IP Law Daily, PATENT—W.D. Tex.: Google Maps did not infringe mobile device location patent as a matter of law, (Dec 7, 2023)

By Thomas K. Lauletta, J.D.

The plaintiff did not establish that Google products performed sequentially the steps required by the plaintiff’s patent.

The U.S. District Court in Austin, Texas granted defendant Google’s motion as a matter of law that its Google Maps and Google Pixel products did not infringe U.S. Patent No. 8,373,961, owned by plaintiff WSOU Investments. Central to this holding was that steps 1 through 5 of Claim 1 of the patent were required to be performed sequentially, and that the plaintiff could not show that the Google products utilized the plaintiff’s patent in the sequential steps required. Goodge filed its motion mid-trial after WSOU rested its case in chief. (WSOU Investments, LLC v. Google LLC, December 6, 2023, Albright, A.).

WSOU Investments (“WSOU”) on March 12, 2020, filed suit alleging that Google infringed claims 1, 4, 5, 9, 11, and 14 of U.S. Patent No. 8,737,961 by making and/or selling its Google Maps and Google Pixel Products. WSOU states that is patent is aimed at “deriv[ing] or predict[ing] location context for a user of a mobile device, or both, that scales well to many users, such as incrementally determining location context.”

Claim 1 of the patent is an independent method claim that claims the following five steps:

Step 1—"causing at least in part a receiving of signal data that indicates a set of one or more distinct signal sources from which signals are received at a mobile device for each of a plurality of different times;”

Step 2—"determining whether the mobile device is moving outside a specified area at a current time of the plurality of different times based on the signal data;”

Step 3—"if the mobile device is determined to be not moving outside the specified area, then causing at least in part an incrementing of a count for a stationary state associated with the set of one or more distinct signals sources at the current time;”

Step 4—"determining a primary set of stationary states, each stationary state in the primary set associated with a frequently incremented count for one or more similar sets of one or more distinct signal sources when the mobile device is not moving outside the specified area” and

Step 5—"causing at least in part initiation of delivery of a service to the mobile device based on the stationary state.”

Claims 4, 5, and 9 are dependent claims of Claim 1. Claim 11 is an independent apparatus claim that recites the same process for incrementally determining location context through a processor, memory, and computer instructions to achieve the objective of the invention. Claim 14 depends on Claim 11.

After WSOU rested its case in chief in a jury trial, Google moved for Judgment as a matter of law under Federal Rule of Civil Procedure 50(a). The court granted the motion orally at trial. The instant memorandum and order addresses only Google’s contention that WSOU failed to show that the independent and dependent method claims of the patent and the corresponding apparatus claims are performed by the accused Google products in the order stated in the patent. In analyzing this question, the court noted that claim construction is a legal matter, not a question to be answered by a jury.

Order of steps in Method Claims 1, 4, 5 and 9. Based on the ordinary meaning of the terms used, and the logic underlying the patent, the court held that the five steps of Claim 1 are required to be read in the order in which they are written. To the contrary, WSOU argued that its patent was not required in the order it was written.

The court concluded that the first two steps in Claim 1 could not be read in a logical manner unless the were performed in order. The court reasoned that the third step must occur after the first two steps because if the mobile device’s location had not been determined under steps 1 and 2, the incremental counter of step 3 would have nothing to count. Although the court left unresolved what order step 4 would be in, it stated that it did not need to resolve this argument because it held that the fifth step relies on the completion of steps 1 through 4.

The court also found that the sequential order requirement also applied to dependent Claims 4, 5, and 9, and Apparatus Claims 11 and 14.

Because of the court determined that all of the claims of the patent were to be performed sequentially, and because WSOU failed to prove that Google products utilized the patent in its required sequential steps, the Court granted Google’s Rule 50(a) motion for Judgment as a Matter of Law on WSOU’s infringement claims.

The Case is No. 6:20-cv-00585-ADA.

Attorneys: Alden K. Lee (Folio Law Group PLLC) for WSOU Investments LLC d/b/a Brazos Licensing and Development. Daniele San Roman (Jones Day) for Google LLC.

Companies: WSOU Investments LLC d/b/a Brazos Licensing and Development; Google LLC

Cases: Patent TexasNews GCNNews