DCT

6:19-cv-00388

Freshub Inc v. Amazon.com Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 6:19-cv-00388, W.D. Tex., 06/24/2019
  • Venue Allegations: Plaintiff alleges venue is proper in the Western District of Texas because Defendant Amazon maintains regular and established places of business in the District, including multiple fulfillment centers, and targets its products and services to residents of the District.
  • Core Dispute: Plaintiff alleges that Defendant’s Alexa-enabled products and the associated Alexa Voice Service infringe four patents related to voice processing systems for creating and managing e-commerce shopping lists and orders.
  • Technical Context: The technology at issue involves voice-activated digital assistants and cloud-based services that enable users to manage shopping and make purchases using natural language commands, a central feature of the modern smart home ecosystem.
  • Key Procedural History: The complaint alleges that Defendant Amazon was aware of the asserted patent family since at least November 2010, when it received a wireless scanner product from Plaintiff’s predecessor-in-interest that was marked with related patents. It is also alleged that Amazon, through its prosecution counsel, cited the parent application of the patents-in-suit during the prosecution of one of its own patents. The complaint further notes ongoing partnership discussions between the parties from 2015 to May 2019.

Case Timeline

Date Event
2005-12-12 Earliest Priority Date for all Asserted Patents
2010-11-01 Amazon allegedly received Plaintiff's predecessor's scanner product
2014-01-01 Amazon allegedly began targeting services to the W.D. Tex. district
2018-03-06 U.S. Patent No. 9,908,153 Issued
2019-02-26 U.S. Patent No. 10,213,810 Issued
2019-03-19 U.S. Patent No. 10,232,408 Issued
2019-03-26 U.S. Patent No. 10,239,094 Issued
2019-06-24 Complaint Filed

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

U.S. Patent No. 9,908,153 - "SYSTEMS AND METHODS FOR SCANNING INFORMATION FROM STORAGE AREA CONTENTS"

The Invention Explained

  • Problem Addressed: The patent's background section describes the problem of consumers being unable to conveniently monitor the expiration dates of perishable items stored in refrigerators, leading to food waste and inefficient use of storage space (’153 Patent, col. 1:24-34).
  • The Patented Solution: The invention proposes a two-part system to address shopping and inventory management. A local "first system" (e.g., a smart home device) captures a user's spoken words for an item, digitizes them, and "immediately" transmits the digitized order to a remote "computer system" (e.g., a cloud service) (’153 Patent, col. 14:55-col. 15:4). The remote system then translates the speech to text, identifies the corresponding item, adds it to a list associated with the user, and enables that list to be displayed (’153 Patent, col. 15:5-19). The process described in the patent's flowchart for a voice order begins with digitizing a spoken order and concludes with placing the order after user verification and provider selection (’153 Patent, Fig. 8).
  • Technical Importance: This technology aims to remove barriers to in-home shopping by increasing consumer convenience and flexibility through voice commands (Compl. ¶13).

Key Claims at a Glance

  • The complaint asserts independent claim 1 and dependent claims 2-11 (Compl. ¶42).
  • Claim 1 of the ’153 Patent recites:
    • A voice processing system comprising a "first system" and a remote "computer system."
    • The first system includes a microphone, wireless network interface, digitizer, computer, and memory.
    • The first system is configured to perform operations comprising: receiving a "verbal order" from a user via the digitizer and "immediately" transmitting the digitized order to the remote computer system.
    • The remote computer system includes a network interface, computer, and memory.
    • The remote computer system is configured to perform operations comprising: receiving the digitized order, translating a portion to text, identifying an item corresponding to the text, adding the item to a list, and enabling the list to be displayed.

