DCT
6:19-cv-00433
Parus Holdings Inc v. Google LLC D
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Parus Holdings Inc. (Delaware)
- Defendant: Google LLC (Delaware)
- Plaintiff’s Counsel: Mintz Levin Cohn Ferris Glovsky and Popeo PC
- Case Identification: Parus Holdings Inc. v. Google LLC, 6:19-cv-00433, W.D. Tex., 10/21/2019
- Venue Allegations: Plaintiff alleges venue is proper in the Western District of Texas due to Defendant's permanent physical presence, including multiple office locations and significant employee numbers in Austin.
- Core Dispute: Plaintiff alleges that Defendant’s Google Pixel products with Google Assistant infringe patents related to voice-activated systems for retrieving information from networked sources like the Internet.
- Technical Context: The technology at issue falls within the domain of voice-controlled digital assistants, a highly competitive market segment involving artificial intelligence, web search, and consumer electronics.
- Key Procedural History: The complaint alleges that Plaintiff disclosed U.S. Patent No. 7,076,431 to Defendant in a confidential presentation in April 2007, but Defendant declined to license the technology. U.S. Patent No. 9,451,084 is a child of the '431 Patent. Subsequent to the filing of this complaint, Inter Partes Review (IPR) proceedings initiated by Google resulted in the cancellation of the asserted independent claims (Claim 1) of both patents-in-suit. The IPR certificates, issued in December 2023, confirmed that other claims in each patent survived.
Case Timeline
| Date | Event |
|---|---|
| 2000-02-04 | Earliest Priority Date for '431 and '084 Patents |
| 2006-07-11 | U.S. Patent No. 7,076,431 Issued |
| 2007-04-01 | Plaintiff's alleged disclosure of '431 Patent to Defendant |
| 2016-09-20 | U.S. Patent No. 9,451,084 Issued |
| 2019-10-21 | Complaint Filed |
| 2023-12-01 | IPR Certificate Issued for '084 Patent, cancelling Claim 1 |
| 2023-12-04 | IPR Certificate Issued for '431 Patent, cancelling Claim 1 |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,076,431 - "Robust Voice Browser System and Voice Activated Device Controller," Issued Jul. 11, 2006
The Invention Explained
- Problem Addressed: The patent identifies the limitations of accessing the internet in the early 2000s, noting that devices like laptops were not easily portable and that early mobile devices like PDAs were expensive and could only access a limited number of specially formatted websites ('431 Patent, col. 1:28-2:8). It further notes that the dynamic nature of the internet, with websites frequently changing, could cause information retrieval systems to fail, and that users of voice-based telephone systems expect near-immediate responses, unlike the tolerated delays of desktop browsing ('431 Patent, col. 2:30-58).
- The Patented Solution: The invention describes a system that allows users to browse the internet using natural voice commands through a standard telephone or other voice-enabled device. The system maintains a database of web sites, each assigned a rank number. When a user makes a request, the system accesses the site with the highest rank to retrieve the information ('431 Patent, Abstract). To maintain reliability and speed, the system periodically "polls" the web sites to detect changes or slow response times and adjusts the rankings accordingly, ensuring that users are directed to the most efficient and functional sources ('431 Patent, col. 4:57-65; Fig. 1).
- Technical Importance: This approach sought to provide a reliable and user-friendly bridge between the ubiquitous telephone network and the rapidly growing but often difficult-to-access mobile internet.
Key Claims at a Glance
- The complaint asserts independent claim 1.
- Essential elements of independent claim 1 include:
- A computer connected to the internet and a voice-enabled device for receiving user speech commands.
- A speaker-independent speech recognition device and a speech synthesis device.
- An instruction set comprising a "plurality of pre-selected web site addresses."
- A recognition grammar corresponding to the instruction set and a user-selectable speech command.
- A computer configured to retrieve an instruction set based on the selected grammar.
- The computer being further configured to "sequentially access said plurality of web sites" until the information is found.
- The speech synthesis device configured to produce and transmit an audio message containing the retrieved information.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 9,451,084 - "Robust Voice Browser System and Voice Activated Device Controller," Issued Sep. 20, 2016
The Invention Explained
- Problem Addressed: As a continuation of the '431 Patent, the '084 Patent addresses the same fundamental challenge: providing robust, voice-driven access to web-based information in an environment where web sites constantly change ('084 Patent, col. 2:45-55).
- The Patented Solution: The '084 Patent claims a system architecture for voice-based information acquisition that explicitly includes dynamic source management. The invention describes a computing device with memory containing an instruction set that lists web site addresses. A key feature is that the computing device is configured to "periodically search via the one or more networks to identify new web sites and to add the new web sites to the plurality of web sites," thereby automatically expanding and updating its knowledge base ('084 Patent, Claim 1; col. 4:57-64). This automates the process of keeping the system's information sources current.
