DCT
2:17-cv-01629
Uniloc USA Inc v. HTC America Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Uniloc USA, Inc. (Texas) and Uniloc Luxembourg, S.A. (Luxembourg)
- Defendant: HTC America, Inc. (Washington)
- Plaintiff’s Counsel: Van Kampen & Crowe PLLC; Prince Lobel Tye LLP
- Case Identification: 2:17-cv-01629, W.D. Wash., 11/01/2017
- Venue Allegations: Venue is based on Defendant's status as a Washington corporation with a regular and established place of business in the district, where it also sells the accused products.
- Core Dispute: Plaintiff alleges that Defendant’s smartphones equipped with motion sensors and activity tracking software infringe three patents related to human activity monitoring.
- Technical Context: The technology concerns the use of micro-electro-mechanical systems (MEMS) accelerometers in portable devices to track human activities like walking, a foundational feature for modern health and fitness applications.
- Key Procedural History: The complaint was filed on November 1, 2017. Subsequent to the filing, all asserted claims of all three patents-in-suit were challenged in inter partes review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB). The PTAB ultimately cancelled all asserted claims of U.S. Patent Nos. 7,653,508, 8,712,723, and 7,881,902. This post-filing development raises a threshold question regarding the viability of the infringement action as pleaded.
Case Timeline
| Date | Event |
|---|---|
| 2006-12-22 | Earliest Priority Date for All Patents-in-Suit |
| 2010-01-26 | U.S. Patent No. 7,653,508 Issued |
| 2011-02-01 | U.S. Patent No. 7,881,902 Issued |
| 2014-04-29 | U.S. Patent No. 8,712,723 Issued |
| 2017-11-01 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,653,508 (the "’508 Patent")
- Patent Identification: U.S. Patent No. 7,653,508, “HUMAN ACTIVITY MONITORING DEVICE,” issued January 26, 2010.
- The Invention Explained:
- Problem Addressed: The patent describes that conventional step-counting devices were often inaccurate because they required the user to place the device in a specific, fixed orientation and were frequently confused by motion noise, especially at slow walking paces (’508 Patent, col. 1:20-34).
- The Patented Solution: The invention proposes a method to make activity monitoring orientation-independent. An inertial sensor is used to continuously determine its own orientation in space. Based on this orientation, the system assigns a "dominant axis" (e.g., the axis most aligned with gravity). This dominant axis is continuously updated as the device moves or rotates. The device then counts periodic motions, like steps, by monitoring accelerations specifically relative to this dynamic, dominant axis, rather than a fixed device axis (’508 Patent, Abstract; col. 2:6-16).
- Technical Importance: This approach sought to create more robust and user-friendly pedometers that could be carried in a pocket, purse, or backpack without sacrificing accuracy (’508 Patent, col. 2:27-34).
- Key Claims at a Glance:
- The complaint asserts independent claims 1, 6, 11, and 15, along with several dependent claims (Compl. ¶ 11).
- Independent Claim 1 (Method):
- continuously determining an orientation of the inertial sensor;
- assigning a dominant axis;
- updating the dominant axis as the orientation of the inertial sensor changes; and
- counting periodic human motions by monitoring accelerations relative to the dominant axis.
- The complaint reserves the right to assert additional claims (Compl. ¶ 11).
U.S. Patent No. 8,712,723 (the "’723 Patent")
- Patent Identification: U.S. Patent No. 8,712,723, “HUMAN ACTIVITY MONITORING DEVICE,” issued April 29, 2014.
- The Invention Explained:
- Problem Addressed: Like its parent, the patent addresses the need for accurate step counting in portable devices regardless of their orientation or the user's pace (’723 Patent, col. 1:33-42).
- The Patented Solution: The invention refines the concept of a dominant axis by explicitly assigning it "with respect to gravity." It further introduces the use of a dynamic "cadence window"—a time window within which the next step is expected. This window is continuously updated based on the user's actual measured cadence, allowing the system to adapt to changes in walking or running speed and better distinguish true steps from noise (’723 Patent, Abstract; col. 4:1-10).
