DCT

2:14-cv-09585

West Corp v. Eclipse IP LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:14-cv-09585, C.D. Cal., 12/15/2014
  • Venue Allegations: Venue is alleged to be proper in the Central District of California because Defendant Eclipse IP has filed at least 36 patent infringement cases in the district and has litigated the patents-in-suit there more than in any other district.
  • Core Dispute: Plaintiff West Corporation seeks a declaratory judgment that twenty-two patents owned by Defendant Eclipse IP, related to automated notification systems, are invalid as directed to unpatentable abstract ideas.
  • Technical Context: The technology concerns systems for monitoring the location of mobile entities and providing automated notifications and interactive responses regarding their travel status, a field relevant to logistics, transportation, and personal communication services.
  • Key Procedural History: The complaint highlights that a judge in the same district, in Eclipse IP LLC v. McKinley Equipment Corporation, previously invalidated numerous claims from three of the patents-in-suit ('716, '681, and '110 patents) for failing to claim patent-eligible subject matter under 35 U.S.C. § 101. Eclipse IP reportedly appealed that decision and subsequently filed for voluntary dismissal of the appeal. This prior judicial finding of invalidity for related patents in the same district provides significant context for the current declaratory judgment action.

Case Timeline

Date Event
2003-05-28 Earliest Patent Priority Date ('716, '681, et al.)
2006-06-20 U.S. Patent No. 7,064,681 Issues
2006-09-26 U.S. Patent No. 7,113,110 Issues
2006-10-10 U.S. Patent No. 7,119,716 Issues
2008-01-15 U.S. Patent No. 7,319,414 Issues
2009-01-20 U.S. Patent No. 7,479,899 Issues
2009-01-20 U.S. Patent No. 7,479,901 Issues
2009-01-20 U.S. Patent No. 7,479,900 Issues
2009-01-27 U.S. Patent No. 7,482,952 Issues
2009-03-17 U.S. Patent No. 7,504,966 Issues
2009-05-05 U.S. Patent No. 7,528,742 Issues
2009-05-26 U.S. Patent No. 7,538,691 Issues
2009-07-14 U.S. Patent No. 7,561,069 Issues
2011-01-25 U.S. Patent No. 7,876,239 Issues
2011-11-29 U.S. Patent No. 8,068,037 Issues
2012-07-31 U.S. Patent No. 8,232,899 Issues
2012-08-14 U.S. Patent No. 8,242,935 Issues
2012-10-10 U.S. Patent No. 8,284,076 Issues
2013-01-29 U.S. Patent No. 8,362,927 Issues
2013-02-05 U.S. Patent No. 8,368,562 Issues
2013-09-10 U.S. Patent No. 8,531,317 Issues
2013-10-22 U.S. Patent No. 8,564,459 Issues
2014-04-29 U.S. Patent No. 8,711,010 Issues
2014-09-04 Court invalidates claims of '681, '110, '716 patents in McKinley case
2014-10-22 Eclipse's appeal in McKinley case is dismissed
2014-12-01 Eclipse sends threat letter to West Corporation
2014-12-15 Complaint for Declaratory Judgment Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 7,119,716 - "Response Systems and Methods for Notification Systems for Modifying Future Notifications"

The Invention Explained

  • Problem Addressed: The patent's background section describes the uncertainty and inefficiency associated with the arrival or departure of "mobile things" (MTs), such as buses, delivery vehicles, or airplanes (ʼ716 Patent, col. 1:45-2:28). This uncertainty requires people to wait for extended periods or make schedule adjustments without accurate information (ʼ716 Patent, col. 2:1-12).
  • The Patented Solution: The invention provides a computer-based notification system that can interact with a party via a personal communications device (PCD). The system initiates a notification, receives a response, and then modifies how future notifications are sent based on that response (ʼ716 Patent, Abstract; col. 3:55-4:12). For example, after receiving a confirmation, the system might refrain from sending further reminders until a specified event occurs, as shown in the flowchart of Figure 8 (ʼ716 Patent, Fig. 8).
  • Technical Importance: The technology aimed to improve automated alerts by making them interactive, allowing the notification system to adapt its behavior based on user feedback rather than sending static, pre-programmed messages (ʼ716 Patent, col. 3:55-4:12).

Key Claims at a Glance

  • The complaint notes that claims 1, 18, and 41, among others, were previously invalidated (Compl. ¶12). Independent claim 1 is representative:
  • A method for communications in connection with a computer-based notification system, comprising the steps of:
    • initiating a first notification communication to a personal communications device associated with a party;
    • receiving a response communication from the party's personal communications device, said response communication indicating that the party has received the notification communication and is now occupied with a task associated with the notification communication; and
    • refraining from sending any further notification communications to the party's personal communications device until detection of one or more events, indicating that the party is no longer occupied with the task and can perform another task associated with the notification communication.

U.S. Patent No. 7,064,681 - "Response Systems and Methods for Notification Systems"

The Invention Explained

  • Problem Addressed: The '681 Patent addresses the same technical problem as its parent '716 Patent: the need for better preparation and scheduling related to the arrival or departure of mobile things like commercial vehicles or school buses (ʼ681 Patent, col. 1:25-33).
  • The Patented Solution: The invention is a computer-based system that automates notifications about a mobile thing's travel status. A representative method involves initiating a communication, receiving a response indicating whether a party will perform a related task, and then refraining from sending further notifications to other devices based on that response ('681 Patent, Abstract). The overall system architecture is depicted in Figure 1, showing a Mobile Thing Control Unit (MTCU) communicating with a Base Station Control Unit (BSCU), which in turn communicates with a user's Personal Communications Device (PCD) ('681 Patent, Fig. 1).
  • Technical Importance: This technology sought to automate coordination between mobile entities and interested parties, reducing uncertainty and improving efficiency in areas like logistics and transportation ('681 Patent, col. 2:58-64).

