DCT
1:18-cv-01649
Sandbox Software LLC v. 18birdies LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Sandbox Software LLC (Georgia)
- Defendant: 18Birdies, LLC (Delaware)
- Plaintiff’s Counsel: O'KELLY ERNST & JOYCE, LLC; BAKER, DONELSON, BEARMAN, CALDWELL & BERKOWITZ, P.C.
- Case Identification: 1:18-cv-01649, D. Del., 10/23/2018
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because the Defendant is a Delaware corporation.
- Core Dispute: Plaintiff alleges that Defendant’s golf software application infringes a patent related to a system and method for mobile gaming based on real-world player interactions.
- Technical Context: The technology at issue involves using a network of mobile devices and a central server to facilitate a game where scores are updated based on player-observed and peer-verified events occurring in a shared physical location.
- Key Procedural History: The complaint alleges that Plaintiff sent Defendant a cease and desist letter on May 15, 2018, and a follow-up email detailing allegations of indirect infringement on June 20, 2018. Defendant allegedly responded on August 1, 2018, denying infringement. These pre-suit communications may form the basis for the complaint’s willfulness allegations.
Case Timeline
| Date | Event |
|---|---|
| 2011-08-04 | ’803 Patent Priority Date |
| 2017-08-22 | ’803 Patent Issue Date |
| 2018-05-15 | Plaintiff sends cease and desist letter to Defendant |
| 2018-06-20 | Plaintiff sends email to Defendant regarding indirect infringement |
| 2018-08-01 | Defendant denies infringement |
| 2018-10-23 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,737,803 - "SYSTEM AND METHOD FOR GAMING UTILIZING A MOBILE DEVICE"
- Patent Identification: U.S. Patent No. 9,737,803, "SYSTEM AND METHOD FOR GAMING UTILIZING A MOBILE DEVICE," issued August 22, 2017 (’803 Patent).
The Invention Explained
- Problem Addressed: The patent identifies a need for a gaming method that counters the "isolationism related to virtual game playing" by requiring players to be physically present together, thereby enabling in-person social interaction ('803 Patent, col. 1:13-19).
- The Patented Solution: The invention describes a system where multiple players use mobile devices connected to a central server to play a game based on real-world events ('803 Patent, Abstract). A first player observes another player perform a "game related event" (e.g., violate a rule), enters this observation into their mobile device, and transmits it to the server. The server then sends a verification request to a second player's device to confirm the event occurred before updating a score ('803 Patent, col. 3:15-37). The system architecture is illustrated in Figure 1, which shows mobile devices (15, 16, 17) communicating with a central server (13) and database (14) ('803 Patent, Fig. 1).
- Technical Importance: The technology combines mobile networking and location awareness with real-world social dynamics, creating a framework for interactive games that are played in a shared physical space rather than solely in a virtual one ('803 Patent, col. 1:5-10).
Key Claims at a Glance
- The complaint asserts independent claims 1, 5, and 10 (Compl. ¶16).
- Independent Claim 1 (Method):
- Providing a first and second player's mobile device with a game application.
- Entering the occurrence of a "game related event" on the first player's device.
- Transmitting the event from the first device to a central server.
- Verifying the event by the server sending a message to the second player's device.
- Transmitting a verification response from the second device to the server.
- Changing a score on the server in response to the verification.
- Independent Claim 5 (Method):
- Transmitting a request to enter a "score enabling game related event" from a first device to a central server.
- The server receiving the request and transmitting a verification request to a second device.
- The second device receiving the verification request and transmitting a verification response back to the server.
- The server receiving the verification response and "reflecting a change in the first person's game score."
- Independent Claim 10 (System):
- A central server.
- A first and second mobile device with gaming application software.
- "means for entering an observed gaming game related event" and "means for transmitting said entered... scoring request" on the mobile devices.
- The central server having "processing means" for the request, "means for transmitting a verification request," "means for receiving a response," and "means for processing said verification request response" to process a score advancement.
III. The Accused Instrumentality
Product Identification
The "18Birdies" golf-related software application ("Accused Product") (Compl. ¶12).
