Big Will Enterprises Inc v. Solera Holdings Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Big Will Enterprises, Inc. (British Columbia)
  • Defendant: Solera Holdings, Inc. (Delaware)
  • Plaintiff’s Counsel: Eureka Intellectual Property Law, PLLC
• Case Identification: 4:23-cv-00257, N.D. Tex., 03/15/2023
• Venue Allegations: Venue is alleged to be proper based on Defendant’s operation of a large corporate office in Westlake, Texas, within the district, and the commission of alleged infringing acts within the district.
• Core Dispute: Plaintiff alleges that Defendant’s Mentor applications, which monitor driver behavior using smartphone sensors, infringe six patents related to determining motion activity and initiating activity-based actions.
• Technical Context: The technology involves using sensors commonly found in smartphones, such as accelerometers and gyroscopes, to automatically identify a user's physical activities like driving, walking, or running for safety and commercial applications.
• Key Procedural History: The complaint states that Plaintiff has been developing technologies in this field since at least 2007 but does not mention any prior litigation, licensing history, or post-grant proceedings involving the asserted patents.

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)"

• Patent Identification: 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 addresses the opportunity created by the growth of electronic messaging and network-connected mobile devices to provide more intelligent, context-aware, and motion-based services ('846 Patent, col. 1:50-58).
• The Patented Solution: The invention describes systems and methods that use sensors in a wireless communication device (WCD), such as a smartphone, to determine a "mobile thing motion activity" (MTMA) like driving or walking. This determination is made by analyzing sensor data and comparing it to stored reference signatures for various activities. Based on the identified activity, a targeted advertisement is selected and communicated to the user's device ('846 Patent, Abstract; col. 2:38-48).
• Technical Importance: The technology enables the delivery of services and commercial messages tailored to a user's real-time physical context, leveraging the sensing capabilities of ubiquitous mobile devices (Compl. ¶2).

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) includes the essential elements of:
  • Determining a mobile thing motion activity (MTMA) for a wireless communication device (WCD) based on sensor data.
  • Selecting an advertisement based at least in part on the determined MTMA.
  • Causing the advertisement to be communicated to the WCD.
  • The determination of the MTMA further comprises steps of storing reference MTMA signatures, determining a normalizing mathematical relationship for the sensor data, analyzing normalized data sets, determining likelihoods associated with stored signatures, and selecting a most likely MTMA signature.
• The complaint also details infringement allegations for dependent claims 2-11 (Compl. ¶¶19-28).

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"

• Patent Identification: 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: The patent family addresses the technical challenge of accurately identifying a person's motion activity using a device like a smartphone, which can be carried in any orientation (e.g., in a pocket or purse), noting that prior attempts at solving this problem had yielded low accuracy ('273 Patent, col. 1:60-67, col. 2:1-26).
• The Patented Solution: The invention solves the orientation problem by first using sensor data (e.g., from an accelerometer) to recognize a reference vector, such as Earth's gravity. This allows the system to establish a consistent coordinate system regardless of the device's physical orientation. Subsequent sensor data is then normalized relative to this reference frame, enabling the calculation of movement data that can be accurately analyzed to determine a specific motion activity ('558 Patent, Abstract; Fig. 4A).
• Technical Importance: This orientation-independent approach was a key step in making motion activity detection from consumer mobile devices reliable and practical for real-world applications (Compl. ¶3).

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) includes the essential elements of:
  • Receiving a time value and at least three streams of data sample values from sensors of a WCD.
  • 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.
  • Calculating movement data in the coordinate system based upon the reference data.
  • Determining a mobile thing motion activity (MTMA) based upon the movement data.
• The complaint also details infringement allegations for numerous dependent claims (Compl. ¶¶44-58).

U.S. Patent No. 8,977,230 - "Interactive personal surveillance and security (IPSS) systems and methods"

• Patent Identification: U.S. Patent No. 8,977,230, "Interactive personal surveillance and security (IPSS) systems and methods," issued March 10, 2015.
• Technology Synopsis: This patent describes a computer system that receives sensor data from a remote wireless device, compares it to reference data, and, based on the comparison, determines if the data involves an activity relating to a user's need for assistance, an accident, or a crime. If such an activity is detected, the system can communicate a message to the device and enable additional sensors to gather more data ('230 Patent, Claim 1).
• Asserted Claims: The complaint asserts independent claims 1, 11, and 21 (Compl. ¶¶105-107).
• Accused Features: The complaint accuses Defendant's "Automatic Crash Detection" feature, which allegedly detects collisions using smartphone sensors and triggers a response from emergency services (Compl. ¶¶54, 105).

