DCT
1:18-cv-00991
Uniloc 2017 LLC v. Apple Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Uniloc 2017 LLC (Delaware)
- Defendant: Apple Inc. (California)
- Plaintiff’s Counsel: Prince Lobel Tye LLP; Nelson Bumgardner Albritton P.C.
- Case Identification: 1:18-cv-00991, W.D. Tex., 01/08/2019
- Venue Allegations: Plaintiff alleges venue is proper because Defendant maintains regular and established places of business within the Western District of Texas.
- Core Dispute: Plaintiff alleges that Defendant’s iMessage service, which includes a feature for expiring audio messages, infringes a patent related to group audio message board systems that control access based on qualifying parameters.
- Technical Context: The technology concerns systems for managing access to communally-shared voice messages on mobile devices, aiming to filter content for user relevance.
- Key Procedural History: The asserted patent, U.S. 7,020,252, was the subject of two inter partes review (IPR) proceedings before the U.S. Patent and Trademark Office (IPR2019-00453 and IPR2019-01667). In a certificate issued November 15, 2021, subsequent to the filing of this complaint, the USPTO confirmed that all claims of the patent, including the asserted Claim 1, have been cancelled. The cancellation of all claims raises a threshold question regarding the viability of the infringement action.
Case Timeline
| Date | Event |
|---|---|
| 2000-09-25 | ’252 Patent Priority Date |
| 2006-03-28 | ’252 Patent Issue Date |
| 2011-10-12 | Accused iOS 5 with iMessage Launched |
| 2018-12-31 | IPR2019-00453 Filed |
| 2019-01-08 | Amended Complaint Filing Date |
| 2019-10-16 | IPR2019-01667 Filed |
| 2021-11-15 | IPR Certificate Issued Cancelling All Claims |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,020,252 - "GROUP AUDIO MESSAGE BOARD" (Issued Mar. 28, 2006)
The Invention Explained
- Problem Addressed: The patent describes a problem in early communal messaging systems where a user may be "faced with hundreds or thousands of messages of little or no relevance" (’252 Patent, col. 2:51-53). This information overload necessitates a "form of restriction or segregation" to ensure messages are meaningful to the recipient (’252 Patent, col. 2:48-50).
- The Patented Solution: The invention proposes a "communal audio message recordal apparatus" that solves this problem by associating each recorded message with at least one "qualifying parameter," such as the time, date, or geographical location of the message’s creation (’252 Patent, Abstract; col. 4:38-41). When another user attempts to retrieve messages, the system checks their corresponding parameter (e.g., their current location) and only grants access to messages with a "matching qualifying parameter," thereby filtering the content for relevance (’252 Patent, Abstract).
- Technical Importance: This method provided a way to automatically curate shared audio content based on the shared context of users (e.g., attending the same event or being in the same place at the same time), rather than relying on manual sorting or topic-based forums (’252 Patent, col. 2:30-38).
Key Claims at a Glance
- The complaint asserts infringement of "at least claim 1" of the ’252 Patent (Compl. ¶10).
- Independent Claim 1, a method claim, recites the following essential elements:
- A method for enabling communal audio message recordal via a communications system.
- Generating and storing by the system at least one "qualifying parameter" related to access.
- Determining a "qualifying parameter" for a subsequent access attempt by a user.
- Enabling access to recorded messages only if they have a "matching qualifying parameter," and otherwise denying access.
- The qualifying parameter must include an "indication of time and/or date" for recording a message and for requesting playback.
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are "Apple's iMessage group audio capability" as implemented on "iPhones, iPads, and iPod touch running iOS 5 or later and Mac products running OS X or later," which communicate with "Apple's iMessage Servers" (Compl. ¶7). These are collectively termed the "Accused Infringing Devices" (Compl. ¶10).
Functionality and Market Context
The complaint focuses on the functionality allowing users to send voice messages to multiple recipients (Compl. ¶7). The core accused feature is an option on the iMessage Servers that causes voice messages to "expire after a set period, for example, two minutes after being accessed" (Compl. ¶9). Once this period has elapsed, "further access to the recorded voice iMessage is denied and users of the iMessage Devices cannot have the recorded message played back" (Compl. ¶9). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
’252 Patent Infringement Allegations
The complaint does not contain a claim chart but alleges infringement based on a narrative theory. The table below synthesizes the allegations for Claim 1 from the complaint's text.
