DCT
1:23-cv-00548
THL Holding Co LLC v. Apple Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: THL Holding Company, LLC (Delaware)
- Defendant: Apple, Inc. (California)
- Plaintiff’s Counsel: Parker, Bunt & Ainsworth, P.C.
- Case Identification: 6:23-cv-00077, W.D. Tex., 02/09/2023
- Venue Allegations: Plaintiff alleges venue is proper in the Western District of Texas because Defendant maintains regular and established places of business in the district, including its second-largest U.S. campus in Austin and multiple retail stores.
- Core Dispute: Plaintiff alleges that Defendant’s product ecosystem, specifically the Mac Pro, iPhone, and iPad and their interaction with locatable devices like AirPods and AirTags, infringes three patents related to wireless device paging and location systems.
- Technical Context: The technology at issue involves using short-range wireless communication protocols to pair a primary device with a secondary remote device, and subsequently using signals to locate that remote device.
- Key Procedural History: All three patents-in-suit claim priority to a single U.S. patent application filed in 2010. The complaint alleges that Plaintiff developed and marketed a product named "BIKN" based on this pioneering technology, which operated with Apple's iPhone, before Apple later introduced its own products with similar "lost and found" features.
Case Timeline
| Date | Event |
|---|---|
| 2010-02-26 | Priority Date for ’381, ’680, and ’246 Patents |
| 2014-07-01 | U.S. Patent No. 8,768,381 Issues |
| 2022-03-01 | U.S. Patent No. 11,265,680 Issues |
| 2022-05-31 | U.S. Patent No. 11,350,246 Issues |
| 2023-02-09 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,768,381 - “Wireless device and Methods for use in a paging network”
- Patent Identification: U.S. Patent No. 8,768,381, titled “Wireless device and Methods for use in a paging network,” issued July 1, 2014.
The Invention Explained
- Problem Addressed: The patent addresses the common experience of misplacing personal items and the desirability of using wireless technology to locate them, noting that while wireless telephones and applications were becoming widespread, further functions were desirable, particularly for use with other wireless devices (’680 Patent, col. 2:38-44).
- The Patented Solution: The invention provides a wireless device with a graphical user interface (GUI) that can be used to first pair with, and then locate, a remote object. A user interacts with the GUI to send a "paging signal" to the remote device, which in turn sends back a "location signal" that allows the primary device's GUI to present a display that helps the user find the object (’381 Patent, Abstract; ’680 Patent, FIG. 1).
- Technical Importance: The technology integrated personal item tracking into a multi-function device (like a smartphone), moving beyond single-purpose locator systems and leveraging the device's existing display and processing capabilities (Compl. ¶¶ 18, 30).
Key Claims at a Glance
- The complaint asserts at least Claim 1 (Compl. ¶39).
- Independent Claim 1 requires:
- A wireless device for locating a remote object.
- A graphical user interface (GUI) that generates a pairing signal in response to a first user indication and a location request signal in response to a second user indication.
- A short-range wireless transceiver that communicates RF signals to pair with the remote device, transmits an RF paging signal to it, and receives a location signal from it.
- The GUI presents a display that visually assists the user in locating the remote device.
- The complaint reserves the right to assert other claims (Compl. ¶48).
U.S. Patent No. 11,265,680 - “Wireless device and Methods for use in a paging network”
- Patent Identification: U.S. Patent No. 11,265,680, titled “Wireless device and Methods for use in a paging network,” issued March 1, 2022.
The Invention Explained
- Problem Addressed: As a continuation of the same application family, this patent addresses the same problem of locating misplaced wireless devices (’680 Patent, col. 2:38-44).
- The Patented Solution: The ’680 Patent claims a mobile communication device with a touchscreen and multiple transceivers. The invention outlines a specific sequence of user interactions with the touchscreen: a first interaction for pairing with a remote device that has a sound emitter, a second for selecting that device from a list, and a third for sending a paging signal that causes the remote device to generate an audio alert, all while providing a visual display to help the user locate it (’680 Patent, Claim 10).
- Technical Importance: This patent specifies a more detailed user-interaction workflow for locating devices, including the use of audio alerts from the remote device, thereby providing a multi-sensory location experience (Compl. ¶¶ 18, 30).
Key Claims at a Glance
- The complaint asserts at least Claim 10 (Compl. ¶55).
- Independent Claim 10 requires:
- A mobile communication device comprising a plurality of wireless transceivers, a touchscreen, memory, and a processor.
- The processor is configured to operate a GUI to:
- Respond to a first user interaction by pairing with a remote device having a sound emitter.
- Facilitate, via a second interaction, selection of the remote device from a plurality of devices.
