IPA Technologies Inc. v. Microsoft Corporation DC

The Federal Circuit has resurrected a trio of Google inter partes reviews (IPRs) against two patents asserted against it by IPA Technologies Inc., a Quarterhill Inc. subsidiary. On May 19, the court issued a precedential decision that faulted the Patent Trial and Appeal Board (PTAB) for failing to follow the correct standard in determining that a published article was not prior art—a dispute that hinged on the extent of one author’s inventive contributions under the pre-America Invents Act (AIA) first-to-invent system. The decision follows another setback against IPA Technologies last October, when Delaware judge ruled that Amazon did not infringe the same two patents just before a scheduled trial.

Delaware District Judge Richard G. Andrews has granted summary judgment of noninfringement for Amazon in a nearly five-year-old case brought by IPA Technologies Inc., a subsidiary of Quarterhill Inc. (f/k/a Wi-Lan Inc.). On October 28, the court ruled that the company did not infringe two patents generally related to speech-based control over electronic resources through its Alexa voice assistant, concluding that the product did not meet a key claim limitation. The court previously invalidated three other patents-in-suit under Alice, and it issued its noninfringement ruling as to the patents remaining in suit just two weeks before a scheduled trial.

Among patent assignments recently made public by the USPTO is the transfer of more than two dozen assets generally related to speech recognition and/or processing from Nuance Communications to a Delaware LLC. The transaction, dated January 1, 2021, followed by two and a half months the execution of an assignment of two US patents, also broadly directed to speech recognition, to the same LLC from another player in the space. This collection of similar assets suggests that additional patent cases may be on the verge of joining a slew of speech recognition campaigns spread out across nearly all stages of the litigation life cycle.

In October 2018, the Patent Trial and Appeal Board (PTAB) continued to see petitions for inter partes review (IPR) filed against Native American tribes following the Federal Circuit’s July ruling that the tribes’ sovereign immunity does not apply in the context of IPR, including a petition brought against the Saint Regis Mohawk Tribe over patents at issue in the campaign waged by SRC Labs, LLC. That petition was filed shortly before the Federal Circuit declined to revisit its sovereign immunity opinion in late October. Also in October, the PTAB instituted trial in four IPRs against a subsidiary of Quarterhill Inc., which just reported a significant drop in quarterly patent licensing revenue over the previous year. Meanwhile, October saw a number of notable final decisions, including one issued in an IPR against a subsidiary of General Patent Corporation.

In March 2018, the Patent Trial and Appeal Board (PTAB) saw petitions for inter partes review (IPR) filed in a variety of notable campaigns, including those waged by publicly traded Quarterhill Inc.; privately held XR Communications, LLC; and inventor Leigh M. Rothschild. The Board also instituted trial throughout March in campaigns brought by Oyster Optics, LLC and Uniloc Corporation Pty. Limited. In addition, the PTAB granted in March a motion to amend in two IPRs against prolific plaintiff Realtime Data, LLC, also issuing final decisions involving patents asserted by Uniloc; Papst Licensing GmbH & Company Kg; Evolved Wireless LLC; Game and Technology Co., Ltd; and TQ Delta LLC.

In December and January, Google filed petitions for inter partes review (IPR) of the three speech recognition patents that IPA Technologies Inc. has been litigating since October 2016. Weeks later, the Quarterhill Inc. subsidiary has sued Alphabet (Google) (1:18-cv-00318) in district court. The new complaint asserts those same three patents, as well as three more from the NPE’s family of nine, with infringement allegations focusing on Google Assistant, including its interoperation with Google Search (and Google Feed/Now). IPA pleads that Google Assistant is “enabled” for a range of devices, including “phones, speakers, watches, laptops, televisions, automobiles, and other smart displays” either directly provided by Google or made compatible by third parties (e.g., “Philips Hue lights, Wemo electronics control systems, LG smart appliances”) by using identified tools Google Actions, Dialogflow, Cloud Natural Language and Firebase.

