Stasit LLC v. LG Electronics USA Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Stasit LLC (Florida)
  • Defendant: LG Electronics U.S.A., Inc. (Delaware)
  • Plaintiff’s Counsel: Ramey LLP
• Case Identification: 6:23-cv-00527, W.D. Tex., 07/21/2023
• Venue Allegations: Venue is based on Defendant's alleged regular and established places of business within the Western District of Texas, including a facility in Fort Worth.
• Core Dispute: Plaintiff alleges that Defendant’s smartphones infringe a patent related to managing incoming communication notifications based on user-defined temporal rules.
• Technical Context: The technology concerns a method for selectively hiding or "masking" notifications for incoming calls and texts on a smartphone based on the time and the identity of the sender, offering enhanced privacy and control.
• Key Procedural History: The complaint was filed on July 21, 2023. Subsequent to the filing, a request for ex parte reexamination of the patent-in-suit was filed on November 10, 2023. This proceeding concluded with an Ex Parte Reexamination Certificate issued on September 23, 2024, which canceled all claims (1-20) of the patent. This post-filing development fundamentally affects the asserted patent's enforceability.

Case Timeline

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

U.S. Patent No. 8,855,723 - "Temporal Incoming Communication Notification Management," Issued 10/07/2014

The Invention Explained

• Problem Addressed: The patent's background section notes that while smartphones offer extended notification capabilities, "additional notification options are desirable" beyond the default routines. (U.S. Patent No. 8,855,723, col. 2:6-7). The detailed description elaborates on scenarios where default notifications are unwanted, such as an undercover officer wishing to avoid revealing a call from the police station, or a user on a date wishing to avoid work-related interruptions. ('723 Patent, col. 3:61–4:17).
• The Patented Solution: The invention is a method for selectively managing notifications based on pre-set temporal rules and phone numbers. ('723 Patent, Abstract). If an incoming communication is determined to be "not temporally allowed," the system forgoes the "normal notification routine" and instead employs a "password-protected masked notification routine." This masked routine logs the communication to a separate, secure log and prevents it from being immediately displayed or added to the device's default call or message logs. ('723 Patent, col. 4:30-38; Abstract).
• Technical Importance: The claimed method provides a context-aware system for managing notifications that is more granular than a simple "silent mode," addressing specific user needs for privacy and control over communications. ('723 Patent, col. 4:30-33).

Key Claims at a Glance

• The complaint asserts at least independent claim 1. (Compl. ¶18).
• The essential elements of independent claim 1 are:
  • Receiving indications of temporally authorized/unauthorized phone numbers and associated time periods via a user interface.
  • Generating and storing a list based on these indications.
  • Comparing incoming communications against the stored list.
  • If "temporally allowed," using a "default notification routine" that includes immediate display and logging to a default log.
  • If "not temporally allowed," using a "password-protected masked notification routine" that adds the communication to a password-protected log, precludes immediate display, and precludes adding it to the default log.
• The complaint reserves the right to amend its infringement arguments, which may include the assertion of additional claims. (Compl. ¶24).

III. The Accused Instrumentality

Product Identification

The accused products are "LGE's smartphones such as the LG – G7+" and other smartphones sold by the defendant. (Compl. ¶16).

Functionality and Market Context

The complaint alleges that the Accused Products are smartphones that infringe the '723 Patent but does not describe the specific software architecture, user-facing features (e.g., "Do Not Disturb" modes), or technical operations that allegedly perform the claimed method steps. (Compl. ¶16, ¶18). The complaint asserts generally that Defendant commercializes these products in the United States. (Compl. ¶4).

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint. The complaint states that claim charts are attached as Exhibit B; however, this exhibit was not filed with the complaint. (Compl. ¶24). The infringement analysis is therefore limited to the complaint's high-level narrative allegations. The complaint alleges that Defendant's acts of "making, using, testing, selling, offering for sale and/or importing" the Accused Products directly infringe at least Claim 1 of the '723 Patent. (Compl. ¶18). The complaint does not, however, map specific features of the Accused Products to the discrete elements of Claim 1.