U.S. Patent No. 10,213,810 - "SYSTEMS AND METHODS FOR SCANNING INFORMATION FROM STORAGE AREA CONTENTS"

The Invention Explained

  • Problem Addressed: The patent addresses the same problem of inconveniently monitoring perishable items as the ’153 Patent (’810 Patent, col. 1:24-34).
  • The Patented Solution: The invention describes a voice processing architecture comprising a main computer system and an associated "remote system." The main system associates a "unique identifier" with the remote system and can download configuration data to it (’810 Patent, col. 14:51-60). The remote system (e.g., a smart speaker) captures a user's spoken order and sends the digitized version to the main system. The main system processes the order and enables the resulting list of items to be displayed on a "user device different than the remote system" and also enables the list to be provided to an "item provider" (’810 Patent, col. 15:1-8). This architecture explicitly separates the voice capture device from the device used to view the resulting list.
  • Technical Importance: This approach facilitates a multi-device ecosystem where a user can issue a voice command to one device (e.g., a screenless smart speaker) and manage the resulting shopping list on another (e.g., a smartphone or web browser) (Compl. ¶78).

Key Claims at a Glance

  • The complaint asserts independent claims 1 and 17, and dependent claims 2-16 and 18-29 (Compl. ¶62).
  • Claim 1 of the ’810 Patent recites:
    • A voice processing system with a networks interface, a computer, and non-transitory memory.
    • The system performs operations comprising: associating a "unique identifier" with a remote system.
    • The remote system comprises a microphone, wireless network interface, voice output system, and digitizer.
    • The system performs further operations comprising: downloading "configuration data" to the remote system; receiving a digitized order from the remote system; translating the order to text and identifying an item; including the item in a set of items; enabling the set to be displayed on a "user device different than the remote system"; and enabling the set to be "provided to an item provider."

U.S. Patent No. 10,232,408 - "SYSTEMS AND METHODS FOR SCANNING INFORMATION FROM STORAGE AREA CONTENTS"

  • Technology Synopsis: This patent claims a voice processing system where a remote system captures spoken words and a main system translates the speech to text. The innovation focuses on matching the translated text to a text description stored in a database that also contains "unique product identifiers" to identify the correct item for the user's list (’408 Patent, col. 14:51-col. 15:5).
  • Asserted Claims: Claims 1-30 are asserted (Compl. ¶93).
  • Accused Features: The complaint alleges that Amazon's AVS matches text from a user's voice command with a database of product descriptions and their unique identifiers, such as Amazon Standard Identification Numbers (ASINs), to add the correct product to a shopping cart (Compl. ¶¶104, 106).

U.S. Patent No. 10,239,094 - "SYSTEMS AND METHODS FOR SCANNING INFORMATION FROM STORAGE AREA CONTENTS"

  • Technology Synopsis: This patent claims a computer-implemented method performed by a first computer system (e.g., a server) that receives a digitized spoken order from a second, remote computer system (e.g., a user device). The method involves translating the order to text, matching the text to item descriptions in a data store, identifying the corresponding item, and adding it to a list for display (’094 Patent, col. 14:47-col. 15:10).
  • Asserted Claims: Claims 1-24 are asserted (Compl. ¶122).
  • Accused Features: The complaint alleges infringement by the method performed by Amazon's AVS computers/servers, which receive spoken words from user devices, convert them into an action, and place the associated item into a user's shopping cart, which involves matching the derived text with descriptions in a data store (Compl. ¶133).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are Amazon’s Echo Products, Fire TV Products, Fire Tablet Products, and the Amazon and Alexa Apps (collectively, "Accused Products"), all of which utilize the Amazon Alexa virtual assistant and the underlying Alexa Voice Service (“AVS”) (Compl. ¶¶28-29, 38).

