DCT

1:24-cv-01393

Big Will Enterprises Inc v. Shenzhen Viofo Technology Co Ltd

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:24-cv-01393, W.D. Tex., 11/14/2024
  • Venue Allegations: Plaintiff alleges venue is proper because Defendant is not a U.S. resident and has committed acts of infringement and conducts business within the Western District of Texas.
  • Core Dispute: Plaintiff alleges that Defendant’s dashcam products infringe five U.S. patents related to the use of sensor data to determine and react to the motion and activity of a device.
  • Technical Context: The technology involves using sensors like accelerometers and gyroscopes in mobile devices to identify specific activities (e.g., driving, braking, collision) and trigger responsive actions, a foundational capability in telematics and personal safety devices.
  • Key Procedural History: The complaint does not mention any prior litigation, licensing history, or post-grant proceedings involving the asserted patents.

Case Timeline

Date Event
2007-01-01 Plaintiff alleges development of its proprietary technologies began "since at least 2007"
2008-01-16 Earliest Priority Date for ’951, ’914, and '846 Patents
2012-08-30 Earliest Priority Date for ’273 and ’558 Patents
2013-05-28 U.S. Patent No. 8,452,273 Issues
2013-10-15 U.S. Patent No. 8,559,914 Issues
2014-05-27 U.S. Patent No. 8,737,951 Issues
2015-06-02 U.S. Patent No. 9,049,558 Issues
2019-12-31 U.S. Patent No. 10,521,846 Issues
2024-11-14 Complaint Filed

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

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 describes the evolution of electronic messaging and notification systems, noting the increasing sophistication of wireless communication devices (WCDs) and their sensor capabilities, which created an opportunity for more intelligent, context-aware applications. (’846 Patent, col. 1:50-59).
  • The Patented Solution: The invention uses sensor data, such as from an accelerometer or gyroscope, within a WCD to determine a specific "mobile thing motion activity" (MTMA), like driving or walking. This determination is made by analyzing the sensor data, often in the frequency and time domains, and comparing it to a stored database of reference "MTMA signatures." Based on the identified activity, the system can then select and deliver a targeted advertisement to the user. (’846 Patent, Abstract; col. 2:2-9, Fig. 2E).
  • Technical Importance: This technology enabled applications to move beyond simple location-based triggers and initiate actions based on a more nuanced understanding of a user's real-world physical activity. (Compl. ¶12).

Key Claims at a Glance

  • The complaint asserts independent claims 1 (a method) and 12 (a device). (Compl. ¶¶19, 30).
  • Independent Claim 1 (Method) requires:
    • Determining a mobile thing motion activity (MTMA) for a WCD based on sensor data from the WCD.
    • The sensors measure physical movement in 3D space, producing data sets with movement and time values.
    • Selecting an advertisement based on the determined MTMA.
    • Causing the advertisement to be communicated to the WCD.
    • The determining step involves storing reference MTMA signatures, normalizing sensor data, analyzing it in frequency/time domains, and selecting the most likely MTMA signature.
  • Independent Claim 12 (Device) requires:
    • A WCD with one or more transceivers to access a remote computer system designed to select and communicate a targeted advertisement.
    • Memory to store computer program code.
    • One or more processors to execute code that determines the MTMA based on sensor data and statistical analysis, communicates the data to the remote system, and receives the advertisement.
  • The complaint also asserts dependent claims 2-11 and reserves the right to assert others. (Compl. ¶¶20-29).

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 distinct human activities (like walking, running, biking, or driving) using only sensor data, noting that prior art methods had low accuracy, particularly for biking and driving. (’273 Patent, col. 2:1-24).
  • The Patented Solution: The invention provides a method to improve accuracy by processing raw, multi-axis sensor data. A key step is establishing a stable reference frame, often by using the constant of Earth's gravity to define a vertical axis. Subsequent sensor data is then normalized relative to this reference frame, which allows the system to isolate true device movement from gravitational effects and more accurately calculate and identify the motion activity. (’558 Patent, Abstract; col. 10:9-25).
  • Technical Importance: This normalization technique provided a more robust way to analyze motion data from sensors whose orientation could be arbitrary (e.g., a phone in a pocket or a dashcam on a windshield), improving the reliability of activity detection. (Compl. ¶¶22-23).

Key Claims at a Glance

  • The complaint asserts independent claims 1, 17, 27 (methods), 42, and 52 (systems). (Compl. ¶¶33, 39, 44, 47, 53).
  • Independent Claim 1 (Method) requires:
    • Receiving time-stamped data streams from sensors of a WCD.
    • Recognizing a particular set of data sample values as a reference for defining the WCD's orientation in a coordinate system.
    • Computing reference data based on that recognition.
    • Calculating movement data for other, non-reference data samples based on the reference data.
    • Determining an MTMA based on the calculated movement data.
  • Independent Claim 17 (Method) requires:
    • Receiving first and second data from sensors.
    • Determining reference data that defines a reference framework from the first data.
    • Normalizing the second data with the reference data.
    • Identifying an MTMA based on the normalized second data.
  • The complaint also asserts numerous dependent claims and reserves the right to assert others. (Compl. ¶¶34-38, 40-43, 45-46, 48-51, 54-57).

