DCT
3:21-cv-07521
CoStar Realty Information Inc v. Modern Font Applications LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: CoStar Realty Information, Inc. (Delaware)
- Defendant: Modern Font Applications LLC (Utah)
- Plaintiff’s Counsel: Latham & Watkins LLP
- Case Identification: 3:21-cv-07521, N.D. Cal., 05/18/2022
- Venue Allegations: Venue is alleged to be proper as Defendant is subject to personal jurisdiction in the district and a substantial part of the relevant acts occurred there; the Defendant has conceded venue for the purposes of this declaratory judgment action.
- Core Dispute: Plaintiff seeks a declaratory judgment that its commercial real estate website and mobile applications do not infringe Defendant's patents related to methods for displaying non-standard fonts on computers and hand-held devices.
- Technical Context: The technology concerns systems for delivering and installing custom font files to a user's device along with a network document, such as a web page, enabling the consistent rendering of unique typography not originally installed on the user's system.
- Key Procedural History: The action was initiated after Defendant sent a formal notice letter alleging infringement. The complaint notes that the validity of the patents-in-suit is concurrently being challenged in separate proceedings before the U.S. Patent and Trademark Office (PTO), including inter partes reviews (IPRs) filed by the Plaintiff and a re-examination of one patent, which could impact the scope or survival of the asserted claims.
Case Timeline
| Date | Event |
|---|---|
| 2001-07-16 | Earliest Priority Date for ’421, ’127, and ’093 Patents |
| 2013-08-27 | U.S. Patent No. 8,522,127 Issued |
| 2018-02-06 | U.S. Patent No. 9,886,421 Issued |
| 2018-02-13 | U.S. Patent No. 9,892,093 Issued |
| 2021-04-05 | Accused Android Application v6.6.3 Released |
| 2021-04-26 | Accused iOS Application v6.7 Released |
| 2021-05-01 | Version of Accused Loopnet.com Website Identified |
| 2021-06-18 | Defendant Sent Infringement "Threat Letter" to Plaintiff |
| 2021-09-27 | PTO Ordered Re-examination of '127 Patent |
| 2022-04-04 | Plaintiff Filed IPR Petitions Against All Patents-in-Suit |
| 2022-05-18 | Amended Complaint for Declaratory Judgment Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,886,421 - "Allowing Operating System Access to Non-Standard Fonts in a Network Document"
The Invention Explained
- Problem Addressed: The patent addresses the problem of network documents (e.g., web pages) appearing incorrectly on a user's device when the document uses fonts that are not installed on that device (’421 Patent, col. 1:56-2:6). Prior solutions like using images for text were inefficient, increased download times, and prevented users from copying or styling the text (’421 Patent, col. 2:7-20).
- The Patented Solution: The invention describes a system where a network document is provided with a separate "font package" containing the data for the non-standard fonts. An "exposure module" is also delivered to the user's device, which installs the font files into a temporary directory and updates the operating system's "system font table." This makes the custom font temporarily available to the entire operating system, allowing the browser to render the text as the author intended (’421 Patent, Abstract; col. 13:11-25).
- Technical Importance: This approach enabled web designers to use rich, custom typography while ensuring a consistent visual experience for users, regardless of the fonts pre-installed on their devices (’421 Patent, col. 2:50-54).
Key Claims at a Glance
- The complaint identifies independent claims 1, 6, and 11 as having been asserted against the Plaintiff (Compl. ¶12).
- Independent Claim 1 recites a non-transitory computer-readable medium comprising an electronic file package, a separate font package, and an "exposure module" that installs the font files in a "temporary fonts directory" on a hand-held device and causes the device's "system font table" to be updated.
- Independent Claim 6 recites a computer-implemented method for receiving a separate font package, installing its information into a "temporary fonts directory," enabling an operating system module to render characters with the font, and "updating a system font table."
- Independent Claim 11 recites a hand-held device with a processor that executes instructions to install an "exposure module," which in turn installs a font package into a "temporary fonts directory" and causes a "system font table" to be updated.
U.S. Patent No. 8,522,127 - "Allowing Operating System Access to Non-Standard Fonts in a Network Document"
The Invention Explained
- Problem Addressed: The patent addresses the same fundamental issue as the ’421 Patent: ensuring that electronic documents are displayed with their intended non-standard fonts, even if those fonts are not pre-loaded on the reader's computer (’127 Patent, col. 1:40-49).
