DCT
4:18-cv-05929
Darren Eastman v. Apple
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Darren Eastman (California)
- Defendant: Apple, Inc. (California)
- Plaintiff’s Counsel: Pro Se
- Case Identification: 4:18-cv-05929, N.D. Cal., 04/29/2020
- Venue Allegations: Venue is based on allegations that Apple regularly conducts business and maintains an established place of business within the Northern District of California.
- Core Dispute: Plaintiff alleges that he is the true inventor or co-inventor of technologies commercialized by Apple as "Find My iPhone" and "Passbook" and seeks to be added as a named inventor on sixteen utility patents pursuant to 35 U.S.C. § 256.
- Technical Context: The technologies involve systems for remotely locating and managing mobile devices via a cloud service, and methods for redeeming electronic tickets on a mobile device.
- Key Procedural History: The action was originally filed in state court and subsequently removed to federal court by Apple. The operative complaint is the Fourth Amended Complaint. The central legal claim is for correction of inventorship ("nonjoinder"), with the Plaintiff alleging that Apple intentionally filed patent applications covering his inventions while omitting him as an inventor. Plaintiff supports his claims with evidence of his alleged conception, including internal Apple communications and his pre-employment Intellectual Property Agreement (IPA).
Case Timeline
| Date | Event |
|---|---|
| 2003-01-07 | Plaintiff’s ticketing system notes written |
| 2005-11-16 | Plaintiff's Intellectual Property Agreement with Apple |
| 2008-02-05 | Screenshot of cloud server performance taken by Plaintiff |
| 2008-02-15 | Plaintiff diagnoses celebrity issue using cloud server |
| 2008-08-23 | Plaintiff lost original iPhone in Milwaukee, allegedly sparking invention |
| 2008-08-28 | Plaintiff's lab notebook entries for "Find My iPhone" concept |
| 2008-08-30 | Plaintiff's lab notebook entries for "Find My iPhone" concept |
| 2008-09-30 | Priority Date for U.S. Patent 9,037,513 |
| 2008-10-01 | Plaintiff files "Find my iPhone" invention in internal Radar ticket |
| 2008-10-07 | Plaintiff emails Apple employee Jeff Lemas discussing claims |
| 2009-01-27 | Plaintiff emails Apple VP Eddy Cue about the feature |
| 2009-02-18 | Plaintiff emails Apple VP Scott Forstall about the feature |
| 2009-03-08 | Plaintiff emails Scott Forstall asking for patent protection |
| 2009-05-01 | Priority Date for U.S. Patents 8,666,367; 8,660,530; 8,670,748; 9,979,776 |
| 2010-06-15 | Apple releases "Find my iPhone" feature |
| 2012-06-04 | Priority Date for U.S. Patents 8,881,310 and 9,104,896 |
| 2013-01-11 | Priority Date for U.S. Patents 9,763,098 and 10,257,709 |
| 2013-06-06 | Priority Date for U.S. Patents 9,706,032 and 10,447,839 |
| 2013-06-09 | Priority Date for U.S. Patents 9,125,014 and 10,104,495 |
| 2014-02-25 | U.S. Patent 8660530 Issues |
| 2014-03-04 | U.S. Patent 8666367 Issues |
| 2014-03-11 | U.S. Patent 8670748 Issues |
| 2014-05-30 | Priority Date for U.S. Patent 9,277,530 |
| 2014-11-04 | U.S. Patent 8881310 Issues |
| 2015-05-19 | U.S. Patent 9037513 Issues |
| 2015-08-11 | U.S. Patent 9104896 Issues |
| 2015-09-01 | U.S. Patent 9125014 Issues |
| 2016-03-01 | U.S. Patent 9277530 Issues |
| 2016-11-02 | Plaintiff's counsel sends demand letter to Apple |
| 2017-07-11 | U.S. Patent 9706032 Issues |
| 2017-09-12 | U.S. Patent 9763098 Issues |
| 2018-05-22 | U.S. Patent 9979776 Issues |
| 2018-08-13 | Original action filed |
| 2018-10-16 | U.S. Patent 10104495 Issues |
| 2019-04-09 | U.S. Patent 10257709 Issues |
| 2019-10-15 | U.S. Patent 10447839 Issues |
| 2020-04-29 | Fourth Amended Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent 8,666,367 - Remotely locating and commanding a mobile device
Issued March 4, 2014
The Invention Explained
- Problem Addressed: The patent addresses the need for a system to remotely manage a mobile device, such as for displaying a message, wiping data, or locating the device (U.S. Patent 8,666,367, col. 1:33-40). The specification describes scenarios where a device owner may wish to remotely interact with their device, implying a need for a reliable communication channel to do so.
