Big Will Enterprises Inc v. GreenRoad Tech Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Big Will Enterprises Inc. (British Columbia)
  • Defendant: GreenRoad Technologies Inc. (Delaware)
  • Plaintiff’s Counsel: Eureka Intellectual Property Law, PLLC
• Case Identification: Big Will Enterprises Inc. v. GreenRoad Technologies Inc., 6:23-cv-00690, W.D. Tex., 09/30/2023
• Venue Allegations: Venue is alleged to be proper in the Western District of Texas because the Defendant operates a corporate office in Cedar Park, Texas, which is located within the district.
• Core Dispute: Plaintiff alleges that Defendant’s DRIVE application, a telematics solution for monitoring driver behavior, infringes six patents related to using mobile device sensors to identify human activities and trigger responsive actions.
• Technical Context: The technology at issue involves using sensors commonly found in smartphones, such as accelerometers and gyroscopes, to automatically detect and classify user motion activities like driving, walking, or running, independent of the device's orientation.
• Key Procedural History: The complaint does not mention any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history 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's background describes the challenge of making electronic notifications more intelligent by basing them on a user's real-world activities, which requires accurately identifying those activities from sensor data ('846 Patent, col. 2:50-63).
• The Patented Solution: The invention claims a method where sensors in a mobile device determine a "mobile thing motion activity" (MTMA) by capturing movement data, normalizing it, analyzing it in time and frequency domains, and comparing it to a library of stored "MTMA signatures" to find the most likely match. Based on the identified activity, a targeted advertisement is selected and sent to the device ('846 Patent, Abstract; col. 33:23-59).
• Technical Importance: This approach enables context-aware actions, such as targeted advertising or safety alerts, based on a user's automatically detected physical activity rather than manual input or simple location data (Compl. ¶2).

Key Claims at a Glance

• The complaint asserts independent claims 1, 12, 17, and 23 (Compl. ¶18, 29, 34, 40).
• Independent claim 1, a method claim, includes the essential elements of:
  • Determining a mobile thing motion activity (MTMA) from sensor data derived from a wireless communication device (WCD).
  • The sensor(s) measure physical movement in three-dimensional space, producing data sets with movement and time values.
  • Selecting an advertisement based on the determined MTMA.
  • Causing the advertisement to be communicated to the WCD.
  • The determination step comprises storing reference MTMA signatures, determining a normalizing mathematical relationship for the sensor data, analyzing the normalized data, determining likelihoods based on a comparison to the stored signatures, and selecting the most likely MTMA signature.
• The complaint also asserts dependent claims 2-11, 13-16, and 18-22 (Compl. ¶19-28, 30-33, 35-39).

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 addresses the technical problem that mobile devices like smartphones are carried in pockets, purses, or backpacks with no fixed orientation, which makes it difficult to reliably interpret data from sensors like accelerometers to identify user motion ('558 Patent, col. 1:49-2:1; Compl. ¶3).
• The Patented Solution: The invention proposes a method to solve the orientation problem. It involves receiving sensor data, recognizing a set of data samples that can serve as a reference (e.g., data corresponding to the constant force of Earth's gravity), and using that reference to compute "reference data" (such as a rotation matrix). Subsequent movement data is then calculated within this newly defined coordinate system, allowing for accurate, orientation-independent activity determination ('558 Patent, Abstract; col. 31:38-47).
• Technical Importance: This method of normalization enables consistent and reliable motion activity detection from mobile device sensors, regardless of how a user is carrying the device, which was a significant hurdle in the field (Compl. ¶3).

Key Claims at a Glance

• The complaint asserts independent claims 1, 17, 27, 36, 42, and 52 (Compl. ¶43, 59, 69, 78, 84, 94).
• Independent claim 1, a method claim, includes the essential elements of:
  • Receiving a time value and at least three streams of data 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 upon recognizing that particular set.
  • Calculating movement data in the coordinate system based upon the reference data.
  • Determining an MTMA associated with the mobile thing based upon the movement data.
• The complaint also asserts numerous dependent claims (Compl. ¶44-58, 60-68, 70-77, 79-83, 85-93, 95-102).

