DCT

6:23-cv-00113

Ask Sydney LLC v. Microsoft Corp

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 6:23-cv-00113, W.D. Tex., 02/13/2023
  • Venue Allegations: Plaintiff alleges venue is proper because Microsoft has regular and established places of business within the Western District of Texas, including a specific office location in Austin, and has committed acts of infringement in the district.
  • Core Dispute: Plaintiff alleges that Defendant’s Bing web search engine infringes two patents related to iterative, feedback-driven methods for refining search results to identify a user's current interest.
  • Technical Context: The technology at issue pertains to dynamically guiding a user's search, particularly for images, by sequentially presenting results and using the user's feedback on each result to inform the selection of the next one.
  • Key Procedural History: The two patents-in-suit belong to the same family; U.S. Patent 10,474,705 is a continuation of the family that produced U.S. Patent 9,323,786. The '705 patent is subject to a terminal disclaimer, which may limit its enforceable term to that of the '786 patent and could be relevant in any obviousness-type double patenting analysis.

Case Timeline

Date Event
2014-08-15 Earliest Priority Date for '786 and '705 Patents
2016-04-26 U.S. Patent No. 9,323,786 Issued
2019-11-12 U.S. Patent No. 10,474,705 Issued
2023-02-13 Complaint Filed

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

U.S. Patent No. 9,323,786

  • Patent Identification: U.S. Patent No. 9,323,786, System and computer method for visually guiding a user to a current interest, issued April 26, 2016.

The Invention Explained

  • Problem Addressed: The patent describes a deficiency in recommendation systems that rely on a user's long-term history. Such systems are too general to identify a user's specific, granular, and contemporaneous preference (e.g., a food "craving"), which may be unknown even to the user until provoked by a suggestion (’786 Patent, col. 1:22-55).
  • The Patented Solution: The invention is a computer-implemented method that guides a user to their current interest through an iterative process. The system presents an image associated with a set of descriptive tags, receives user preference feedback on that image, and processes the tags to determine a next set of tags, which is then used to select the next image to present. This sequential feedback loop allows a user to discover their specific interest during a single session (’786 Patent, Abstract; col. 2:1-21).
  • Technical Importance: The method aims to solve the "information overload" problem by providing a guided, dynamic search experience that adapts in real-time to user feedback, rather than relying on static, historical user profiles (’786 Patent, col. 5:27-42).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (Compl. ¶18).
  • Essential elements of independent claim 1 include:
    • determining a plurality of tags specific to the user based on a user profile;
    • transmitting one electronic image representing a physical object and associated with a set of tags;
    • receiving an input from the user indicating a preference for the physical object;
    • processing the plurality of tags based on the preference and the set of tags to determine a next set of tags;
    • determining a next electronic image associated with the next set of tags; and
    • generating a sequence of images by repeating the preceding steps.
  • The complaint does not explicitly reserve the right to assert dependent claims but makes a general allegation of infringement of "one or more claims" (Compl. ¶18).

U.S. Patent No. 10,474,705

  • Patent Identification: U.S. Patent No. 10,474,705, Iterative image search algorithm informed by continuous human-machine input feedback, issued November 12, 2019.

The Invention Explained

  • Problem Addressed: Similar to the ’786 patent, this patent addresses the inability of existing recommendation systems to account for a user's "current (i.e., contemporaneous) interest or preference" that may differ from their general historical preferences (’705 Patent, col. 5:13-25).
  • The Patented Solution: The invention describes an iterative image search method where the system presents a digital image, receives user feedback (e.g., a "favorable indication" or an "unfavorable indication"), and then explicitly "adjust[s] weights" of the tags associated with the image. This weight adjustment informs the determination of a subsequent image, creating a feedback loop that resolves toward an image satisfying the user's subjective, immediate need (’705 Patent, col. 27:37-41, Claim 1).
  • Technical Importance: This approach refines the feedback mechanism by formalizing the concept of adjusting tag weights, which can enable a more nuanced and responsive search refinement process compared to simple tag inclusion or exclusion (’705 Patent, col. 14:1-6).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (Compl. ¶25).
  • Essential elements of independent claim 1 include:
    • determining a plurality of digital images, each associated with tags;
    • receiving an "unfavorable indication of a disinclination" for an image;
    • analyzing tags to determine a "next set of tags";
    • "adjusting weights" of at least some tags based on an association;
    • transitioning the image with a subsequent image; and
    • receiving a further input for the subsequent image.
  • The complaint makes a general allegation of infringement of "one or more claims" (Compl. ¶25).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentality is "Microsoft's Bing, a web search engine" (Compl. ¶16).

Functionality and Market Context

  • The complaint alleges that Bing is a web search engine made, used, sold, and offered for sale by Microsoft in the United States (Compl. ¶18, ¶25).
  • The complaint does not provide specific details about the technical operation of the Bing search engine. The infringement allegations are premised on the general functionality of a search engine that presents results to users and refines those results based on user interaction (Compl. ¶23, ¶30).
  • The complaint asserts that the Accused Products are available to businesses and individuals throughout the United States (Compl. ¶21, ¶28).

