Big Will Enterprises Inc v. Uber Tech Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Big Will Enterprises Inc. (British Columbia)
  • Defendant: Uber Technologies, Inc. (Delaware)
  • Plaintiff’s Counsel: Eureka Intellectual Property Law, PLLC
• Case Identification: 6:23-cv-00403, W.D. Tex., 05/24/2023
• Venue Allegations: Plaintiff alleges venue is proper because Defendant maintains established and regular places of business in the district, including an Austin headquarters facility, and has committed acts of patent infringement within the district.
• Core Dispute: Plaintiff alleges that Defendant’s Uber-Driver telematic smartphone application and related systems infringe six patents related to determining a mobile device’s motion activity using its internal sensors.
• Technical Context: The technology involves analyzing data from smartphone sensors, such as accelerometers and gyroscopes, to identify specific human activities and vehicular movements, a key function in modern telematics and driver safety monitoring systems.
• Key Procedural History: The complaint does not allege any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history between the parties related to the patents-in-suit.

Case Timeline

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 background describes the proliferation of electronic messaging and notification systems, implying a need for more intelligent, context-aware methods for triggering such communications (U.S. Patent No. 10,521,846, col. 1:50-59). The core technical challenge is to accurately identify a user's specific motion activity using sensors in a device like a smartphone, whose orientation relative to the user is unknown and dynamic (Compl. ¶3).
• The Patented Solution: The invention proposes a method and system for identifying a "mobile thing motion activity" (MTMA) by analyzing data from sensors (e.g., an accelerometer) in a wireless communication device (WCD). This identification is achieved by processing the sensor data, normalizing it to account for orientation, and comparing it against a database of stored "reference MTMA signatures." Once a specific activity like "driving" is identified, the system selects and delivers a targeted "advertisement" to the user's device ('846 Patent, Abstract; col. 2:32-49).
• Technical Importance: The technology enables activity-based, contextual actions on a mobile device, moving beyond simple location-based triggers to a more nuanced understanding of user behavior derived from motion sensors (Compl. ¶2, ¶16).

Key Claims at a Glance

• The complaint asserts independent claims 1 (a method) and 12 (a device) (Compl. ¶23, ¶33).
• Essential Elements of Independent Claim 1:
  • Determining a mobile thing motion activity (MTMA) based on sensor data from a wireless communication device (WCD).
  • The sensor data measures physical movement in three-dimensional space to permit statistical analysis.
  • This determination involves storing reference MTMA signatures, determining and applying a "normalizing mathematical relationship" to the sensor data, analyzing the normalized data, and selecting the "most likely MTMA signature" based on likelihoods.
  • Selecting an "advertisement" based on the determined MTMA.
  • Causing the advertisement to be communicated to the WCD.
• Essential Elements of Independent Claim 12:
  • A WCD comprising transceivers, sensors, memory, and processors.
  • The processors execute code to perform a method substantially similar to that of Claim 1, including determining an MTMA by comparing sensor data to reference signatures and using that MTMA to enable the selection and local communication of a targeted advertisement from a remote system.
• The complaint also asserts dependent claims 2-10 and 13-16 and reserves the right to assert others (Compl. ¶22, ¶24-32, ¶34-37).

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 difficulty of accurately identifying a person's motion activity using only accelerometer data, particularly when the device has no fixed orientation (e.g., is in a pocket or purse) (Compl. ¶3). Prior art approaches are described as having low accuracy for activities like biking and driving and often required the device to be placed in a specific position (U.S. Patent No. 8,452,273, col. 2:1-25).
• The Patented Solution: The invention discloses a method to overcome the orientation problem by first using sensor data to establish a "reference framework." This is typically done by recognizing a set of data sample values corresponding to a known state, such as the force of gravity when the device is stationary. This reference is then used to normalize subsequent data streams, allowing for the accurate calculation of movement data (e.g., horizontal vs. vertical acceleration) independent of the device's orientation. This normalized data is then used to identify the MTMA ('558 Patent, Abstract; Fig. 4A).
• Technical Importance: The patented solution provides a robust method for orientation-agnostic activity recognition on mobile devices, a foundational capability for modern telematics and personal safety applications (Compl. ¶2-3).

