DCT
1:23-cv-01116
DH Intl Ltd v. Google LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: DH International Ltd. (Canada)
- Defendant: Google LLC (Delaware)
- Plaintiff’s Counsel: Munck Wilson Mandala, LLP; AddyHart P.C.
- Case Identification: 1:23-cv-01116, W.D. Tex., 09/15/2023
- Venue Allegations: Plaintiff alleges venue is proper in the Western District of Texas because Google maintains a regular and established place of business in the district and has committed acts of infringement there.
- Core Dispute: Plaintiff alleges that Defendant’s Google Wallet and Google Pay services, as implemented on mobile devices, infringe two patents related to methods for a portable device to perform different data operations based on the presence or absence of an external signal.
- Technical Context: The technology concerns context-aware transactions on a portable electronic device, where a single, simple user action can trigger either a short-range data exchange (like a tap-to-pay transaction) or a different function (like an online payment or displaying information) depending on proximity to a point-of-sale terminal.
- Key Procedural History: The complaint alleges that a representative for the patents' former owner contacted Google regarding the patents on July 26, 2017, which may be relevant to the plaintiff's allegations of willful infringement. The patents were assigned to the current plaintiff, DH International Ltd., on July 26, 2023.
Case Timeline
| Date | Event |
|---|---|
| 2003-04-14 | Earliest Priority Date for '333 and '294 Patents |
| 2009-12-08 | U.S. Patent No. 7,628,333 Issued |
| 2015-05-05 | U.S. Patent No. 9,022,294 Issued |
| 2017-07-26 | Alleged Pre-Suit Notice to Google |
| 2023-07-26 | Asserted Patents Assigned to Plaintiff |
| 2023-09-15 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,628,333 - Portable Electronic Device Capable of Alternative Data Conveyance Operations Responsive to an Invariable Activation Command, Issued December 8, 2009
The Invention Explained
- Problem Addressed: The patent describes conventional transaction cards (e.g., smart cards) as requiring separate interface machines with their own screens and often needing "multiple controls thereon to accomplish different functions of the card" (’333 Patent, col. 2:42-47).
- The Patented Solution: The invention is a portable electronic device that simplifies user interaction by using a single, "invariable activation command" (e.g., a button press) to trigger one of two different operations based on context. If the device receives an external "activation cue" (e.g., a signal from a nearby point-of-sale terminal), triggering the command initiates a data exchange with that external device. If no cue is received, the same command triggers a different, internal function, such as displaying stored information on the device's own screen (’333 Patent, Abstract; col. 4:14-6:27).
- Technical Importance: The technology aimed to streamline mobile interactions by enabling a device to perform context-dependent tasks with a simple, consistent user action, reducing the need for complex menus or user selections (’333 Patent, col. 7:14-30).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶33).
- Essential elements of claim 1 include:
- A portable electronic device with an electronic circuit, a control device, a user interface, a data transceiver, and a power means.
- The control device issues an "invariable activation command" when triggered.
- A "data conveyance switching element" that is in an "activated state" when an "activation cue" is received from an external source, and an "inactive state" when no cue is received.
- When the control device is triggered: if the switching element is in the activated state, a data exchange with an external device is initiated; if it is in the inactive state, data is conveyed to the device's own user interface.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 9,022,294 - Portable Electronic Device and Method for Alternative Data Conveyance Operations Responsive to an Invariable Activation Command, Issued May 5, 2015
The Invention Explained
- Problem Addressed: Similar to its parent patent, the '294 Patent addresses the complexity of using portable devices for different types of transactions that require different communication methods (’294 Patent, col. 1:20-2:53).
- The Patented Solution: As a continuation-in-part, this patent adapts the core concept specifically to a "cellular phone" with multiple communication capabilities. It claims a device with a "first data transceiver" (e.g., for proximity communication like NFC) and a "second data transceiver" (e.g., for network communication like Wi-Fi or cellular). The receipt of an external "activation cue" via a "cue receiver" determines which of two distinct data conveyance operations is initiated when the user triggers the control device, routing the transaction over the appropriate communication link (’294 Patent, Abstract; col. 4:1-44).
- Technical Importance: The invention provides a framework for modern smartphones to seamlessly switch between different transaction types, such as a close-proximity "tap-to-pay" and a networked online or in-app payment, using a consistent user input (’294 Patent, col. 13:11-24).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶56).
- Essential elements of claim 1 include:
- A cellular phone with an electronic circuit, a user-triggered control device, and power means.
- A "first data transceiver" for a first communication link and a "second data transceiver" for a second, distinct communication link.
- A "cue receiver" for receiving an external "activation cue."
