Stasit LLC v. Apple Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Stasit LLC (Florida)
  • Defendant: Apple Inc. (California)
  • Plaintiff’s Counsel: Ramey LLP
• Case Identification: 6:23-cv-00524, W.D. Tex., 07/21/2023
• Venue Allegations: Venue is asserted based on Defendant's alleged regular and established places of business within the Western District of Texas, including locations in the Austin and San Antonio areas.
• Core Dispute: Plaintiff alleges that Defendant’s "do not disturb" software feature infringes a patent related to the temporal management of incoming communication notifications on a smart phone.
• Technical Context: The technology concerns methods for selectively filtering smartphone notifications for calls and messages based on pre-set temporal rules and contact-specific permissions.
• Key Procedural History: An ex parte reexamination of the patent-in-suit was concluded, resulting in a Reexamination Certificate issued on September 23, 2024. The certificate states that all claims of the patent, claims 1-20, are cancelled. This event post-dates the complaint filing and raises a fundamental question about the continued viability of the asserted claims.

Case Timeline

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

U.S. Patent No. 8,855,723 - "Temporal Incoming Communication Notification Management"

• Issued: October 7, 2014

The Invention Explained

• Problem Addressed: The patent describes a need for smartphone users to manage incoming notifications with more granularity than existing options (’723 Patent, col. 3:52-61). The background notes that unwanted notifications can cause "stress and anxiety" and that simply silencing a phone may be insufficient in situations requiring discretion, such as for an undercover police officer who must hide the origin of certain calls (’723 Patent, col. 4:1-6, 14-17).
• The Patented Solution: The invention proposes a method for filtering communications based on phone number and user-defined time periods (’723 Patent, col. 2:9-24). If a communication is received outside an allowed time, it is processed by a "password-protected masked notification routine" instead of the "default notification routine." This masked routine logs the communication in a separate, password-protected log and, crucially, "precludes" it from being displayed or added to the device's standard, or "default," call and message logs (’723 Patent, Abstract; col. 2:39-55). The process is illustrated in a flowchart in Figure 31 (’723 Patent, Fig. 31).
• Technical Importance: This approach provided a method to create a private, secondary notification and logging system on a single device, allowing users to discreetly manage sensitive communications without completely disabling their phone or alerting others to the presence of the filtered messages. (’723 Patent, col. 4:29-36).

Key Claims at a Glance

• The complaint asserts "at least claim 1" of the ’723 Patent (Compl. ¶18).
• Independent Claim 1 requires:
  • A method for a smart phone comprising steps of receiving indications of authorized/unauthorized numbers and time periods.
  • Generating and storing a list based on those indications.
  • Comparing incoming communications against the list.
  • If "temporally allowed," using a "default notification routine" that includes "immediately displaying" the communication and adding it to a "default phone log."
  • If "not temporally allowed," using a "password-protected masked notification routine" that "precludes immediately displaying" the communication.
  • The "password-protected masked notification routine" further includes "adding an indication" of the communication to a "password-protected phone log" and "precludes adding an indication" to the "default phone log."
• The complaint reserves the right to assert other claims from the patent (Compl. ¶18, 24).

III. The Accused Instrumentality

Product Identification

• The "Accused Instrumentality" is identified as "Apple's do not disturb feature" (Compl. ¶16).

Functionality and Market Context

• The complaint does not describe the specific technical operation of the accused feature (Compl. ¶16). It provides only a hyperlink to a generic Apple support page and alleges that the feature is available to businesses and individuals throughout the United States (Compl. ¶16, 22). The complaint does not contain specific allegations regarding the feature's commercial importance beyond its general availability.

IV. Analysis of Infringement Allegations

The complaint references an "Exhibit B" containing claim charts that purport to describe how the Accused Products infringe claim 1 (Compl. ¶24). This exhibit was not included with the filed complaint document. Therefore, a detailed claim chart summary cannot be constructed.

The general infringement theory, based on the complaint's allegations, is that Apple's "do not disturb feature" practices all the steps of the method recited in at least claim 1 of the ’723 Patent (Compl. ¶18).

No probative visual evidence provided in complaint.

• Identified Points of Contention:
  • Legal Question: The most significant issue is the legal status of the asserted patent. The reexamination certificate cancelling all claims, including the asserted claim 1, raises the fundamental question of whether a valid patent right exists to be infringed.
  • Technical Question: Assuming the claims were valid, a central dispute would likely concern the functionality of the "password-protected masked notification routine." The analysis would question whether the accused "do not disturb feature" creates a separate, "password-protected phone log" and actively "precludes" adding entries to the "default phone log," as required by the claim, or if it merely silences notifications that are later displayed in the standard, default logs (e.g., the main call history or notification center).

V. Key Claim Terms for Construction

• The Term: "password-protected masked notification routine"
  • Context and Importance: This term describes the core of the patented invention. The outcome of the infringement analysis would depend on whether the accused feature performs a routine meeting this specific definition, as opposed to a generic silencing function.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent positions this routine simply as an alternative to the "default notification routine" for handling communications that are "not temporally allowed" (’723 Patent, col. 2:35-42).
    • Evidence for a Narrower Interpretation: Claim 1 itself defines the routine by its specific functions: adding an entry to a "password-protected phone log" while precluding immediate display and precluding the addition of that entry to the "default phone log" (’723 Patent, col. 16:1-16). The patent's figures depicting password entry screens (Fig. 9) and "masked" logs (Fig. 11, Fig. 12) may support a narrower construction tied to these specific implementations.
• The Term: "default phone log or message log"
  • Context and Importance: The claim requires that the masked routine "precludes adding an indication" of a communication to this "default" log. The definition of this term is critical, as infringement requires proof that the accused feature prevents an entry from appearing in whatever is construed as the "default" log.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The term could be argued to encompass any standard, non-hidden communication log accessible to a user on the device.
    • Evidence for a Narrower Interpretation: The specification provides illustrations of what it considers an exemplary "default" call log (Fig. 3) and message log (Fig. 5) (’723 Patent, col. 2:3-4, 49-51). Parties may argue that the term should be limited to logs with the characteristics and appearance of these specific examples.

VI. Other Allegations

• Indirect Infringement: The complaint alleges both induced infringement and contributory infringement (Compl. ¶19). The factual basis alleged is that Defendant supplies the technology and "actively aided, abetted and induced others" (i.e., its customers) to use the "do not disturb feature" in an infringing manner (Compl. ¶19).
• Willful Infringement: Willfulness is alleged based on the assertions that Defendant "has made no attempt to design around the claims" and "did not have a reasonable basis for believing that the claims of the ‘723 Patent were invalid" (Compl. ¶20-21). The complaint does not plead specific facts indicating Defendant's pre-suit knowledge of the patent.

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

• A dispositive threshold issue will be the legal enforceability of the patent: given that a U.S. Patent and Trademark Office Reexamination Certificate has cancelled all claims of the ’723 Patent, what legal basis, if any, remains for Plaintiff to maintain this infringement action?
• Should the case proceed, a central question will be one of claim scope and technical operation: does Apple's "do not disturb" feature, which typically silences notifications and later presents them in the device's standard notification center, implement the specific "password-protected masked notification routine" that "precludes" entries from the "default...log," as required by Claim 1? Or is there a fundamental mismatch between the accused functionality and the patent's specific requirements for a separate, hidden, and password-protected logging system?