Big Will Enterprises Inc v. Solera Holdings Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Big Will Enterprises, Inc. (British Columbia, Canada)
  • Defendant: Solera Holdings, Inc. (Delaware)
  • Plaintiff’s Counsel: Eureka Intellectual Property Law, PLLC
• Case Identification: 4:23-cv-00197, N.D. Tex., 02/25/2023
• Venue Allegations: Venue is alleged to be proper based on Defendant operating a large corporate office and routinely conducting business within the Northern District of Texas.
• Core Dispute: Plaintiff alleges that Defendant’s Mentor driver-monitoring applications and services infringe six patents related to determining motion activity using sensors in wireless communication devices.
• Technical Context: The technology involves using smartphone sensors, such as accelerometers and gyroscopes, to identify and analyze human or vehicle movements, a capability central to telematics, insurtech, and personal safety applications.
• Key Procedural History: The complaint does not specify any prior litigation, licensing history, or post-grant proceedings related to the patents-in-suit.

Case Timeline

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

U.S. Patent No. 10,521,846 - "Targeted advertisement selection for a wireless communication device (WCD)", Issued December 31, 2019

The Invention Explained

• Problem Addressed: The patent describes a need for more intelligent electronic messaging and notification systems that can take actions based on the accurately identified motion of a person or object (’846 Patent, col. 2:28-46).
• The Patented Solution: The invention uses sensors within a wireless communication device (WCD), like a smartphone, to determine a "mobile thing motion activity" (MTMA), such as walking, running, or driving. This determined activity is then used to select and deliver a targeted advertisement to the user's device (’846 Patent, Abstract; col. 2:47-52). The system architecture involves an MTMA identification system and an action determination system which can be located on the device, a remote server, or split between them (’846 Patent, FIG. 2A-2C).
• Technical Importance: This approach links real-time physical activity detection with content delivery, enabling context-aware advertising and services based on a user's current actions.

Key Claims at a Glance

• The complaint asserts independent claims 1, 12, 17, and 23 (Compl. ¶¶18, 29, 34, 40).
• Independent claim 1, a method claim, includes the following essential elements:
  • Determining a mobile thing motion activity (MTMA) associated with a mobile thing (MT) transporting a wireless communication device (WCD), based on sensor data from the WCD.
  • The sensor data measures physical movement in three-dimensional space and includes time values to permit statistical analysis.
  • Selecting an advertisement based at least in part upon the determined MTMA.
  • Causing the advertisement to be communicated to the WCD.
  • Wherein determining the MTMA includes storing reference MTMA signatures, normalizing sensor data, analyzing it in frequency and time domains, and selecting a most likely MTMA signature based on likelihoods.
• The complaint also asserts numerous dependent claims (Compl. ¶¶19-28, 30-33, 35-39).

U.S. Patent No. 9,049,558 - "Systems and methods for determining mobile thing motion activity (MTMA) using sensor data of wireless communication device (WCD) and initiating activity-based actions", Issued June 02, 2015

The Invention Explained

• Problem Addressed: Prior art methods for identifying a person's motion activity with a device-based accelerometer were often inaccurate, required the device to be in a fixed position (e.g., hip pocket), and struggled to distinguish between similar activities like biking and driving (’558 Patent, col. 2:1-24). The complaint highlights this challenge, noting a smartphone may be in a pocket, purse, or backpack in no particular orientation (Compl. ¶3).
• The Patented Solution: The invention provides a method to accurately identify motion regardless of the device's orientation. It achieves this by first receiving streams of sensor data and using a particular set of those values to establish a reference coordinate system, often by identifying the constant force of Earth's gravity to determine the "down" direction. Subsequent sensor data is then normalized into this reference coordinate system, allowing for accurate calculation of movement and determination of the specific MTMA (’558 Patent, Abstract; col. 27:5-52).
• Technical Importance: This orientation-agnostic approach was a key step in making motion detection from mobile devices practical and reliable for real-world use, as users do not carry their phones in a fixed position.

Key Claims at a Glance

• The complaint asserts independent claims 1, 17, 27, 36, 42, and 52 (Compl. ¶¶43, 59, 69, 78, 84, 94).
• Independent claim 1, a method claim, includes the following essential elements:
  • Receiving a time value and at least three streams of data sample values from sensor(s) of a WCD transported by a mobile thing.
  • Recognizing a particular set of data sample values as a reference for defining an orientation of the WCD in a coordinate system.
  • Computing reference data based upon that recognition, which defines a relationship between subsequent non-reference data and the reference set.
  • Calculating movement data in the coordinate system for other non-reference data based upon the reference data.
  • Determining an MTMA associated with the MT based upon the movement data.
• The complaint also asserts numerous dependent claims (Compl. ¶¶44-58, 60-68, 70-77, 79-83, 85-93, 95-102).

