The parties and the patents

The case is BT Wearables LLC v. Xiaomi Corporation, No. 2:26-cv-00919 (E.D. Tex.). The defendants are Xiaomi Corporation, Beijing Xiaomi Mobile Software Co., Ltd., Xiaomi Communications Co., Ltd., Xiaomi Inc., and Xiaomi H.K. Limited. The asserted patents are U.S. Patents 10,610,111 and 12,544,008 (each titled Smart Watch), 12,138,008 and 12,502,076 (Personal Monitoring Apparatus), 9,775,520 (Wearable Personal Monitoring System), and 10,362,940 (Personal Emergency Response (PER) System). Count II names at least claim 12 of the 12,544,008 patent, and each other count names at least claim 1 of its patent.

What the patents cover

Claim 1 of the '111 patent covers a system with a wrist-watch wearable that has a processor, an accelerometer for fall detection, and an ECG sensor on its back or an optical sensor for a vital sign, wirelessly linked to a telephone with a positioning system and, through the telephone, to a remote computer. Claim 12 of the 12,544,008 patent, the claim the complaint asserts, covers a mobile system with a processor, a wireless area network transceiver and a wireless personal area network transceiver that communicate with a remote device, with speech processing done by the processor or the remote device, an accelerometer or motion sensor, a sensor for a body vital sign on the back side of a housing that contacts the user, and a microphone. The processor sends a voice command received by the microphone to the remote device over the personal area network transceiver to start a phone call.

The four patents the complaint says expired cover related wrist-worn designs. Claim 1 of the '520 patent covers a wrist-worn apparatus whose processor analyzes accelerometer signals to determine whether they indicate a predefined exercise, computes calories burned from the signals and that exercise, and transmits the result to a remote device over a radio frequency transceiver. Claim 1 of the '940 patent covers a wrist device with a user input for selecting a predefined exercise and computing activity data from accelerometer signals. Claim 1 of the 12,138,008 patent covers a system made up of a wrist-worn apparatus with a Bluetooth transceiver, a second wireless transceiver, and a heart rate sensor, and a mobile device with a Bluetooth transceiver and a software application that displays the heart rate sensor's data. Claim 1 of the '076 patent covers a wrist device with the same two transceivers that runs a voice recognizer and sends the resulting data to a mobile device over Bluetooth.

What the complaint alleges

The accused products include the Xiaomi Watch 2, Watch 2 Pro, Watch S3, Watch S4, and Watch S4 41mm, the Mi Smart Band 6, Xiaomi Smart Band 7, 9, and 10, and the Redmi Watch 5 Active, together with the Mi Fitness app. The complaint alleges direct infringement of each patent and, for the '111 and 12,544,008 patents only, induced and contributory infringement since Xiaomi received the complaint. It says the claim charts were left out to limit translation under the Hague Convention and will be provided on written request. The counts also name the Xiaomi Watch S1 and Smart Band 9 Active, and the counts on the two patents covered by the injunction request name only watches: the Watch 2, S3, S4, and S4 41mm for the '111 patent, and the Watch 2 alone for the 12,544,008 patent. It pleads venue under 28 U.S.C. 1391(c)(3) because none of the defendants resides in the United States. It does not plead willfulness.

Relief requested

BT Wearables asks for damages and costs, citing 35 U.S.C. 284 in each count, pre- and post-judgment interest, a permanent injunction limited to the '111 and 12,544,008 patents, and fees and costs under 35 U.S.C. 285. It does not ask for enhanced damages, and it demands a jury trial. Google Patents lists adjusted expiration dates of August 19, 2027 for the '111 patent and January 23, 2028 for the 12,544,008 patent.

What it means

Because the complaint says four of the six patents expired, most of the case is about past damages, which are limited to six years before filing under 35 U.S.C. 286. The injunction request covers the two patents that Google Patents lists as running into 2027 and 2028.

What to watch next

Watch for service on the foreign defendants, Xiaomi's response, and any inter partes review petitions on the two unexpired patents.