Functionality and Market Context

  • The Accused Products are voice-controlled devices and software applications that integrate with Amazon's e-commerce platform. A user issues a voice command, such as "add [product] to my shopping cart," to an Alexa-enabled device (Compl. ¶30). The device contains a microphone array to capture the speech and an AVS client that sends the audio to Amazon's AVS cloud service for processing (Compl. ¶¶38, 52). AVS performs Automatic Speech Recognition (ASR) to convert the speech to text and Natural Language Understanding (NLU) to determine the user's intent (Compl. ¶54). Based on this processing, the identified item is added to a user's Amazon Cart, Whole Foods Cart, or Alexa Shopping List, which is associated with the user's account and accessible on other devices like smartphones via the Amazon App (Compl. ¶¶30, 55). The complaint provides a diagram from an Amazon video illustrating the flow from a user's utterance to the AVS cloud for processing and back to the device (Compl. ¶53).

IV. Analysis of Infringement Allegations

9,908,153 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... The Accused Products, such as the Echo Device and Fire Tablet, include a microphone array and a wireless network interface (Wi-Fi) to capture spoken words and connect to the internet. The devices include a digitizer to convert spoken words into a digital format like PCM. ¶46-49, 51 col. 14:56-61
receive via the digitizer a verbal order... wherein the verbal order was captured by the microphone and digitized by the digitizer; The AVS Client software on the Accused Products processes a verbal request from a user, such as a request to add an item to an Alexa Shopping List, which was captured by the device's microphone. ¶52 col. 15:1-4
immediately transmit, using the wireless network interface, the digitized order to a computer system remote from the first system; The AVS Client sends the user's digitized request via WiFi to Alexa's remote cloud component for processing. A diagram shows the AVS client software communicating with the remote Alexa service via Wi-Fi. ¶52 col. 15:4-6
the computer system... comprising: ...a second computer; The Alexa Voice Service utilizes computers/servers in the cloud, which function as the second computer. ¶53 col. 15:8-9
receive, using the network interface, the digitized order from the first system; translate at least a portion of the digitized order to text; identify an item corresponding to the text; The AVS cloud service receives the digitized order and uses Automatic Speech Recognition (ASR) to convert the user's speech into text and identify the item for an action, such as adding it to a list. ¶53-54 col. 15:11-15
add the identified item to a list associated with the user; enable the list... to be displayed via a user display. AVS adds the translated items to an Alexa Shopping List associated with the user's Amazon account. The list is viewable on devices with a display, such as through the Amazon App on a smartphone. A screenshot shows such a list. ¶55 col. 15:15-19
  • Identified Points of Contention:
    • Scope Questions: A central question may be the scope of "verbal order." Does a command to add an item to a "shopping list," as distinct from a command to purchase an item, constitute an "order" as that term is used in the patent? The patent’s detailed description and figures appear to contemplate a process that can culminate in placing an order with a provider (’153 Patent, Fig. 8).
    • Technical Questions: The claim requires the first system to "immediately transmit" the digitized order. Questions may arise as to whether local processing performed by the Alexa device before transmission (e.g., wake word detection, packaging the audio into a "Recognize Event" as described in AVS documentation) is consistent with the "immediately transmit" limitation (Compl. ¶51).

10,213,810 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
associate a unique identifier with a remote system... The Accused Products are associated with a unique Device Serial Number (DSN) and must be linked to a unique user Amazon account to function. ¶66, 71-72 col. 14:51-54
download configuration data to the remote system; Settings for the Accused Products are configured remotely using the Alexa app, and this configuration data is subsequently downloaded to the particular device. ¶77 col. 14:60-61
receive, using the network interface, a digitized order of a user from the remote system; translate... to text; use the text... to identify an item...; include the identified item in a set of one or more items associated with the user; AVS servers in the cloud receive the digitized order from the remote Alexa device, use ASR to translate it to text, and add the identified item to the user's shopping cart or list. ¶74-76 col. 14:62-col. 15:4
enable the set of items... to be displayed to the user via a user device different than the remote system; Items added to a shopping cart or list via a voice command to an Echo speaker (remote system) can be viewed on a different device, such as a smartphone running the Amazon App or a web browser. ¶78 col. 15:4-7
and enable the set of items... to be provided to an item provider. The complaint alleges this limitation is met by the system's operation, which facilitates ordering and purchasing items from Amazon (the item provider) via Alexa. ¶66 col. 15:7-8
  • Identified Points of Contention:
    • Scope Questions: The meaning of "download configuration data" will likely be disputed. The question will be whether the alleged downloading of user settings from the Alexa app meets this limitation, or if the patent requires a more specific type of configuration data related to the system's core voice-processing operation.
    • Technical Questions: Analysis may focus on whether making items available for purchase within the Amazon ecosystem is sufficient to meet the claim requirement to "enable the set of items... to be provided to an item provider," or if a more direct act of transmission or provision is required by the claim.