- The Patented Solution: The invention describes a client-server architecture where a mobile device communicates with a remote "notification service." The service hosts "command collection topics," and each mobile device subscribes to a unique topic. The device periodically polls its topic to check for new commands sent by the device owner (e.g., from a web interface). Upon finding a command, the device retrieves it, determines if it can be executed, performs the action, and publishes a result back to the server (U.S. Patent 8,666,367, Abstract; col. 3:6-33).
- Technical Importance: This publish-subscribe model provides an asynchronous framework for managing mobile devices, which may have intermittent network connectivity, and was a foundational architecture for "find my device" services.
Key Claims at a Glance
- The complaint asserts independent claim 1 and numerous dependent claims (Compl. ¶109).
- The essential elements of independent claim 1 include:
- A mobile device accessing a notification service on a separate server.
- The device accessing and polling its subscribed "command collection topic" to determine if new remote command messages have been received.
- Retrieving a new command message from the topic.
- The device determining whether the identified command can be executed.
- Publishing a result message associated with the command to the notification service.
- Selectively executing the command based on the determination.
- The complaint reserves the right to assert additional claims (Compl. ¶109).
U.S. Patent 8,881,310 - System and method for remotely initiating lost mode on a computing device
Issued November 4, 2014
The Invention Explained
- Problem Addressed: The patent background describes the longstanding problem of lost or stolen computing devices containing sensitive data. It notes that prior solutions are inadequate because simply locking a device prevents an honest finder from identifying and contacting the owner, while leaving it unlocked exposes sensitive data (U.S. Patent 8,881,310, col. 1:29-51).
- The Patented Solution: The patent discloses a "lost mode" that can be initiated remotely by an authorized user. This mode locks the device and suppresses select functionality to protect data, but also displays owner-provided contact information on the screen to facilitate its return. Crucially, the system also transmits the device's location data and continues to transmit updated location data upon determining the device has "traveled beyond a geographic distance," enabling tracking of a device in motion (’310 Patent, Abstract; col. 4:5-23). The complaint alleges this concept originated from the plaintiff's experience losing his own iPhone (Compl. ¶33).
- Technical Importance: The invention provides a dual-purpose solution that simultaneously addresses both the security of a lost device (locking, function suppression) and the practical problem of its recovery (displaying contact info, dynamic location tracking).
Key Claims at a Glance
- The complaint asserts independent claim 1 and numerous dependent claims (Compl. ¶148).
- The essential elements of independent claim 1 include:
- A lost computing device receiving an authorized command to initiate lost mode, where the command includes contact information.
- The device initiating lost mode, which comprises: locking the device, suppressing select functionality, and displaying the contact information.
- Transmitting first location data identifying an initial geographic location and time.
- Upon determining the device has "traveled beyond a geographic distance," transmitting second location data with an updated location and time.
- Upon an amount of time elapsing, transmitting third location data.
- The complaint reserves the right to assert additional claims (Compl. ¶148).
Multi-Patent Capsule: “Find My iPhone” Related Patents
- U.S. Patent 9,104,896: Remotely initiating lost mode on a computing device, issued Aug. 11, 2015. This patent is related to the '310 patent and further details the system for authenticating a requesting user and managing the device's battery life to prolong its ability to be located. The complaint asserts claims 1-8, 11, 12, 16, and 17, mapping them to plaintiff's alleged conception of authentication, power management, and location tracking features (Compl. ¶¶ 204-260).
