DCT

1:18-cv-01767

Mimzi LLC v. Foursquare Labs Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:18-cv-01767, D. Del., 11/09/2018
  • Venue Allegations: Venue is asserted based on Foursquare’s incorporation in Delaware, which establishes residency in the district.
  • Core Dispute: Plaintiff alleges that Defendant’s Foursquare mobile application infringes a patent related to systems and methods for voice-activated, location-based searching of social network databases.
  • Technical Context: The technology concerns the integration of mobile device capabilities—specifically voice recognition and location services (e.g., GPS)—with online databases containing community-generated content to provide ranked search results.
  • Key Procedural History: The complaint was filed on November 9, 2018. Subsequent to the filing, three Inter Partes Review (IPR) petitions were filed against the patent-in-suit in 2019 (IPR2019-01080, IPR2019-01287, IPR2019-01516). On July 6, 2021, the U.S. Patent and Trademark Office issued an IPR Certificate cancelling all claims (1-19) of the patent.

Case Timeline

Date Event
2008-07-29 ’981 Patent Priority Date
2015-03-21 ’981 Patent Application Filing Date
2015-09-08 ’981 Patent Issue Date
2018-11-09 Complaint Filing Date
2019-05-13 IPR2019-01080 Filed
2019-06-28 IPR2019-01287 Filed
2019-08-19 IPR2019-01516 Filed
2021-07-06 IPR Certificate Issued Cancelling All Claims of ’981 Patent

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

U.S. Patent No. 9,128,981 - “Phone Assisted ‘Photographic Memory’”

  • Patent Identification: U.S. Patent No. 9,128,981, “Phone Assisted ‘Photographic Memory’”, issued September 8, 2015.

The Invention Explained

  • Problem Addressed: The patent identifies a deficiency in an individual's ability to easily search the content of their past conversations, particularly those conducted by phone or in person, noting that unlike email, this information is not typically stored in a searchable, centralized repository (’981 Patent, col. 1:47-54).
  • The Patented Solution: The invention proposes a system where a user can make a spoken request into a mobile device. The system transcribes the speech, associates it with the user's geographical location, and uses that information to query a "social network database" or "community searchable database." It then receives and ranks the results for presentation to the user, creating a searchable record of user queries and interactions (’981 Patent, Abstract; col. 2:26-34). Figure 1 illustrates the flow of data from a mobile handset to a computer server for processing and querying a search database (’981 Patent, Fig. 1).
  • Technical Importance: The technology aimed to combine discrete, emerging mobile technologies—voice recognition, GPS-based location, and community data platforms—into a unified system for location-aware, voice-driven search (Compl. ¶¶19-21).

Key Claims at a Glance

  • The complaint asserts independent claims 1 (a system claim), 10 (a method claim), and 16 (a method claim) (Compl. ¶¶43, 48, 51).
  • Independent Claim 1 (System):
    • A data input port to receive speech information from a mobile device user.
    • A memory to store a transcript of the spoken request and location metadata.
    • An interface port to a social network database to transmit a request and receive information.
    • At least one processor configured to rank the received social network information based on at least one social network ranking factor.
    • A communication port to communicate the ranked information to the user.
  • Independent Claim 10 (Method):
    • Receiving speech information from a mobile device user.
    • Storing the transcript and associated location metadata.
    • Automatically selecting information records from a social network database using the location and transcript.
    • Ranking the selected records based on a social network ranking factor.
    • Communicating the selected records to the user.
  • Independent Claim 16 (Method):
    • Receiving user-generated speech and an associated location.
    • Automatically transcribing the speech and associating the location as metadata.
    • Automatically generating a query of a social information search engine.
    • Automatically ranking the resulting social network records based on a ranking factor including physical distance and user ratings.
    • Outputting the ranked records.

III. The Accused Instrumentality

Product Identification

  • The Foursquare Application (“App”) for use on mobile devices running operating systems such as Apple, Android, and Microsoft (Compl. ¶27).

Functionality and Market Context

  • The complaint alleges the Foursquare App is configured to receive spoken user requests for information, identify the user's location, query the Foursquare database, and provide ranked, location-dependent information to the user (Compl. ¶¶28, 29, 31).
  • The complaint provides "Foursquare Screen 1," a screenshot allegedly showing the App's user interface with a microphone icon for initiating verbal requests (Compl. ¶28).
  • The complaint further alleges that the Foursquare App uses the mobile device's location services (e.g., GPS) to identify the user's location, which defaults to "near me" in search queries (Compl. ¶29). "Foursquare Screen 3" is a screenshot allegedly showing search results for a spoken request for Chinese restaurants near a specific address in Wilmington, Delaware (Compl. ¶31).
  • The complaint alleges that Foursquare generates revenue from sales of advertising and user-location information derived from the App's use (Compl. ¶45).

