DCT

1:18-cv-01331

Groove Digital Inc v. Jam City Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:18-cv-01331, D. Del., 08/27/2018
  • Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendant is a Delaware corporation that transacts business in the district.
  • Core Dispute: Plaintiff alleges that Defendant’s mobile game applications infringe a patent related to systems and methods for delivering targeted, browser-independent content to a user's networked device.
  • Technical Context: The technology concerns app-based notification systems that can passively deliver content, such as advertisements or alerts, to a device's screen without interrupting the user's primary activity.
  • Key Procedural History: The complaint notes that the patent-in-suit resulted from an application that was prosecuted for over ten years and overcame a rejection under 35 U.S.C. § 101. Subsequent to the filing of this complaint, the patent was subject to two Inter Partes Review (IPR) proceedings (IPR2019-00050, IPR2019-00193), which concluded with the cancellation of claims 14-35 and 37. Claims 1-13 and 36 were confirmed as patentable. This IPR outcome substantially narrows the scope of the dispute from the 37 claims originally asserted in the complaint. The complaint also alleges Defendant had notice of the patent prior to the suit via a lawsuit filed against a competitor.

Case Timeline

Date Event
2005-03-18 '762 Patent Priority Date
2016-09-27 '762 Patent Issue Date
2018-06-04 Alleged notice date via Groove Digital v. King.com filing
2018-08-27 Complaint Filing Date
2018-10-17 IPR2019-00050 Filed
2018-11-08 IPR2019-00193 Filed
2022-01-31 IPR Certificate Issued

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 9,454,762 - "System and Method for the Delivery of Content to a Networked Device"

The Invention Explained

  • Problem Addressed: The patent sought to address the shortcomings of early online advertising, such as intrusive browser pop-ups and unsolicited "SPAM" email. (’762 Patent, col. 1:12-28). It also identifies a need for a notification method more versatile than early systems like AOL Instant Messenger, which were tied to a specific application and primarily indicated a buddy's online status rather than delivering ancillary content. (’762 Patent, col. 2:29-52).
  • The Patented Solution: The invention describes a system centered on a downloadable software "applet" that resides on a user's device, for example in the "system tray" of a desktop computer. (’762 Patent, col. 3:1-9). This applet is capable of "passively" deploying content—such as a small advertisement—onto a portion of the user's screen without interrupting their ongoing tasks. (’762 Patent, col. 5:15-28, Fig. 1). A remote server system compares user data (e.g., location) against advertiser criteria to determine what content to send and when, enabling targeted delivery. (’762 Patent, Abstract; col. 5:61-65).
  • Technical Importance: The complaint asserts that this approach of using "passively-deployed, browser-independent, app-based content" improved the functionality of computer systems and prefigured the explosion of such content delivery in the modern smartphone market. (Compl. ¶10).

Key Claims at a Glance

  • The complaint asserts claims 1-37. (Compl. ¶14). As a result of subsequent IPR proceedings, only claims 1-13 and 36 remain patentable. Independent claim 1 is representative.
  • The essential elements of independent claim 1 include:
    • A microprocessor running a software application for delivering and managing an "applet application" to a networked device.
    • The applet application "passively deploys" one or more "applets" that display content in a portion of the user display.
    • The applet deploys independently of an internet browser window, but an internet browser is configured to deploy subsequently based on user action or inaction.
    • The applet is configured to "become idle" upon deployment of the internet browser.
    • The deployment does not prevent the user from continuing to operate the networked device.
    • A first database stores user information, and a second database stores comparison information.
    • The microprocessor compares the two sets of information to determine whether to transmit the content.
  • The complaint reserves the right to assert dependent claims. (Compl. ¶13).

III. The Accused Instrumentality

Product Identification

  • The "Accused Products" are mobile games including "Cookie Jam," "Family Guy: Another Freakin' Mobile Game," and "Harry Potter: Hogwarts Mystery." (Compl. ¶3).

Functionality and Market Context

  • The complaint alleges the Accused Products deliver information such as "upgrades, in-app purchases, or promotional material" to players. (Compl. ¶15).
  • This delivery is accomplished by "passively deploying push notifications that display content by opening a notification window in a predesignated location on the game player’s device." (Compl. ¶15).
  • The content is transmitted from a remote server, and its delivery is triggered when a "comparison of information contained in multiple databases meets predetermined criteria." (Compl. ¶15).
  • A key alleged feature is that the delivery "does not interrupt the game player's interaction with the device." (Compl. ¶15).
  • No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

  • Claim Chart Summary: The table below summarizes the infringement allegations for the representative surviving independent claim, based on the factual assertions in the complaint.

