DCT
1:22-cv-02550
Backertop Licensing LLC v. Cortado Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Backertop Licensing LLC (Texas)
- Defendant: Cortado Inc. (Colorado)
- Plaintiff’s Counsel: Fresh IP, PLC
- Case Identification: 1:22-cv-02550, D. Colo., 09/30/2022
- Venue Allegations: Venue is alleged to be proper as the Defendant is incorporated in Colorado, has its principal place of business in the district, and has allegedly committed acts of patent infringement there.
- Core Dispute: Plaintiff alleges that Defendant’s mobile device management (MDM) software systems infringe a patent related to selectively controlling mobile device functionality based on the device's physical location.
- Technical Context: The technology concerns mobile device management, a field focused on enabling enterprises to secure, monitor, and manage employee mobile devices to enforce corporate policies and protect data.
- Key Procedural History: The patent-in-suit was originally assigned to International Business Machines Corporation (IBM). The complaint does not mention any other prior litigation, licensing history, or post-grant proceedings involving the patent.
Case Timeline
| Date | Event |
|---|---|
| 2015-02-13 | ’385 Patent Priority Date |
| 2016-05-03 | ’385 Patent Issue Date |
| 2011-08-05 | Date of Cortado Support article cited in complaint |
| 2022-09-30 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,332,385 - “Selectively Providing Content to Users Located Within a Virtual Perimeter,” issued May 3, 2016
The Invention Explained
- Problem Addressed: The patent addresses the challenge of managing network services and application access on mobile devices, noting that while mobile applications offer a superior user experience to web browsers, their functionality needs to be controlled in certain environments (’385 Patent, col. 1:11-28).
- The Patented Solution: The invention describes a system that uses wireless beacons to define a "virtual perimeter" around a physical location. When a mobile device enters this perimeter, the system sends it a message to disable at least one specific application. Only after receiving a response from the device confirming the application has been disabled does the system authorize the device to connect to a local network (’385 Patent, col. 1:30-43, Fig. 4). This creates a conditional access system where network use is granted in exchange for compliance with device restrictions.
- Technical Importance: This approach provides a method for an entity (e.g., a business, a library) to enforce policies on guest or employee devices as a prerequisite for granting them access to its private network resources (’385 Patent, col. 9:60-65).
Key Claims at a Glance
- The complaint asserts independent claims 1 (a method) and 8 (a system) (’385 Patent, col. 15:29-43, col. 16:30-43; Compl. ¶18).
- Independent Claim 1 (Method):
- Identifying a present physical location of a mobile device based on wireless communication with at least one beacon.
- Communicating a first message to the device that specifies at least one application to be disabled while the device is at that location.
- Receiving a response from the device indicating the application is disabled.
- Authorizing the device to establish presence on a network maintained for the physical location.
- Independent Claim 8 (System): This claim recites a system with a processor programmed to perform the same essential steps as method claim 1.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are Defendant's "cloud based software systems and services," specifically its mobile device management ("MDM") systems and apps, referred to as "Cortado Systems" (Compl. ¶10).
Functionality and Market Context
- The Cortado Systems are alleged to be MDM solutions that allow an administrator to enforce corporate policies on mobile devices (Compl. ¶13). The complaint alleges these systems operate by using wireless communication, such as with a "company WiFi access point," to determine if a mobile device is at a specific physical location, such as the company office (Compl. ¶12). Based on this location, the system can enforce policies, such as pushing Wi-Fi configurations, blocking access to device features, or filtering web content (Compl. ¶13-14). A screenshot in the complaint shows an Android settings screen where location services for a work profile are "Blocked by your IT admin," illustrating the system's ability to enforce location-based restrictions (Compl. p. 4). Compliance with these policies is allegedly required for the device to access and maintain a presence on the corporate network (Compl. ¶15).
