IngenioSpec LLC has filed a pair of Western District of Texas complaints against Apple (1:25-cv-00867, 1:25-cv-00877), targeting a range of features provided with AirPods (Pro) and iPhones. The plaintiff has also filed another complaint before the International Trade Commission (ITC), naming as proposed respondents Brilliant Labs, DJI, DVPR, Even Realities, Halliday, Holoswim, INMO, and NRMyW (337-TA-3833), the lot accused over the alleged importation of "eyewear products containing electronic components in the frames and/or lenses, associated components, and related charging apparatuses".
In the -867 case against Apple, IngenioSpec asserts three patents, one (8,582,789) generally related to a hearing aid with an external audio receiver to receive broadcast signals and convert them to wireless for the hearing aid. The plaintiff focuses allegations of infringement of the '789 patent on the accused products' functionality for adjusting aspects of Transparency Mode, such as channel balance. The other two patents asserted in this complaint (11,644,693; 11,921,355) generally relate to a "personal audio system" (the '693 patent) or head-worn personal device (the '355 patent) where wireless earbuds (the '693 patent) or speakers worn near the ear (the '355 patent) are used with a mobile device that uses a hearing profile to output signals that compensate for the user's hearing impairment. This pair is trained on the accused products' functionality allowing the user to "personalize frequency response and/or sound amplification" (as summarized for the '693 patent, but as apparently alleged for the '355 patent as well).
In the -877 case against Apple, IngenioSpec asserts three different patents (8,112,104; 12,001,599; 12,044,901). The plaintiff describes the products accused of infringement of each patent as "wireless communication systems, including a wireless headset and a wireless communication device capable of converting incoming text to audio, recording a reply audio message, and converting that reply audio message into a reply text message" (AirPods and iPhones); "wearable wireless devices with integrated speakers and microphones and battery recharging capabilities" (AirPods only); and "head-worn electronic devices, such as those with touch-sensitive surfaces, including rechargeable batteries that connect via conductive elements to a charging case" (same), respectively.
In the new ITC complaint, IngenioSpec alleges infringement of two other patents (10,310,296; 12,078,870). There, IngenioSpec characterizes itself as "a pioneer in wearable electronics, including the electronic eyewear marketplace" and as having "more than 40 patents related to its electronic eyewear technology" and patents and/or technology that it has licensed "to many leading technology developers in the smart eyewear space". It alleges a domestic industry based on "current and ongoing significant and substantial domestic investments in plant, equipment, labor, capital, engineering, and research and development of IngenioSpec's licensee, [REDACTED] and its [REDACTED] products".
Fifteen patents have now been asserted in this campaign, which IngenioSpec began with a November 2023 ITC complaint targeting "electronic sunglasses that allow consumers to take pictures, record videos, make hands-free phone calls, and play music". It named as proposed respondents Bose; Everysight and purported manufacturer Quanta Computer; GGTR (Ampere, Ampere Technologies, Gogotoro) and manufacturer Zhuhai Wicue Technology; Lenovo; Lucyd (Innovative Eyewear); Seiko Epson (Epson America); Luxxotica Group (Luxxotica of America); Magic Leap; Razer; TCL (Falcon Innovations Technology (Shenzhen) Co., Ltd.); ThirdEye Gen; Vuzix; and XREAL and manufacturer Matrixed Reality Technology Co., Ltd. That investigation wound down to an October 2024 end, with the plaintiff having announced in September 2024 that the "ITC investigation concluded successfully this month, with four companies exiting the product space in addition to [] eight new licensees". For more on that complaint, see "New ITC Complaint Targets Smart Sunglasses" (November 2023).
That month, October 2024, IngenioSpec filed a second complaint before the ITC, which alleges infringement of three of its patents through the provision of augmented reality (AR) and virtual reality (VR) headsets. It names as proposed respondents ByteDance (Funnico, PICO) and purported manufacturer Qingdao Chuangjian Weilai Technology; HTC; Meta Platforms; and Valve. The plaintiff also filed concurrent Eastern District of Texas suits against Bose, LG Electronics (LGE), Samsung, and Sony. Meta filed a Northern District of California complaint against IngenioSpec, which was stayed to await the ITC proceeding, where multiple stays of the procedural schedule as to ByteDance, HTC, and Meta have been granted.
The Bose, LGE, and Samsung cases were consolidated before District Judge Rodney Gilstrap, with the suit against Bose in lead. Shortly after consolidation, the case against Bose was voluntarily dismissed without prejudice. In March 2025, a settlement with Samsung was noticed; stays have been extended, most recently on June 4, to finalize that agreement. LGE has answered, as has Sony in its separate case. Sony has also filed an opposed motion to change venue (for convenience) to the Southern District of California or, in the alternative, to the Northern District of California. Per Sony:
The Asserted Patents were prosecuted by Peter Tong and C. Douglas Thomas, two of the named inventors mentioned above, who also work for IpVenture, Inc., a patent licensing company located in San Jose, California, and previously in Los Altos, California, both of which cities are in the NDCA. IpVenture is also an affiliate company of IngenioSpec. (Declaration of Gregory S. Gewirtz ("Gewirtz Decl.") Exh. 1, https://www.ingeniospec.com/company.) Peter Tong, is a co-founder of IpVenture and IngenioSpec (Id. Exh. 2, https://www.ipventure.com/team.) C. Douglass ("Doug") Thomas is a co-founder of IpVenture.
Indeed, IngenioSpec, formed as "SmartIGlasses LLC" in California on September 25, 2012, acquired its patents either directly from the named inventors—David Chao, Kwok Wai Cheung, and Thomas Howell, as well as Thomas, and Tong—or indirectly from IpVenture, Inc. On its website, the NPE describes itself as "creat[ing], invest[ing] in, acquir[ing], and licens[ing] innovative technologies and patents in the high-growth electronic eyewear market"; and IpVenture, its "affiliate company", as "offer[ing] patent consultation for companies and innovators looking to patent and realize value from their innovations".
Kramer Alberti Lim & Tonkovich LLP, as well as Cherry Johnson Siegmund James PC, represents IngenioSpec in West Texas. The Apple cases have yet to be assigned to a judge. Fabricant LLP filed the ITC complaint for IngenioSpec. Russ August & Kabat (with additional local counsel) represents the plaintiff in its earlier round of district court cases. 6/5, the -867 case, 6/6, the -877 case, Western District of Texas; 6/6, ITC.
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