'762 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a microprocessor running a software application for delivering an applet application to the networked device and managing the delivery of the applet application... Defendant's remote servers run software that delivers and manages the Accused Products (mobile games) and their content delivery features to players' devices. ¶15 col. 13:10-15
wherein the applet application passively deploys one or more applets at a time of deployment... The Accused Products "passively deploy[] push notifications that display content by opening a notification window in a predesignated location on the game player’s device." ¶15 col. 3:35-37
wherein the deployment of the one or more applets is such that at the time of deployment... the user can continue to operate the networked device in a state prior to the deployment... The delivery of a push notification "does not interrupt the game player's interaction with the device." ¶15 col. 13:28-32
wherein an internet browser is configured to deploy subsequent to deployment of the one or more applets based on at least one action or inaction of the user... The Accused Products are configured to deliver additional content "based on the game player’s response (or lack of a response) to the push notification." The complaint does not explicitly map this to an "internet browser." ¶15 col. 13:19-23
a first database coupled to the microprocessor and storing a first set of information relating to the user; and a second database... including a second set of information... The delivery of content is triggered when the Accused Products' "comparison of information contained in multiple databases meets predetermined criteria for the delivery of a push notification." This implies the existence of at least two databases for comparison. ¶15 col. 13:33-44
wherein the microprocessor compares the first set of information to the second set of information to determine whether the content should be transmitted... The system compares information in the databases to meet "predetermined criteria," which determines whether to deliver the push notification. ¶15 col. 13:40-47
  • Identified Points of Contention:
    • Scope Questions: A principal issue may be whether a "push notification" generated by a modern mobile operating system (e.g., iOS, Android) falls within the scope of the term "applet" as described in the patent. The patent's specification describes an environment of a "virtual desktop" and a "system tray," which may suggest a 2005-era PC environment rather than a modern smartphone. (’762 Patent, col. 3:1-9).
    • Technical Questions: Claim 1 requires a specific sequence involving the deployment of an "internet browser" after the applet appears, which in turn causes the applet to "become idle." The complaint alleges the Accused Products are "browser-independent" (Compl. ¶23), which raises the question of whether their operation meets these specific claim limitations or if there is a functional mismatch. The nature of any web-content display (e.g., an in-app browser view versus a full, separate browser application) will be critical.

V. Key Claim Terms for Construction

  • The Term: "applet"

    • Context and Importance: The definition of "applet" is central to the dispute. The infringement case may depend on whether the term is construed broadly to encompass any small, notification-like software component, or narrowly to mean a specific type of downloadable program for a PC desktop environment as depicted in the specification. Practitioners may focus on this term because its scope could determine whether the patent reads on modern mobile technology.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The patent uses "applet" interchangeably with "alert or notification," which could support a construction not strictly tied to a specific form factor. (’762 Patent, col. 5:16-18).
      • Evidence for a Narrower Interpretation: The specification repeatedly describes the applet in the context of a "virtual desktop" and emerging from a "system tray," language that could be used to tie the term to the specific PC-based embodiments described. (’762 Patent, col. 3:1-9; col. 5:30-32; Fig. 1).

  • The Term: "internet browser"

    • Context and Importance: The role of the "internet browser" is explicitly recited in a multi-step limitation in claim 1. The viability of the infringement allegation hinges on whether the accused system deploys what can be legally defined as an "internet browser" and whether the "applet" then becomes "idle."
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification refers to a "micro-browser" that launches onto the desktop, which could be argued to encompass more than just a full, standalone application and might include an in-app web-rendering view. (’762 Patent, col. 3:58-60).
      • Evidence for a Narrower Interpretation: When discussing a "mini-web browser," the patent provides "Microsoft Internet Explorer or Netscape Navigator" as examples, potentially limiting the term's scope to full-featured, standalone browser applications. (’762 Patent, col. 3:11-13).

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement of infringement, stating that Jam City encourages and instructs players to use the accused features. (Compl. ¶22). It also alleges contributory infringement by providing the game software, which is alleged to be a non-staple article of commerce specifically designed to infringe. (Compl. ¶24).
  • Willful Infringement: Willfulness is alleged based on pre-suit notice, purportedly occurring when Groove Digital sued a competitor, King.com, on June 4, 2018, an event Jam City allegedly monitors. (Compl. ¶19). It is also alleged based on post-suit notice from the service of the complaint itself. (Compl. ¶25).

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

  • A core issue will be one of definitional scope and technological evolution: can the term "applet," rooted in the patent's descriptions of a 2005-era PC desktop environment, be construed to cover the "push notifications" generated by modern mobile operating systems in the accused games?
  • A key evidentiary question will be one of functional correspondence: does the accused system perform the specific, multi-step process recited in surviving Claim 1, particularly the deployment of an "internet browser" that causes the initial notification to "become idle," especially in light of the complaint's own characterization of the accused system as "browser-independent"?
  • The case will be significantly shaped by the post-filing IPR proceedings, which invalidated over half of the asserted claims. The dispute is now narrowly focused on whether the accused functionality infringes the specific limitations of the surviving claims (1-13 and 36), which have already withstood a validity challenge before the Patent Trial and Appeal Board.