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

  • Issued: May 27, 2014
  • Technology Synopsis: The technology relates to a device that uses sensors to investigate a user's environment. Upon detecting data indicative of a potential need for assistance (e.g., an accident or crime), the device enters a second, different mode of operation to capture further data that is more indicative of the activity. (’951 Patent, Claim 1).
  • Asserted Claims: Independent claims 1 and 10. (Compl. ¶¶60, 66).
  • Accused Features: The complaint alleges that the dashcams' accident detection features, which trigger a secondary process to lock video footage and activate alerts, infringe the ’951 Patent. (Compl. ¶¶60-61).

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

  • Issued: October 15, 2013
  • Technology Synopsis: The patent describes a system comprising logic that determines a user's activity and/or surroundings, selects a corresponding surveillance mode, facilitates a user-defined response, and communicates surveillance information to a remote device. (’914 Patent, Claim 5).
  • Asserted Claims: Independent claims 5 and 15. (Compl. ¶¶69, 70).
  • Accused Features: The complaint accuses the dashcams' intelligent systems that continuously analyze sensor data for risky driving behaviors and trigger a special "accident surveillance mode" upon detecting a collision. (Compl. ¶¶69, 71).

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: The invention is a method for processing three-dimensional accelerometer data by first recognizing a reference data set to define a relationship between the 3D orientation of the device and a two-dimensional (2D) coordinate system (e.g., vertical and horizontal). It then computes reference data and calculates subsequent movement data within that 2D system to determine the motion activity. (’273 Patent, Claim 1).
  • Asserted Claims: Independent claim 1. (Compl. ¶73).
  • Accused Features: The complaint alleges the dashcams' use of 3-axis accelerometers to determine orientation relative to gravity and then compute movement data in a 2D measurement system infringes the ’273 Patent. (Compl. ¶73).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are various Viofo-branded dashcam models, including but not limited to the A119 V3, A129 Plus Duo, and A329, along with their associated mobile applications. (Compl. ¶16).

Functionality and Market Context

  • The complaint describes the accused products as advanced driver tracking and telematics devices that use sensors, including tri-axial accelerometers (G-sensors) and GPS, to monitor driver behavior. (Compl. ¶¶15-16). A key alleged function is the real-time detection of "critical driving behaviors" or "unsafe driving events" such as harsh braking, rapid acceleration, and collisions. (Compl. ¶¶7, 15). Upon detecting such an event, the dashcams are alleged to automatically lock the recorded video footage to preserve it as evidence, a feature marketed as "Auto Emergency Lock." (Compl. p. 11). The complaint also provides a screenshot showing that users can adjust the G-sensor's sensitivity level through a mobile application. (Compl. p. 8).

IV. Analysis of Infringement Allegations

'846 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
determining a mobile thing motion activity (MTMA) associated with the MT that is transporting the WCD based at least in part upon sensor data... Defendant's dashcams monitor accelerometer and other sensor data to determine driver behaviors and identify risky driving events like hard braking and accidents. ¶19 col. 2:2-9
the one or more sensors measuring physical movement of the WCD in three dimensional space and producing data sets comprising three movement values and a time value... The dashcams use a 3-axis accelerometer to analyze x, y, and z axis accelerations with time values to determine driver motion activities. ¶19 col. 81:9-18
selecting an advertisement based at least in part upon the determined MTMA; causing the advertisement to be communicated to the WCD... The system analyzes events like hard braking and provides drivers with account-based notifications, reward messages, and onscreen events via email, SMS, or mobile applications. ¶19 col. 2:5-9
wherein the determining the MTMA comprises: storing a plurality of reference MTMA signatures in the memory... The system compares live accelerometer data to reference motion activity data to create "signatures" that include frequency and/or timing for identifying each activity. ¶19 col. 91:23-29
analyzing the normalized data sets in the frequency and time domains... The system analyzes live data in the frequency and time domains by comparing it to reference data to identify motion activity. ¶19 col. 91:38-41
selecting a most likely MTMA signature from the plurality of MTMA signatures based at least in part upon the likelihoods. The motion activity is determined by matching live data sets against referenced data based on predetermined thresholds and ranges in the frequency and time domains. ¶19 col. 91:42-47
  • Identified Points of Contention:
    • Scope Questions: A central question may be whether the "notifications of risky driving behaviors," "reward messages," and "onscreen events" alleged in the complaint (Compl. ¶¶16, 20) fall within the scope of the claim term "advertisement". The patent's explicit focus on "advertisement selection" suggests a commercial context that may not align with the safety and feedback alerts allegedly provided by the accused products.
    • Technical Questions: What evidence does the complaint provide that the accused system stores a "plurality of reference MTMA signatures" and performs a comparison to select the "most likely" signature? The complaint provides a marketing screenshot showing an "Auto Emergency Lock" feature (Compl. p. 11), but it does not detail the underlying decision-making process that triggers this lock, raising the question of whether it performs the specific multi-step analysis required by the claim.