• Identified Points of Contention:
  • Scope Questions: A central dispute would likely concern whether standard smartphone features like "Do Not Disturb," notification channels, or focus modes fall within the scope of the claim's specific two-path structure, which requires both a "default notification routine" and a distinct "password-protected masked notification routine."
  • Technical Questions: A key evidentiary question would be whether the accused smartphones perform the specific steps of generating a "list of temporally authorized or unauthorized phone numbers and time periods" and then "comparing" incoming calls against it, as required by the claim. Another point of contention may be whether the accused devices practice the negative limitations of the claim, specifically "preclud[ing] immediately displaying" information and "preclud[ing] adding an indication... to a default phone log".

V. Key Claim Terms for Construction

• The Term: "password-protected masked notification routine"
  • Context and Importance: This term defines the core of the patented invention's alternative notification pathway. Its construction is critical to determining whether modern, integrated smartphone notification systems, which may not have a separate, distinctly-named "masked routine," can be found to infringe.
  • Intrinsic Evidence for a Broader Interpretation: The specification describes the goal as temporal management where certain communications are not handled by a "default notification routine," which could support construing the term to cover any non-default, privacy-protecting notification handling. ('723 Patent, col. 3:53-57).
  • Intrinsic Evidence for a Narrower Interpretation: The patent's abstract and claims explicitly state this routine "includes adding an indication of the incoming... message to a password-protected phone log" and "precludes adding an indication... to a default phone log," suggesting a two-log system. ('723 Patent, Abstract). The figures depict a specific application ("Cato") with its own masked logs, which may support an interpretation requiring a distinct, password-gated application space rather than simply silencing notifications viewable on the standard lock screen. ('723 Patent, Figs. 8, 10-11).
• The Term: "temporally allowed"
  • Context and Importance: This phrase acts as the logical switch that dictates which of the two notification routines is used. The definition will determine what kind of filtering rules satisfy this claim element.
  • Intrinsic Evidence for a Broader Interpretation: The term could be interpreted to encompass any time-based rule, such as a simple "Do Not Disturb" schedule. ('723 Patent, col. 4:11-14).
  • Intrinsic Evidence for a Narrower Interpretation: The claim requires comparing communications against a "list of temporally authorized or unauthorized phone numbers and time periods," which may support a narrower construction requiring the condition to be based on a combination of both a specific time and the status of the phone number, not just time alone. ('723 Patent, col. 15:36-41).

VI. Other Allegations

• Indirect Infringement: The complaint alleges inducement and contributory infringement, asserting that Defendant has "knowledge of the '723 patent" and "supplies the technology that allows its customers to infringe." (Compl. ¶19). It does not, however, plead specific facts to support the element of intent, such as referencing user manuals that instruct customers to use the accused smartphones in an infringing manner.
• Willful Infringement: The complaint includes a general allegation that "Defendant did not have a reasonable basis for believing that the claims of the '723 Patent were invalid." (Compl. ¶21). It does not allege that Defendant had knowledge of the patent prior to the lawsuit.

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

• A dispositive procedural question now overshadows the entire case: Given that an ex parte reexamination concluded after the complaint was filed and resulted in the cancellation of all claims of the '723 Patent, does any viable cause of action remain?
• Setting aside the patent's cancellation, a core technical question would have been one of structural and functional correspondence: can the claimed method, which describes a binary system of a "default notification routine" versus a separate "password-protected masked notification routine" with distinct logs, be mapped onto the integrated and multi-faceted notification management systems found in modern smartphone operating systems?
• Finally, a key evidentiary question would have been one of proof: what evidence could Plaintiff have offered to demonstrate that the accused devices practice the specific negative limitations of the claim, namely the preclusion of immediate display and the preclusion of logging in the default system log, for communications deemed "not temporally allowed"?