U.S. Patent No. 8,737,951 - "Interactive personal surveillance and security (IPSS) systems and methods"

• Patent Identification: U.S. Patent No. 8,737,951, "Interactive personal surveillance and security (IPSS) systems and methods," issued May 27, 2014.
• Technology Synopsis: This patent discloses a wireless device that enters a first mode of operation to capture initial sensor data, determines if that data indicates an activity like an accident or crime, and if so, enters a second, different investigation mode to capture additional data. This allows for a tiered response to potential emergencies ('951 Patent, Claim 1).
• Asserted Claims: The complaint asserts independent claims 1 and 10 (Compl. ¶¶110, 118).
• Accused Features: The Mentor application is accused of entering a first investigation process by monitoring driving and, upon detecting a potential accident, entering a second process to send more detailed crash surveillance information for claims processing (Compl. ¶110).

U.S. Patent No. 8,559,914 - "Interactive personal surveillance and security (IPSS) systems and methods"

• Patent Identification: U.S. Patent No. 8,559,914, "Interactive personal surveillance and security (IPSS) systems and methods," issued October 15, 2013.
• Technology Synopsis: The technology involves a system with logic to determine a user's activity and surroundings, determine a corresponding surveillance mode, facilitate a user-defined response to that activity, and communicate surveillance information to a remote computer ('914 Patent, Claim 5).
• Asserted Claims: The complaint asserts independent claims 5 and 15 (Compl. ¶¶121, 125).
• Accused Features: The Mentor application is alleged to use logic to determine when a user is driving, activate a corresponding surveillance mode, facilitate user-defined responses (e.g., acknowledging a non-driving "riding mode"), and communicate driver habit information to remote computers (Compl. ¶¶121, 122).

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

• Patent Identification: 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.
• Technology Synopsis: This patent, part of the same family as the '558 Patent, describes a method of using three-dimensional accelerometer data to recognize a reference set, which in turn defines a two-dimensional coordinate system. Movement data is then calculated and analyzed within this 2D system to determine a motion activity, solving the orientation-invariance problem ('273 Patent, Claim 1).
• Asserted Claims: The complaint asserts independent claims 1, 12, and 22 (Compl. ¶¶130, 141, 150).
• Accused Features: The Mentor application is accused of using 3D accelerometer data to establish a 2D measurement system (e.g., by removing the gravity vector) and then calculating and comparing movement data within that normalized 2D system to determine driving activities (Compl. ¶¶130, 141).

III. The Accused Instrumentality

Product Identification

• Defendant's "Mentor applications" and "Mentor system," described as a smartphone-deployed driver-behavior monitoring and reporting solution (Compl. ¶¶17, 42).

Functionality and Market Context

• The Mentor application uses a smartphone's internal sensors, including the accelerometer and gyroscope, to collect and analyze data related to driving behaviors (Compl. ¶7). A screenshot in the complaint shows that the application tracks "Hard ACCELERATION," "PHONE MANIPULATION," and "Hard CORNERING" to provide trip feedback (Compl. p. 23).
• The system calculates a "FICO® Safe Driving Score" and provides coaching and rewards, such as redeemable points, to incentivize safer driving (Compl. ¶¶7, 8). A screenshot of the app's user interface shows a dashboard summarizing trips, miles, and the driving score (Compl. p. 7).
• The complaint alleges the system is designed to help Solera and its customers (e.g., insurers) reduce claims and expenses by promoting safer driving (Compl. ¶8).
• The application also includes an "Automatic Crash Detection" feature that uses sensor data to detect collisions and trigger emergency response services (Compl. ¶54).

IV. Analysis of Infringement Allegations

10,521,846 Patent Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: A central question may be whether the "Rewards Points" and "Badges" offered within the Mentor application (Compl. ¶8) legally constitute an "advertisement" as that term is used in the patent. The defense may argue this refers to third-party commercial messages, whereas the plaintiff may argue it covers any commercial incentive.
  • Technical Questions: The complaint alleges that the Mentor application performs a sophisticated, multi-step analysis involving normalization, frequency/time domain analysis, and likelihood determination (Compl. ¶9). A key point of contention will be whether the accused application actually performs this specific claimed sequence of data processing or uses a different, non-infringing analytical method.

