DCT
2:23-cv-00742
Bellman & Symfon North America Inc v. jWIN Electronics Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Bellman & Symfon North America Inc. (Delaware)
- Defendant: jWIN Electronics Corporation dba iLuv Creative Technology (New York)
- Plaintiff’s Counsel: Davis Wright Tremaine LLP
- Case Identification: 2:23-cv-00742, W.D. Wash., 05/19/2023
- Venue Allegations: Plaintiff alleges venue is proper in the Western District of Washington because Defendant submitted a patent infringement complaint to Amazon, which is headquartered in Seattle, through its APEX program and expressly agreed to the jurisdiction of courts in King County, Washington.
- Core Dispute: Plaintiff seeks a declaratory judgment that its Vibio Wireless Bed Shaker product does not infringe Defendant’s patent related to a wireless two-part alarm system, and that the patent is invalid.
- Technical Context: The technology concerns alarm systems for heavy sleepers or the hearing impaired, which use a primary device like a smartphone to control a separate, secondary vibrating alarm unit.
- Key Procedural History: The dispute arose after Defendant used Amazon’s Patent Evaluation Express (APEX) procedure to have Plaintiff’s accused product removed from Amazon’s marketplace. The complaint alleges that Plaintiff provided Defendant with prior art references pre-suit, asserting invalidity of the patent, but Defendant refused to withdraw its infringement allegations. The patent-in-suit is subject to a terminal disclaimer over two parent patents.
Case Timeline
| Date | Event |
|---|---|
| 2014-11-12 | ’929 Patent Priority Date |
| 2019-12-01 | Accused Product (Vibio) first listed on Amazon |
| 2020-07-14 | ’929 Patent Issue Date |
| 2022-12-23 | Defendant submits APEX request to Amazon |
| 2023-01-17 | Amazon removes Plaintiff's product listing |
| 2023-05-19 | Complaint for Declaratory Judgment filed |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 10,713,929, "ALARM AND MONITORING SYSTEM AND METHOD OF OPERATION THEREOF," issued July 14, 2020.
The Invention Explained
- Problem Addressed: The patent's background section describes the limitations of conventional alarms: audible alarms can wake unintended users, while existing silent, vibrating alarms typically must be worn on the body, which can be inconvenient for the user ('929 Patent, col. 1:24-37).
- The Patented Solution: The invention is a system with two main components: a "primary device" (e.g., a smartphone) and at least one "secondary device" (e.g., a separate vibrating unit). The user sets an alarm on the primary device, which then establishes wireless communication with the secondary device and transmits an "alarm event signal" containing alarm information. The secondary device receives this signal and generates the physical alarm, such as a vibration ('929 Patent, Abstract; col. 2:48-64). This architecture decouples the user interface for setting alarms from the hardware that physically renders the alarm.
- Technical Importance: This approach allows for a flexible and customizable alarm experience using a familiar smartphone interface while enabling a powerful, non-wearable alarm mechanism suitable for heavy sleepers or the hearing impaired ('929 Patent, col. 1:35-43).
Key Claims at a Glance
- The complaint asserts non-infringement and invalidity of independent claim 1 (Compl. ¶¶ 1, 17, 31).
- Essential Elements of Claim 1:
- An alarm system comprising a primary device with a first controller and a secondary device with a secondary controller and a rendering device.
- The first controller is configured to:
- (i) determine if an alarm event is set on the primary device;
- (ii) establish wireless communication with the secondary device when the alarm is set;
- (iii) generate a first alarm signal including first alarm rendering instructions; and
- (iv) transmit that first alarm signal to the secondary device.
- The secondary controller is configured to:
- (i) generate second alarm rendering instructions for the rendering device based on the first instructions; and
- (ii) render the second instructions on the rendering device.
- The complaint focuses exclusively on Claim 1, referring to it as "the Asserted Claim" (Compl. ¶2).
III. The Accused Instrumentality
Product Identification
- The Plaintiff’s "Vibio Wireless Bed Shaker" (Compl. ¶2).
Functionality and Market Context
- The Vibio is a wireless, vibrating "bed shaker" device that connects to a user's mobile phone via Bluetooth (Compl. ¶14; Compl., Ex. C). A screenshot in the complaint shows the Vibio product alongside a smartphone displaying the corresponding mobile application interface for setting an alarm (Compl., p. 5).
- Users interact with a free mobile application to set multiple alarms and choose vibration power levels. The device can also provide vibrating notifications for phone calls or messages (Compl. ¶14; Compl., Ex. C).
- The complaint notes that the Vibio device remembers alarms and will activate even if the phone is not connected at the alarm time, suggesting it has local storage and processing capabilities (Compl., Ex. D). The device was available for sale on Amazon from December 2019 until it was removed in January 2023 as a result of Defendant's APEX complaint (Compl. ¶14).
IV. Analysis of Infringement Allegations
This action is for declaratory judgment of non-infringement. The following table summarizes how Defendant jWIN, the patent holder, would likely map the features of the Vibio system to the elements of Claim 1, a position that Plaintiff B&S disputes.