The Patent Trial and Appeal Board (PTAB) saw petitions for inter partes review (IPR) filed in large campaigns affecting a variety of market sectors in January, including the automotive campaign waged by Intellectual Ventures LLC; frequent plaintiff Realtime Data LLC’s long-running data compression and media streaming campaign; the USB device charging campaign brought by Fundamental Innovation Systems International LLC; and the mobile device campaign run by IPA Technologies Inc., a subsidiary of publicly traded Quarterhill Inc. The Board instituted trial in January for petitions against Realtime Data and in the sprawling, 12-year anti-malware campaign still being litigated by publicly traded Finjan Holdings, Inc. The PTAB also issued final decisions in January in IPRs against Realtime Data; ChriMar Systems, Inc.; and IP Bridge, Inc.

The Patent Trial and Appeal Board (PTAB) remained at the center of a heated public debate over the issue of tribal sovereign immunity in December 2017. Motions to dismiss filed by the Saint Regis Mohawk Tribe in IPRs against several Allergan patents—acquired by the tribe and licensed back to their original owner to shield them through sovereign immunity—remain pending as the PTAB considers a wave of amicus briefs filed on both sides of the issue. The Board has since denied the tribe’s motion for an oral hearing on discovery related to alleged bias held by the USPTO and its leadership, and that bias’s effect on the selection of judges for the tribe’s case. Meanwhile, among the petitions for inter partes review (IPR) filed in December was one brought by Apple against MEC Resources, LLC, an entity owned by another Native American tribe, which took over an existing lawsuit asserting the challenged patent against Apple in the fall. Also in December, the Board issued institution decisions in petitions against Iridescent Networks, Inc.; Lone Star Silicon Innovations LLC; and publicly traded Quarterhill Inc.; while an IPR against Packet Intelligence LLC ended in an adverse judgment after petitioner Sandvine prevailed in a November trial.

IPA Technologies Inc., a subsidiary of Quarterhill Inc. (f/k/a Wi-LAN Inc.), has filed suit in Delaware against Microsoft (1:18-cv-00001), targeting the company’s Cortana digital assistant with two of the three speech recognition patents already at issue in the NPE’s broader campaign. This past November, District Judge Richard G. Andrews heard oral arguments on multiple motions to dismiss under Alice, challenging the patents-in-campaign as patent-ineligibly directed to the abstract idea of “responding to a spoken request”. In April 2017, Quarterhill announced plans to restructure its business model, de-emphasizing patent licensing and refocusing on the acquisition of Industrial Internet of Things (IIoT) businesses, later hiring as its new CEO an expert in acquisitions; nevertheless, Quarterhill found itself on the list of top-filing NPEs for 2017.

IPA Technologies Inc., a subsidiary of Quarterhill Inc. (f/k/a Wi-LAN Inc.), has stipulated to the transfer of another case out of District of Delaware to the Southern District of California in light of the US Supreme Court’s TC Heartland case on proper venue in patent cases. In June, IPA agreed to move its March 2017 case against Kyocera to the Southern District, and now in September, it has done the same in its case against ZTE (3:17-cv-01858). This additional transfer comes as the court considers multiple motions challenging the patents asserted, broadly related to speech recognition technology, as patent-ineligibly directed to the abstract idea of “responding to a spoken request” under Alice. IPA opposed the motions by touting parallel development of Apple’s digital assistant Siri, identifying the alleged technical aspects of the recited claims, and contending that claim construction is required to decide the pending motions.

Lenovo (Motorola Mobility) (1:17-cv-00235) and Huawei (1:17-cv-00248) are the latest defendants to be added to the voice recognition campaign of Wi-LAN, Inc. (WiLAN) subsidiary IPA Technologies Inc. Like the complaints filed last month against Acer, ASUS, and LG Electronics, the new ones assert two of the three patents already at issue in the campaign (6,523,061; 6,742,021) against mobile phones and tablet computers equipped with Google Voice Actions, which IPA alleges is a rebranding of the Google Now digital assistant in place since July 2012. All cases in the campaign, which began with a false start in October 2016, are in the earliest stages in Delaware.