9,049,558 Patent Infringement Allegations

• Identified Points of Contention:
  • Technical Questions: The claim requires "recognizing a particular set of data...as a reference." The mechanism of this "recognition" will be a focal point. The complaint suggests it is based on identifying the constant of Earth's gravity (Compl. ¶25), but whether the accused system's method for establishing an initial orientation meets the specific definition of "recognizing" as taught by the patent will be a technical dispute.
  • Scope Questions: The claim recites distinct steps of "computing reference data" and then "calculating movement data." A potential issue is whether the accused system performs these as separate, ordered operations as required by the claim, or if its process merges these functions in a way that falls outside the literal claim scope.

V. Key Claim Terms for Construction

• The Term: "advertisement" (from '846 Patent, Claim 1)

  • Context and Importance: The infringement theory for the '846 Patent hinges on whether the rewards, badges, and driving discounts offered by the Mentor system qualify as an "advertisement." If this term is construed narrowly to mean only traditional, third-party promotional messages, the infringement case may be weakened.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent does not explicitly define "advertisement," which may support an interpretation aligned with its plain and ordinary meaning, potentially encompassing any commercial offer or incentive.
    • Evidence for a Narrower Interpretation: Dependent claim 6 recites "enabling an advertiser to communicate the advertisement," which suggests the involvement of a distinct third-party "advertiser" ('846 Patent, col. 90:40-43). The complaint's visual evidence shows a system for redeeming internal points, not a display ad from an external entity (Compl. p. 8).

• The Term: "recognizing a particular set of data sample values as a reference" (from '558 Patent, Claim 1)

  • Context and Importance: This term describes the foundational step of the invention: establishing an orientation-independent frame of reference. The specific technical actions required to satisfy "recognizing" will be critical to the infringement analysis. Practitioners may focus on this term because it is the inventive concept for overcoming the orientation problem.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification suggests this can be achieved by identifying periods when the device is "effectively stationary," where the net acceleration magnitude is close to 1 (Earth's gravity) ('273 Patent, Fig. 5, step 4). This could support a construction covering any method of identifying a stable state to infer the gravity vector.
    • Evidence for a Narrower Interpretation: The specification provides a specific numerical example for identifying a stationary point, where the magnitude is "within 8=0.02 of one" ('273 Patent, Fig. 5, step 4). This specific embodiment could be used to argue for a narrower construction that requires meeting a specific mathematical threshold or a similar explicit act of identification.

VI. Other Allegations

• Indirect Infringement: While the complaint does not contain separate counts for indirect infringement, the Prayer for Relief seeks to enjoin "contributory infringement, and/or inducing infringement" (Compl. p. 79). The factual allegations that Defendant provides the "Mentor applications" to users for "monitoring human activities while driving" could form the basis of an inducement claim, suggesting Defendant instructs users to perform the allegedly infringing methods (Compl. ¶17).
• Willful Infringement: The complaint seeks enhanced damages for willful infringement of all asserted patents (Compl. p. 79). The complaint does not allege any facts supporting pre-suit knowledge of the patents by Defendant, such as prior notice or licensing negotiations. Therefore, the basis for willfulness appears to rest on Defendant's continued alleged infringement after the filing of the complaint.

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

• A core issue will be one of definitional scope: can the term "advertisement," as used in the '846 Patent, be construed to cover the internal system of "Rewards Points," "Badges," and insurance-related discounts offered by the Mentor application, or is it limited to traditional third-party marketing messages?
• A key evidentiary question will be one of operational fidelity: does the accused Mentor application perform the specific, ordered data-processing steps recited in the claims of patents like the '558 and '846 Patents—such as explicitly "recognizing" a reference set before "calculating" movement data, or performing a multi-step likelihood analysis—or is there a fundamental mismatch in the technical operation that places it outside the literal scope of the claims?
• A central validity and infringement question will relate to the means-plus-function claims asserted from the '846 and '230 Patents. The case will require the court to first construe the claimed functions, then identify the corresponding structures disclosed in the specification, and finally determine whether the accused system's software architecture contains those structures or their equivalents.