'558 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
receiving a time value and at least three streams of data sample values from one or more sensors of a wireless communication device (WCD)... The dashcams use accelerometers to detect 3D accelerations on the x, y, and z axes, which are essential for identifying driving behaviors. ¶33 col. 10:9-15
recognizing a particular set of data sample values as a reference for defining an orientation of the WCD in a coordinate system; The dashcams collect accelerometer data, including gravity data, and process it to determine a direction and make movement calculations; the devices allegedly "auto-orient themselves." ¶33 col. 10:16-19
computing reference data based upon the recognition of the particular set... The system determines reference data based on whether gravitational accelerations are included in the sensor data updates, allowing for precise measurements. ¶33 col. 10:20-25
calculating movement data in the coordinate system of one or more other non-reference data sample values based upon the reference data; The dashcams continually monitor driver behaviors by calculating real-time movement accelerations across the x, y, and z axes based on the reference data. ¶33 col. 10:26-29
determining a mobile thing motion activity (MTMA) associated with the MT based upon the movement data. The dashcams use the calculated movement data to detect unsafe driving activities such as hard braking, rapid acceleration, and accidents. ¶33 col. 10:30-32
  • Identified Points of Contention:
    • Scope Questions: Does the dashcams' processing of gravity-influenced accelerometer data constitute "recognizing a particular set...as a reference"? A court may need to determine if this claim language requires a discrete step of identifying and setting a static reference point (e.g., when the vehicle is stationary) or if it can read on a continuous process of accounting for gravity in motion calculations.
    • Technical Questions: What evidence demonstrates that the accused products compute "reference data" and then use that specific data to calculate "movement data" for "other non-reference data sample values"? The complaint alleges this process occurs (Compl. ¶33), but the infringement analysis may depend on the specific algorithms used by Viofo and whether they map onto the claimed sequence of recognition, computation, and calculation.

V. Key Claim Terms for Construction

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

  • Context and Importance: The infringement theory for the ’846 Patent hinges on whether the safety notifications, alerts, and reward messages sent by the accused system qualify as an "advertisement." If construed narrowly to mean only commercial promotions, the infringement argument may be weakened; if construed broadly to include any message intended to influence user behavior, the argument may be strengthened.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The patent specification does not provide an explicit definition of "advertisement," which could suggest the term should be given its plain and ordinary meaning, potentially encompassing a wide range of communications.
    • Evidence for a Narrower Interpretation: The patent title is "Targeted advertisement selection..." and the abstract describes selecting an advertisement that is "suited for the determined MTMA." The patent's block diagrams show "ADVERTISEMENT(S)" as a component of the "Action Determination (AD) SYSTEM," distinct from other system functions, suggesting a specific, likely commercial, purpose. (’846 Patent, Fig. 2D, element 107).

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

  • Context and Importance: This term describes the foundational step of the patented method for orienting the device to accurately process motion data. Practitioners may focus on this term because the dispute will likely turn on whether the accused products perform this specific act of "recognizing" and setting a "reference," or if they use a different, non-infringing method to account for device orientation and gravity.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification suggests the reference can be "frequently updated," which might support an argument that any dynamic use of a data point (like a recent gravity vector) to orient subsequent data qualifies as "recognizing...a reference." (’558 Patent, col. 33:63-65).
    • Evidence for a Narrower Interpretation: A related patent in the same family describes this step as finding "effectively stationary, points" where the net acceleration magnitude is approximately 1g (i.e., only gravity is felt) and using "this direction of this vector as the positive z-axis." (’273 Patent, Fig. 5, boxes 3-4). This suggests "recognizing...as a reference" could be construed more narrowly to require this specific process of identifying a stationary state to establish the coordinate system.

VI. Other Allegations

  • Indirect Infringement: The complaint's prayer for relief seeks an injunction against contributory and inducing infringement, but the body of the complaint does not allege specific facts to support the required elements of knowledge and intent for these claims. (Compl. p. 47).
  • Willful Infringement: The prayer for relief requests enhanced damages for willful infringement. (Compl. p. 47). The complaint does not, however, plead any facts suggesting Defendant had pre-suit knowledge of the patents-in-suit.

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 safety notifications, driver feedback alerts, and reward messages allegedly generated by the accused dashcam systems?
  • A key evidentiary question will be one of technical implementation: do the accused Viofo dashcams perform the specific, multi-step data processing claimed across the asserted patents—namely, "recognizing" a data set "as a reference," computing "reference data," and then "normalizing" or "calculating" subsequent movement data based upon it—or do they detect events like collisions using a technically distinct, non-infringing algorithm?