U.S. Patent No. 8,977,230 - "Interactive personal surveillance and security (IPSS) systems and methods", Issued March 10, 2015 (Multi-Patent Capsule)

• Technology Synopsis: This patent leverages the motion-detection technology to create a personal surveillance and security system. It describes a system that can detect an event like an accident or crime based on sensor data, communicate a message to the user, and enable additional sensors to gather more information for emergency response (’230 Patent, Abstract; Compl. ¶105).
• Asserted Claims: Independent claims 1, 11, and 21 are asserted (Compl. ¶¶105, 106, 107).
• Accused Features: The accused features are the Mentor application's "Automatic Crash Detection" capabilities, which allegedly use sensor data to detect collisions, trigger calls to an emergency center, and communicate crash scene data to facilitate a response (Compl. ¶¶105, 106). The complaint includes a screenshot from Defendant's marketing materials for "Precision Crash Detection" to support this allegation (Compl. p. 56).

U.S. Patent No. 8,737,951 - "Interactive personal surveillance and security (IPSS) systems and methods", Issued May 27, 2014 (Multi-Patent Capsule)

• Technology Synopsis: This patent describes a wireless device that uses its sensors to investigate a user's activity. It discloses a multi-stage process where a "first mode of operation" captures initial data, and if that data suggests a need for assistance (e.g., an accident), a "second mode of operation" is triggered to capture additional, more detailed data with other sensors (’951 Patent, Abstract; Compl. ¶110).
• Asserted Claims: Independent claims 1 and 10 are asserted (Compl. ¶¶110, 118).
• Accused Features: The accused Mentor system allegedly infringes by entering a first investigation process by monitoring accelerometer data when a user starts driving, and then entering a second, different investigation process to capture crash information if an accident is determined (Compl. ¶110).

U.S. Patent No. 8,559,914 - "Interactive personal surveillance and security (IPSS) systems and methods", Issued October 15, 2013 (Multi-Patent Capsule)

• Technology Synopsis: This patent focuses on a system that uses sensor data to determine a user's activity and corresponding "surveillance mode." Based on this mode, the system can facilitate a user-defined response and communicate surveillance information (e.g., driver habits, phone usage) to a remote computer (’914 Patent, Abstract; Compl. ¶121).
• Asserted Claims: Independent claims 5 and 15 are asserted (Compl. ¶¶121, 125).
• Accused Features: The Mentor application is accused of determining a surveillance mode (e.g., "driving"), facilitating user-defined responses (e.g., distinguishing a "riding mode"), and communicating surveillance information like driver habits and phone usage to remote computers for scoring (Compl. ¶¶121, 125).

U.S. Patent No. 8,452,273 - "Systems and methods for determining mobile thing motion activity (MTMA) using accelerometer of wireless communication device", Issued May 28, 2013 (Multi-Patent Capsule)

• Technology Synopsis: Similar to the ’558 patent, this patent addresses the problem of determining motion from a device without a fixed orientation. It claims a method of receiving 3D accelerometer data, recognizing a reference set to define a relationship between the 3D orientation and a 2D coordinate system, and then calculating movement in that 2D system to determine the motion activity (’273 Patent, Abstract; Compl. ¶130).
• Asserted Claims: Independent claims 1, 12, and 22 are asserted (Compl. ¶¶130, 141, 150).
• Accused Features: The Mentor system is accused of using 3D accelerometer data, calculating a reference based on gravity to establish an orientation in a 2D system, removing the gravity component, and calculating movement data in that 2D system to determine driving behaviors (Compl. ¶¶130, 141).

III. The Accused Instrumentality

Product Identification

• Defendant’s Mentor applications and associated services (Compl. ¶17).

Functionality and Market Context

• The complaint describes the Mentor applications as a "smartphone-deployed driver-behavior monitoring and reporting solution" (Compl. ¶17). The system allegedly uses smartphone accelerometers, gyroscopes, and GPS sensors to monitor and analyze driving behaviors, including acceleration, braking, cornering, speeding, and phone distraction (Compl. p. 7). Based on this analysis, the system provides drivers with a "FICO® SAFE DRIVING SCORE," collects data, and offers rewards such as badges and points that can be redeemed for gift cards (Compl. pp. 7-9). The system also includes crash detection features that can trigger calls to emergency response centers (Compl. p. 54).