- '929 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An alarm system comprising: a primary device having a first controller; and at least one secondary device having at least one secondary controller and at least one rendering device; | The system consists of a smartphone (primary device) running the Vibio app and the Vibio puck (secondary device), which contains a vibration motor (rendering device). | ¶14 | col. 4:20-23; col. 5:11-31 |
| wherein the first controller is configured to (i) determine whether at least one alarm event is set on the primary device, | The Vibio mobile app on the smartphone allows a user to set one or more alarms. The app's software determines if and when these alarms are set. | ¶14; p. 5 | col. 12:53-61 |
| (ii) establish a wireless communication between the primary device and the secondary device when determination is made that the alarm event has been set on the primary device, | The smartphone connects to the Vibio puck via Bluetooth to transfer alarm settings after a user creates an alarm in the app. | ¶14 | col. 12:6-14 |
| (iii) generate a first alarm signal including first alarm rendering instructions based on the alarm event set, and (iv) transmit the first alarm signal... to the secondary device, | After an alarm is set in the app, the smartphone generates and transmits data via Bluetooth to the Vibio puck, containing instructions for when and how to vibrate. | ¶14; Ex. C | col. 12:53-67 |
| wherein the secondary controller is configured to (i) generate second alarm rendering instructions for the rendering device based on the first alarm rendering instructions and | The controller within the Vibio puck receives the alarm data and generates the necessary electrical signals to drive the vibration motor. | Ex. D | col. 17:1-5 |
| (ii) render the second alarm rendering instructions on the rendering device. | At the set time, the Vibio puck's motor activates and vibrates according to the instructions received from the app. | ¶14 | col. 18:1-5 |
- Identified Points of Contention:
- Scope Questions: The complaint explicitly denies that the accused product meets the four-part limitation describing what the "first controller is configured to" do (Compl. ¶43). This suggests a central dispute over claim scope: Does a mobile app that allows a user to set an alarm and then sends that setting data to a peripheral device perform the claimed functions of "determin[ing] whether at least one alarm event is set" and "generat[ing] a first alarm signal including first alarm rendering instructions"? Plaintiff may argue the user, not the controller, "determines" the alarm is set, and that sending configuration data is not the same as generating and transmitting an "alarm signal."
- Technical Questions: A key question will be how the software and hardware are architected in the accused system. What specific data is transmitted from the phone to the Vibio puck? Is it a simple set of parameters (time, vibration intensity), or is it a more complex set of executable instructions? The answer may affect whether the phone is seen as "generating rendering instructions" or merely providing settings for instructions generated locally on the secondary device.
V. Key Claim Terms for Construction
The Term: "the first controller is configured to... generate a first alarm signal including first alarm rendering instructions"
Context and Importance: This term is the focus of the Plaintiff's non-infringement argument (Compl. ¶43). The case may turn on whether sending user-defined alarm parameters (e.g., time, vibration pattern) from a smartphone app to a peripheral device constitutes "generating a first alarm signal including first alarm rendering instructions." Practitioners may focus on this term because its construction will determine whether the primary device (smartphone) is merely a user interface or an active part of the alarm signal generation process as claimed.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the primary device utilizing a user interface to "enable setup and programming of a secondary device" and sending "control information" that includes "alarm information (e.g., date, time, alarm type, rendering device, etc.)" ('929 Patent, col. 3:55-57; col. 12:53-57). This could support a reading where sending these settings constitutes the "first alarm signal."
- Evidence for a Narrower Interpretation: The claim requires the signal to include "first alarm rendering instructions." Figure 5, the process flowchart, shows a sequence where the "master device" sends "control information" (act 513) and later the "slave device" "form[s] alarm signal" (act 518). This could support an argument that the primary device only sends high-level data, and the secondary device generates the actual rendering instructions and alarm signal locally, potentially putting the accused product outside the claim's scope.
The Term: "secondary controller is configured to (i) generate second alarm rendering instructions... based on the first alarm rendering instructions"
Context and Importance: The definition of this term is dependent on the construction of the "first controller" term. It addresses the division of processing labor between the two devices. The dispute will likely involve whether the Vibio puck's processor merely executes commands received from the phone or performs the distinct step of "generating" its own, new instructions based on the data it receives.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states the secondary device may "process this signal to extract the control information" and then "form an alarm signal based upon alarm information extracted" ('929 Patent, col. 16:53-56; col. 17:1-3). This suggests the secondary controller performs its own processing, which could be construed as "generating" new instructions.
- Evidence for a Narrower Interpretation: One could argue that if the primary device sends complete "rendering instructions," the secondary device merely "renders" them (Claim 1(ii)) without "generating" a second, distinct set of instructions. This interpretation would suggest the "generate" and "render" steps in the secondary controller limitation describe a single action of executing received commands.
VI. Other Allegations
- Indirect Infringement: This is a declaratory judgment action; as such, the Plaintiff is not accused of indirect infringement in the complaint.
- Willful Infringement: The Plaintiff is not accused of willful infringement. However, the Plaintiff alleges that the Defendant's actions in pursuing the APEX de-listing, particularly after being presented with allegedly invalidating prior art, were willful, deliberate, and in bad faith (Compl. ¶¶ 53, 63). These allegations form the basis for Plaintiff's state law claims of tortious interference and violation of the Washington Consumer Protection Act, as well as its request for a declaration that the case is exceptional under 35 U.S.C. § 285 (Compl. ¶¶ 48-64; Prayer for Relief E).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction and technical function: Does a smartphone app that transmits user-selected alarm settings (e.g., time, vibration level) to a peripheral device perform the claimed functions of "generating a first alarm signal including first alarm rendering instructions," or does it merely send configuration data? The resolution will depend on the specific meaning given to "generate" and "alarm signal" in the context of the patent.
- A second central issue will be invalidity in view of prior art: The complaint dedicates significant attention to arguing that prior art systems, such as the "ZBand silent alarm product" and a Fitbit patent, disclose every element of the asserted claim (Compl. ¶¶ 20-25, 35). A key evidentiary question will be whether these prior systems teach the claimed two-part architecture with distinct primary and secondary controllers performing the recited functions, a point the Defendant allegedly disputes (Compl. ¶20).