- Technical Importance: The addition of a dynamic cadence window aimed to further improve accuracy by filtering out aperiodic movements and adapting to a user's changing pace in real-time (’723 Patent, col. 3:62-col. 4:10).
- Key Claims at a Glance:
- The complaint asserts independent claims 1, 5, 10, and 14, along with several dependent claims (Compl. ¶ 22).
- Independent Claim 1 (Method):
- assigning a dominant axis with respect to gravity based on an orientation of the inertial sensor;
- detecting a change in the orientation of the inertial sensor and updating the dominant axis;
- counting periodic human motions by monitoring accelerations relative to the dominant axis when the accelerations meet motion criteria within a cadence window; and
- updating the cadence window as actual cadence changes.
- The complaint reserves the right to assert additional claims (Compl. ¶ 22).
U.S. Patent No. 7,881,902 (the "’902 Patent")
- Patent Identification: U.S. Patent No. 7,881,902, “HUMAN ACTIVITY MONITORING DEVICE,” issued February 1, 2011.
- Technology Synopsis: This patent addresses power consumption in activity monitoring devices. The claimed method involves detecting motion and determining if that motion has a "motion signature" of a user activity the device is configured to monitor (e.g., walking or running). If the detected motion does not match a recognized activity signature, the device enters a "sleep mode" to conserve battery life (’902 Patent, Abstract; col. 7:17-30).
- Asserted Claims: Independent claim 1 and dependent claims 2-4 (Compl. ¶ 33).
- Accused Features: The complaint alleges that the accused devices perform the claimed method by detecting motion and entering a power-saving sleep mode when the motion is not characteristic of an activity that the device is set up to monitor (Compl. ¶ 34).
III. The Accused Instrumentality
Product Identification
- The "Accused Infringing Devices" are identified as a range of HTC smartphones, including various models from the HTC One and HTC Desire series (Compl. ¶ 10).
Functionality and Market Context
- The complaint alleges these devices are equipped with motion sensors like accelerometers and gyroscopes, along with processors and associated software, such as "HTC's Fun Fit app" (Compl. ¶¶ 1-3, 10). The relevant functionality is the capacity to "count steps or other periodic human motions by monitoring acceleration" (Compl. ¶ 2-3). The extensive list of accused products suggests they represent a significant portion of Defendant's smartphone offerings during the relevant period. No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
’508 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| continuously determining an orientation of the inertial sensor; | The Accused Infringing Devices are equipped with motion sensors (pedometers, gyroscopes and/or accelerometers) and processors to detect motion (Compl. ¶¶ 2, 10, 13-14). | ¶10 | col. 5:7-12 |
| assigning a dominant axis; | The devices use associated software to process sensor data to count steps, which the complaint alleges includes assigning a dominant axis to enable orientation-independent counting (Compl. ¶¶ 2-3, 12). | ¶12 | col. 5:12-20 |
| updating the dominant axis as the orientation of the inertial sensor changes; and | The devices allegedly perform step counting that functions regardless of orientation, which requires updating the reference axis as the device's orientation changes (Compl. ¶¶ 12-13). | ¶12 | col. 2:11-13 |
| counting periodic human motions by monitoring accelerations relative to the dominant axis. | The Accused Infringing Devices, including through the Fun Fit app, are "capable of counting steps or other periodic human motions by monitoring acceleration," allegedly relative to a dominant axis to achieve substantially the same result as the patented method (Compl. ¶¶ 2-3, 12). | ¶12 | col. 5:42-54 |
’723 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| assigning a dominant axis with respect to gravity based on an orientation of the inertial sensor; | The complaint alleges the devices perform the same function in the same way, which for this patent includes assigning a dominant axis based on gravity to enable step counting (Compl. ¶ 23). | ¶23 | col. 15:13-16 |
| detecting a change in the orientation of the inertial sensor and updating the dominant axis based on the change; and | The accused functionality allegedly includes processing data from accelerometers and gyroscopes to account for changes in motion and orientation while counting steps (Compl. ¶ 23). | ¶23 | col. 15:17-18 |
| counting periodic human motions by monitoring accelerations relative to the dominant axis... when accelerations showing a motion cycle that meets motion criteria is detected within a cadence window; and | The complaint alleges the devices yield the same result by "providing a calculation of the distance traveled when accelerations showing a motion cycle that meets motion criteria is detected" (Compl. ¶ 23), which corresponds to the claimed step-counting method. | ¶23 | col. 15:19-23 |
| updating the cadence window as actual cadence changes. | The complaint's doctrine of equivalents argument implies that the accused software adapts to user motion in a way that is substantially the same as updating a cadence window (Compl. ¶ 23). | ¶23 | col. 15:23-24 |
- Identified Points of Contention:
- Evidentiary Questions: The complaint's allegations are conclusory and lack specific technical detail. A central question would be what evidence Plaintiff can produce to show that the accused software performs the specific algorithmic steps recited in the claims (e.g., "assigning a dominant axis," "updating the dominant axis," "updating the cadence window"), as opposed to employing a different, proprietary algorithm for motion tracking.
