Amazon ordered to pay $5 million in patent infringement case

After a six-day trial in Marshall’s federal court, an East Texas jury determined that Amazon’s Echo product, with the “Alexa” command, does infringe a patent invention related to a smart speaker system.

The jury, on Thursday, ordered Amazon to pay Plano-based Vocalife a $5 million lump sum royalty to compensate Vocalife for its damages resulting from infringement. Vocalife was seeking a reasonable royalty of $30 million for past sales, in the case.

“We’re entitled to damages no less than a reasonable royalty in this case,” said Jennifer Truelove, of the Marshall-based McKool Smith PC, who served as co-counsel on Vocalife’s legal team.

In Thursday’s closing statements, she asked jurors to use their commonsense regarding the credibility of Amazon’s witnesses.

“Our jurors in East Texas are really, really good judges of character. You are the sole judges of credibility,” she said in closing statements Thursday.

The jury trial in the case kicked off last week in Marshall’s federal court with U.S. District Chief Judge Rodney Gilstrap presiding.

In the case, Vocalife LLC, a Plano-based technology company, and its owner and inventor Dr. Qi “Peter” Li, filed the lawsuit against Amazon.com Inc. and Amazon.com LLC on April 16, 2019, claiming that certain Amazon products, such as the virtual assistant smart speakers utilizing Amazon “Alexa” technology, willfully or intentionally infringes Vocalife’s patented microphone array system.

Vocalife accused Amazon of stealing their ideas and putting it into their own product after Li shared his invention during a 2011 at the invitation of Amazon.

Plaintiff’s closing statements

Giving background on the co-inventors of the patent, Truelove told jurors on Thursday that both Dr. Li and his co-inventor Dr. Manli Zhu worked on the invention for years. The two came to America from China for higher education and to realize the American dream.

Truelove said Zhu, who no longer works for Li’s company, doesn’t have any financial gain in this case, but was brave enough to come because it involves her life’s work.

“She’s one of the inventors in this case. She worked on this invention for years,” said Truelove. “It took bravery and courage for her to come here. She’s an inventor; she doesn’t own the patent.

“She subjected herself to cross-examination. Why did she do that? (It’s) because it’s her life’s work.”

Vocalife’s lead trial counsel Alfred Fabricant, of Fabricant LLP in New York, echoed Truelove’s sentiments, arguing that Amazon’s witnesses lacked credibility.

“This is about the microphone array that stays on top of that device. Without it, there would be no Echo; there would be no Alexa,” he said of how Amazon infringes Vocalife’s patented invention.

In response to Amazon’s claims that the patent-in-suit was invalid or not a novel invention, Fabricant argued that the technology was very complex.

“Dr. Zhu and Dr. Li spent years working on this invention. It was not obvious. It was not easy. It was not known,” Fabricant said.

The jury agreed, finding that Amazon did not prove their invalidity claims in the case.

Defendant’s closing statements

Representing Amazon, attorney J David Hadden, of Fenwick & West LLP- Mountain View, California, told jurors how important this case was to Amazon.

“This case is important because Amazon engineers worked very hard for years to develop something truly remarkable – the Echo in Alexa,” he said. “Before the Echo, there was no smart speaker. There was no device that can hear you speak in noisy crowded rooms, anytime, from any location …..and wake up while you’re speaking and understand what you said,” Hadden said in Thursday’s closing statements.

“When you work that long and that hard for something that (difficult) and you succeed, and you have someone falsely claim they did it first…that’s not fair,” said Hadden. “That’s why we’re here.”

Alexa along with Echo allowed consumers to be entertained and performed multiple tasks, something never done before, Hadden said. Hadden said Amazon’s Rohit Prasad, described Alexa as “the accomplishment of his life.”

Hadden also spoke on Vocalife’s assertion that Amazon invited Li to present his technology to them months after Li attended a Consumer Electronics Show where he won the CES Innovations Design and Engineering Award in the audio accessories category. Hadden said the prototype that Li and Zhu showed was a “dummy device” that didn’t work.

“That’s why they won for design,” Hadden contended. “They could not get their conference phone with adaptive beam-forming to work.”

Hadden said because Amazon is involved with a wide range of technology, they did have a meeting with Li, but were ultimately not impressed with Li’s company.

Hadden said one of the key witnesses, Matt Hallard, who doesn’t have a stake in the case and no longer works for Amazon, testified that Li’s work did not demonstrate any capabilities that would’ve been beneficial to Amazon.

Hadden further noted that Amazon conducted two phone interviews, in 2013, with Li, but still wasn’t interested in hiring him.

Amazon’s attorneys told jurors that while they didn’t believe Amazon owed a penny, they did want to note that Vocalife tried to license its patent and sell the whole product to Google for $700,000, which was astronomically less than the $30 million the plaintiff sought in this case.

“Google said, ‘no thank you,’” Hadden said.

Hadden said Vocalife’s product was not a smart speaker like the Echo. He argued that in 2018, Dr. Li was trying to copy at least the look of the Echo.

“Dr.; Li has had no commercial success,” said Hadden.

Hadden said when Amazon needs useful, valuable technology from other companies it willingly pays for it.

He contended that Dr. Li shopped his product with more than 20 companies, including Samsung, and not a single one considered it valuable.

Hadden said because Amazon has the pre-determined beams already in place, it does not determine a delay between each of the sounds sensors like Vocalife’s invention.

Amazon’s lead trial attorney, Deron Dacus of the Dacus Firm, PC in Tyler, echoed Hadden’s sentiments and noted that Vocalife was not entitled to any damages, especially money from Amazon products not related to the Echo.

He said actual purchases made through the Echo device would only qualify Vocalife a reasonable royalty of $134,000, if damages were to be awarded.

Vocalife rebuttal

In his closing statements for Vocalife, Fabricant said he finds it disturbing that Amazon claims its Echo device doesn’t have the adaptive beam-forming capability like Vocalife’s invention, but Amazon’s experts testified that the company practices the method.

“It’s preposterous,” said Fabricant.

Fabricant reminded jurors of internal Amazon documents that indicated how interested Amazon was in Li’s work, following the meeting.

“They said very positive things about that meeting. They said that’s what I needed to hear,” Fabricant said.

“This man, who came from China and got his Ph.D. from Rhode Island and Dr. Zhu, these are people that made this possible for Amazon,” Fabricant said regarding the success of Amazon’s products.

“This is their life accomplishment,” Fabricant said of Vocalife’s invention.

“He told them about his patens and then they don’t do business, which is fine, but they never told Dr. Li they were working on Echo,” said Fabricant.