Key Claims at a Glance

  • The complaint notes that claims 1 and 6 were previously invalidated (Compl. ¶13). Independent claim 1 is representative:
  • A method for communications in connection with a computer-based notification system, comprising:
    • initiating a notification communication to a personal communications device associated with a party, the notification communication relating to a task to be performed;
    • during the notification communication, receiving a response from the party's personal communications device, indicating whether or not the party associated with the personal communications device will perform the task;
    • when the party is willing to perform the task, refraining from sending any further notification communications to one or more additional personal communications devices associated with the party that have not responded.

U.S. Patent No. 7,113,110 - "Stop List Generation Systems and Methods Based upon Tracked PCD's and Responses from Notified PCD's"

  • Technology Synopsis: This patent describes generating a "stop list" for a delivery vehicle by communicating with multiple personal communication devices (PCDs). The list of stops is produced based on the responses, or lack thereof, from the notified parties ('110 Patent, Abstract).
  • Asserted Claims: The complaint notes claims 1, 2, 7, and 8 were found to be invalid in the McKinley case (Compl. ¶14).
  • Accused Features: The "electronic messaging features of [West's] tracking and notification systems" (Compl. ¶40).

Additional Patents-in-Suit

The complaint identifies nineteen additional patents in the Eclipse Patent Portfolio for which it seeks a declaration of invalidity (Compl. ¶¶15-34). All are alleged to be related to and claim priority to the '716 Patent (Compl. ¶35).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are West Corporation’s "electronic messaging features of [West's] tracking and notification systems" (Compl. ¶40).

Functionality and Market Context

  • The complaint does not provide sufficient detail for analysis of the accused instrumentality's specific functionality or market position. The allegations, as reported from Eclipse's threat letter, are framed at a high level without identifying specific West products or describing how they operate (Compl. ¶40).
  • No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint does not contain direct infringement allegations or a claim chart. Instead, it references a threat letter from Eclipse IP to establish the controversy required for a declaratory judgment action (Compl. ¶¶37-41). The complaint states that Eclipse's letter accuses West's "tracking and notification systems" of infringing claims of "at least several of Eclipse's Patents," and identifies U.S. Patent Nos. 7,479,899, 7,876,239, and 7,482,952 as "representative examples" (Compl. ¶¶40-41). The complaint does not provide any specific mapping of the accused system features to the elements of any asserted patent claims.

Identified Points of Contention

  • Patent Eligibility Question: The central dispute presented in the complaint is not one of infringement but of validity. West's primary claim for relief is that all claims of the patents-in-suit are invalid under 35 U.S.C. § 101 because they "purport to claim unpatentable abstract concepts" (Compl. ¶45). This suggests the case will focus on whether the claims are directed to an abstract idea without reciting a sufficient inventive concept, an inquiry heavily influenced by the prior invalidity finding in the McKinley case (Compl. ¶36).
  • Technical Question: As the complaint provides no details about the operation of West's systems, a fundamental evidentiary question remains: what specific technical processes do the accused "tracking and notification systems" actually perform? Without this information, any analysis of infringement or claim scope is speculative.

V. Key Claim Terms for Construction

"personal communications device" (from '681 Patent, Claim 1)

  • Context and Importance: The scope of this term is central, as it defines the universe of user devices with which the patented system interacts. Practitioners may focus on this term because its interpretation could determine whether the claims read on modern systems involving smartphones and other multi-function devices that were not prevalent when the patent application was filed.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification states that "Nonlimiting examples of PCDs 75 are as follows: a personal computer (PC) capable of displaying the notification through e-mail or some other communications software, a television, a wireless (e.g., cellular, satellite, etc.) or non-wireless telephone, a pager, a personal data assistant, a navigation system in a motor vehicle, a radio receiver or transceiver, or any other device capable of notifying the user" (ʼ681 Patent, col. 19:10-22). This broad, functional language may support an interpretation covering a wide range of devices.
    • Evidence for a Narrower Interpretation: The specific examples provided, such as pagers and distinct types of telephones, are technologies of a particular era. An argument could be made that the scope should be understood in the context of the devices explicitly disclosed rather than extending to fundamentally different, later-developed technologies.

"task associated with the notification communication" (from '716 Patent, Claim 1)

  • Context and Importance: This term is critical because it defines the user action that triggers the system's responsive behavior (i.e., refraining from sending more notifications). The required degree of "association" between the task and the notification will be a key point in determining the claim's scope.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes numerous embodiments, including a party being "occupied with a service to be performed at a destination," which could be broadly interpreted to cover many types of user activities (ʼ716 Patent, col. 43:55-60).
    • Evidence for a Narrower Interpretation: Claim 1 specifies that the response indicates the party "is now occupied with a task." This language may be construed to require an immediate or direct causal link between the notification and the task, potentially excluding scenarios where the user's task is only tangentially related to the notification's subject matter.

VI. Analyst’s Conclusion: Key Questions for the Case

This declaratory judgment action appears poised to focus less on a technical infringement analysis and more on fundamental questions of patent law and procedure. The key questions for the case will likely be:

  • A core issue will be one of patent eligibility: Will the court, consistent with its prior ruling in the related McKinley case, find that the claims of the Eclipse portfolio are directed to the abstract idea of sending and responding to notifications, and if so, do they contain a sufficient inventive concept to be patentable under 35 U.S.C. § 101?
  • A key procedural question will be one of jurisdictional scope: Did the defendant's threat letter, which identified only three patents as "representative examples" of infringement, create a sufficient case or controversy to grant the court jurisdiction to adjudicate the validity of all twenty-two patents in the portfolio as requested by the plaintiff?