DCT

2:14-cv-09588

Worldpantrycom Inc v. Eclipse IP LLC

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:14-cv-09588, C.D. Cal., 12/15/2014
  • Venue Allegations: Plaintiffs allege venue is proper in the Central District of California because the Defendant, Eclipse IP, has previously 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: Plaintiffs seek a declaratory judgment that twenty-two patents owned by Defendant, relating to automated notification systems, are invalid and therefore not infringed by Plaintiffs' software.
  • Technical Context: The technology at issue involves systems for tracking the location of mobile entities, such as delivery vehicles or individuals, and providing automated notifications and interactive responses regarding their status, which is a foundational technology for modern logistics and on-demand services.
  • Key Procedural History: The complaint notes that in a prior case, a judge in the same district invalidated all asserted claims of three patents from the same portfolio ('716, '681, and '110 patents) for being directed to unpatentable subject matter under 35 U.S.C. § 101. This action was precipitated by a November 13, 2014 letter from Defendant's counsel to Plaintiff Balance Bar, which accused Balance Bar of infringing the patent portfolio and threatened litigation.

Case Timeline

Date Event
2003-05-28 Earliest Patent Priority Date ('716 Patent Family)
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. 7,479,900 Issues
2009-01-20 U.S. Patent No. 7,479,901 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 C.D. Cal. court invalidates claims from '716, '681, '110 Patents
2014-11-13 Defendant's counsel sends threat letter to Plaintiff Balance Bar
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," issued October 10, 2006

The Invention Explained

  • Problem Addressed: The patent background describes the general inefficiency and uncertainty associated with coordinating activities with the movement of a "mobile thing" (MT), such as knowing the precise arrival time of a commercial delivery or a school bus to avoid extended waiting periods (ʼ716 Patent, col. 1:44-63).
  • The Patented Solution: The invention is a computer-based system that sends a notification to a party's personal communications device, receives a response, and then uses that response to "modify[] the manner in which future notification communications are to be sent" (ʼ716 Patent, Abstract; col. 4:60-65). This creates an interactive loop where the system's notification behavior can be altered based on user feedback.
  • Technical Importance: The technology represents a shift from static, one-way alerts to interactive notification systems that can adapt to user preferences and real-time feedback, a key concept for improving logistics and customer service automation.

Key Claims at a Glance

  • The complaint seeks a declaratory judgment of invalidity of all claims (Compl. ¶50). Claim 1 is the first independent method claim.
  • Claim 1 of the '716 Patent includes the following essential elements:
    • A method in 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, 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 that indicate that the party is no longer occupied with the task and can perform another task associated with another notification communication.

U.S. Patent No. 7,479,899 - "Notification Systems and Methods Enabling a Response to Cause Connection Between a Notified PCD and a Delivery or Pickup Representative," issued January 20, 2009

The Invention Explained

  • Problem Addressed: The patent addresses the need for better preparation and scheduling for pickups or deliveries by providing more precise arrival or departure information for a mobile thing, thereby improving customer service ('899 Patent, col. 1:25-33).
  • The Patented Solution: The invention describes an automated system that monitors the travel of a mobile thing, sends a notification to a party's personal communication device (PCD), and, based upon a response from that party, enables "communicative coupling" between the notified party's PCD and a second party (e.g., a delivery representative) who has access to the particulars of the delivery ('899 Patent, Abstract; col. 3:25-42). This allows for direct communication to be established between the customer and the service provider in response to a notification.
  • Technical Importance: This technology facilitates direct, on-demand communication between a service recipient and a service provider, enabling real-time coordination or problem-solving that goes beyond simple status notifications.

Key Claims at a Glance

  • The complaint seeks a declaratory judgment of invalidity of all claims (Compl. ¶50). Claim 1 is the first independent method claim.
  • Claim 1 of the '899 Patent includes the following essential elements:
    • An automated method for an automated notification system, comprising the steps of:
    • monitoring travel data in connection with a mobile thing that is destined to pickup or deliver an item at a stop location;
    • causing initiation of a notification communication to a personal communications device based upon the travel data; and
    • during the notification communication, enabling a first party associated with the personal communications device to select whether or not to communicate with a second party having access to particulars of the pickup or delivery, based upon a selection by the first party, causing communicative coupling between the personal communications device associated with the second party and the second party having access to particulars of the pickup or delivery.

