VB Assets, LLC has sued Apple (1:24-cv-01368) over the provision of devices, including the AirPods, Apple TV, Apple VisionPro, Apple Watch, HomePod, iPhone, iPads, and Mac-series devices, that support the Siri virtual assistant. Six natural language processing patents are asserted in the new District of Delaware complaint. The case has been assigned to Judge Maryellen Noreika, who also presides over a suit filed last month against SoundHoundAI (1:24-cv-01279) and who recently set ongoing royalty rates—of $0.25 "per net new Alexa shopping user" and $0.45 "per net new Alexa user" following a November 2023 jury verdict for VB Assets in a case that the plaintiff filed against Amazon back in 2019.
Judge Noreika ruled on the parties' posttrial motions in that case, trimming the jury's award down from $46.7M to just over $40M based on a judgment as a matter of law that no reasonable jury could have found one (claim 25 of the 9,626,703 patent) of the four tried claims (claim 40 of the 7,818,176 patent and claim 13 of the 8,073,681 patent, and claim 23 of the 9,269,097 patent) infringed. Characterizing itself as "ill-equipped to assess whether the jury's awarded royalty rate would be an appropriate rate for the ongoing royalty", the court asked for supplemental briefing concerning how to adjust the jury's award of $0.40 "per net new Alexa user as an ongoing royalty on the '681 patent" and $0.22 "per net new Alexa Shopping user as an ongoing royalty on the '176 patent and '097 patent".
VB Assets asked the court to bump up the '682 patent's rate from $0.40 to $0.60 and the other, from $0.22 to $0.25, applying "these ongoing royalty rates to the user figures belatedly disclosed by Amazon in December 2023 in its post-trial briefing", with the plaintiff multiple times accusing Amazon of providing shifting sales figures. To justify these increases, VB Assets points to the "following changed circumstances" (in the context of a postverdict negotiation versus a preverdict one): "(1) Amazon's reliance on the patented technology for growth and post-verdict product development; (2) Amazon's increasing costs to attract and retain users as its market matures; and (3) Amazon's post-verdict infringement". Amazon countered that the ongoing royalty rates should drop because "because the accused product transitioned to a new non-accused model, and it has experienced decreased losses on the accused products".
The court sided with VB Assets as to the bump from $0.22 to $0.25 rate for infringement of the '176 and '097 patents: "The Court finds that in a post-verdict hypothetical negotiation, the parties would recognize and account for an increase in costs since the time of infringement". The court also agreed to increase the rate for infringement of the '681 patent but not by as much as VB Assets requested, citing, among other things, competing evidence about whether Amazon's losses through Echo sales increased or decreased through the time of the hypothetical licensing negotiation. Per Judge Noreika, "increased inflation in the 2021-2024 time period driving costs to a level approximately 12% above expectations would itself support a larger royalty rate of $0.45 for the '681 patent". That is the figure the court landed on.
The '176 and '681 patents are asserted in the new complaint against Apple as well, together with four others (8,515,765; 8,886,536; 10,297,249; 10,510,341). Against SoundHound AI, VB Assets asserts the '681 and '536 patents as well as four others (9,269,097; 9,502,025; 11,087,385; 11,222,626). There, the plaintiff targets provision of the SoundHound Voice AI platform, as well as products incorporating thereof such as the Chat AI mobile app, Music app, and enterprise solutions. In an Eastern District of Texas complaint against Samsung, filed this past October, VB Assets asserts the '176, '681, '765, '536, and '341 patents, together with one additional patent (10,755,699) against the provision of the Bixby 2.0 voice assistant and supporting devices (e.g., earbuds, home appliances, smartphones, smartwatches, tablets, TVs, etc.). Chief Judge Rodney Gilstrap presides over that case.
In its complaints, VB Assets has characterized itself as the successor to VoiceBox, "a pioneer in conversational computing technology" that "developed the first smart speaker" and "fostered a successful business with customers such as Toyota" before it "disclosed its technology to Amazon" and Amazon "unscrupulously crushed VoiceBox's business and poached its engineers". VB Assets has pleaded that VoiceBox Technologies, a Washington-based company developing voice assistant and "conversational AI" technology, was formed in 2001 by Mike Kennewick and his two brothers Bob and Rich Kennewick. Mike has signed documents filed with the USPTO on behalf of VB Assets, variously as its manager or CEO.
Former VoiceBox patents, organized by numbered families apparently corresponding to technical subcategories, have been assigned to multiple entities, including Nuance Communications, Oracle, and VB Assets. The plaintiff appears to hold around two dozen such assets, at least according to currently available USPTO assignment records. It has pleaded a "notice" story in each of its complaints, including against Apple, where it alleges willful infringement based in part on the representation that Apple "tried to buy or license the VoiceBox patents: beginning in or around July 2012 and continuing into or until around September of 2014, Apple made numerous—and increasing—eight-figure offers to buy or license a collection of patents that included the VoiceBox Patents".
Smith, Katzenstein, & Jenkins LLP and Wilson Sonsini Goodrich & Rosati represent VB Assets in the Amazon cases, but Alston & Bird LLP and Greenbaum Law LLC appear on the signature block of the complaint filed against Samsung. Those two firms, with Farnan LLP, appear on the signature block of the new case against Apple. Greenbaum and Farnan appear on the signature block for the SoundHound AI case, with Jenner & Block LLP out of New York, New York.
An assertion grid for this campaign is available on RPX Empower. 11/21, SoundHound AI, 12/13, District of Delaware.
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