- U.S. Patent 9,706,032: Device locator disable authentication, issued Jul. 11, 2017. This patent focuses on securely disabling the "device locator" mode, requiring user authentication against a server to prevent a thief from turning off the tracking feature after erasing a device. The complaint asserts claims 1, 4, 6, 7, 8, and 10, alleging these security features correspond to the "device privilege" mode and use of unique hardware identifiers described in plaintiff's notes (Compl. ¶¶ 261-282; Ex. 8).
- U.S. Patent 9,763,098: Bypassing security authentication scheme on a lost device to return the device to the owner, issued Sep. 12, 2017. This patent describes displaying a selectable user interface item on a locked device that allows a finder to communicate with a privileged contact without bypassing the device's main security. The complaint asserts claims 1, 2, 4, 9, 10, 13, and 14, alleging this corresponds to the "Example Lock Screen When Lost" mockup in plaintiff's notes, which provides a button to call the owner (Compl. ¶¶ 283-304; Ex. 12).
- Additional "Find My iPhone" related patents with similar allegations of nonjoinder include U.S. Patents 9,979,776; 8,660,530; 8,670,748; 9,277,530; 10,257,709; 10,447,839; and U.S. Patent Application 2018/0337974 (Compl. ¶¶ 305-330, 331-373, 477-497, 498-522, 543-564, 565-610, 611-663).
Multi-Patent Capsule: “Passbook” Related Patents
- U.S. Patent 9,125,014: Location-Based Ticket Books, issued Sep. 1, 2015. This patent describes a method for a mobile device to receive a virtual ticket and present a representation of it (e.g., a barcode) for redemption when the device is within communication range of a signal source at the venue. The complaint asserts numerous claims, alleging they map to plaintiff's 2003 notes and 2005 IPA describing a system for redeeming virtual tickets on a mobile device (Compl. ¶¶ 374-425; Ex. 17).
- U.S. Patent 10,104,495: Location-Based Ticket Books, issued Oct. 16, 2018. A related patent that further details the use of a device's home button or touch-sensitive surface to present the virtual ticket message. The complaint asserts numerous claims, linking them to plaintiff's early concepts of user interaction with a PDA to display a ticket barcode (Compl. ¶¶ 426-452; Ex. 19).
- U.S. Patent 9,037,513: System and method for providing electronic event tickets, issued May 19, 2015. This patent is also related to the "Passbook" technology, focusing on the system aspects and various ticket types (event ticket, store card, coupon). The complaint asserts multiple claims, again tying them to the functionality conceived in the 2003-2005 timeframe (Compl. ¶¶ 453-476).
III. The Accused Instrumentality
- Product Identification: The complaint identifies two core accused instrumentalities: (1) Apple's "Find My iPhone" feature and its derivatives ("Find My Mac," etc.) and (2) Apple's "Passbook" application (now part of the "Wallet" app) (Compl. ¶¶ 9, 10).
- Functionality and Market Context:
- The complaint alleges that the "Find My iPhone" feature is an "innovative feature" that allows users to remotely locate, lock, message, and wipe their lost or stolen Apple devices through a cloud-based service (Compl. ¶¶ 9, 35, 42). The complaint provides visual mockups from plaintiff's notebooks, such as a flowchart in Exhibit 8 detailing the process from when a user declares a device lost to charting its path on a map (Compl. p. 188). Another visual, Exhibit 9, depicts a user interface for logging into a cloud service, selecting a device from a list, and viewing its current and past locations on a map (Compl. p. 201).
- The "Passbook" functionality is described as a "novel process for redemption of virtual tickets using a mobile device," allowing users to store and present items like event tickets and boarding passes digitally (Compl. ¶¶ 10, 85). The complaint alleges this functionality is now used by "many airlines" for boarding passes (Compl. ¶391).
