Wednesday, April 20, 2011

Hybrid Audio v. HTC, Apple et al.

On April 19, 2011, Hybrid Audio LLC filed a Complaint for patent infringement in the Eastern District of Texas against HTC, Exedea, Apple, Dell, Motorola Mobility, Nokia, RIM, and Samsung (and associated corporate entities).  The case number is 6:11-cv-00195-LED.  Hybrid Audio is represented by McKool Smith.  My former colleague Daniel Carlineo is listed Of Counsel on the Corporate Disclosure Statement.  (Update: Carlineo is also listed as Manager of Hybrid Audio with the Texas SOS and handled the patent assignment.  See updates at the end of this post for more info.)

Plaintiff Hybrid Audio is a limited liability corporation organized and existing under the laws of Texas, with its principal place of business at 100 East Ferguson Street, Tyler, Texas 75702.

The patent at issue is United States Patent No. RE40,281 (“the ’281 Patent” or “the Patent”), entitled “Signal Processing Utilizing a Tree-Structured Array.”

The Complaint alleges that Apple infringes, contributes to infringement, and induces infringement via "the iPod nano, iPhone 4, iPad, MacBook Pro, and iTunes service that contain or use hardware and/or software for processing audio information in accordance with the MPEG-1 Layer III (MP3) standard." (Complaint, items 25-27)

The family history and reissue history of the patent are complex.  The November 23, 2004 amendment adds a paragraph to the reissue specification stating:

  • This application is a Division of U.S. Reissue Application No. 10/603,833 filed June 26,2003. U.S. Reissue Application No. 10/603,833, filed June 26, 2003, is a Reissue of U.S. Application No. 08/804,909, filed February 25, 1997, now U.S. Patent No. 6,252,909, issued June 26, 2001. U.S. Application No. 08/804,909, filed February 25, 1997, is a Continuation-In-Part of U.S. Application No. 08/307,331, filed September 16, 1994, now U.S. Patent No. 5,606,642, issued February 25, 1997. U.S. Application No. 08/307,331 filed September 16, 1994, is a Division of U.S. Application No. 07/948,147, filed September 21, 1992, now U.S. Patent No. 5,408,580, issued April 18, 1995.

The reissued patent lists 121 claims.  An initial amendment canceled claims 1-4 and added 5-112.  A subsequent amendment canceled 5-112 and added 113-229, which eventually issued as 5-121.  The file history also reveals that two of the inventors, Jayashima and Morrell, were non-signing relative to the reissue.

I suspect there will be quite a bit of investigation into the patent's lineage, particularly for support of the asserted claims.  It may be telling that only the reissue, and none of the other family members, are listed in the suit.

Claim 5, for reference:


5. A signal processing method comprising:

splitting a signal into subbands using a plurality of filter banks connected to form a tree-structured array having a root node and greater than two leaf nodes,

each node comprising one filter bank having greater than two filters, and at least one of the leaf nodes having a number of filters that differs from the number of filters in a second leaf node.



Screen shot 2011 04 20 at 1 40 50 PM


Update: I am reminded via FOSSPatents that Hybrid Audio LLC filed for voluntary dismissal without prejudice of its original suit (case no. 6:10-cv-00677) and filed this suit with a longer list of defendants.

Update 2:  The assignment of RE40281 from Aware, Inc. to Hybrid Audio, LLC was executed on 12/10/2010 and recorded 12/22/2010, with Carlineo, Spicer & Kee, LLC listed as Correspondent.

Update 3: Hybrid Audio's registered agent is listed as Terry Fokas, 2828 Hood St., Ste. 806, Dallas, TX 75219 USA.  Certificate of Formation was filed April 21, 2010.  Attorney Daniel Carlineo, mentioned above is listed as Manager.




John said...

Is it likely that Aware retains the rights to the proceeds from this suit? Is Daniel Carlineo a hired agent for Aware?

igoeIP said...

@John I have no direct knowledge about the relationship or deals between Carlineo and Aware. I can say, however, that a "back-end," a clause providing a share of net proceeds from future patent licensing/litigation, is common in patent sale agreements. It's a good way to lower the up-front transaction price for the buyer and to lessen the seller's fear of future remorse in the event of large infringement awards or licensing revenues.

John said...

Any idea of how long it takes to get any response back from the named companies in the suit?

james said...

very interesting post . i like your idea behind it .That’s a pretty good idea,