- Technical Importance: The invention's focus on periodically and automatically discovering new web sources was a step toward the self-maintaining, large-scale indexing systems that underpin modern search engines.
Key Claims at a Glance
- The complaint asserts independent claim 1.
- Essential elements of independent claim 1 include:
- A computing device coupled to a network, a speaker-independent speech-recognition device, a speech-synthesis device, and memory.
- An instruction set in memory comprising a "plurality of web site addresses."
- A recognition grammar associated with the instruction set.
- The computing device configured to receive a speech command, select a grammar, and retrieve the corresponding instruction set.
- The computing device is "further configured to periodically search... to identify new web sites and to add the new web sites to the plurality of web sites."
- The computing device is configured to access a first web site and, if information is not found, to access remaining sites in a defined order.
- A speech synthesis device to produce and transmit an audio message with the retrieved information.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- The complaint identifies the "Google Accused Products" as Google Pixel smartphones (including at least the Pixel 1, 2, and 3) that operate the Android OS and include Google Assistant (Compl. ¶23).
Functionality and Market Context
- The complaint alleges the accused products function as a system for voice-activated information retrieval (Compl. ¶24). A user speaks a command into the device's microphones, which is processed by Google Assistant's speaker-independent speech recognition system (Compl. ¶¶33, 35). This system is supported by Google's large-scale web crawling and indexing infrastructure, referred to as Googlebot, which the complaint alleges periodically discovers and organizes information from billions of webpages into the Google Search index (Compl. ¶¶30, 42).
- Upon a query, Google Assistant allegedly accesses this index to find responsive information and uses a speech synthesis device to deliver an answer to the user in audio form (Compl. ¶¶31, 37). A technical diagram included in the complaint illustrates this flow from Automatic Speech Recognition (ASR) to a Text-to-Speech (TTS) system (Compl. p. 10). The complaint highlights the on-device and cloud-based AI processing that enables these features (Compl. ¶36).
IV. Analysis of Infringement Allegations
'431 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a computer, said computer operatively connected to the internet | The Google Pixel 3 contains a processor (e.g., Snapdragon 845) and has Wi-Fi and cellular connectivity to the internet. | ¶32 | col. 10:46-50 |
| a voice enabled device operatively connected to said computer... configured to receive speech commands from users | The Google Pixel 3 has integrated microphones configured to receive voice commands for Google Assistant. | ¶33 | col. 10:40-45 |
| at least one speaker-independent speech recognition device | Google Assistant uses an Automatic Speech Recognition (ASR) system that is speaker-independent. The complaint includes a diagram showing an "ASR" system processing incoming sound. | ¶35, p. 10 | col. 10:48-54 |
| at least one speech synthesis device | Google Assistant uses a Text-to-Speech (TTS) system to produce an audio response. The complaint includes a diagram showing a "TTS" system reading a response aloud. | ¶37, p. 10 | col. 10:59-63 |
| an instruction set... comprising... a plurality of pre-selected web site addresses | Google's Search index, which is described as being built from "a list of web addresses from past crawls" and containing hundreds of billions of webpages identified by address. | ¶¶41-43, p. 7 | col. 10:30-34 |
| said computer configured to sequentially access said plurality of web sites until said information to be retrieved is found | Google's search algorithms are alleged to access the plurality of websites in the index in a "sequential" order based on ranking until pertinent information is found. | ¶57 | col. 10:60-65 |
| said speech synthesis device configured to produce an audio message containing any retrieved information... and... transmit said audio message | Google Assistant provides spoken answers. The complaint includes a screenshot of the "My Day" feature, where a user can "hear about weather, your commute, important things to do." | ¶58, p. 17 | col. 10:59-63 |
'084 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| at least one computing device, the computing device operatively coupled to one or more networks | The Google Pixel 3 contains a processor and is operatively connected to the internet via Wi-Fi and cellular networks. | ¶¶77-78 | col. 4:21-23 |
| at least one speaker-independent speech-recognition device... configured to receive the speech commands | Google Assistant on the Pixel 3 can handle voice commands using speaker-independent technology. | ¶¶79-80 | col. 4:32-35 |
| memory operatively associated with the computing device with at least one instruction set | The Google Pixel 3 includes memory, which is alleged to contain instruction sets for identifying information to be retrieved. | ¶¶81-82 | col. 4:26-29 |
| a plurality of web site addresses for the listing of web sites | Google's Search index is alleged to be a list of web site addresses gathered by the Googlebot crawler. The complaint includes a description of the Googlebot process. | ¶¶83-84, p. 24 | col. 4:42-45 |
| the computing device is further configured to periodically search via the one or more networks to identify new web sites and to add the new web sites to the plurality of web sites | Google's "crawling" technology (Googlebot) is alleged to periodically discover new websites and add them to the Search index to provide updated data. | ¶94 | col. 4:57-64 |
| the speech synthesis device configured to produce an audio message containing any retrieved information | Google Assistant provides retrieved information in audio form. The complaint includes a screenshot for the "My Day" feature, which provides audible information. | ¶¶95-96, p. 29 | col. 5:1-4 |
- Identified Points of Contention:
- Claim Viability: The most significant issue is that the asserted independent claim 1 of both the '431 and '084 patents was cancelled in IPR proceedings after the complaint was filed. The viability of the lawsuit depends on whether Plaintiff can assert infringement of any surviving dependent claims.
