With Trial Looming, Delaware Judge Issues Noninfringement Ruling for Amazon in Quarterhill Case
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.
IPA Technologies filed its suit against Amazon in December 2016 (1:16-cv-01266) as part of a second wave of cases also hitting Alco Electronics, DISH Network, HTC, and TCL. The complaint accused Amazon of infringing three patents (6,523,061; 6,742,021; 6,757,718) originating with research institute SRI International, a spin-off of which—Siri, Inc., the developer of the Siri digital assistant—was later acquired by Apple. Amazon moved to dismiss the suit under Alice in March 2017, arguing that the three patents are ineligibly directed to the abstract idea of “responding to a spoken request”. IPA opposed the motions in part by touting the parallel development of Siri and identifying the alleged technical aspects of the recited claims. In ruling on the motion, Judge Andrews accepted Amazon’s arguments on eligibility but declined to treat the exemplary claims highlighted by the company as representative, therefore invalidating just claim 1 from each of the three patents.
In April 2018, following the court’s ruling on patent eligibility, the plaintiff amended its complaint to include another three patents (6,851,115; 7,036,128; 7,069,560). Amazon and fellow campaign defendants Google and Microsoft then filed Alice motions challenging the eligibility of all six patents. Judge Andrews partially granted those motions in January 2019, invalidating all claims from the ‘021, ‘061, and ‘718 patents as directed to the abstract idea of “retrieving electronic data in response to a spoken request and transmitting the retrieved data to a user” without the addition of a sufficient inventive concept. However, Judge Andrews denied the motions as to the ‘115, ‘128, and ‘560 patents, disagreeing with the three defendants that the patents are directed to the abstract idea of “breaking tasks down and delegating them to appropriate actors”. Rather, he concluded that the patents’ subject matter is not abstract, with the challenged claims instead “directed to improvements of the underlying computer functionality in a distributed computing environment”.
The list of asserted patents and claims in the Amazon suit was further narrowed in 2020, starting with the court’s July order that IPA Technologies choose 30 claims to assert out of the 116 previously at issue. In late October 2020, Judge Andrews then directed the parties to brief the impact of a series of inter partes review decisions in which various claims from the asserted patents were invalidated. Two days later, IPA submitted a revised list of asserted claims that now included seven claims from the ‘115 patent that it had previously dropped but now sought to “reassert”. Amazon objected to that reassertion, and the court ruled in December that IPA Technologies could not do so—noting that the plaintiff would likely lack enough time at trial to present the claims already at issue. Judge Andrews further held that no prejudice would likely result from this exclusion, observing that “if these additional and different limitations were all that important, [he] would have expected IPA to assert them earlier”. In June 2021, IPA again narrowed its list of asserted claims, dropping the ‘128 patent entirely and limiting those still at issue for the ‘115 patent (to claims 10, 29, 34, 35, and 38) and the ‘560 patent (to claims 28 and 50).
Later that month, Amazon filed a motion for summary of noninfringement as to those remaining claims, focusing in part on the claimed “Open Agent Architecture” (or “OAA”), “in which various ‘autonomous electronic agents’ perform ‘cooperative task completion” with the help of a ‘facilitator’”. As characterized by Amazon, “the agents communicate with the facilitator and among themselves using ‘messages’ expressed in an ‘inter-agent communication language’ or ‘ICL,’ ensuring that ‘agents will speak the same language’”—with each asserted claim also requiring a “service request” expressed in the ICL. This ICL, the company emphasized, “is a key feature of the purported invention, and the only reason the examiner allowed the asserted patents”. But its Alexa assistant cannot possibly infringe the ‘115 and ‘560 patents, Amazon argued, because under the court’s construction of both “inter-agent language” and “ICL”—as “an interface, communication, and task coordination language”—Alexa does not contain an ICL at all.
IPA Technologies’s expert, in contrast, argued that certain features of Alexa—specifically, the Semantic Interpretation Result Format (SIRF) in which words uttered by a user are transmitted, and the formats in which the system’s interpretation of the user’s intent are delivered (Blueshift Interpretation Format (BIF) or NLU Interpretation Format (NIF))—collectively comprise an ICL. Amazon responded that “Alexa does not have a service request in the ICL because SIRF does not include the layer of conversational protocol required in the ICL” (as later summarized by the court). The plaintiff, in turn, countered that the service request does not need to “contain every component of ICL, only what is needed to represent the request”, and that it is enough that the “service request adheres to the SIRF portion of the ICL”.
Judge Andrews agreed with Amazon in his October 28 order granting summary judgment. In particular, he held that the plaintiff’s arguments “are not supported by the claim language”, explaining that the sevice request “must meet every requirement of the claimed ICL. Nothing in this claim language supports a service request adhering only to a selected portion of the ICL. Since it is undisputed that the SIRF format does not include a layer of conversational protocol, Alexa cannot meet the ICL service request limitation”. Additionally, Judge Andrews concluded that “SIRF also cannot be the claimed ICL service request because, as IPA concedes, SIRF is a format, not a language”.
As noted above, this summary judgment and the resulting final judgment came just under two weeks before the case’s scheduled November 15 trial date. With the dismissal of the Amazon suit, just two other cases filed by IPA Technologies remain active, against Google (1:18-cv-00318) and Microsoft (1:18-cv-00001). Both actions have been stayed since January 2020 pending the final resolution of the aforementioned IPRs, from which 19 appeals—filed in November and December 2020—are currently in progress.