DCT

1:19-cv-00885

Freshub Inc v. Amazon.com Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:19-cv-00885, W.D. Tex., 09/18/2019
  • Venue Allegations: Plaintiff alleges venue is proper because Amazon conducts continuous business in the district, maintains a large office and multiple Fulfillment Centers, and targets its products and services to residents within the district.
  • Core Dispute: Plaintiff alleges that Defendant’s Alexa-enabled products and the associated Alexa Voice Service infringe four patents related to voice-controlled e-commerce and shopping list management.
  • Technical Context: The technology at issue involves client-server architectures for voice-activated digital assistants that allow users to manage shopping lists and purchase items through natural language commands.
  • Key Procedural History: The complaint alleges a history between the parties preceding the lawsuit. It asserts that in 2010, an Amazon representative requested and received a wireless scanner product from Plaintiff's predecessor-in-interest for evaluation. It further alleges that Amazon was aware of the patents’ priority family, having cited the parent patent application during the prosecution of its own separate patent. The complaint also states that the parties engaged in partnership discussions between 2015 and May 2019.

Case Timeline

Date Event
2004-12-10 Earliest Priority Date for all Asserted Patents (Provisional App. 60/635,122)
2010-11 Amazon allegedly received a scanner product from Plaintiff's predecessor
2014 Amazon allegedly began specifically targeting products/services to the district
2015-01 Alleged partnership discussions between Freshub and Amazon began
2018-03-06 U.S. Patent No. 9,908,153 Issues
2019-02-26 U.S. Patent No. 10,213,810 Issues
2019-03-19 U.S. Patent No. 10,232,408 Issues
2019-03-26 U.S. Patent No. 10,239,094 Issues
2019-05 Alleged partnership discussions between Freshub and Amazon concluded
2019-09-18 Complaint Filed

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

U.S. Patent No. 9,908,153

  • Patent Identification: U.S. Patent No. 9,908,153, titled "SYSTEMS AND METHODS FOR SCANNING INFORMATION FROM STORAGE AREA CONTENTS," issued March 6, 2018 (Compl. ¶15).

The Invention Explained

  • Problem Addressed: The patent family addresses the inconvenience and waste associated with perishable items, such as those in a refrigerator, which often expire because users cannot easily monitor expiration dates (US 10,213,810 Patent, col. 1:21-34).
  • The Patented Solution: The invention describes a distributed voice processing system. A local "first system" (e.g., a device in the home) uses a microphone and digitizer to capture a user's "verbal order." This digitized order is then "immediately" transmitted over a wireless network to a remote "computer system" for processing. The remote system translates the order to text, identifies the corresponding item, and adds it to a user-associated list that can be displayed back to the user ('153 Patent, Abstract; Fig. 8). This architecture separates the simple task of audio capture on a local device from the computationally intensive tasks of voice recognition and database management on a remote server ('153 Patent, Fig. 2).
  • Technical Importance: This client-server model enables the creation of lightweight, voice-activated home commerce devices that can offload complex processing to the cloud (Compl. ¶9, ¶13).

Key Claims at a Glance

  • The complaint asserts independent claim 1 and dependent claims 2-11 (Compl. ¶42).
  • Independent Claim 1 is a system claim comprising two main components:
    • A "first system" with a microphone, wireless interface, and digitizer, configured to receive a verbal order and "immediately transmit" the digitized order to a remote system.
    • A "computer system" (remote from the first) with a network interface and a computer, configured to receive the digitized order, translate it to text, identify the item, add the item to a user's list, and enable the list to be displayed.

U.S. Patent No. 10,213,810

  • Patent Identification: U.S. Patent No. 10,213,810, titled "SYSTEMS AND METHODS FOR SCANNING INFORMATION FROM STORAGE AREA CONTENTS," issued February 26, 2019 (Compl. ¶18).

The Invention Explained

  • Problem Addressed: As with the '153 Patent, the technology is directed at solving problems related to managing items in storage, particularly perishable goods that may expire unnoticed ('810 Patent, col. 1:21-34).
  • The Patented Solution: The '810 Patent claims a voice processing system, but from the perspective of the remote (or cloud) computer. The system is configured to "associate a unique identifier" with a remote user device and "download configuration data" to that device. The system then receives a digitized order from the user device, translates it, identifies the item, adds it to a "set of items," and enables that set to be displayed on a user device (which can be different from the device that captured the order) and provided to an "item provider" for fulfillment ('810 Patent, Claim 1).
  • Technical Importance: This invention adds concepts of device identification and remote configuration, creating a framework where a central service can manage and personalize multiple user devices in the field (Compl. ¶66, ¶77).

Key Claims at a Glance

  • The complaint asserts independent claims 1 and 17, and dependent claims 2-16 and 18-29 (Compl. ¶62).
  • Independent Claim 1 is a system claim for a voice processing system (the remote/cloud component) configured to perform operations including:
    • Associate a unique identifier with a remote system (the user's device).
    • Download configuration data to the remote system.
    • Receive a digitized order from the remote system.
    • Translate the order to text and identify the corresponding item.
    • Include the item in a user-associated set of items.
    • Enable the set of items to be displayed on a user device and provided to an item provider.