- A "data conveyance switching element" assigned a "first state" if a cue is received and a "second state" if no cue is received.
- When the control device is triggered: if in the first state, a first data conveyance operation is initiated via the first transceiver; if in the second state, a second data conveyance operation is initiated via the second transceiver.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
The accused products are Google’s "Google Wallet" and "Google Pay" software and services, as implemented on "Google mobile devices" (e.g., Pixel 7, Pixel Watch) and other compatible devices (Compl. ¶¶26, 28, 29, 31).
Functionality and Market Context
The complaint alleges that Google Wallet allows users to store payment card information on a mobile device to conduct transactions (Compl. ¶27). For in-store payments, a user is allegedly required to unlock their phone and hold it near an NFC-enabled point-of-sale (POS) terminal. The complaint characterizes the signal from the POS terminal as the "activation cue," which places the device in an "NFC transaction state" (Compl. ¶¶41, 44). For online or in-app payments, a user allegedly taps a "Google Pay" button within an application or website, which the complaint contends occurs in a different state where no NFC cue is received, causing the transaction to proceed over a cellular or Wi-Fi network (Compl. ¶¶65, 69). The complaint positions the accused products as a major mobile payment and digital wallet service (Compl. ¶26).
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
’333 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a portable electronic device... | Google mobile devices such as the Pixel 7. | ¶37 | col. 4:15-18 |
| a control device... with an invariable activation command being issued when said control device is selectively triggered... | A user action such as a "button selection with biometric or PIN verification" (e.g., unlocking the phone and tapping a "Pay" button) that issues a command to initiate a transaction. | ¶38, ¶43 | col. 5:5-34 |
| a user interface device... | The display screen on Google mobile devices, such as the 6.3-inch display on the Google Pixel 7. | ¶39 | col. 4:21 |
| a data transceiver... for exchanging data... and for receiving a selectively emitted activation cue from a source external... | The NFC functionality in Google mobile devices, which exchanges transaction data with and receives an activation signal from an external POS system. | ¶40 | col. 5:64-6:3 |
| a data conveyance switching element... being in an activated state upon an activation cue having been received... and being in an inactive state when no activation cue was received... | Google Wallet and Google Pay software, which allegedly enters an "activated state (e.g., NFC transaction)" upon receiving a signal from an NFC device and is otherwise in an "inactive state (e.g., idle state)." | ¶41 | col. 6:4-27 |
| if said switching element is in said activated state, a data exchange will be initiated... | When the phone receives an NFC signal and the user triggers the control device, an NFC transaction is initiated with the external POS system. | ¶44 | col. 6:59-67 |
| if said switching element is in said inactive state, data will be conveyed... to said user interface device... | In the absence of an NFC signal, triggering the control device results in "opening the Google Pay application" on the user interface. | ¶45 | col. 6:52-58 |
Identified Points of Contention:
- Scope Question: What is the scope of an "invariable activation command"? The patent describes a simple, single command (’333 Patent, col. 7:14-19), while the complaint alleges infringement by multi-step actions like unlocking a phone and tapping a button (Compl. ¶38). The litigation may turn on whether "invariable" refers to the physical action itself or the user's singular intent to trigger an operation regardless of the outcome.
- Technical Question: Does the accused software architecture contain a "data conveyance switching element" as claimed? The complaint maps this limitation to the Google Wallet and Google Pay software (Compl. ¶41). A central question will be whether this software contains a specific component that switches between two distinct states ("activated" and "inactive") to direct data flow, as described in the patent (’333 Patent, col. 4:28-30), or if it employs a different logic.