IV. Analysis of Infringement Allegations

’981 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a data input port configured to receive speech information from the mobile-electronic-device user The Foursquare App is allegedly configured to receive spoken requests from the user, as depicted by a microphone icon in the user interface. ¶28 col. 16:11-13
a memory configured to store a transcript of the spoken request and metadata associated with the spoken request comprising at least the location during the spoken request The Foursquare App allegedly uses persistent and/or volatile memory on the mobile device or a remote server to store the user's request and location information. ¶30 col. 16:14-18
an interface port to a social network database, configured to transmit a request to mine information of the social network database... and to receive social network information The Foursquare App is allegedly configured to interface with the "Foursquare social network database" to transmit a query and receive relevant information. ¶31 col. 16:19-26
at least one processor configured to... rank the received social network information... dependent on at least one social network ranking factor The Foursquare App allegedly uses a processor to rank results based on factors such as proximity or ratings. "Foursquare Screen 4" and "Foursquare Screen 5" allegedly show different ranked results for different queries ("nearest" vs. "three star"). ¶32 col. 16:34-42
a communication port configured to communicate at least a portion of the social-network information to the user The Foursquare App displays the ranked results to the user on the mobile device screen. ¶31 col. 16:27-33
  • Identified Points of Contention:
    • Scope Questions: A central issue may be whether the term "social network database" as used in the patent can be construed to read on the Foursquare database. The complaint alleges Foursquare's database of business locations and user-submitted reviews constitutes a "social network database" (Compl. ¶31). The patent specification discusses "Location Blogging" and a "Centralized Community Search database," which may support a broad interpretation (’981 Patent, Abstract; col. 15:5). However, dependent claims recite specific "social network ranking factor[s]" like "social network credibility" and "social network popularity" (’981 Patent, Claims 2, 3), which could suggest a narrower definition requiring more traditional social networking features than just user reviews.
    • Technical Questions: The complaint asserts that the Foursquare App ranks results based on at least one "ranking factor" (Compl. ¶32). A key evidentiary question is whether the ranking performed by the accused App aligns with the "social network ranking factor" required by the claims. The complaint provides screenshots showing ranked lists but does not specify the underlying algorithm, raising the question of what evidence demonstrates that Foursquare’s ranking relies on factors like "social network credibility" or "popularity" as opposed to more conventional metrics like distance, price, or average user rating score.

V. Key Claim Terms for Construction

  • The Term: "social network database"
  • Context and Importance: This term appears in each asserted independent claim (1, 10, and 16). The infringement case hinges on whether Foursquare's platform, which aggregates business information and user reviews, qualifies as a "social network database." Practitioners may focus on this term because if Foursquare's database is found to be outside the scope of this limitation, the infringement claims would likely fail.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent abstract describes the invention as providing outputs from a "social-network (Centralized Community Search database)" (’981 Patent, Abstract). The specification also refers to "community or collective photographic memory" and "Location Blogging," where content is "contributed by multiple members of the community" (’981 Patent, col. 1:26-29, col. 15:5-9). This language could support an interpretation that any database containing community-generated content qualifies.
    • Evidence for a Narrower Interpretation: Dependent claims 2 and 3, which depend from claim 1, add limitations requiring ranking based on "social network credibility" and "social network popularity" (’981 Patent, col. 16:43-46). This could be argued to imply that the "social network database" must contain the underlying data (e.g., user connections, profiles, status) necessary to calculate such credibility or popularity, potentially narrowing the term to platforms with more explicit social graphs rather than just collections of user reviews.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges post-complaint inducement of infringement, stating that upon being served with the complaint, Foursquare will be aware that its users are directly infringing the ’981 patent. The alleged inducing acts include Foursquare providing users with the App, which contains the "systems, instructions, encouragement and the capability to directly infringe" (Compl. ¶¶58-60, 62).
  • Willful Infringement: The complaint does not contain an explicit allegation of willful infringement. However, it requests a finding that the case is "exceptional" and an award of attorney fees under 35 U.S.C. § 285 (Compl., Prayer for Relief ¶(e), (g)). The inducement claim is based on knowledge acquired after the complaint is filed, not on pre-suit knowledge.

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

  • A primary question for the court is the procedural impact of the IPR Certificate issued on July 6, 2021. As this certificate cancelled all claims of the ’981 patent, including all asserted claims, a central issue will be its dispositive effect on this litigation, which was filed when the patent was still valid.
  • Assuming the case proceeds, a core issue will be one of definitional scope: can the term "social network database", which the patent links to concepts like "social network credibility," be construed to cover the Foursquare App’s database of business listings and crowd-sourced user reviews?
  • A key evidentiary question will be one of functional operation: what proof can be offered that the accused Foursquare App, in practice, ranks results using the specific "social network ranking factor[s]" required by the asserted claims, beyond conventional metrics like distance or average review score?