U.S. Patent No. 10,232,408

  • Patent Identification: U.S. Patent No. 10,232,408, titled "SYSTEMS AND METHODS FOR SCANNING INFORMATION FROM STORAGE AREA CONTENTS," issued March 19, 2019 (Compl. ¶21).
  • Technology Synopsis: This patent claims a voice processing system that receives a digitized order, translates it to text, and critically, matches that text to a "text description stored in a database comprising text descriptions of items and associated unique product identifiers." Based on this match, the system identifies the item, adds it to a user's list, and enables its display (Compl. ¶97). The invention focuses on linking a natural language voice command to a specific product in a database via unique identifiers like UPCs or ASINs.
  • Asserted Claims: Independent claims 1 and 20, and dependent claims 2-19 and 21-30 (Compl. ¶93).
  • Accused Features: The complaint alleges that the Alexa Voice Service infringes by translating a user's spoken request (e.g., "add milk") and matching it against Amazon's product catalog database, which uses unique product identifiers (like ASINs), to identify and add the correct product to a user's shopping cart (Compl. ¶104, ¶106).

U.S. Patent No. 10,239,094

  • Patent Identification: U.S. Patent No. 10,239,094, titled "SYSTEMS AND METHODS FOR SCANNING INFORMATION FROM STORAGE AREA CONTENTS," issued March 26, 2019 (Compl. ¶24).
  • Technology Synopsis: This patent claims a computer-implemented method that combines the actions of a local device and a remote server. The method includes receiving a digitized spoken order at a first computer system from a second computer system, translating the order to text, matching the text to a data store of item descriptions, identifying the item, and adding it to a user's list for display (Compl. ¶126). It recasts the system claims of the other patents into a method covering the end-to-end process.
  • Asserted Claims: Independent claims 1 and 17, and dependent claims 2-16 and 18-24 (Compl. ¶122).
  • Accused Features: The accused functionality is the overall method performed by the combination of Amazon's Alexa-enabled products (e.g., Echo devices) and the back-end Alexa Voice Service servers, which collectively receive a voice command, process it, and update a user's shopping list (Compl. ¶126, ¶132-133).

III. The Accused Instrumentality

Product Identification

The accused products are Amazon's Echo, Fire TV, and Fire Tablet product lines, as well as the Amazon and Alexa software applications (collectively, the "Accused Products") (Compl. ¶28). The core accused service is the Amazon Alexa virtual assistant and the underlying Alexa Voice Service ("AVS") that powers these products (Compl. ¶29, ¶38).

Functionality and Market Context

The Accused Products are voice-controlled devices and applications that integrate with AVS. A user issues a voice command, such as "Alexa, add avocados to my Whole Foods cart" (Compl. Ex. from p. 11). The device captures the audio and transmits it to AVS, a cloud-based service, for processing (Compl. ¶38). AVS performs automatic speech recognition (ASR) and natural language understanding (NLU) to convert the speech to text and determine the user's intent (Compl. ¶54). It then takes an action, such as adding the identified item to a user's Amazon shopping cart, Whole Foods cart, or a general shopping list, which can be viewed on devices like a smartphone (Compl. ¶30, ¶31, ¶32). A diagram provided in the complaint illustrates the AVS architecture, showing speech capture at a local device and processing (ASR, NLU) occurring in the Alexa Voice Service cloud (Compl. Ex. from p. 17).

IV. Analysis of Infringement Allegations

'153 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a first system configured to receive user spoken words comprising: a microphone, a wireless network interface, a digitizer coupled to the microphone... Amazon's Echo, Fire, and App products contain microphones to capture audio, Wi-Fi interfaces for wireless networking, and a digitizer to convert spoken words into a digital format like PCM. ¶46-47, ¶51 col. 8:20-22
receive via the digitizer a verbal order... wherein the verbal order was captured by the microphone and digitized by the digitizer; The accused devices capture a user’s verbal command (e.g., "add milk to my shopping list") and digitize it for transmission. ¶46, ¶52 col. 14:10-12
immediately transmit, using the wireless network interface, the digitized order to a computer system remote from the first system; The accused devices transmit the digitized audio via Wi-Fi to the remote AVS cloud servers for processing. ¶46, ¶52 col. 14:12-14
the computer system... comprising: a networks interface; a second computer; The AVS cloud infrastructure consists of remote servers (a second computer) with network interfaces to receive data from user devices. ¶46, ¶53 col. 8:35-37
receive, using the network interface, the digitized order from the first system; translate at least a portion of the digitized order to text; AVS servers receive the digitized order and use Automatic Speech Recognition (ASR) technology to convert the speech to text. ¶46, ¶54 col. 14:15-20
identify an item corresponding to the text; add the identified item to a list associated with the user; AVS identifies the item requested and adds it to the user's Amazon account-associated shopping list or cart. ¶46, ¶55 col. 8:44-53
enable the list, including the identified item, to be displayed via a user display. The updated shopping list is viewable on the user's other devices, such as via the Amazon App on a smartphone. ¶46, ¶55 col. 14:20-23
  • Identified Points of Contention:
    • Scope Questions: A central question may be whether the term "verbal order" as used in the patent, which often discusses managing inventory in a physical "storage area" like a refrigerator, can be construed to cover general e-commerce commands for any product.
    • Technical Questions: The claim requires the local device to "immediately transmit" the digitized order. A potential dispute could arise over the definition of "immediately" and whether any local pre-processing on an Echo device (e.g., buffering or wake-word filtering) means the transmission is not immediate as required by the claim.