- The complaint alleges these features are "adored and used by millions" and have significant market importance (Compl. ¶80).
IV. Analysis of Infringement Allegations
The central claim of the complaint is nonjoinder under 35 U.S.C. § 256, which requires the plaintiff to prove conception of the claimed invention. The following charts summarize the plaintiff's allegations mapping his alleged conception evidence to the elements of the asserted patent claims.
8,666,367 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A computer-implemented method performed by a mobile device...accessing, by the mobile device, a notification service on a server separate from the mobile device... | Plaintiff alleges his conception of a "cloud server" that manages device communications is the claimed "notification service" (Compl. Ex. 8, 10). | ¶111 | col. 3:6-9 |
| accessing, by the mobile device, a command collection topic hosted on the notification service and subscribed to by the mobile device; | The complaint alleges this corresponds to the server architecture in his notes, which hosts a plurality of services and command types for subscribed devices. | ¶111 | col. 3:9-12 |
| polling, by the mobile device, the command collection topic...to determine that one or more new remote command messages have been received... | This functionality is described as inherent to the overall system conceived by Plaintiff, where the lost device must check the server for new instructions. | ¶111 | col. 3:12-16 |
| retrieving, by the mobile device...at least one of the one or more new remote command messages...wherein the...messages identify commands to be executed... | Plaintiff's Exhibit 9 shows a UI with buttons for several remote commands ("Find Devices," play sound, wipe, display message) that would be sent from the server to the device. | ¶123 | col. 3:16-24 |
| publishing, by the mobile device, a result message associated with the command to a result topic hosted on the notification service; | This is allegedly shown in Plaintiff's notes where the device sends its "location data... to Apple" (the server), which is then published as a map overlay (Compl. Ex. 8, 9). | ¶117 | col. 3:27-29 |
| and selectively executing, by the mobile device, the command based on a result of the determining. | The execution of a "locate command" is alleged, with the result being the generation of geographic coordinates that are sent back to the server. | ¶117 | col. 3:30-33 |
Identified Points of Contention
- Scope Questions: A central question may be whether the architecture described in Plaintiff's 2008 notes (Compl. Ex. 8, 10, 12), including a general "cloud server" and "user record mapping," contains the specific structure of a "notification service hosting a plurality of command collection topics" as required by claim 1.
- Technical Questions: The claim requires the mobile device to "poll" the command topic. A point of contention may arise regarding whether the accused "Find My" system, which relies on Apple's Push Notification Service (APNS), actually uses a "polling" mechanism initiated by the device, versus a "push" mechanism initiated by the server.
8,881,310 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| receiving, by a lost computing device, an authorized command to initiate lost mode...wherein the authorized command includes contact information... | Plaintiff alleges this corresponds to a user logging into a cloud server with a privileged account and sending the instruction to activate "lost 'discovery' mode" (Compl. Ex. 8). Exhibit 12 includes a field for a contact number. | ¶¶152, 156 | col. 4:1-5 |
| initiating...lost mode...comprises: locking the lost computing device; suppressing select functionality...displaying the contact information... | This is alleged to be the core of Plaintiff's invention, shown in the Exhibit 12 mockup of a locked screen that displays a "lost" message and a phone number to call. | ¶¶150, 156 | col. 4:7-10 |
| transmitting first location data identifying an initial geographic location of the lost computing device... | Plaintiff's flowchart in Exhibit 8 shows a step for "location data sent to Apple" after lost mode is activated. | ¶158 | col. 4:10-14 |
| upon a determination that the lost computing device has traveled beyond a geographic distance from the initial geographic location, transmitting second location data... | This is allegedly demonstrated in Plaintiff's Exhibit 9, which depicts an iPhone that has moved through three distinct geographic locations (Cupertino, Saratoga, Los Gatos) since being declared lost. | ¶¶159, 160 | col. 4:14-18 |
Identified Points of Contention
- Scope Questions: The claim requires transmitting location data upon a "determination" that the device has "traveled beyond a geographic distance." A question may be whether this requires a specific, event-driven geofencing trigger, as opposed to simply periodic location reporting that reveals movement over time.
