DCT

2:14-cv-09733

Farfetch Uk Ltd v. Eclipse IP LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:14-cv-09733, C.D. Cal., 12/19/2014
  • 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: Plaintiffs seek a declaratory judgment that twenty-two patents owned by Defendant are invalid and not infringed, following receipt of a demand letter from Defendant accusing Plaintiffs' online ordering system of infringement.
  • Technical Context: The patents relate to systems and methods for data communication and messaging that notify a party of the travel status and location of one or more mobile entities.
  • Key Procedural History: The complaint notes that on September 4, 2014, in a separate case (Eclipse IP LLC v. McKinley Equipment Corp), the C.D. Cal. invalidated claims from three of the patents-in-suit—U.S. Patent Nos. 7,064,681, 7,113,110, and 7,119,716—for claiming unpatentable subject matter under 35 U.S.C. § 101. An appeal of that decision was voluntarily dismissed by Eclipse IP.

Case Timeline

Date Event
2003-05-28 Earliest Patent Priority Date for the Asserted Patent Portfolio
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 Nos. 7,479,899; 7,479,900; 7,479,901 Issue
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. invalidates claims of ’681, ’110, ’716 Patents
2014-10-07 Eclipse IP sends demand letter to Farfetch
2014-12-19 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's background describes the difficulty in knowing the precise arrival or departure time of a "mobile thing" such as a commercial bus, school bus, or delivery vehicle, which leads to inefficiencies like extended waiting times. (Compl. ¶13; ’716 Patent, col. 1:47-67, col. 2:1-17).
  • The Patented Solution: The invention proposes a computer-based system that sends an initial notification to a person's device, receives a response, and then modifies how future notifications are sent based on that response. (’716 Patent, col. 4:58-64). For example, as shown in the flowchart of FIG. 8, after receiving a response (112), the system modifies the manner of future communications (113).
  • Technical Importance: This technology aimed to create more interactive and intelligent notification systems that adapt to user feedback, moving beyond simple one-way alerts. (’716 Patent, col. 4:58-64).

Key Claims at a Glance

  • The complaint notes that claims 1, 2, 4, 6, 7, 18, 19, 20, 41, 43, 44, 45, and 46 of the ’716 Patent were previously found invalid under 35 U.S.C. § 101. (Compl. ¶13). The lead independent claims appear to be 1 and 41 (method claims), and 47, 67, 75, and 87 (system claims).
  • Independent Claim 1 includes the following essential elements:
    • Initiating a first notification communication to a personal communications device associated with a party.
    • Receiving a response indicating the party has received the notification and is now occupied with a task associated with it.
    • Refraining from sending further notifications until one or more events indicate the party is no longer occupied with the task.

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

  • Issued: June 20, 2006

The Invention Explained

  • Problem Addressed: Similar to the ’716 Patent, this patent addresses the need for better preparation and scheduling with respect to the arrival or departure of mobile things, such as in commercial bus services or package deliveries. (’681 Patent, col. 1:25-50).
  • The Patented Solution: The invention is a computer-based method that sends a notification about a task to a user's device, receives a response confirming receipt, and then refrains from sending further notifications to other devices based on that response. (’681 Patent, col. 3:52-col. 4:8; FIG. 7A). This suggests a system designed to avoid redundant notifications to multiple devices or parties once one has acknowledged the alert.
  • Technical Importance: This approach aimed to improve communication efficiency in notification systems by preventing duplicative alerts after a primary recipient has confirmed receipt. (’681 Patent, col. 4:1-8).

Key Claims at a Glance

  • The complaint states that claims 1, 3, 4, and 6 of the ’681 Patent were previously found invalid under 35 U.S.C. § 101. (Compl. ¶14). The lead independent claim is claim 1.
  • Independent Claim 1 includes the following essential elements:
    • Causing initiation of a notification communication related to a task to a personal communications device.
    • During the notification, receiving a response from the device indicating receipt of the notice.
    • Refraining from sending any further notification communications to one or more additional personal communications devices after receiving the response.

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. (Compl. ¶17).
  • Technology Synopsis: This patent describes a system for monitoring a mobile thing and initiating a notification. During the notification, the system enables the notified party to select whether or not to communicate with a representative associated with the delivery or pickup, thereby facilitating a direct connection. (’899 Patent, Abstract; FIG. 7B).
  • Asserted Claims: The complaint does not specify which claims of the ’899 Patent were asserted in the demand letter, but notes the patent was identified as a "representative example." (Compl. ¶43).
  • Accused Features: The "electronic messaging features of [Farfetch's] online ordering system" are accused of infringement. (Compl. ¶42).

U.S. Patent No. 7,319,414 - "Secure Notification Messaging Systems and Methods Using Authentication Indicia"

  • Issued: January 15, 2008. (Compl. ¶16).
  • Technology Synopsis: This patent focuses on providing authentication information to a personal communications device to indicate that a notification is from an authorized source. The authentication can take various forms, such as a symbol, text, sound, or image. (’414 Patent, Abstract; FIG. 16).
  • Asserted Claims: The complaint does not specify asserted claims. (Compl. ¶16).
  • Accused Features: The "electronic messaging features of [Farfetch's] online ordering system" are accused of infringement. (Compl. ¶42).