IV. Analysis of Infringement Allegations

’846 Patent Infringement Allegations

Identified Points of Contention:

• Scope Questions: A central dispute may concern the term "advertisement." The analysis will raise the question of whether the accused system’s "Badges" and "Rewards Points," which are redeemed for gift cards, fall within the scope of an "advertisement" as contemplated by the patent (’846 Patent, col. 78:26-44; Compl. ¶8).
• Technical Questions: A technical question may arise regarding the "selecting a most likely MTMA signature" step. The complaint alleges this is based on how accurately live data sets match reference data, but the court may need to evaluate the specific algorithms used by the accused product to determine if they perform the claimed normalization, analysis, and likelihood determination steps (Compl. ¶9).

’558 Patent Infringement Allegations

Identified Points of Contention:

• Technical Questions: The infringement analysis will likely focus on whether the accused system's method for establishing orientation is equivalent to the claimed method. A key question for the court will be whether Mentor's alleged use of Earth's gravity to "establish the current orientation of the device" (Compl. ¶44) constitutes "recognizing a particular set of data sample values as a reference" and "computing reference data based upon the recognition," as required by the claim language.
• Scope Questions: The term "recognizing" may be disputed. The parties may contest whether this term implies a simple measurement of a constant force (like gravity) or requires a more complex pattern-matching or signature-recognition step as described in certain embodiments of the patent (’558 Patent, col. 32:26-38).

V. Key Claim Terms for Construction

For the ’846 Patent:

• The Term: "advertisement"
• Context and Importance: This term is critical because the accused product provides "Badges" and "Rewards Points" rather than traditional commercial advertisements (Compl. ¶8). The viability of the infringement claim for the ’846 Patent may depend on whether these gamified incentives are construed as advertisements.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent does not appear to explicitly define the term. The claims require "selecting an advertisement based at least in part upon the determined MTMA" without limiting its form (’846 Patent, col. 90:1-3). This lack of limitation may support a broad construction that includes any communication intended to influence user behavior based on their activity.
  • Evidence for a Narrower Interpretation: The specification discusses embodiments where an "advertiser" is enabled to communicate the advertisement via a remote system, and where the system monetarily benefits from causing the advertisement to be communicated (’846 Patent, col. 90:37-44). This context suggests a commercial transaction with a third-party advertiser, which could support a narrower construction that excludes internal reward systems.

For the ’558 Patent:

• The Term: "recognizing a particular set of data sample values as a reference"
• Context and Importance: This phrase describes the foundational step for achieving orientation-independent motion analysis. Practitioners may focus on this term because its construction will determine whether the accused product's alleged method of using the constant force of gravity as a baseline infringes the claim (Compl. ¶44). The dispute will likely center on what constitutes "recognizing" a "particular set."
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claim language itself is broad, not specifying how the "particular set" must be recognized or what it must contain, other than being used as "a reference for defining an orientation" (’558 Patent, col. 43:18-21). This could support an interpretation where simply identifying a stable gravity vector qualifies.
  • Evidence for a Narrower Interpretation: A dependent claim further specifies the recognition step as occurring when "a combined value has a magnitude that is indicative of a relationship to Earth gravity" (’558 Patent, Claim 2). The specification also describes this process in detail, stating that "effectively stationary" points are found by selecting data points with a magnitude "sufficiently close to 1" (’273 Patent, FIG. 5). A defendant may argue that "recognizing" requires these specific numerical and physical properties, potentially narrowing the claim scope to methods that explicitly identify and use these "stationary" points.

VI. Other Allegations

• Indirect Infringement: The complaint does not contain specific factual allegations to support claims of induced or contributory infringement, such as instructing users via manuals to perform infringing steps. The allegations focus on direct infringement by the Defendant's system.
• Willful Infringement: The Prayer for Relief requests enhanced damages for willful infringement of all asserted patents (Compl. p. 79). However, the complaint's factual allegations do not specify a basis for this claim, such as pre-suit knowledge of the patents-in-suit.

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

This case will likely present two central questions for the court, one turning on claim scope and the other on technical operation.

• A core issue will be one of definitional scope: can the term "advertisement" in the ’846 patent, which is used in a commercial context in the specification, be construed broadly enough to cover the internal system of "Badges" and "Rewards Points" allegedly used in the accused driver-monitoring application?
• A key evidentiary question will be one of functional equivalence: does the accused Mentor system's alleged method of using Earth's gravity to establish an orientation perform the same function, in the same way, with the same result as the specific, multi-step process of "recognizing a particular set of data sample values as a reference" and "computing reference data" as claimed in the ’558 patent family?