- Respond to a third interaction by transmitting a paging signal that causes the remote device to generate an audio alert.
- Present a display that visually assists the user in determining the remote device's location.
- The complaint reserves the right to assert other claims (Compl. ¶67).
U.S. Patent No. 11,350,246 - “Wireless device and methods for use therewith”
- Patent Identification: U.S. Patent No. 11,350,246, titled “Wireless device and methods for use therewith,” issued May 31, 2022.
- Technology Synopsis: This patent describes a mobile communication device that employs a combination of wireless technologies, including Bluetooth for general communication and ultra-wideband (UWB) for high-precision location. The invention uses UWB communications between the mobile device and a remote device, along with time-of-flight calculations and signal delay analysis across multiple antennas, to estimate both the distance and direction to the remote device and display that information via an arrow on the GUI (’246 Patent, Claim 1; Compl. ¶¶ 81-82).
- Asserted Claims: Independent Claim 1 (Compl. ¶74).
- Accused Features: The complaint accuses Apple's "Precision Finding" feature, which is available on iPhone models 11 and newer that are equipped with UWB technology, when used to locate Apple AirTags (Compl. ¶¶ 72, 83).
III. The Accused Instrumentality
Product Identification
- The complaint names Apple’s iPhone, iPad, and Mac Pro products, particularly in their designed functionality with remote devices such as Apple AirPods, AirTags, and the Apple Watch (Compl. ¶¶ 31, 37, 53, 72).
Functionality and Market Context
- The accused products utilize Apple's "Find My" application, which allows users to pair, manage, and locate their Apple devices (Compl. ¶33).
- For AirPods, users can command the device (e.g., a Mac Pro) to "play sound" on the AirPods to help locate them and can view the last known location on a map (Compl. ¶¶ 44-45). The complaint provides a screenshot from Apple's support materials illustrating how a device's location appears on a map (Compl. p. 19).
- For AirTags, iPhones equipped with UWB technology (models 11 and newer) enable a "Precision Finding" or "Find Nearby" feature. This feature displays a directional arrow and a continuously updated distance measurement on the iPhone's screen to guide the user to the AirTag's precise location (Compl. ¶¶ 33, 34). The complaint includes a support document image showing the "Find Nearby" option in the "Find My" app (Compl. p. 14).
IV. Analysis of Infringement Allegations
U.S. Patent No. 8,768,381 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a graphical user interface that generates a pairing signal in response to a first indication from a user to pair the wireless device to at least one remote device | The GUI of the Mac Pro's Find My app generates a pairing signal when a user selects AirPods from the Devices list to initiate a connection. | ¶42 | col. 16:62-67 |
| and generates a first location request signal in response to a second indication from a user to locate the at least one remote device | The user's selection of the AirPods in the Find My app to "Get the location of your AirPods" is alleged to be the second indication that generates a location request signal. | ¶43 | col. 5:19-21 |
| a short-range wireless transceiver... that transmits a first RF paging signal to the at least one remote device in response to the first location request signal and that receives a location signal from the at least one remote device | The Mac Pro's Bluetooth transceiver transmits a paging signal (e.g., a "play sound" command) to the AirPods, which then respond with information that allows the Mac Pro to receive a location signal. | ¶44 | col. 5:23-27 |
| wherein the graphical user interface presents a display that visually assists the user to locate the at least one remote device | The Mac Pro's GUI presents a map with an icon showing the location of the AirPods, which the complaint alleges "visually assists the user to locate" the device. | ¶45 | col. 9:60-67 |
Identified Points of Contention
- Scope Questions: A potential issue is whether a desktop computer like the Mac Pro qualifies as the "wireless device for locating" as contemplated by the patent, which includes many figures depicting handheld mobile devices. Further, the scope of "visually assists the user" may be disputed; the complaint alleges a map with a static icon meets this limitation, whereas the patent also describes dynamic aids like signal strength bars.
- Technical Questions: The complaint's theory for the '381 Patent relies on mapping user actions within the "Find My" application to the claimed signals ("pairing signal," "location request signal," "paging signal," "location signal"). The actual nature and sequence of the underlying data transmissions between the Mac Pro and AirPods will be a key factual question in determining if they correspond to the claim limitations.