U.S. Patent No. 7,479,900 - "Notification Systems and Methods that Consider Traffic Flow Predicament Data"

  • Issued: January 20, 2009. (Compl. ¶18).
  • Technology Synopsis: This patent describes scheduling a notification and then analyzing traffic flow data associated with the mobile thing's travel path. Based on this traffic data, the system determines whether to reschedule the notification communication. (’900 Patent, Abstract; FIG. 19A).
  • Asserted Claims: The complaint does not specify asserted claims. (Compl. ¶18).
  • Accused Features: The "electronic messaging features of [Farfetch's] online ordering system" are accused of infringement. (Compl. ¶42).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are the "electronic messaging features of [Farfetch's] online ordering system." (Compl. ¶42).

Functionality and Market Context

  • The complaint does not provide any specific details regarding the technical functionality of Farfetch's online ordering or messaging systems. (Compl. ¶¶42-43). The allegations are based on a demand letter from Eclipse IP, which broadly accuses the system without identifying specific features or operations. (Compl. ¶42).
  • The complaint does not provide sufficient detail for analysis of the accused instrumentality's functionality or market positioning.

IV. Analysis of Infringement Allegations

The complaint is a declaratory judgment action and therefore does not contain affirmative infringement allegations or claim charts. It only references accusations made by Eclipse IP in a pre-suit demand letter, which accused Farfetch’s system of infringement without providing a detailed theory or mapping claim elements to specific product features. (Compl. ¶¶42-43). Consequently, a claim chart summary cannot be constructed from the provided documents.

  • Identified Points of Contention:
    • Scope Questions: As this is a DJ action for invalidity, the primary point of contention is whether the claims of the patents-in-suit are directed to patent-eligible subject matter under 35 U.S.C. § 101. The complaint specifically alleges the patents claim "unpatentable abstract concepts." (Compl. ¶47).
    • Technical Questions: Should the patents be found valid, a central question will be whether Farfetch's e-commerce platform performs the specific interactive and responsive steps required by the claims. For example, what evidence does Eclipse possess that Farfetch’s system "refrain[s] from sending any further notification communications" to other devices based on a user's response, as required by Claim 1 of the ’681 Patent?

No probative visual evidence provided in complaint.

V. Key Claim Terms for Construction

  • The Term: "a task associated with the notification communication" (’716 Patent, Claim 1).

  • Context and Importance: Practitioners may focus on this term because its scope will determine whether the claims apply broadly to any notification (such as an e-commerce order update) or are limited to coordinating physical activities. The patent's examples heavily feature physical delivery, pickup, or arrival of vehicles and people.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification states the notification service can be implemented in connection with a "nonlimiting list of examples," including maid service, pest control, and repair installation, suggesting a "task" is not limited to just transportation. (’716 Patent, col. 11:27-35).
    • Evidence for a Narrower Interpretation: The background section and numerous embodiments consistently frame the problem and solution in the context of the physical movement of a "mobile thing" like a "bus, automobile, truck, train, ship, plane, aircraft, etc." (’716 Patent, col. 1:53-56). This context may support a narrower construction limited to coordinating physical events.

  • The Term: "refraining from sending any further notification communications to...one or more additional personal communications devices" (’681 Patent, Claim 1).

  • Context and Importance: This term appears central to the novelty of the claimed method, as it describes a specific feedback loop. The dispute may turn on whether a standard notification system (which may send concurrent but independent alerts to email and SMS) performs this active "refraining" step in response to a user action on one device.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The patent states that "other systems, methods, features, and advantages" will become apparent, potentially allowing for a broad reading of the system's logic. (’681 Patent, col. 4:9-16).
    • Evidence for a Narrower Interpretation: The language "once receiving the response" suggests a specific causal relationship where the receipt of a response on one device actively triggers the cessation of notifications intended for other devices. This suggests a more complex, state-aware system than one that simply sends out a batch of uncoordinated alerts. (’681 Patent, col. 92:1-5).

VI. Other Allegations

  • Indirect Infringement: The complaint does not contain allegations of indirect infringement.
  • Willful Infringement: The complaint does not contain allegations of willful infringement. However, the complaint documents Eclipse IP's October 7, 2014 demand letter, which provides Farfetch with pre-suit knowledge of the patent portfolio and the infringement allegations, a potential predicate for a future willfulness claim by Eclipse. (Compl. ¶38).

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

  • A core issue will be one of patent eligibility: can the claims of the Eclipse patent portfolio, which recite methods for managing notifications based on events and user feedback, survive a challenge under 35 U.S.C. § 101 as being directed to an unpatentable abstract idea, particularly in light of a prior ruling in the same district invalidating claims from the same patent family on these grounds?
  • A key evidentiary question will be one of functional specificity: assuming the patents are valid, does Farfetch’s accused online ordering and messaging system actually perform the specific, interactive steps recited in the claims, such as modifying or refraining from future communications based on a user's response, or is there a fundamental mismatch in technical operation between the accused system and the patented methods?
  • A final question will be one of case posture: given that this is a declaratory judgment action filed by the accused infringer, the initial burden will be on Eclipse IP to articulate a plausible infringement theory with sufficient specificity to survive a motion to dismiss, shifting the focus from Farfetch's conduct to the sufficiency of Eclipse's infringement contentions.