- The Patented Solution: This patent describes a client-server architecture where a "first computer" (server) provides a network document and an "exposure module" to a "second browsing computer" (client) (’127 Patent, Claim 1). The exposure module installs a "font package" on the client, making the non-standard font available to the client's operating system. The specification also describes an "adaptation module" designed to provide compatibility for browsers that cannot communicate directly with the exposure module, such as by acting as a plug-in (’127 Patent, col. 12:20-34; Fig. 6).
- Technical Importance: The system provides a mechanism for the cross-browser, dynamic delivery and use of custom fonts in network documents (’127 Patent, col. 12:31-34).
Key Claims at a Glance
- The complaint identifies independent claims 1 and 26 as having been asserted against the Plaintiff (Compl. ¶12).
- Independent Claim 1 recites a tangible computer readable storage medium on a first computer, comprising instructions, a separate font package, and an "exposure module" that facilitates the installation of both itself and the font package on a second computer, allowing the second computer to render characters "using the exact same font."
- Independent Claim 26 recites a method in a computer network where a computer's browser opens a network document containing a reference to a separate font package, retrieves that package, installs it, and provides an "adaptation module for translation of function calls and returns" to enable communication with other applications.
U.S. Patent No. 9,892,093 - "Apparatus of a Hand-Held Device for Exposing Non-Standard Fonts in a Network Document to an Operating System"
- Technology Synopsis: This patent focuses specifically on the apparatus of a hand-held device and its method for handling non-standard fonts. The claims describe the device requesting a font file from a font server, using an "installation module" to copy the font file to a temporary directory, and updating the device's "system font table" to make the font available to the operating system for rendering (’093 Patent, Abstract; Claim 1).
- Asserted Claims: The complaint identifies independent claims 1, 10, and 18 as having been asserted against the Plaintiff (Compl. ¶12).
- Accused Features: Plaintiff's primary non-infringement argument for this patent is that its accused applications do not "update[] a system font table of the operating system to include information about the font file" (Compl. ¶64a).
III. The Accused Instrumentality
Product Identification
The complaint identifies the "CoStar Accused Applications" as the accused instrumentalities (Compl. ¶11). These include the LoopNet.com website and its associated mobile applications for iOS and Android devices (Compl. ¶11).
Functionality and Market Context
The LoopNet platform is described as the "leading digital marketplace for commercial real estate in the United States," providing information, analytics, and listings for properties (Compl. ¶4). The technical functionality at issue is how these applications and the website render text, specifically whether they do so in a manner that practices the methods claimed in the patents-in-suit. No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint seeks a declaratory judgment of non-infringement. The following table summarizes Plaintiff's allegations regarding why its products do not meet certain limitations of the asserted claims.
'421 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| "the font package separate from the computer executable instructions for identifying the plurality of display characters for display;" | The complaint alleges the Accused Applications do not practice this limitation. | ¶47a | col. 16:11-16 |
| "an exposure module for installation of the one or more external font files in a temporary fonts directory on the hand-held device;" | The complaint alleges the Accused Applications do not practice this limitation. | ¶47b | col. 16:17-20 |
| "wherein in response to the one or more external font files being installed, a system font table of the hand-held device is updated to reflect an availability of the external font files." | The complaint alleges the Accused Applications do not update a system font table as required by this limitation. | ¶47c | col. 16:21-25 |
'127 Patent Infringement Allegations
| Claim Element (from Independent Claim 26) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| "a reference to a font package separate from the network document, the font package comprising computer readable formatting information ... necessary for other applications controlled by the operating system of the computer to also render the display character..." | The complaint alleges the Accused Applications do not utilize a font package with information necessary for other applications on the operating system. | ¶57a | col. 20:1-8 |
| "the computer providing an adaptation module for translation of function calls and returns in order to provide communication capabilities with other applications running on the operating system." | The complaint alleges the Accused Applications do not provide the claimed "adaptation module." | ¶57b | col. 20:20-24 |
Identified Points of Contention
- Technical Questions: A primary factual dispute will be whether the CoStar Accused Applications actually perform the step of "updating a system font table" on the user's device (Compl. ¶¶ 47c, 64a). The case may turn on evidence of how the applications' code interacts with the underlying operating system's font management services. Another technical question is whether the Accused Applications utilize anything that functions as an "exposure module" or an "adaptation module" to install or expose fonts to the operating system (Compl. ¶¶ 47b, 57b).