IV. Analysis of Infringement Allegations
’385 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| based on wireless communication between a mobile device and at least one beacon, identifying a present physical location of a mobile device; | The Cortado Systems use wireless communication between a mobile device and a "company WiFi access point" to identify the device's physical location. | ¶12, ¶19 | col. 15:30-33 |
| responsive to determining that the mobile device is located at a particular physical location, communicating to the mobile device at least a first message, the first message specifying at least one application to be disabled while the mobile device is present at the physical location; | The Cortado Systems communicate policy restrictions to the mobile device when it is at a corporate location, which restrict access to websites or device features. A provided screenshot shows a setting to create a "Deny list URLs" for supervised devices. | ¶14, ¶22 | col. 15:34-38 |
| responsive to receiving from the mobile device a response to the first message indicating that the at least one application is disabled, | The Cortado Systems allegedly receive "communication from the user's mobile device acknowledging compliance with the policy based configuration." | ¶15, ¶23 | col. 15:39-41 |
| authorizing, using a processor, the mobile device to establish presence on a network maintained for the physical location. | Compliance with the policy is alleged to be required for the device "to establish presence on a network maintained for the physical location." | ¶15, ¶24 | col. 15:41-43 |
- Identified Points of Contention:
- Scope Questions: A central issue may be whether a "company WiFi access point," as alleged in the complaint (Compl. ¶12), meets the claim limitation of a "beacon." The patent specification discusses beacons in the context of devices that transmit unique identifiers for locationing, such as Bluetooth Low Energy (BLE) beacons (’385 Patent, col. 3:63-col. 4:10), raising the question of whether a standard Wi-Fi access point, whose primary purpose is network connectivity, falls within the scope of the term.
- Technical Questions: The court may need to resolve whether blocking access to "certain URLs or websites" (Compl. ¶14) or device features constitutes "specifying at least one application to be disabled" as required by the claim. The claim language suggests disabling an entire mobile application, while the complaint's allegations focus on restricting specific functions or content access. For example, a screenshot shows a feature to "Block access to device features, such as camera, Wi-Fi, or Bluetooth" (Compl. p. 4), which may or may not be equivalent to disabling a specific application.
V. Key Claim Terms for Construction
The Term: "beacon"
Context and Importance: The construction of this term is critical because the complaint alleges infringement via "company WiFi access point" (Compl. ¶12), whereas the patent specification repeatedly uses "beacon" and provides Bluetooth® low-energy (BLE) devices as a specific example (’385 Patent, col. 3:63-65). The outcome of the infringement analysis may depend on whether a general-purpose Wi-Fi access point can be considered a "beacon."
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not explicitly define "beacon" in a limiting way. It is described as a device that "transmits a wireless beacon signal" which a mobile device can detect (’385 Patent, col. 3:63-col. 4:1). This could arguably encompass any wireless transmitter used for location detection.
- Evidence for a Narrower Interpretation: The specification's primary and most detailed example of a "beacon" is a BLE transmitter that sends a universally unique identifier (UUID) for the purpose of locationing within a "virtual perimeter" (’385 Patent, col. 3:63-col. 4:10). This context may support an interpretation that a "beacon" is a device primarily for location signaling, not a multi-purpose device like a Wi-Fi router.
The Term: "application to be disabled"
Context and Importance: Practitioners may focus on this term because the complaint's allegations center on blocking access to URLs and device features (Compl. ¶14), not necessarily disabling entire, distinct applications. The infringement case hinges on whether these alleged functions meet the claim limitation.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not provide an explicit definition of what it means for an application to be "disabled." A party could argue that preventing an application (e.g., a web browser) from performing a key function (accessing a URL) is a form of disablement.
- Evidence for a Narrower Interpretation: The patent defines "mobile application" as an application "specifically configured to be executed by a processor of a mobile device" (’385 Patent, col. 2:66-68). The claim requires a message "specifying at least one application to be disabled" (’385 Patent, col. 15:37-38). This language, combined with descriptions of deactivating "media playback applications" or "image/video capture applications" (’385 Patent, col. 9:25, col. 9:61-62), may suggest that the claim requires targeting the full operation of a named application, rather than just a feature or accessible content.
VI. Other Allegations
- Indirect Infringement: The complaint does not contain separate counts for indirect infringement. The allegations focus on Defendant "directly" making, using, and selling the infringing systems (Compl. ¶11, ¶26).
- Willful Infringement: The complaint requests enhanced damages for "knowing and deliberate" conduct, alleging notice occurred "at least as early as the service date of this complaint" (Compl., Prayer for Relief ¶d). This frames the willfulness allegation as being based on post-suit conduct.
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this dispute will likely depend on the court’s interpretation of key claim terms and the evidence presented to map the accused product's functionality onto those terms. The central questions appear to be:
- A core issue will be one of definitional scope: Can the term "beacon," described in the patent with specific examples like BLE transmitters, be construed broadly enough to read on the "company WiFi access point" that the complaint alleges is used by the accused system for location identification?
- A key evidentiary question will be one of functional equivalence: Does the accused MDM system's function of blocking access to URLs or device features perform the same function as "specifying at least one application to be disabled" as required by the claims, or is there a fundamental mismatch between restricting content/features and disabling an entire software application?