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 includes instructions to receive sensor data, compare it to reference data, and, based on the comparison, send a message to the device indicating a potential need for assistance, an accident, or a crime (Compl. ¶105). It also includes steps for enabling additional sensors to gather more data if an activity of interest is detected (Compl. ¶105).
• Asserted Claims: Independent claims 1, 11, and 21 (Compl. ¶105, 106, 107).
• Accused Features: The complaint alleges that the DRIVE application's functions for detecting unsafe driving from sensor data and communicating messages to assist the driver infringe the '230 Patent (Compl. ¶105, 106).

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

• Technology Synopsis: This patent discloses a wireless communication device with computer code for monitoring sensor data. The code includes instructions to enter a first "investigation process" to capture initial data, determine if that data indicates an activity requiring assistance (like an accident or crime), and then enter a second, different investigation process to capture further data if such an activity is detected (Compl. ¶110).
• Asserted Claims: Independent claims 1 and 10 (Compl. ¶110, 118).
• Accused Features: The DRIVE system is alleged to infringe by entering an investigation mode (monitoring driver behavior) when driving is detected and using that data to determine if assistance, such as driving skills improvement, is needed (Compl. ¶110).

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

• Technology Synopsis: This patent covers a system with a computing device and an application. The application contains logic to determine a user's activity and/or surroundings, determine a corresponding surveillance mode, facilitate a user-defined response to the activity, and communicate the surveillance information to a remote computer (Compl. ¶121, 124).
• Asserted Claims: Independent claims 5 and 15 (Compl. ¶121, 124).
• Accused Features: The complaint alleges the DRIVE application infringes by determining the user is driving, activating a surveillance mode to monitor behavior, and communicating that information to remote servers that calculate driver scores and rewards (Compl. ¶121, 124, 85).

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, similar to the '558 patent, describes a method using accelerometer data from a mobile device to identify motion activity. The method involves recognizing a set of data as a reference to define an orientation for a two-dimensional (2D) coordinate system, computing reference data, calculating subsequent movement data within that 2D system, and determining the activity based on that movement data (Compl. ¶129).
• Asserted Claims: Independent claims 1, 12, and 22 (Compl. ¶129, 140, 149).
• Accused Features: The DRIVE system is accused of infringing by using smartphone accelerometer data to establish an orientation (e.g., by measuring constant gravity) and then analyzing subsequent accelerations within a 2D system to identify driving maneuvers (Compl. ¶129).

III. The Accused Instrumentality

Product Identification

The accused instrumentality is the GreenRoad DRIVE™ Software-Only App (Compl. ¶15).

Functionality and Market Context

The DRIVE application is a telematics solution that transforms a driver's smartphone into a monitoring and coaching tool (Compl. ¶7). It uses the phone's native sensors, including the accelerometer, gyroscope, and GPS, to monitor driver behavior (Compl. ¶7, 30). The application is designed to detect and report on unsafe or aggressive driving events such as rapid acceleration, hard braking, and fast cornering, as well as phone handling while driving (Compl. ¶7, 30, 43). The system provides feedback to drivers through safety scores and "gamification" features, which are alleged to incentivize safer driving habits (Compl. ¶9, 10). The complaint includes a screenshot of the app's user interface, which displays a numerical "My Score" and breaks down driving events into categories like "Braking" and "Cornering" (Compl. p. 7). This data is also communicated to remote servers for management and analysis (Compl. ¶26, 121).