IV. Analysis of Infringement Allegations

The complaint references claim charts in Exhibits C and D that purportedly detail the infringement of claim 1 of each patent-in-suit, but these exhibits were not filed with the complaint (Compl. ¶23, ¶30). The complaint’s narrative theory is that by making and using the Bing search engine, Microsoft directly infringes the asserted claims (Compl. ¶18, ¶25). Without the claim charts, a detailed element-by-element analysis of the alleged infringement is not possible.

No probative visual evidence provided in complaint.

  • Identified Points of Contention:
    • Technical Questions: A central question will be whether the general operation of the Bing search engine's ranking and result-selection algorithms performs the specific steps recited in the claims. For the ’786 patent, this includes determining tags "specific to the user" from a "profile." For the ’705 patent, this includes "adjusting weights" of tags in response to "unfavorable" feedback. The case will likely require discovery into the internal workings and source code of Bing to determine if its algorithms map onto these claimed functions.
    • Scope Questions: The infringement analysis may turn on whether the patents' claims, which are described in the context of discovering a "current interest" like a "food craving" (’786 Patent, col. 1:44-50), can be read to cover the functionality of a general-purpose web search engine like Bing.

V. Key Claim Terms for Construction

  • The Term: "profile of the user" (’786 Patent, Claim 1)

    • Context and Importance: This term appears in the first step of claim 1 of the ’786 Patent and is the basis for determining the initial "plurality of tags specific to the user." Its construction is critical because it may distinguish the invention from a generic search system that does not rely on pre-existing, user-specific data. Practitioners may focus on whether a user's general search history on Bing constitutes a "profile" as contemplated by the patent.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The patent does not appear to provide an explicit definition, which may support an argument for the term's plain and ordinary meaning, potentially encompassing any collection of user data, including implicit data like search history.
      • Evidence for a Narrower Interpretation: The specification discusses user profiles containing "information that is used for the interacting with the system," including "tags indicated by the user to include with the user's profile" and food dishes the user "prefers (e.g., likes)" or "does not prefer (e.g., dislikes)" (’786 Patent, col. 11:42-53). This could support a narrower construction requiring an explicit or curated set of user preferences.

  • The Term: "adjusting weights" (’705 Patent, Claim 1)

    • Context and Importance: This is a core functional limitation in claim 1 of the ’705 patent, describing how the system processes tags to determine subsequent results. The viability of the infringement claim depends on whether Bing's ranking algorithm performs an operation that meets the definition of "adjusting weights."
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: A party could argue that any algorithmic change that makes certain tags more or less influential in subsequent search steps constitutes "adjusting weights."
      • Evidence for a Narrower Interpretation: The patent claims a specific sequence where "unfavorable indication" leads to processing that includes "adjusting weights" (’705 Patent, Claim 1). Furthermore, the specification of the parent patent describes a process where a negative response leads to the removal of tags, and a positive response leads to the addition of tags, suggesting a specific type of weight adjustment (e.g., binary or step-function changes) rather than a continuous or probabilistic re-ranking (’786 Patent, col. 13:25-14:6; col. 15:30-38).

VI. Other Allegations

  • Indirect Infringement: The complaint does not contain counts for indirect infringement. While it makes a passing reference to "indirectly" developing products and "induced acts of infringement," the formal counts for relief (Counts I and II) are explicitly for direct infringement under 35 U.S.C. § 271(a) (Compl. ¶3, ¶11, ¶18, ¶25).
  • Willful Infringement: The complaint does not use the term "willful infringement." However, it alleges that Microsoft "made no attempt to design around the claims" and "did not have a reasonable basis for believing that the claims of the '705 Patent were invalid" (Compl. ¶19, ¶20, ¶26, ¶27). In its prayer for relief, Plaintiff requests a judgment that this is an "exceptional case" under 35 U.S.C. § 285, which could entitle it to attorneys' fees (Compl. p. 7, ¶C). These allegations lay a potential groundwork for a future claim of willfulness or a motion for enhanced damages.

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

  • A primary issue will be one of technical mapping: Can Plaintiff produce evidence from discovery demonstrating that the proprietary algorithms powering Microsoft's Bing search engine perform the specific, structured, and iterative steps of the asserted claims, particularly the use of a "profile of the user" (’786 patent) and the "adjusting [of] weights" of tags (’705 patent)?
  • A second core issue will be one of claim scope: Will the court construe the key claim terms narrowly, confining them to the specific embodiments described for discovering a subjective "craving," or broadly enough to encompass the operations of a general-purpose web search engine that refines results based on user clicks and search history? The resolution of these claim construction disputes will likely be determinative of the infringement outcome.