’294 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A cellular phone... | Google mobile devices such as the Pixel 7. | ¶60 | col. 13:45-48 |
| a user-triggered control device... configured to be operated by a user via one of a button, a keypad, a tactile screen, and a biometric parameter detector... | A button selection with biometric or PIN verification to initiate an in-store or online/in-app transaction. | ¶61 | col. 8:31-56 |
| a first data transceiver... over a first communication link... | The NFC functionality and NFC communication link on Google mobile devices for in-store transactions. | ¶62 | col. 13:54-58 |
| a second data transceiver... over a second communication link that is distinct from said first... | The cellular or Wi-Fi functionality on Google mobile devices for online or in-app transactions with a networked server. | ¶63 | col. 13:11-24 |
| a cue receiver... for receiving an activation cue from a source external... | The NFC functionality on Google mobile devices receiving a signal from an external POS system. | ¶64 | col. 4:14-18 |
| a data conveyance switching element... assigned a first state upon an activation cue... and assigned a second state when no activation cue was received... | Google Wallet and Google Pay software, which is assigned a "first state (e.g., NFC transaction)" upon receiving an NFC signal, and a "second state (e.g., online or in-app transaction)" when no NFC signal is received. | ¶65 | col. 4:21-30 |
| if said switching element is in said first state, a first data conveyance operation will be initiated through... said first data transceiver... | If an NFC cue is received, a user trigger initiates an NFC transaction via the NFC chip to the POS system. | ¶68 | col. 4:31-37 |
| if said switching element is in said second state, a second data conveyance operation will be initiated through... said second data transceiver... | If no NFC cue is received, a user trigger initiates an online or in-app transaction via the cellular or Wi-Fi radio to a networked transaction server. | ¶69 | col. 4:38-44 |
Identified Points of Contention:
- Technical Question: Can the same hardware (the NFC chip) satisfy two distinct claim limitations? The complaint alleges the "NFC functionality" serves as both the "first data transceiver" (Compl. ¶62) and the "cue receiver" (Compl. ¶64). While the specification contemplates this possibility (’294 Patent, col. 2:27-28), its viability as a non-obvious implementation may be a point of dispute.
- Scope Question: Does an online or in-app purchase constitute the "second data conveyance operation" as claimed? The complaint alleges that when no NFC cue is present, tapping a "Pay" button initiates an online transaction (Compl. ¶69). The case will question whether this action is the direct, switched alternative to an NFC payment as envisioned by the patent, or if it is an entirely separate function initiated through different user pathways.
V. Key Claim Terms for Construction
The Term: "invariable activation command" (’333 Claim 1; ’294 Claim 1)
- Context and Importance: This term is the trigger for the entire patented method. Its construction is critical because modern smartphone transactions often involve multiple steps (e.g., wake screen, authenticate, tap). Practitioners may focus on this term because its definition will determine whether these complex but routine user actions fall within the scope of the claims.
- Intrinsic Evidence for a Broader Interpretation: The specification explains that the command is "invariable" because the user does not need to "select to issue different activation commands...depending on whether the user considers that a data exchange operation should be accomplished" (’333 Patent, col. 7:17-22). This language suggests the focus is on the user's single intent, not the physical simplicity of the action.
- Intrinsic Evidence for a Narrower Interpretation: The specification repeatedly provides examples like pressing a "single manually activated button" (’333 Patent, col. 5:7-10) or accomplishing the trigger in a "single step" (id. at col. 7:31-32). This could support a narrower construction limited to simpler, non-compound actions.
The Term: "data conveyance switching element" (’333 Claim 1; ’294 Claim 1)
- Context and Importance: This is the core logical component of the invention. Whether Google’s software architecture includes a structure that meets this definition will be a central infringement question.
- Intrinsic Evidence for a Broader Interpretation: The patent states this element can be a "virtual program" or "a series of instructions programmed onto the microchip" (’333 Patent, col. 6:10-14). This supports mapping the claim onto the software logic of Google Wallet that differentiates between NFC and other transaction types.
- Intrinsic Evidence for a Narrower Interpretation: The claims and figures depict the switching element as a discrete component that is assigned one of two specific states ("activated" / "inactive" or "first" / "second") which then directs data flow (’333 Patent, Fig. 2; col. 4:28-30). A party could argue that the accused software uses a more distributed or fundamentally different logic that does not have a component that maps to this claimed structure and its binary states.
VI. Other Allegations
Indirect Infringement
The complaint does not contain counts for indirect infringement (induced or contributory). Its allegations are focused on direct infringement by Google’s making, using, selling, and importing of the Accused Products (Compl. ¶¶33, 56).
Willful Infringement
The complaint alleges that Google has had knowledge of the asserted patents since at least July 26, 2017, based on a communication from the patents' prior owner to a Google representative (Compl. ¶¶49, 73). It further alleges knowledge from the date of the complaint's filing (Compl. ¶¶48, 72). These allegations of pre-suit knowledge form the basis for a claim of willful infringement, which could lead to a request for enhanced damages.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "invariable activation command," rooted in patent examples of a single button press, be construed to cover the multi-step but standardized user actions (e.g., biometric unlock followed by a physical tap) that characterize modern smartphone payments?
- A key evidentiary question will be one of architectural mapping: does Google's software contain a discrete "data conveyance switching element" that operates in two distinct states to route transactions as claimed, or does the Google Wallet system utilize a fundamentally different software logic that does not map onto this claimed structure?
- A critical question for damages will be one of willfulness: given the specific allegation of pre-suit notice in 2017, the court will need to determine if Google's conduct, should it be found infringing, was sufficiently reckless to justify an award of enhanced damages.