Face ID patent troll withdraws complaint without explanation; Apple seeks to block future claims

Apple is asking a court to prevent future patent infringement claims from someone who appears to be a Face ID patent troll.

California resident Chian Chiu Li last month filed a patent infringement against Apple, then last week withdrew the complaint without explanation …

The patent

Li’s patent concerns a way to detect when someone is not actively using a smartphone but glances at the lockscreen, using this as a prompt to display information. The patent says this could include things like news, but the primary focus is on showing ads.

When a smartphone is standby, its display may turn dark to save energy. Without user intervention, the smartphone would stay that way. In some cases, a user may not want to play with a standby phone, because he or she may be busy doing other things. In some other cases when a user is not busy, he or she may still be reluctant to awake a phone from standby state, if there isn’t anything interesting. In the latter scenario, a user may have time to take or view information, while a smartphone may have a blank screen ready to display and convey info. However, there lack convenient ways and incentives for a user to start it. As a consequence, the phone may continue to be idle, while a user may just gaze at a dark empty screen, causing a waste of time for both the user and phone. 

Accordingly, there exists a need to utilize idle time of smart phone and other electronic devices to present information to idling users […]

When the user gazes at it, the device begins to show content items on a display. The content items may include advertisements […]

it is desirable to have a method and system which provide advertising information in a less-intrusive but effective way. Because an idle device sometimes means an idling user, it may be less intrusive and probably more effective to present advertisements utilizing an idle device in an unused time slot […]

The idle time may be especially useful for showing advertising contents to idle users. 

Clearly Apple would never do anything so crass, but that didn’t stop Li from claiming that the iPhone maker was infringing his patent.

Face ID patent troll filing

Patently Apple reports that Li filed an infringement claim against Apple for ”eye-tracking.”

On April 5, 2022, Defendant filed a complaint for patent infringement against Apple in the Northern District of California. See Chian Chiu Li v. Apple Inc., Case No. 4:22-cv-2159 (Dkt.1) (hereinafter “Original Complaint”) (attached hereto as Exhibit A).

In the Original Complaint, Defendant alleged that Apple products, such as several versions of iPhone and iPad Pro, infringe the ‘564 patent […]

Defendant further alleged the “Unlock with Face ID” feature on the Accused Devices infringed each limitation of claim 1 of the Asserted Patent, as well as every limitation of claims 8 and 14. 

This is clearly nonsensical, as a device responding to someone looking at it is the only thing in common between Face ID and Li’s patent, which is for a completely different purpose.

Additionally, Li’s patent was only filed on February 3, 2020. Apple launched the first iPhone with Face ID back in 2017, and the technology will of course have been developed some considerable time before that – likely years earlier.

The site notes that Li withdrew the complaint, with no explanation offered. Crucially, however, the withdrawal was ”without prejudice,” meaning Li would be free to refile the complaint, either in California or elsewhere – including the troll-friendly jurisdiction of East Texas.

Apple seeks to head off a re-filing

Patently Apple says that Apple has asked for a Declaratory Judgement – that is, even though the complaint has been withdrawn, the Cupertino company would like the court to examine the facts anyway, and rule that the patent was not infringed. This would prevent Li from re-filing.

Apple filed a complaint for ‘Declaratory Judgement of Non-Infringement of U.S. Patent 11,016,564 in the Northern District of California in an effort to stop the patent infringement case from proceeding […]

“Apple has a reasonable apprehension that Defendant will refile suit and assert that the Accused Devices infringe the ‘564 patent. Both the pre-suit communications between Apple and Defendant and Defendant’s dismissal of the Original Complaint without prior notice and without prejudice, demonstrates that it is highly likely that Defendant will again assert infringement of the ‘564 patent against Apple. In the meantime, the cloud of Defendant’s allegations and litigation hangs over Apple.” 

Apple also wants Li to pay its legal fees in respect to the case.

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Avatar for Ben Lovejoy Ben Lovejoy

Ben Lovejoy is a British technology writer and EU Editor for 9to5Mac. He’s known for his op-eds and diary pieces, exploring his experience of Apple products over time, for a more rounded review. He also writes fiction, with two technothriller novels, a couple of SF shorts and a rom-com!

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