- Scope Questions: For the ’723 Patent, a potential dispute centers on whether the accused devices' operation meets the "updating the cadence window" limitation. The defense may argue that their software uses a different filtering or validation method that does not involve a "cadence window" as described in the patent.
V. Key Claim Terms for Construction
Term: "dominant axis" (’508 Patent)
- Context and Importance: This term is the central inventive concept of the ’508 Patent. Its definition will determine whether the accused devices' method for achieving orientation-independent step counting falls within the scope of the claims. Practitioners may focus on whether this term requires a specific calculation method or can broadly cover any primary reference axis used for motion analysis.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states that a dominant axis is assigned "once the orientation is determined" (’508 Patent, col. 5:12-14), which could suggest any method of selecting a primary axis based on orientation would suffice.
- Evidence for a Narrower Interpretation: The specification provides a specific example where the dominant axis is "the axis with the largest absolute rolling average" of acceleration, which is typically the one most "influenced by gravity" (’508 Patent, col. 5:15-18). This could be used to argue the term is limited to this specific gravity-based calculation.
Term: "cadence window" (’723 Patent)
- Context and Importance: This term is critical for distinguishing the ’723 Patent from its predecessor and is key to the infringement analysis for its asserted claims. The dispute will likely concern how "dynamic" this window must be and what constitutes "updating" it.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent describes the window as "a window of time since a last step was counted" (’723 Patent, col. 3:64-66), a relatively general definition. It also describes setting a "new cadence window" after a sufficient number of steps are measured, which may not require continuous, step-by-step updating (col. 10:55-58).
- Evidence for a Narrower Interpretation: The abstract describes a window that "continuously updates as a user's cadence changes" (’723 Patent, Abstract). The specification also discusses determining the window by "subtracting a value from the stepping period" and "adding a value," suggesting a specific adaptive calculation tied to the measured period of motion (col. 3:27-30).
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement. Inducement is based on allegations that HTC "intentionally instructs its customers to infringe through training videos, demonstrations, brochures, installation and/or user guides" available on its websites and other platforms (Compl. ¶¶ 13, 24, 35). Contributory infringement is based on allegations that HTC provides a material component (the accused devices and software) knowing it is especially made for an infringing use and not a staple article of commerce (Compl. ¶¶ 14, 25, 36).
- Willful Infringement: The willfulness allegations are based on knowledge acquired from the date of service of the complaint forward. The complaint alleges that "By the time of trial, HTC will have known and intended... that its continued actions would actively induce the infringement" (Compl. ¶¶ 15, 26, 37).
VII. Analyst’s Conclusion: Key Questions for the Case
This case, as filed, presents two central questions, one procedural and one evidentiary, that will likely dictate its outcome.
- A core issue will be one of procedural viability: Given that the PTAB has cancelled all asserted claims of all three patents-in-suit in inter partes review proceedings subsequent to the filing of this complaint, what, if any, basis remains for the lawsuit to proceed?
- A key evidentiary question, had the claims survived, would be one of algorithmic correspondence: Can the plaintiff provide evidence that the accused HTC software performs the specific, multi-step algorithms recited in the claims—such as explicitly "assigning a dominant axis" based on a rolling average of accelerations or "updating a cadence window" based on a measured stepping period—or does it achieve a similar result through a technically distinct method?