- Scope Questions: A central question for the '431 Patent is whether Google's massive, algorithmically-generated Search Index qualifies as a "plurality of pre-selected web site addresses." The patent's examples may suggest a smaller, more curated list, whereas Google's index is a vast repository of the public web.
- Technical Questions: It raises a question whether Google's system, which queries a pre-compiled index, performs the claimed step of "sequentially access[ing] said plurality of web sites" ('431 Patent) at the time of a user's request. The complaint alleges this maps to Google's ranking and result-serving algorithms (Compl. ¶57), but there may be a technical mismatch between accessing a live site versus an index.
V. Key Claim Terms for Construction
The Term: "pre-selected web site addresses" ('431 Patent, Claim 1)
- Context and Importance: The construction of this term is critical to determining whether Google's vast, automatically generated Search Index falls within the scope of the claim. Practitioners may focus on this term because its definition could either confine the patent to smaller, manually curated lists or expand it to cover large-scale, automated indexing systems.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent's stated goal is to provide robust access to information on the internet generally, and the system is designed to adapt to the "rapidly changing area of Internet applications" ('431 Patent, col. 2:30-32), which may support a view that the list is not static or manually limited.
- Evidence for a Narrower Interpretation: The use of the term "pre-selected" and the patent's embodiment describing a database with a few specific URLs for a given category (e.g., Table 1) could support a narrower construction limited to a specific, defined set of sources chosen prior to operation ('431 Patent, col. 5:39-53).
The Term: "sequentially access said plurality of web sites" ('431 Patent, Claim 1)
- Context and Importance: This term defines the core retrieval action. Its construction will determine whether accessing a pre-compiled index is equivalent to accessing the websites themselves in sequence. This is a key technical point in the infringement analysis.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent emphasizes the need for a "rapid" response ('431 Patent, col. 4:62-63). Accessing an index is functionally a way to rapidly query the content of many sites, aligning with the patent's objective of speed, and could be viewed as a form of "access."
- Evidence for a Narrower Interpretation: The plain meaning of "access... web sites" suggests a direct interaction with the sites at query time. The patent's polling mechanism is described as "pinging" the actual web sites to check their status, which could imply the primary "access" method is also directed at the live sites, not an intermediary index ('431 Patent, col. 16:57-67).
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Google induces infringement by providing customers with instructions, technical support, and user manuals that direct them to use the accused products in a manner that practices the patented methods (Compl. ¶¶60, 100). It also pleads contributory infringement, alleging the accused products are especially made for this use and are not staple articles of commerce with substantial non-infringing uses (Compl. ¶¶62, 102).
- Willful Infringement: Willfulness is alleged based on pre-suit knowledge. The complaint asserts that Google had actual knowledge of the '431 Patent as of April 2007 from a confidential presentation by Plaintiff (Compl. ¶¶19-21). For the '084 Patent, the complaint alleges willful blindness, arguing Google knew of the parent '431 patent and pending applications in the same family (Compl. ¶¶67-69).
VII. Analyst’s Conclusion: Key Questions for the Case
- A primary threshold issue for the court will be one of case viability: given the post-filing cancellation of the asserted independent claims of both patents, can the Plaintiff proceed with its infringement contentions based on any surviving, un-pleaded dependent claims, or is the case, as currently pleaded, non-viable?
- A central question of claim scope will be whether the patent's concept of a system accessing a "plurality of pre-selected web site addresses" can be construed to read on a modern, large-scale search architecture that relies on a vast, algorithmically-generated index of the web.
- A key evidentiary question will be one of technical operation: does Google's method of querying its pre-compiled index constitute "sequentially access[ing]... web sites" as required by the '431 patent, or is there a fundamental mismatch between the claimed process and the accused system's functionality?