'810 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
associate a unique identifier with a remote system configured to receive user spoken words... The AVS service associates a user's Amazon account with their specific Alexa-enabled devices, which each have a unique Device Serial Number (DSN). ¶66, ¶71-72 col. 10:35-37
download configuration data to the remote system; The AVS system downloads user-specific settings and configuration data, managed through the Alexa App, to the user's specific Alexa device. ¶66, ¶77 col. 6:64-67
receive, using the network interface, a digitized order of a user from the remote system; The AVS cloud servers receive the digitized voice command sent from the user's device over the internet. ¶66, ¶74 col. 14:12-14
translate at least a portion of the digitized order to text; use the text... to identify an item... AVS uses speech-to-text and NLU to translate the order and identify the specific product requested by the user. ¶66, ¶75-76 col. 14:18-20
include the identified item in a set of one or more items associated with the user; AVS adds the identified item to the user's shopping cart or shopping list. ¶66, ¶78 col. 15:58-67
enable the set of items... to be displayed to the user via a user device different than the remote system; A user can issue a command to an Echo speaker and view the updated shopping list on their smartphone via the Amazon App, a different device. ¶66, ¶78 col. 15:6-12
and enable the set of items... to be provided to an item provider. The items added to the shopping cart can be purchased from Amazon or its affiliates, who act as the "item provider." ¶66, ¶78 col. 14:30-34
  • Identified Points of Contention:
    • Scope Questions: The definition of "configuration data" may be a key issue. The patent specification provides examples related to the physical dimensions of a refrigerator. The question will be whether this term can be construed to cover the general user account and device settings that Amazon's system downloads to its devices.
    • Technical Questions: The complaint does not provide sufficient detail for analysis of the precise nature of the "configuration data" downloaded to the accused devices.

V. Key Claim Terms for Construction

  • The Term: "immediately transmit" ('153 Patent, Claim 1)

    • Context and Importance: The timing of the data transmission from the local device to the remote server is a specific limitation. Practitioners may focus on this term because the degree of local processing performed by an accused device before transmission could determine whether the act is "immediate."
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The patent's architecture in Figure 2 distinguishes between a "local computer" (202) and a "remote system" (214), with the overall process flow in Figure 8 showing "Transmit Order to Remote Server" (804) as the step following "Digitize and Record" (802). This suggests the primary intent is to offload the main processing, not to mandate zero local processing.
      • Evidence for a Narrower Interpretation: The word "immediately" itself implies a lack of delay. An argument could be made that any substantive local processing, beyond basic digitization and buffering for transmission, would create a delay that is not "immediate."

  • The Term: "configuration data" ('810 Patent, Claim 1)

    • Context and Importance: This term is critical because the patent's examples are rooted in a smart-appliance context. The case may turn on whether the general user settings in the accused system fall within the patent's definition.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The term "configuration data" is not explicitly defined or limited in the claims themselves, which could support an interpretation that it covers any data used to configure the remote device's operation for a specific user.
      • Evidence for a Narrower Interpretation: The specification describes configuration information as including "the placement, depth, width and height dimensions of the refrigerator and/or freezer storage areas" and details about "vegetable drawers, fruit drawers, dairy product storage areas" ('810 Patent, col. 6:55-62). This specific embodiment could be used to argue for a narrower construction limited to physical appliance characteristics.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges induced infringement for the ’810, ’408, and ’094 patents (Compl. ¶85, ¶114, ¶142). The basis for this allegation is that Amazon actively encourages and instructs customers to use the accused voice shopping features through its website, advertising, and customer service and help sections (Compl. ¶87-88).
  • Willful Infringement: Willfulness is alleged for all four asserted patents. The complaint bases this on alleged pre-suit knowledge of the patented technology dating back to at least 2010, when Amazon allegedly requested and tested a predecessor product. It is also based on Amazon having cited the parent patent application in its own patent prosecution, and on the multi-year partnership discussions between the parties (Compl. ¶57-58).

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

  • A core issue will be one of definitional scope: can claim terms like "verbal order" and "configuration data," which are described in the patents' specifications with examples tied to managing inventory in a smart appliance, be construed broadly enough to cover general-purpose voice commands for e-commerce on devices like the Amazon Echo?
  • A second key question will be one of evidentiary proof related to willfulness: what legal weight will be given to the alleged pre-suit history between the parties—including Amazon's 2010 request for a prototype, its citation to the parent patent application, and extensive partnership discussions—in determining whether any infringement was willful?
  • A central technical question will be one of operational timing: does the accused system's transmission of voice data from a local device to the cloud meet the "immediately transmit" limitation of the '153 patent, or does local pre-processing on the device introduce a legally significant delay?