- Scope Questions: The dispute raises the question of whether modern, integrated code within a mobile app that handles font display can be considered an "exposure module" or "adaptation module" as those terms are used in patents with priority dates from the early 2000s, which provide examples like ActiveX controls (’127 Patent, col. 11:11).
V. Key Claim Terms for Construction
The Term: "system font table"
- Context and Importance: This term appears in asserted claims of the ’421 and ’093 patents. Plaintiff's primary non-infringement argument is that its applications do not "update" this table (Compl. ¶¶ 47c, 49b, 64a). The definition is therefore central to the dispute. Practitioners may focus on this term because its construction will determine whether the claims require interaction with a specific OS-level component or could read on a more general, application-level font management process.
- Intrinsic Evidence for Interpretation:
- Evidence for a Narrower Interpretation: The specification explicitly depicts a "System Font Table 506" and a "System Registry 509" as distinct components of the operating system (’127 Patent, Fig. 6). This may support an argument that the term refers to a specific, formal data structure recognized and used by the OS itself.
- Evidence for a Broader Interpretation: The specification describes the function of updating the table is "to reflect the addition of the new permanent character objects... and corresponding font files" (’127 Patent, col. 13:9-12). This functional language could be argued to encompass any data structure that makes new fonts known to the rendering system, regardless of its specific location or format.
The Term: "exposure module"
- Context and Importance: This term is recited in asserted claims of the ’421 and ’127 patents, and Plaintiff alleges its applications do not use one (Compl. ¶¶ 47b, 56a). The patent owner, MFA, would need to show that some part of Plaintiff's code meets the definition of this term. The complaint also identifies this term as allegedly being indefinite under 35 U.S.C. § 112 (Compl. ¶74).
- Intrinsic Evidence for Interpretation:
- Evidence for a Narrower Interpretation: The specification provides specific examples of the module, such as an "ACTIVEX® control" (’127 Patent, col. 11:11) and describes its interaction with a browser via an "intermediary adaptation module 504" such as a "plug-in for NETSCAPE" (’127 Patent, col. 12:20-34). This may support an argument that the term is limited to the plug-in/add-on architecture prevalent at the time of the invention, not modern integrated application code.
- Evidence for a Broader Interpretation: The patent also provides a broad, functional definition, stating the module "comprises computer-executable instructions for automatically installing font package 304 on browsing computer 204" (’127 Patent, col. 11:7-10). This could support an argument that any software component that performs this installation function, regardless of its specific architecture, is an "exposure module."
VI. Other Allegations
- Indirect Infringement: The complaint includes a denial of the intent required for induced infringement, stating that Plaintiff "has never had any intent to cause the end users of its website or mobile application or anyone else to infringe" the patents-in-suit (Compl. ¶¶ 50, 58, 65).
- Willful Infringement: The complaint does not address willfulness directly. However, it establishes that Defendant sent Plaintiff a "threat letter" on June 18, 2021, which provided "formal notice that Loopnet Inc. ... are infringing" the patents (Compl. ¶9). This letter would likely serve as the basis for any potential counterclaim by Defendant alleging pre-suit knowledge to support a charge of willful infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of technical implementation: Do the CoStar applications, in fact, "update a system font table" on the user's device as required by the claims? The resolution will likely depend on forensic analysis of how the accused code interacts with the iOS and Android operating systems, and whether it uses a self-contained rendering engine or modifies system-level font registries.
- A second central question is one of definitional scope: Can the term "exposure module," which the patents exemplify with early-2000s technologies like ActiveX controls, be construed to cover font-handling code that is integrally built into a modern mobile application? The answer will define the boundary between the patented invention and subsequent technological evolution.
- Finally, a key procedural factor will be the impact of parallel PTO proceedings. With inter partes reviews and a re-examination already underway (Compl. ¶¶ 18-22), the district court case may be stayed. The outcome of the PTO's validity review could significantly narrow or invalidate the asserted claims, potentially resolving the dispute before the court reaches the merits of infringement.