DCT
6:19-cv-00438
Parus Holdings Inc v. Samsung Electronics Co Ltd D
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Parus Holdings Inc. (Delaware)
- Defendant: Samsung Electronics Co., Ltd. (South Korea) and Samsung Electronics America, Inc. (New York)
- Plaintiff’s Counsel: Ward, Smith & Hill, PLLC; Mintz, Levin, Cohn, Ferris, Glovsky and Popeo P.C.
- Case Identification: 6:19-cv-00438, W.D. Tex., 11/19/2019
- Venue Allegations: Plaintiff alleges venue is proper for Samsung Electronics America, Inc. because it has a regular and established place of business in the district and has committed infringing acts there. Venue is alleged to be proper for Samsung Electronics Co., Ltd. as a foreign corporation.
- Core Dispute: Plaintiff alleges that Defendant’s smartphones equipped with voice-assistant technology, such as Google Assistant and Samsung Bixby, infringe patents related to systems for voice-activated information retrieval from the internet.
- Technical Context: The technology at issue concerns the server-side architecture for enabling users to query online sources using natural speech commands on a device and receive an audible response, a foundational capability of modern digital assistants.
- Key Procedural History: This First Amended Complaint asserts independent claim 1 of both the ’431 and ’084 patents. However, subsequent to the filing of this complaint, both asserted claims were cancelled in inter partes review (IPR) proceedings (IPR2020-00686, IPR2020-00687). The cancellation of the only asserted claims presents a significant development that may require Plaintiff to amend its pleadings to assert claims that survived the IPRs.
Case Timeline
| Date | Event |
|---|---|
| 2000-02-04 | Earliest Priority Date for '431 and '084 Patents |
| 2006-07-11 | '431 Patent Issue Date |
| 2007-06-18 | Alleged Constructive Notice of '431 Patent |
| 2016-09-20 | '084 Patent Issue Date |
| 2018-02-21 | Alleged Constructive Notice of '084 Patent |
| 2019-08-05 | Alleged Actual Notice of Patents via Original Complaint |
| 2019-11-19 | First Amended Complaint Filing Date |
| 2020-03-18 | IPR Filed Against '431 Patent (IPR2020-00686) |
| 2020-04-18 | IPR Filed Against '084 Patent (IPR2020-00847) |
| 2023-12-01 | '084 Patent IPR Certificate Issued (Cancelling Claim 1) |
| 2023-12-04 | '431 Patent IPR Certificate Issued (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"
- Patent Identification: U.S. Patent No. 7,076,431, "Robust Voice Browser System and Voice Activated Device Controller," Issued July 11, 2006 (Compl. ¶3; ’431 Patent, cover page).
The Invention Explained
- Problem Addressed: The patent describes the difficulty for users to access internet information from remote locations, noting that contemporary solutions like laptops were cumbersome, while PDAs and early web-phones were expensive, required specially formatted websites, and were prone to obsolescence as web technologies evolved (’431 Patent, col. 1:41-col. 2:24). It specifically identifies that information retrieval systems must be robust against frequent changes in website design and must provide rapid responses to meet user expectations for telephonic interactions (’431 Patent, col. 2:30-58).
- The Patented Solution: The invention proposes a server-based system that allows a user to retrieve information from websites using natural voice commands spoken into any standard telephone. The system architecture includes speech recognition and synthesis engines, and a database of web sources which are ranked (’431 Patent, Abstract; Fig. 1). In response to a user's voice query, the system is designed to access the highest-ranked website first, thereby aiming to provide the fastest possible response, and can adjust these rankings based on site performance to maintain reliability (’431 Patent, col. 3:59-col. 4:13).
- Technical Importance: This server-side, ranking-based methodology was designed to create a device-agnostic voice browsing experience that did not depend on specialized user hardware or custom-formatted websites, a significant goal during the early stages of mobile internet development (’431 Patent, col. 3:45-54).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶18). It should be noted that claim 1 was cancelled in IPR2020-00686.
- Essential elements of the asserted independent claim 1 include:
- A computer operatively connected to the internet.
- A voice-enabled device connected to the computer to receive user speech commands.
- A speaker-independent speech recognition device and a speech synthesis device.
- An instruction set comprising a plurality of pre-selected website addresses.
- A recognition grammar corresponding to the instruction set and a user-selectable speech command.
- The computer is configured to retrieve the instruction set and sequentially access the plurality of websites until the requested information is found.
- The speech synthesis device is configured to produce and transmit an audio message containing the retrieved information.
U.S. Patent No. 9,451,084 - "Robust Voice Browser System and Voice Activated Device Controller"
- Patent Identification: U.S. Patent No. 9,451,084, "Robust Voice Browser System and Voice Activated Device Controller," Issued September 20, 2016 (Compl. ¶3; ’084 Patent, cover page).