On February 9, Wi-LAN, Inc. (WiLAN) announced its financial results for the fourth quarter and fiscal year of 2016. The Canadian NPE reported net earnings of $8.6M for Q4, up from $3M during the same quarter last year. Quarterly revenue was $30.2M, compared to $26M during the same period in 2015. However, the company’s overall revenue for 2016 was $92.9M, down from $102.9M in the previous year.

Wi-LAN, Inc. (WiLAN) subsidiary IPA Technologies Inc. has filed new cases in its speech recognition campaign against Acer (1:17-cv-00119), ASUS (1:17-cv-00120), and LG Electronics (LGE) (1:17-cv-00121). The complaints assert two of the three patents already at issue in the campaign (6,523,061; 6,742,021) against the defendants’ mobile phones and tablet computers equipped with Google Voice Actions, which IPA alleges is a rebranding of the Google Now digital assistant, in place since July 2012. The Acer and ASUS cases are the second filed in the campaign against each of those two defendants, while the suit against LGE is the first.

Wi-LAN, Inc. (WiLAN) subsidiary IPA Technologies Inc. has added Sony (1:17-cv-00055) to its speech recognition campaign, accusing the company of infringing three patents (6,523,061; 6,742,021; 6,757,718) through various Android-based products offering Google’s Now virtual assistant, including smartphones, tablets, and smart TVs, as well as through its Android Wear smartwatches. This latest case follows another filed on January 10 against ZTE (1:17-cv-00025), which is alleged to infringe the ‘061 and ‘021 patents through its own Android smartphones and tablets with Google Now.

Wi-LAN, Inc. (WiLAN) subsidiary IPA Technologies Inc. has added ZTE (1:17-cv-00025) to its speech recognition campaign, following a wave of December filings against Alco Electronics (1:16-cv-01169), Amazon (1:16-cv-01266), DISH Network (1:16-cv-01170), HTC (1:16-cv-01171), and TCL (1:16-cv-01236). ZTE is accused of infringing two patents (6,523,061; 6,742,021) generally related to speech recognition and the “navigation” of “electronic data sources” through the provision of Android smartphones and tablets offering Google’s Now virtual assistant.

Wi-LAN, Inc. (WiLAN) subsidiary IPA Technologies Inc. has continued the December reboot of its speech recognition campaign with the filing of new complaints against Amazon (1:16-cv-01266) and TCL (1:16-cv-01236). Amazon is accused of infringing three patents (6,523,061; 6,742,021; 6,757,718) that generally relate to speech recognition and the “navigation” of “electronic data sources” through devices offering its Alexa assistant. TCL, meanwhile, is alleged to infringe the ‘061 and ‘021 patents through its Android-based mobile devices that include Google’s Now assistant.

In late October, the sole litigation campaign of Wi-LAN, Inc. (WiLAN) subsidiary IPA Technologies Inc. came to an abrupt halt when the NPE voluntarily dismissed, without prejudice, cases that it had filed two weeks earlier against Acer, ASUS, Dell, HP, and Toshiba. Two patents (6,523,061; 6,742,021) from a family of nine generally related to speech recognition and operation of “electronic data sources” had been asserted against the defendants’ manufacture and sale of various desktop, laptop, and/or tablet computers that use Microsoft’s Windows 10 and include the company’s Cortana digital assistant. IPA has now rebooted the campaign with three new suits, one each against Alco Electronics (1:16-cv-01169), DISH Network (1:16-cv-01170), and HTC (1:16-cv-01171).

IPA Technologies Inc., a subsidiary of Wi-LAN Inc. (WiLAN), has kicked off a new litigation campaign, filing separate complaints against Acer (1:16-cv-00945), ASUS (1:16-cv-00946), Dell (1:16-cv-00947), HP Inc. (1:16-cv-00948), and Toshiba (1:16-cv-00949). Two patents (6,523,061; 6,742,021) from a family of nine generally related to speech recognition and operation of “electronic data sources” are at issue. IPA accuses the defendants of infringement through the manufacture and sale of various desktop, laptop, and/or tablet computers using Microsoft’s Windows 10 and having Microsoft’s Cortana digital assistant.