U.S. Patent No. 11,265,680 Infringement Allegations
| Claim Element (from Independent Claim 10) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| respond to a first user interaction with the touchscreen by pairing... the mobile communication device with at least one remote device, the at least one remote device including a sound emitter... | The iPhone responds to a user tapping "Connect" on the touchscreen during a setup animation to pair with AirPods Pro, which contain sound emitters. The complaint provides a screenshot of this pairing interface (Compl. p. 23). | ¶59 | col. 38:2-7 |
| facilitates, via a second interaction with the touchscreen, selection of the at least one remote device from a plurality of remote devices | The iPhone facilitates the selection of AirPods from a list of devices within the "Find My" app, which is alleged to be the second user interaction. | ¶61 | col. 39:1-4 |
| responds to a third interaction with the touchscreen by transmitting... a first paging signal to the at least one remote device, wherein the first paging signal causes the at least one remote device to generate the audio alert | The iPhone responds to a user tapping the "Play Sound" button on the touchscreen, which transmits a paging signal causing the AirPods to generate an audio alert. | ¶62 | col. 39:5-9 |
| present a display on the touchscreen... wherein the display visually assists a user to determine a location of the at least one remote device | The iPhone processor presents a display with directional information, such as an arrow and distance, to visually guide the user to the AirPods' location. | ¶63 | col. 39:10-14 |
Identified Points of Contention
- Scope Questions: A central question will be whether the sequence of user actions in Apple's "Find My" app constitutes the distinct "first," "second," and "third" interactions required by the claim language. A defendant may argue that selecting a device and then tapping "play sound" is part of a single, continuous location-finding workflow rather than two separate interactions as claimed.
- Technical Questions: The claim requires the display to be based on a "signal received... from the at least one remote device." Evidence will be needed to show that the visual assistance displayed on the iPhone is directly based on a responsive signal from the AirPods after the "Play Sound" command is sent, as opposed to being based on other location data.
V. Key Claim Terms for Construction
The Term: "a display that visually assists the user to locate" (’381 Patent, Claim 1)
Context and Importance
- This term's construction is critical for determining the type and quality of information the accused device must present. The infringement allegation against the Mac Pro relies on a map with a location icon satisfying this element. Practitioners may focus on this term because its breadth will determine whether static location information is sufficient, or if more dynamic, real-time guidance is required.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The plain language of the claim is not explicitly limited to dynamic guidance. The specification also discusses a broader paging network where receiving a page could simply trigger a message on the user's screen, which could be interpreted as a form of visual assistance (’680 Patent, col. 18:15-27).
- Evidence for a Narrower Interpretation: Many specific embodiments in the patent specification illustrate more sophisticated visual assistance, such as a graphical signal strength meter (FIG. 6) and a directional arrow (FIG. 8), which could be used to argue that the invention requires more than a simple map pin (’680 Patent, col. 9:60-67; col. 12:1-22).
The Term: "first user interaction with the touchscreen by pairing" (’680 Patent, Claim 10)
Context and Importance
- This term links the act of pairing directly to a "first" user interaction. The validity of the infringement theory depends on identifying a discrete user action that satisfies this element. The complaint points to the initial "Connect" tap during setup (Compl. ¶59). A defendant might argue that pairing is a multi-step process not captured by a single "first interaction."
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The specification describes pairing generally as a user-initiated procedure to establish a communication link between devices, without requiring it to be a single tap or action (’680 Patent, col. 15:60-67).
- Evidence for a Narrower Interpretation: The claim structure explicitly separates the "first interaction" (pairing) from the "second" (selection) and "third" (paging). This sequential language may support an interpretation that each must be a distinct and separate user action.
VI. Other Allegations
Indirect Infringement
- The complaint alleges induced infringement for all three patents. It asserts that Apple took active steps with the specific intent to cause infringement by its customers, including by distributing instructions, advertising, and designing products that require end-users to perform the infringing actions (Compl. ¶¶ 47, 65, 85).
Willful Infringement
- While the complaint does not use the word "willful," the prayer for relief requests an increase in damages up to three times the amount found, pursuant to 35 U.S.C. § 284, which is the statutory basis for enhanced damages for willful or egregious infringement (Compl. p. 38). The complaint does not allege specific facts regarding pre-suit knowledge of the patents themselves.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim scope and interpretation: Can functional language like "visually assists the user to locate," which is exemplified in the patent with dynamic guidance like signal strength bars, be construed broadly enough to cover showing a static location icon on a map, as is alleged against the Mac Pro?
- A key evidentiary question will be one of factual mapping: Does the user workflow within Apple's "Find My" application—from initial setup to selecting a device and triggering a sound—align with the specific, sequenced "first," "second," and "third" interactions as strictly defined in Claim 10 of the '680 patent, or is there a mismatch between the claim's structure and the product's actual operation?
- A central theme of the dispute appears to be one of technological narrative: The case may turn on whether a fact-finder views Apple's "Find My" ecosystem as the direct technological successor to the system described in the 2010 priority application, as Plaintiff alleges, or as a parallel development that functions in a fundamentally different way.