The Invention Explained
- Problem Addressed: As a continuation of the technology in the ’431 patent, the ’084 patent addresses the same core problem: providing robust, voice-activated access to internet information from any device in an environment where websites frequently change and users expect immediate responses (’084 Patent, col. 1:44-col. 2:54).
- The Patented Solution: The invention describes a system comprising a computing device, speech recognition and synthesis components, and memory storing instruction sets. A key feature disclosed in this patent is the system's claimed ability to not only access a pre-defined list of websites but also to periodically search the network to discover and add new websites to its list, thereby dynamically updating its information sources (’084 Patent, Abstract; col. 23:59-col. 24:24).
- Technical Importance: This patent purports to build on the earlier system by introducing a mechanism for the system to autonomously expand its own knowledge base, making it more adaptable to the continuously growing and changing internet (’084 Patent, col. 24:6-12).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶65). It should be noted that claim 1 was cancelled in IPR2020-00687.
- Essential elements of the asserted independent claim 1 include:
- At least one computing device coupled to one or more networks.
- A speaker-independent speech-recognition device and a speech-synthesis device.
- Memory associated with the computing device storing an instruction set that includes a plurality of website addresses.
- The computing device is configured to periodically search the network to identify and add new websites to the plurality of websites.
- The computing device is further configured to access the websites in a defined order to retrieve information.
- The speech synthesis device is configured to produce and transmit an audio message with the retrieved information.
III. The Accused Instrumentality
Product Identification
- The complaint identifies the "Samsung Accused Products" as Samsung smartphones, including at least the Samsung Galaxy Note 9, that incorporate the Google Assistant and/or Samsung Bixby virtual assistants (Compl. ¶21, ¶68).
Functionality and Market Context
- The accused functionality is the voice-command feature of these digital assistants. The complaint alleges that users speak commands into the device's microphone, which are then processed by a system that retrieves information from internet sources (Compl. ¶22, ¶33-34, ¶68). Specifically, the complaint alleges that Google Assistant retrieves information from pre-selected websites that have been crawled and indexed by Google's "Googlebot" (Compl. ¶27, ¶43). The system then synthesizes an audio response and delivers it to the user (Compl. ¶28, ¶98). The complaint states that this voice-enabled search technology is in competition with Plaintiff's own products (Compl. ¶2). A visual in the complaint depicts the setup process for Samsung's Bixby assistant on a Galaxy phone (Compl. p. 8, ¶29).
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 Samsung Galaxy Note 9 includes a processor and is operatively connected to the internet via Wi-Fi and cellular connectivity. | ¶31, ¶32 | col. 4:50-54 |
| at least one speaker-independent speech recognition device... and at least one speech synthesis device | The accused system uses an Automatic Speech Recognition (ASR) system to process incoming sound into text and a Text-to-Speech (TTS) system to read a response aloud. A flowchart illustrates this process. | ¶36, ¶38, ¶50, p. 15 | col. 4:50-54 |
| at least one instruction set for identifying said information... comprising a plurality of pre-selected web site addresses | Google Assistant retrieves information from websites that have already been crawled by the "Googlebot", which the complaint alleges constitutes a list of pre-selected website addresses. | ¶42-¶44 | col. 20:3-9 |
| said computer configured to first access said first web site... and, if said information... is not found... said computer configured to sequentially access said plurality of web sites | Google's search algorithms are alleged to access a plurality of websites in a "sequential" order based on ranking until pertinent information is found. | ¶53, ¶57 | col. 20:31-38 |
| said speech synthesis device configured to produce an audio message containing any retrieved information... and... to transmit said audio message to said users | Google Assistant provides retrieved information in an audio form, as exemplified by the "My Day" feature which allows a user to "hear about weather, your commute, important things to do, daily fun, and more." | ¶28, ¶58 | col. 20:39-41 |
- Identified Points of Contention:
- Overarching Viability: A threshold issue is that independent claim 1, the only claim from the ’431 Patent asserted in the complaint, has been cancelled in IPR proceedings. This may prevent this infringement claim from proceeding unless Plaintiff amends its complaint to assert one of the surviving dependent claims.
- Scope Questions: Should the case proceed on a surviving claim, a question for the court may be whether Google’s vast, algorithmically-managed search index qualifies as a "plurality of pre-selected web site addresses" as that term is used in the patent, which could be interpreted to contemplate a more discretely defined list (Compl. ¶43; ’431 Patent, col. 5:3-14).
- Technical Questions: The complaint alleges that Google's search algorithms access websites "sequentially" based on rank (Compl. ¶57). An evidentiary question is whether this function is technically equivalent to the patent's description of accessing a first site and, "if information is not found", then accessing subsequent sites, or if the accused system operates differently, for example by selecting a single best source from its index.
