complaint" and that its continued infringement will be known and intended (Compl. ¶¶18, 31, 44).

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

The trajectory of this case appears to be dictated by procedural events that occurred after the complaint was filed. The central questions are therefore primarily procedural rather than technical.

• A core issue is one of case viability: Given that subsequent IPR proceedings resulted in the cancellation of every patent claim asserted in the complaint, what legal basis remains for the action to proceed as currently pleaded?

• A key procedural question is one of amendment: Can the plaintiff amend its complaint to assert the single surviving claim (Claim 9 of the ’902 Patent), which was not previously asserted? The court would need to determine if such an amendment is permissible under the Federal Rules of Civil Procedure at this stage of litigation.

• A now-moot evidentiary question would have been one of technical implementation: Had the claims survived, the case would have turned on whether the accused LG software, such as LG Health, actually operates by calculating and updating a "dominant axis" and employing a "cadence window" as claimed, or if it uses a fundamentally different, non-infringing algorithm to achieve a similar result in activity tracking.