Key Claims at a Glance

• The complaint asserts independent claims 1, 17, 27, 42, and 52 (Compl. ¶42-46).
• Essential Elements of Independent Claim 1:
  • Receiving at least three streams of data sample values from sensors of a WCD.
  • Recognizing a particular set of data sample values as a "reference for defining an orientation" of the WCD in a coordinate system.
  • Computing "reference data" based on that recognition.
  • Calculating "movement data" for other data samples based upon the reference data.
  • Determining an MTMA based upon the movement data.
• Essential Elements of Independent Claim 17:
  • 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" so it can be analyzed in the framework.
  • Identifying an MTMA based on the normalized second data.
• The complaint asserts other independent claims covering similar systems and methods, as well as dependent claims (Compl. ¶44-46).

U.S. Patent No. 8,977,230 - “Interactive personal surveillance and security (IPSS) systems and methods,” issued March 10, 2015

• Technology Synopsis: This patent describes a computer system that communicates with a remote wireless device. The system receives sensor data from the device, compares it to reference data to identify an activity, and based on that comparison, communicates a message back to the device indicating whether the activity relates to a need for assistance, an accident, or a crime.
• Asserted Claims: Independent Claim 1 is asserted (Compl. ¶51).
• Accused Features: The complaint accuses Uber's crash detection and response features, which allegedly compare sensor data to reference data to identify an accident and then communicate a message to the user's device (Compl. ¶51).

U.S. Patent No. 8,737,951 - “Interactive personal surveillance and security (IPSS) systems and methods,” issued May 27, 2014

• Technology Synopsis: This patent describes a wireless communications device (WCD) itself. The device contains computer code to produce sensor data, determine a "human body physical activity" (HBPA) based on that data, select a mode of operation based on the HBPA, and communicate the data to a remote computer system.
• Asserted Claims: Independent Claim 10 is asserted (Compl. ¶56).
• Accused Features: Uber's driver monitoring application is accused of determining a user is driving (an HBPA), starting a driver monitoring process (a mode of operation), and communicating surveillance information (e.g., hard braking events) to a remote server (Compl. ¶56).

U.S. Patent No. 8,559,914 - “Interactive personal surveillance and security (IPSS) systems and methods,” issued October 15, 2013

• Technology Synopsis: This patent claims a system and method comprising logic that determines a user activity, selects a corresponding "surveillance mode," facilitates a user-defined response to that activity, and communicates surveillance information to a remote device.
• Asserted Claims: Independent Claims 5 and 15 are asserted (Compl. ¶61-62).
• Accused Features: The Uber system is accused of determining user activity (e.g., driving), entering a surveillance mode to monitor for safety events, and facilitating a response (e.g., a "Ride Check" notification) when an unsafe event is detected (Compl. ¶61).

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: This patent, a parent to the ’558 Patent, describes a method using only accelerometer data to determine an MTMA. The method involves receiving accelerometer data, determining reference data that defines a two-dimensional (2D) reference framework, normalizing subsequent data for analysis in that 2D space, and identifying the MTMA from the normalized data.
• Asserted Claims: Independent Claims 12 and 22 are asserted (Compl. ¶67-68).
• Accused Features: The complaint alleges the Uber-Driver app uses smartphone accelerometers and corrects for gravity's influence to create a 2D framework for calculating and identifying driver behaviors like hard braking and accidents (Compl. ¶67).

III. The Accused Instrumentality

Product Identification

• The accused instrumentality is Defendant's "Uber – Driver" telematic smartphone application and its associated systems (Compl. ¶12, ¶22).

Functionality and Market Context

• The complaint alleges the Uber-Driver application is a "smartphone-deployed driver-behavior monitoring and reporting solution" (Compl. ¶22). It allegedly uses a smartphone's internal sensors, including the accelerometer, gyroscope, and GPS, to monitor and identify driver behaviors such as hard braking, rapid acceleration, dangerous cornering, and vehicle crashes (Compl. ¶23, ¶42). A screenshot of a news article reports that Uber’s "RideCheck" feature uses a smartphone’s GPS, accelerometer, and gyroscope to detect a vehicle crash (Compl. p. 8). The data collected is allegedly used to provide drivers with feedback, scores, coaching, and educational materials, as well as to trigger safety features like crash detection notifications (Compl. ¶23, ¶25, ¶42). An in-app screenshot shows the "Uber Pro Diamond" rewards program, which provides drivers with points and status levels based on performance (Compl. p. 9).

