Stasit LLC v. Google LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Stasit LLC (Florida)
  • Defendant: Google LLC (Delaware)
  • Plaintiff’s Counsel: Ramey LLP
• Case Identification: 6:23-cv-00525, W.D. Tex., 07/21/2023
• Venue Allegations: Venue is based on Defendant having regular and established places of business within the Western District of Texas, including in Austin and San Antonio.
• Core Dispute: Plaintiff alleges that Defendant’s Google Pixel 7 smartphone infringes a patent related to the temporal management of incoming communication notifications.
• Technical Context: The technology concerns methods for selectively masking or altering smartphone notifications for calls and messages based on user-defined rules, such as the time of day and the identity of the sender.
• Key Procedural History: Subsequent to the filing of this complaint, the asserted '723 Patent underwent ex parte reexamination at the USPTO. On September 23, 2024, the USPTO issued a Reexamination Certificate canceling all claims (1-20) of the patent. This post-filing development raises a fundamental question about the viability of the asserted infringement claims, as there are no longer enforceable claims in the patent-in-suit.

Case Timeline

Date	Event
2011-09-25	'723 Patent Priority Date (Application Filing)
2014-10-07	'723 Patent Issue Date
2023-07-21	Complaint Filing Date
2023-11-10	'723 Patent Reexamination Request Filed
2024-09-23	'723 Patent Reexamination Certificate Issued

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

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

• Patent Identification: 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 more granular control over smartphone notifications beyond standard "silent mode" options. It posits scenarios where users may wish to avoid not only audible alerts but also any visual indication of a call or message from a specific contact during a specific time, to maintain privacy or avoid distraction ('723 Patent, col. 4:1-18).
• The Patented Solution: The invention proposes a method where a user can define rules based on phone numbers and time periods to sort incoming communications. If a call or text is "temporally allowed," it triggers a "default notification routine" (e.g., ringing, displaying on screen, adding to the standard call log). If "not temporally allowed," it triggers a "password-protected masked notification routine" that logs the communication to a separate, secure log and explicitly "precludes" both immediate display and entry into the default call or message log ('723 Patent, Abstract; col. 2:32-54).
• Technical Importance: The described technology provides a method for context-aware notification management, offering users a way to enhance privacy and control interruptions by creating rules that go beyond simple on/off controls ('723 Patent, col. 4:29-32).

Key Claims at a Glance

• The complaint asserts at least independent claim 1 (Compl. ¶18).
• The essential elements of independent claim 1 include:
  • Receiving indications of temporally authorized or unauthorized phone numbers and associated time periods.
  • Generating and storing a list of these rules in the smartphone's memory.
  • Comparing incoming communications against the stored list.
  • If the communication is "temporally allowed," allowing notification via a "default notification routine," which includes immediate display and logging to a "default phone log."
  • If the communication is "not temporally allowed," generating a notification via a "password-protected masked notification routine," which includes adding an indication to a "password-protected phone log" while precluding immediate display and precluding addition to the "default phone log."
• The complaint reserves the right to assert additional claims (Compl. ¶24).

III. The Accused Instrumentality

Product Identification

• The accused instrumentality is "Google's smartphone the Google Pixel 7" (Compl. ¶16).

Functionality and Market Context

• The complaint does not provide specific details on the operation of the accused features of the Google Pixel 7. It identifies the product and alleges infringement without describing which specific functions (e.g., "Do Not Disturb," "Focus Mode," or other notification settings) are alleged to practice the claimed method (Compl. ¶¶ 16, 18).

IV. Analysis of Infringement Allegations

The complaint states that a claim chart is attached as Exhibit B, but this exhibit was not included with the publicly filed document (Compl. ¶24). The complaint’s narrative alleges that the Google Pixel 7 directly infringes at least claim 1 of the '723 Patent by making, using, testing, or selling the device in the United States (Compl. ¶18). Without the claim chart or a more detailed description of the accused functionality, a tabular analysis is not possible.

No probative visual evidence provided in complaint.

• Identified Points of Contention:
  • Procedural Question: The cancellation of all claims of the '723 Patent in reexamination presents a threshold, and potentially dispositive, issue of whether Plaintiff has a basis to maintain an infringement action.
  • Technical Question: A central question will be whether any feature on the Google Pixel 7 performs the specific two-path notification process required by Claim 1. The analysis will require evidence of both a "default notification routine" and a "password-protected masked notification routine" that operate as distinctly defined in the claim.
  • Scope Question: The dispute may focus on whether a standard feature like "Focus Mode" meets the claim limitation of a "password-protected masked notification routine," which requires not only suppressing an alert but also adding the communication to a password-protected log while simultaneously precluding its addition to the default phone log ('723 Patent, col. 15:61-16:3).

V. Key Claim Terms for Construction

The Term: "password-protected masked notification routine"

• Context and Importance: This term is the core of the allegedly inventive feature. The outcome of the infringement analysis depends heavily on whether the accused product is found to practice a routine meeting this definition. Practitioners may focus on this term because its detailed definition in the claim provides a specific, multi-part test for infringement.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification discusses the general goal of filtering communications based on time and contact, which could support an argument that any feature achieving this general purpose falls within the claim's scope ('723 Patent, col. 4:29-36).
  • Evidence for a Narrower Interpretation: The claim itself explicitly defines the routine as performing three distinct actions: (1) "adding an indication... to a password-protected phone log", (2) "precludes immediately displaying" the information, and (3) "further precludes adding an indication... to a default phone log" ('723 Patent, col. 15:61-16:3). This conjunctive definition strongly supports a narrow construction requiring all three functions to be present.

The Term: "default phone log or message log"

• Context and Importance: This term is critical because the "masked" routine is defined by what it precludes doing to this log. The distinction between the "default log" and the "password-protected log" is central to the claimed invention.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party might argue this term refers generally to any primary, user-facing list of calls or messages on the device.
  • Evidence for a Narrower Interpretation: The patent consistently contrasts this log with the "password-protected" log, suggesting it refers to the standard, unsecured call or message history natively generated and displayed by the smartphone's operating system ('723 Patent, col. 2:43-46, col. 15:58-60).

VI. Other Allegations

• Indirect Infringement: The complaint alleges both induced and contributory infringement, asserting that Google provides its customers with the technology that allows them to infringe the patent (Compl. ¶19). The pleading does not specify the mechanism of inducement, such as user manuals or on-screen instructions.
• Willful Infringement: The complaint asserts that Google "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 prayer for relief requests enhanced damages and attorneys' fees, which corresponds to an allegation of willful or egregious infringement (Compl. pp. 6-7).

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

• A threshold procedural question will be whether this case can proceed. Given that the USPTO cancelled all claims of the '723 Patent during reexamination after the suit was filed, a court must first address whether there remains any enforceable patent right upon which an infringement claim can be based.
• A core issue will be one of definitional scope: can a standard smartphone feature like "Focus Mode" or "Do Not Disturb" be construed to meet the specific, multi-element definition of a "password-protected masked notification routine," which requires the management of two distinct types of communication logs (one secure, one default) as claimed?
• A key evidentiary question will be factual: what evidence does the complaint or subsequent discovery provide that the Google Pixel 7 operating system actually creates and maintains a "password-protected phone log" that is separate from, and whose creation precludes entry into, the "default phone log," as strictly required by the language of claim 1?