’084 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| at least one computing device... operatively coupled to one or more networks | The Samsung Galaxy Note 9 includes a processor and connects to the internet, which the complaint identifies as a network. | ¶77, ¶78 | col. 3:45-54 |
| memory operatively associated with the computing device with at least one instruction set... comprising a plurality of web site addresses for the listing of web sites | Google Assistant is alleged to retrieve information from websites that have been crawled by the "Googlebot" and organized in the Google Search index, which is identified as the instruction set comprising a plurality of website addresses. | ¶83-¶87 | col. 24:2-5 |
| wherein 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 | Google's crawling technology is alleged to periodically discover "new web sites" on its own or through sitemaps to constantly provide updated data for its index. | ¶92, ¶96 | col. 24:6-12 |
| the computer configured to access the plurality of web sites remaining in an order defined for accessing the listing | The complaint alleges that Google's operations access websites in a defined order (as ranked) until the information is found. | ¶92, ¶96 | col. 24:19-24 |
| the speech synthesis device configured to produce an audio message containing any retrieved information | The system conveys retrieved information in an audio form, with the complaint citing Google's statement that a user can "hear about weather, your commute, important things to do, daily fun, and more." | ¶97, ¶98 | col. 24:45-48 |
- Identified Points of Contention:
- Overarching Viability: As with the ’431 patent, the sole asserted claim from the ’084 patent (independent claim 1) was cancelled in an IPR proceeding, raising a fundamental question about the viability of this count as pleaded.
- Scope Questions: If a surviving claim is asserted, the interpretation of "periodically search... to add the new web sites to the plurality of web sites" may be contested. It raises the question of whether Google's continuous, integrated crawling-and-indexing process is equivalent to the patent's language, which might suggest a more discrete process of updating a distinct list (Compl. ¶96; ’084 Patent, col. 24:9-11).
V. Key Claim Terms for Construction
Because the asserted independent claims have been cancelled, this analysis considers terms that would have been central to the dispute and are likely to remain so if Plaintiff asserts the surviving dependent claims.
Term: "sequentially access" (’431 Patent)
Context and Importance: This term is critical to the method of searching described in the ’431 patent. The infringement theory depends on whether the accused system's method of using a ranked search index meets this limitation. Practitioners may focus on this term because modern search engines may not perform a linear, trial-and-error search as the claim language might imply.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent’s overall goal is to provide fast and reliable information, and the specification does not mandate a single, rigid technical method for the sequence, which may support an interpretation that includes any ordered or ranked approach.
- Evidence for a Narrower Interpretation: Claim 1 recites accessing a first web site "and, if said information to be retrieved is not found at said first web site," then sequentially accessing the plurality. This language may support a narrower construction requiring a literal, one-by-one check for information, which may not align with the operation of the accused search technology (’431 Patent, col. 20:33-38).
Term: "plurality of pre-selected web site addresses" (’431 and ’084 Patents)
Context and Importance: The definition of this term is fundamental to whether the accused system's use of Google's massive search index falls within the scope of the patents. The dispute may turn on whether "pre-selected" can read on an algorithmically-generated index of billions of pages.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patents aim to solve the problem of accessing a dynamic internet. This purpose could support a broader view where "pre-selected" includes any set of sites identified by the system for searching, however large or automated its creation.
- Evidence for a Narrower Interpretation: The specification’s discussion of maintaining a database with ranked sources could suggest a more curated, manageable, and explicitly chosen list of sites, rather than the entire indexed web (’431 Patent, col. 3:30-34, Fig. 2). The term "pre-selected" itself may imply a degree of human or deliberate, limited selection not present in a global web index.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Samsung induces infringement of both patents by instructing and encouraging customers and developers to use the accused voice assistants in an infringing manner. This is allegedly done through user manuals, technical support websites, and advertising that promote the use of Google Assistant and Bixby (Compl. ¶61-¶62, ¶102-¶103). The complaint includes a visual from a Samsung support page on setting up Google Assistant (Compl. p. 9, ¶31).
- Willful Infringement: Plaintiff claims willful infringement for both patents, alleging that Samsung had actual knowledge of the patents and its infringement at least from the date of service of the original complaint (on or around August 5, 2019) but continued its alleged infringing activities (Compl. ¶20, ¶67).
VII. Analyst’s Conclusion: Key Questions for the Case
- A primary procedural question is one of case viability: given that the asserted independent claims of both patents-in-suit have been cancelled in post-filing IPRs, can the infringement claims proceed as pleaded, or will Plaintiff be required to amend its complaint to assert one of the surviving dependent claims?
- A key substantive question for the court will be one of architectural mismatch: assuming the case proceeds, does the integrated, algorithmic architecture of a modern search engine (e.g., Google's continuous crawling and relevance ranking) perform the functions described by claim terms like "sequentially access" and "periodically... add... to the plurality of web sites," or is there a fundamental difference in technical operation from the more discrete, list-based system described in the patents?
- A central claim construction issue will be one of definitional scope: can the term "plurality of pre-selected web site addresses," which the patent context suggests may be a curated list, be construed broadly enough to encompass the billions of dynamically indexed web pages that form the basis of the accused Google Assistant's search functionality?