IV. Analysis of Infringement Allegations

10,521,846 Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: A principal issue may be whether the "in-app reminders and educational material" or reward program notifications sent to drivers by Uber qualify as an "advertisement" as required by claim 1 of the ’846 Patent (Compl. ¶23). The complaint equates these notifications with advertisements, but the conventional meaning of the term may suggest a commercial promotion, raising a significant question for claim construction.
  • Technical Questions: The complaint alleges that Uber's system determines and uses a "normalizing mathematical relationship" to analyze sensor data (Compl. ¶23). The evidentiary basis for how Uber's proprietary software specifically implements this normalization and signature-matching process will be a key technical question for the court.

9,049,558 Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: The term "recognizing a particular set of data sample values as a reference for defining an orientation" may be contested. The question will be whether this requires the specific method of identifying a static gravity vector from accelerometer data, as described in embodiments, or if it can be construed more broadly to cover any method of establishing a reference orientation.
  • Technical Questions: A key technical question will be whether Uber's system actually performs the claimed sequence of steps: first recognizing a reference orientation from sensor data itself, and then using that specific reference to compute movement data. The complaint's allegations rely on public descriptions of the system's capabilities, which may not detail the underlying algorithmic process.

V. Key Claim Terms for Construction

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

• Context and Importance: The infringement allegation for the ’846 Patent hinges on this term. Practitioners may focus on this term because the complaint alleges that Uber's driver safety notifications, rewards, and educational materials constitute "advertisements." If the court construes this term narrowly to mean only traditional commercial promotions, the infringement case for this patent may be substantially weakened.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent specification describes the invention as enabling "one or more intelligent ID-based and/or activity-based actions" ('846 Patent, col. 2:47-49). Plaintiff may argue that an "advertisement" is just one example of such an "action" and should be interpreted broadly to include any communication intended to influence user behavior.
  • Evidence for a Narrower Interpretation: The patent's title is "Targeted advertisement selection," and the claim explicitly uses the word "advertisement." An embodiment describes enabling an "advertiser to communicate the advertisement" ('846 Patent, col. 90:39-42). Defendant may argue this context limits the term to its ordinary meaning of a commercial solicitation.

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

• Context and Importance: This term describes the foundational step of the patented method for solving the sensor orientation problem. Practitioners may focus on this term because infringement will depend on whether Uber's system performs this specific technical step, as opposed to alternative methods for orientation correction (e.g., relying primarily on gyroscope data).
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent family's summary describes the step more generally as "determining reference data that defines a reference framework" (U.S. Patent No. 8,452,273, col. 3:28-31). This could support an argument that any process for establishing an orientation-based framework from sensor data meets the limitation.
  • Evidence for a Narrower Interpretation: A detailed embodiment explains that this step is performed by finding "effectively stationary, points" where the net acceleration is approximately 1 G, thereby isolating the gravity vector to use as a directional reference ('273 Patent, Fig. 5, step 4). Defendant may argue that the claim should be limited to this specific technique of "recognizing" a set of data points that correspond to a stationary state.

VI. Other Allegations

Indirect Infringement

• The complaint alleges that Defendant induces infringement by providing the "Uber – Driver" application to its drivers and contributes to infringement by providing a system whose use constitutes direct infringement (Compl. ¶10, ¶13). The alleged inducement is based on Uber providing the means (the app) and encouraging its use by drivers, whose operation of the app would allegedly perform the patented methods.

Willful Infringement

• The complaint's prayer for relief seeks enhanced damages for willful infringement of all asserted patents (Compl. p. 43). However, the complaint does not contain specific factual allegations suggesting Defendant had knowledge of the patents-in-suit prior to the filing of the lawsuit. Any claim for willfulness would likely be based on alleged post-filing conduct.

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 driver safety notifications, educational materials, and rewards programs implemented in the accused Uber system, or is its meaning confined to traditional commercial promotions?
• A key evidentiary question will be one of technical implementation: does the accused Uber system perform the specific, multi-step process for orientation-independent motion analysis claimed in the ’558 patent family—specifically by "recognizing a particular set of data sample values as a reference for defining an orientation"—or does it employ a fundamentally different, non-infringing algorithm to achieve a similar result?
• A third question will be one of patent breadth: given the number of asserted patents covering similar technical ground (motion analysis using smartphone sensors), the case may involve significant disputes over claim differentiation and the potential for invalidity challenges based on redundancy or obviousness across the patent family.