Functionality and Market Context
The complaint alleges the Accused Product is a "game including a method for playing a mobile computer device based game based on a plurality of golf game related events which relates to the observation of another golf player's action" (Compl. ¶19). The application is alleged to provide for entering game events, transmitting them to a central server, verifying those events between players' devices, and changing a player's score (Compl. ¶¶25, 27, 29, 33). The complaint alleges the product is distributed throughout the United States (Compl. ¶57).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
’803 Patent Infringement Allegations (Claim 1)
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| [a] method for playing a mobile computer device based game based on a plurality of game related events which relates to the observation of another player's action | The Accused Product is a game for playing a mobile device based game based on golf game events related to observing another player's action. | ¶19 | col. 4:38-41 |
| providing a first player's mobile computer device having a select mobile device game application | The Accused Product provides a first player's device with a select mobile device golf game application. | ¶21 | col. 4:42-43 |
| providing a second player's mobile device having a select mobile device game application | The Accused Product provides a second player's device with a select mobile device golf game application. | ¶23 | col. 4:44-45 |
| entering the occurrence of each game related event ... by a first player which has physically occurred at a remote location which relates to the observation of another player's action | The Accused Product provides for entering the occurrence of a game related event by a first player at a remote location based on observing another player's action. | ¶25 | col. 4:46-54 |
| transmitting the occurrence of each game related event ... from the first player's mobile computer device to a central server | The Accused Product provides for transmitting the occurrence of the game related event from the first player's device to a central server. | ¶27 | col. 4:55-61 |
| verifying the occurrence of each game related event ... by sending a message from the central server to the second player's mobile computer device | The Accused Product provides for verifying game events by sending a message from the central server to a second player's device. | ¶29 | col. 4:63-67 |
| transmitting a verification response from the second player's mobile computer device to the central server | The Accused Product provides for transmitting a verification response from the second player's device to the central server. | ¶31 | col. 5:1-4 |
| changing a score associated with the first player which is stored on the central server in response to the verifying of the occurrence of each game related event | The Accused Product provides for changing a score on the central server in response to the verification. | ¶33 | col. 5:5-7 |
- Identified Points of Contention:
- Technical Questions: The complaint alleges that the Accused Product's features map onto the patent's claim steps, such as "verifying the occurrence" of an event (Compl. ¶29). A key question will be whether the technical implementation of the 18Birdies app's score-keeping and player interaction features performs the specific, interactive verification process described in the patent, which involves one player "calling a violation" and another "accepting" or "denying" it ('803 Patent, col. 3:15-33).
- Scope Questions (Means-plus-Function): Claim 10 is drafted in means-plus-function format, which limits the scope of the "means" elements to the corresponding structures disclosed in the specification and their equivalents ('803 Patent, col. 6:35-7:1). The patent discloses a specific software stack (e.g., iOS, PHP, MySQL, JSONKit) ('803 Patent, col. 2:43-62). The litigation will likely focus on whether the software architecture of the 18Birdies application contains structures that are the same as or equivalent to those disclosed in the patent.
V. Key Claim Terms for Construction
The Term: "game related event which relates to the observation of another player's action"
Context and Importance: This term appears in all asserted independent claims and is foundational to the patent's scope. Its construction will determine whether the patent covers general-purpose, collaborative scorekeeping (as in a typical golf game) or is limited to the more specific, adversarial "violation-based" events described in the patent's examples.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself is broad and not explicitly limited to "violations." The complaint alleges it reads on "a plurality of golf game related events" (Compl. ¶19), suggesting any scorable action in golf could qualify.
- Evidence for a Narrower Interpretation: The specification's sole detailed example describes an "event" as one player observing another player commit a rule violation (e.g., "not ripping the label off the beer bottle") and "calling a violation" on them ('803 Patent, col. 3:12-21). This may support an argument that the term is limited to observing and verifying breaches of game rules, not routine game play.
The Term: "verifying the occurrence"
Context and Importance: This active step is a core part of the claimed methods. The dispute may turn on whether "verifying" requires a specific, multi-step, interactive confirmation between users, or if it can be satisfied by a more passive data synchronization process.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term itself could be argued to encompass any process that confirms the accuracy of an entered event, including automated server-side checks or simple notifications.
- Evidence for a Narrower Interpretation: The specification details a specific verification workflow: the server sends a message to the second player, who must actively choose to "Deny" or "Accept" the proposed event ('803 Patent, col. 3:27-33; Fig. 3). This supports a construction requiring a discrete, user-initiated confirmation step.
VI. Other Allegations
- Indirect Infringement: The complaint alleges active inducement and contributory infringement, asserting that Defendant encourages infringement through "direct cooperation of actions occurring between 18Birdies and the players" (Compl. ¶60). It also alleges contributory infringement by providing the Accused Product as a material part of the invention, "knowing it to be especially made or especially adapted for use in an infringement" (Compl. ¶60). The basis for knowledge includes a pre-suit email specifically outlining indirect infringement liability (Compl. ¶14).
- Willful Infringement: The willfulness allegation is based on alleged pre-suit knowledge of the ’803 Patent. The complaint states that Plaintiff sent a cease and desist letter on May 15, 2018, putting Defendant on notice of the patent and the infringement allegations, which Defendant allegedly continued to disregard (Compl. ¶¶13, 15, 61).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: Can the claim term "game related event which relates to the observation of another player's action," which is rooted in the patent's specific example of one player "calling a violation" on another, be construed broadly enough to cover the conventional score-entering and tracking features of a golf application?
- A second central question will concern structural equivalence for means-plus-function claims: For system claim 10, does the software architecture of the 18Birdies application incorporate structures that are identical or equivalent to the specific software implementations (e.g., PHP server code, MySQL database, JSONKit library) disclosed in the patent's specification as performing the claimed functions?
- A key evidentiary question will be one of functional operation: Does the accused 18Birdies application's method for logging scores perform the specific, interactive "verification" process claimed in the patent—requiring a request from one player and an explicit "accept" or "deny" response from another—or does it use a different, non-infringing technical method for data synchronization?