IV. Analysis of Infringement Allegations

10,521,846 Infringement Allegations

• Identified Points of Contention:
  • Scope Question: A primary issue may be whether the "estimated discount score" and "gamification" rewards generated by the DRIVE app (Compl. ¶9) fall within the scope of the term "advertisement" as used in the patent.
  • Technical Question: It will be a key factual question whether the DRIVE app's data processing performs the specific multi-step determination process recited in the claim, which includes storing "signatures," "determining a normalizing mathematical relationship," "analyzing...in frequency and time domains," and "determining likelihoods" to select a "most likely MTMA signature" (Compl. ¶10-11). The complaint includes a diagram of a smartphone with a 3D coordinate system to illustrate the spatial data analysis involved (Compl. p. 9).

9,049,558 Infringement Allegations

• Identified Points of Contention:
  • Technical Question: The core of the claim is a specific, multi-step process for establishing an orientation-independent coordinate system. The central question will be whether the DRIVE app's method for handling sensor data technically performs each of these steps: recognizing a reference set, computing reference data from it, and calculating movement data based upon that reference data.
  • Scope Question: A potential dispute may arise over the meaning of "recognizing a particular set of data sample values as a reference." The complaint suggests this is met by detecting Earth's gravity (Compl. ¶44), but the specific technical implementation will be a key factual issue. The complaint's screenshot showing an alert for "APPROACHING RISKY AREA" illustrates a location-based action that may be triggered by the determined MTMA (Compl. p. 13).

V. Key Claim Terms for Construction

For the ’846 Patent:

• The Term: "advertisement"
• Context and Importance: The infringement theory for the '846 Patent hinges on construing the safety scores, rewards, and driving feedback within the DRIVE app as an "advertisement." Defendant will likely contend these are user data and feedback, not commercial solicitations. Practitioners may focus on this term because its scope is central to whether the accused product's core functionality meets the claim limitations.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: Claim 5 recites "receiving a payment for or otherwise monetarily benefiting from causing the advertisement to be communicated," which could be argued to encompass the commercial benefit GreenRoad receives from its customers for providing a safety service, not just third-party ad revenue ('846 Patent, col. 90:38-41).
  • Evidence for a Narrower Interpretation: The specification provides an example of an advertisement as "an advertisement for running" being sent to a user who is detected to be running, which suggests a more traditional commercial solicitation ('846 Patent, col. 78:44-52).

For the ’558 Patent:

• The Term: "recognizing a particular set of data sample values as a reference for defining an orientation"
• Context and Importance: This term describes the foundational step of the patented invention: establishing a stable frame of reference from sensor data in a device with arbitrary orientation. The dispute will likely focus on whether the specific method used by the DRIVE app to account for gravity constitutes "recognizing...a reference" as claimed.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claim language itself is broad. The specification of the related '273 Patent states this can be achieved by "selecting data points with magnitude sufficiently close to 1" (i.e., identifying the constant of gravity), which does not require a specific mathematical technique ('273 Patent, col. 7:17-21).
  • Evidence for a Narrower Interpretation: Dependent claims of the '558 Patent and the specification describe this step in more detail, including the creation of a "rotation matrix M" that orients the z-axis with the gravity vector ('558 Patent, cl. 4; '273 Patent, col. 7:38-45). A defendant may argue the term should be read in light of these more specific disclosures.

VI. Other Allegations

• Indirect Infringement: The complaint does not include counts for indirect infringement or plead specific facts to support the knowledge and intent elements required for such claims. The prayer for relief makes a conclusory request for an injunction against contributory and inducing infringement (Compl. p. 106).
• Willful Infringement: The complaint's prayer for relief seeks a finding of willful infringement and enhanced damages (Compl. p. 106). However, the factual allegations in the body of the complaint do not specify a basis for this claim, such as pre-suit knowledge of the patents.

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 internal "safety scores," "gamification awards," and driver feedback generated by the accused telematics application, or is its meaning limited to third-party commercial solicitations?
• A key evidentiary question will be one of technical implementation: does the accused DRIVE application's method for processing sensor data and accounting for device orientation perform the specific, multi-step normalization and analysis sequences required by the claims of the '846 and '558 patent families, or is there a fundamental mismatch in the underlying technical operations?