- Technical Questions: What evidence does the complaint provide that the accused feature's transmission of "third location data" is based on an "amount of time elapsing," as distinct from being based on further travel? The complaint appears to group time- and distance-based tracking together as part of the same general concept of charting waypoints (Compl. ¶159).
V. Key Claim Terms for Construction
For the '367 Patent
- The Term: "command collection topic"
- Context and Importance: This term defines a key architectural component of the claimed system. Its construction is critical because Apple's actual "Find My" system uses the Apple Push Notification Service (APNS), and the court will need to determine if APNS functions as a "command collection topic." Practitioners may focus on whether this term implies a "pull" architecture (polling) versus the "push" architecture of APNS.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the topic as a mechanism for a server to "publish a remote command" and for a device to "access the subscribed topic" to retrieve it, which could be argued to cover any server-side message queue system for a specific device (U.S. Patent 8,666,367, col. 3:6-18).
- Evidence for a Narrower Interpretation: Claim 9, which depends from claim 1, further specifies that the topic "includes a plurality of command nodes, where each command node corresponds to a distinct remote command type." Apple may argue its system does not use this specific "topic-and-node" structure.
For the '310 Patent
- The Term: "suppressing select functionality"
- Context and Importance: The scope of this term is central to defining what "lost mode" entails. The dispute will likely focus on what specific functions must be suppressed to meet this limitation and whether the accused "Find My" feature suppresses the same functions.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent provides a non-exhaustive list of functions that could be suppressed, such as "notifications and alerts," suggesting the term is not limited to a specific set ('310 Patent, Abstract; col. 2:37-39).
- Evidence for a Narrower Interpretation: The context of the invention is to balance security with the ability of a finder to return the device. An argument could be made that "suppressing select functionality" must be interpreted in light of this goal, meaning it requires suppressing access to personal data while leaving essential communication abilities (like calling the owner) intact, as described in the specification ('310 Patent, col. 1:45-51).
VI. Other Allegations
- Indirect Infringement: This section is not applicable. The complaint asserts claims for correction of inventorship under 35 U.S.C. § 256, not claims for patent infringement.
- Willful Infringement: The complaint alleges that Apple's omission of the plaintiff as an inventor was intentional and constituted "inequitable conduct" (Compl. ¶¶ 21, 22). It alleges that Apple had knowledge of Plaintiff's contributions through his internal disclosures, including a "Radar" bug ticket and emails to senior executives, well before the patent applications were filed (Compl. ¶¶ 73-75, 81). The complaint further alleges that Apple was put on notice of the nonjoinder issue via a demand letter from counsel in 2016 but proceeded to file at least one additional related patent application afterward without naming him (Compl. ¶¶ 77, 612).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of evidentiary sufficiency: Does the documentary evidence cited by the Plaintiff, including his 2008 lab notebooks and internal communications, provide "clear and convincing" proof that he conceived of the specific elements recited in the asserted patent claims, or do these documents only show a general, high-level idea that falls short of the claimed invention?
- A second key question will be one of contribution: For the "Passbook" patents where the complaint acknowledges contributions by others, can the Plaintiff prove that his early work on a digital ticketing system, disclosed in a pre-employment IPA, constituted a "significant contribution" to the conception of the inventions claimed by Apple a decade later, or was it merely an unrefined idea that does not rise to the level of joint inventorship?
- A final question will be one of structural and functional equivalence: Does the architecture described in the Plaintiff's conceptual mockups (e.g., a "cloud server" managing "user records") map directly onto the specific technical limitations of the patents (e.g., a "notification service" hosting "command collection topics"), or is there a fundamental mismatch in the claimed versus conceived technical operation that would defeat a claim of inventorship?