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a method for enabling communal audio message recordal including a provision of audio data recorder coupled with a communications system... | Apple's iMessage service allows users to record and send group audio messages via iMessage Devices and Servers. | ¶7, ¶8 | col. 6:1-4 |
| generating and storing by said system at least one qualifying parameter pertaining to the access to the audio data recorder... | Apple's iMessage Servers provide an option for voice iMessages to "expire after a set period, for example, two minutes after being accessed." This expiration setting is alleged to be the time-based qualifying parameter. | ¶9 | col. 6:5-8 |
| ...wherein the qualifying parameter includes an indication of time and/or date for a user recording a message and for a user requesting playback... | The two-minute expiration period is alleged to be the "indication of time" that governs access. | ¶9 | col. 6:13-17 |
| determining a qualifying parameter for a subsequent access to the audio data recorder by a user; and | The iMessage system determines whether the two-minute expiration period has passed since the message was first accessed. | ¶9 | col. 6:9-10 |
| enabling access by said subsequently accessing user to previously recorded messages having a matching qualifying parameter, otherwise the denial of such access... | If the two-minute period has not expired, the user can play the message back. If the period has expired, "further access to the recorded voice iMessage is denied." | ¶9 | col. 6:11-13 |
- Identified Points of Contention:
- Scope Questions: A central dispute may arise over whether a message expiration timer, which is triggered by a recipient's first access, constitutes a "qualifying parameter" as defined by the patent. The patent specification appears to describe parameters (e.g., location) that are used to filter a large pool of messages for relevance before a user accesses any of them (’252 Patent, col. 4:30-38), whereas the accused feature appears to be a self-destruct mechanism for a single message after it has already been delivered and accessed.
- Technical Questions: The infringement analysis raises the question of what constitutes a "matching qualifying parameter." The patent suggests a comparison between a user's parameter and a message's parameter (e.g., user's location matches message's location). It is a point of contention whether the accused system's check (i.e., is current_time > first_access_time + 2 minutes?) constitutes the "matching" operation required by the claim.
V. Key Claim Terms for Construction
The Term: "qualifying parameter"
- Context and Importance: This term is the core of the claimed invention. Its construction will determine whether a simple message-expiration timer falls within the scope of the patent, which describes a system for filtering messages based on relevance.
- Intrinsic Evidence for a Broader Interpretation: The specification states that the parameter "may take a number of forms" and includes "time and/or date" as an example, which Plaintiff may argue covers any time-based access control (’252 Patent, col. 4:57-58; col. 5:12-14).
- Intrinsic Evidence for a Narrower Interpretation: The patent consistently describes the parameter's purpose as enabling users to "share experiences through communally accessible messages" with others who have something in common, such as a location (’252 Patent, col. 2:30-38). This context suggests the parameter is for filtering a group of messages for relevance, not merely for controlling the lifespan of a single message after access.
The Term: "matching qualifying parameter"
- Context and Importance: The infringement theory depends on construing the accused expiration check as a "matching" operation. Practitioners may focus on this term to dispute whether the accused functionality performs the claimed comparison.
- Intrinsic Evidence for a Broader Interpretation: Plaintiff may argue that "matching" should be construed broadly to mean "satisfying the condition" set by the parameter.
- Intrinsic Evidence for a Narrower Interpretation: The specification describes a system where the parameter is used to "select the category storage area" and grant access to "messages having a matching qualifying parameter" (’252 Patent, col. 4:48-56). This implies a comparison between two corresponding data points (e.g., user's parameter vs. message's parameter), not a simple temporal check against an expiration value.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement, stating that Apple "intentionally instructs its customers" to use the accused features through "marketing, promotional, and instructional materials," including user guides and demonstrations (Compl. ¶15-¶16).
- Willful Infringement: The complaint alleges that Apple has been on notice of the ’252 patent "since, at the latest, the service of the original Complaint" and that its continued infringement is therefore willful (Compl. ¶12-¶13).
VII. Analyst’s Conclusion: Key Questions for the Case
Jurisdictional Viability: The most significant question in this case is procedural: given that the USPTO has cancelled all claims of the ’252 patent, including the sole asserted Claim 1, what legal basis remains for the complaint to proceed? The cancellation raises a fundamental challenge to the existence of a valid property right to enforce.
Definitional Scope: Assuming the case were to proceed, a core issue would be one of claim construction: can a post-access, self-destruct timer on an individual voice message be legally construed as a "qualifying parameter" used for "matching" to filter messages for relevance, as that concept is described and enabled in the patent's specification?
Functional Mismatch: An evidentiary question will be whether the accused iMessage expiration feature functions in a manner equivalent to the claimed method. The court would need to determine if a feature designed to ensure message privacy and ephemerality performs the same function as the patent’s described system for curating a communal message board based on shared user context.