V. Key Claim Terms for Construction

  • The Term: "verbal order" (’153 Patent, Claim 1)

  • Context and Importance: This term's construction is critical because the accused functionality heavily involves adding items to "shopping lists," which may or may not be construed as "orders." If "order" is limited to an explicit instruction to purchase, a significant portion of the accused functionality may fall outside the claim scope. Practitioners may focus on this term because the distinction between list-making and purchasing is a key functional aspect of the accused Alexa service.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: An embodiment described in the patent's summary mentions presenting a "shopping list" to the user that includes an identified item, which may suggest that a shopping list is contemplated as part of the overall ordering process (’153 Patent, col. 2:27-33).
    • Evidence for a Narrower Interpretation: The patent's flowchart for processing a "voice order" depicts a process that includes steps like "TRANSMIT ORDER TO ONE OR MORE PROVIDERS" and "PLACE ORDER," suggesting the term "order" refers to a transaction for procurement, not just list creation (’153 Patent, Fig. 8).

  • The Term: "user device different than the remote system" (’810 Patent, Claim 1)

  • Context and Importance: This term is central to the patented architecture, which separates the voice capture device from the display device. The infringement theory relies on a user speaking to an Echo device (the "remote system") and viewing the list on a smartphone (the "different" device). The definition will determine if this common use case maps onto the claim.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The claim language itself is plain and does not appear to impose specific limitations on the nature of the "remote system" or the "user device" other than that they be different from each other, which could support a straightforward application to the accused Echo/smartphone combination.
    • Evidence for a Narrower Interpretation: The patent's specification does not provide extensive examples, which might lead a party to argue from the provided embodiments that the terms should be construed in a more limited context, though the basis for such an argument is not immediately apparent from the intrinsic record.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges induced infringement of the ’810, ’408, and ’094 Patents, asserting that Defendant instructs and encourages customers to use the Accused Products in an infringing manner through advertising, user guidelines, and customer service sections on its website (Compl. ¶¶85-88, 114-117, 142-145).
  • Willful Infringement: Willfulness is alleged for all four asserted patents. The complaint bases this on alleged pre-suit knowledge of the patent family dating back to at least 2010, when Amazon allegedly received a product from Plaintiff’s predecessor marked with related patents. The complaint further alleges that Amazon cited the parent application of the patents-in-suit during its own patent prosecution and that the parties engaged in partnership discussions for several years (Compl. ¶¶57, 80-81, 109-110, 137-138).

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

This dispute will likely center on fundamental questions of claim scope and technical implementation. The outcome may depend on the court’s determination of the following issues:

  • A core issue will be one of definitional scope: can the term "verbal order," as used in the ’153 Patent, be construed to cover a user's command to add an item to a "shopping list," or is its meaning restricted to an explicit instruction to purchase?
  • A second key issue will be one of architectural mapping: does Amazon's integrated Alexa Voice Service, where a user speaks to a screenless Echo device and views the resulting list on a separate smartphone app, practice the specific system architecture claimed in the ’810 Patent, particularly with respect to the "different" user device and "download configuration data" limitations?
  • A central evidentiary question will be one of pre-suit knowledge: what factual record will be developed regarding Amazon's alleged knowledge of the asserted patent family, based on its receipt of a marked product in 2010 and its citation to a parent application, and will that record be sufficient to support the allegations of willful infringement?