Multi-Patent Capsule: Other Patents-in-Suit

The complaint identifies twenty additional patents as part of the "Eclipse Patent Portfolio" (Compl. ¶¶14-34, 40). All are asserted to be related and claim priority to the '716 Patent (Compl. ¶36). The core technology across the portfolio relates to systems and methods for automated notifications regarding mobile things. The following patents add specific functionalities or address particular use cases within that broader framework:

  • Patent Identification: U.S. Patent No. 7,064,681, "Response Systems and Methods for Notification Systems," issued June 20, 2006.
  • Technology Synopsis: This patent describes a foundational response system where a notification is sent to a device, and a response from that device indicates receipt. The system can then be modified based on that response.
  • Asserted Claims: All claims are at issue (Compl. ¶50).
  • Accused Features: The "computer-based automated notification systems" provided by WorldPantry (Compl. ¶41).

III. The Accused Instrumentality

Product Identification

The accused instrumentality is "software" that Plaintiff WorldPantry.com, Inc. provides to Plaintiff Balance Bar, Inc. and other third parties (Compl. ¶¶44-45). The defendant's threat letter describes the accused products as "computer-based automated notification systems" (Compl. ¶41).

Functionality and Market Context

The complaint does not provide sufficient detail for analysis of the specific functionality of the accused software. The action is for a declaratory judgment of invalidity, and the complaint focuses on the patent portfolio's alleged weaknesses rather than the operation of the plaintiffs' software system. No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint is a declaratory judgment action and therefore does not contain infringement allegations or claim charts from the plaintiff. It notes that the defendant, Eclipse IP, has accused the plaintiffs' "computer-based automated notification systems" of infringing claims of the '716 and '899 patents, among others in the portfolio (Compl. ¶¶41-42). However, the complaint does not provide sufficient detail regarding the defendant's specific infringement theories to enable a claim-chart analysis.

V. Key Claim Terms for Construction

"modifying the manner in which future notification communications are to be sent, based upon the response" (from '716 Patent, Claim 1 and related claims)

  • Context and Importance: This term is central to the adaptive nature of the claimed invention. Its construction will determine what level of system change is required to meet the claim limitation. Practitioners may focus on this term because the dispute could turn on whether a temporary, one-time change in notification handling constitutes "modifying the manner," or if it requires a more permanent update to a user's profile or system rules.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes a range of possible modifications, including causing the system to "wait a prescribed distance or come within a predetermined proximity of a location before sending another communication" ('716 Patent, col. 49:50-54). This language may support an interpretation that includes temporary or context-dependent changes.
    • Evidence for a Narrower Interpretation: The specification also describes the system modifying "contact records" in a database based on the response, which are then used to "initiate one or more other future notification communications" ('716 Patent, col. 48:15-22). This could support an interpretation requiring a more durable change to stored data that governs subsequent, distinct notification events.

"communicative coupling" (from '899 Patent, Claim 1)

  • Context and Importance: This term defines the nature of the connection established between the notified party and the service representative. The scope of this term is critical for determining what types of interaction satisfy the claim. The dispute may center on whether this requires a direct, real-time connection like a phone call, or if it can also cover indirect or asynchronous communications.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification mentions enabling communication "via voice by way of a telephone or via text by way of a computer network link," suggesting that different modes of communication are contemplated ('899 Patent, col. 42:9-12). This could support a broader definition that includes text-based or other non-voice connections.
    • Evidence for a Narrower Interpretation: An embodiment describes the system connecting the notified party to a "representative that knows the particulars of or that can access the particulars in connection with a stop location" at a "call center" ('899 Patent, col. 43:39-44). This may suggest a more specific type of managed, real-time voice connection rather than a simple message forward.

VI. Other Allegations

Indirect Infringement

The complaint does not contain allegations of indirect infringement. However, the facts alleged—that WorldPantry provides the accused software to Balance Bar and other third parties (Compl. ¶¶44-45)—could form the basis of a counterclaim by Eclipse for induced infringement against WorldPantry.

Willful Infringement

The complaint does not allege willfulness. The facts alleged by Plaintiffs, specifically the receipt of the November 13, 2014 threat letter from Eclipse's counsel identifying the '716 and '899 patents (Compl. ¶¶38, 42), establish pre-suit knowledge. This could support a counterclaim by Eclipse for willful infringement for any infringing activity occurring after that date.

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

This declaratory judgment action appears poised to hinge on two central questions, with the first being paramount given the complaint's focus.

  • A primary issue will be one of patent eligibility: Are the claims of the Eclipse Patent Portfolio, which are directed to methods of managing and communicating logistical information, patent-ineligible abstract ideas under 35 U.S.C. § 101? This question is underscored by the complaint's allegation that claims from the parent '716 patent have already been invalidated on this basis by the same court.
  • Should the patents survive the eligibility challenge, a key factual question will be one of infringement: Does the accused software provided by WorldPantry actually perform the specific steps of the asserted claims? This will require a detailed technical comparison between the software's functions and claim elements such as "modifying the manner" of future notifications or causing "communicative coupling" between users and representatives.