DCT
1:22-cv-00572
Backertop Licensing LLC v. Canary Connect Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Backertop Licensing LLC (Texas)
- Defendant: Canary Connect, Inc. (Delaware)
- Plaintiff’s Counsel: Chong Law Firm PA
- Case Identification: 1:22-cv-00572, D. Del., 04/28/2022
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendant is a Delaware corporation.
- Core Dispute: Plaintiff alleges that Defendant’s smart home security systems, which use location-based geofencing to automatically change device modes, infringe four patents related to selectively providing network services to users within a virtual perimeter.
- Technical Context: The technology involves using short-range wireless signals (beacons) and mobile device location to create virtual boundaries, enabling location-aware control over device functionality and content access in environments like smart homes or retail spaces.
- Key Procedural History: The four patents-in-suit belong to a single family, with each being a continuation of the prior. The patent documents indicate the use of terminal disclaimers, which may affect the patents' expiration dates. The complaint does not mention any other significant procedural events, such as prior litigation or administrative proceedings.
Case Timeline
| Date | Event |
|---|---|
| 2015-02-13 | Priority Date for ’385, ’617, ’011, ’382 Patents |
| 2016-05-03 | U.S. Patent No. 9,332,385 Issued |
| 2017-05-16 | U.S. Patent No. 9,654,617 Issued |
| 2019-11-12 | U.S. Patent No. 10,477,011 Issued |
| 2020-07-28 | U.S. Patent No. 10,728,382 Issued |
| 2022-04-28 | Complaint Filed |
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”
- Patent Identification: 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's background section notes that mobile applications often provide a superior user experience compared to web browsers because they can store resources locally and integrate with device functionality, but managing access to services based on a user's physical location remains a challenge (’385 Patent, col. 1:10-28).
- The Patented Solution: The invention describes a system where one or more "beacons" (e.g., Bluetooth transmitters) establish a "virtual perimeter" around a physical location. When a mobile device enters this area, the system can identify it and send a message specifying that certain applications on the mobile device should be disabled. Upon receiving confirmation that the applications are disabled, the system authorizes the mobile device to connect to a local network. (’385 Patent, Abstract; col. 4:36-49; Fig. 4).
- Technical Importance: This technology allows an entity controlling a physical space, such as a business, to exert granular control over the digital experience within that space by managing both network access and the functionality of guest devices (’385 Patent, col. 1:5-9).
Key Claims at a Glance
- The complaint asserts independent claims 1 (a system) and 8 (a method) (’385 Patent, Compl. ¶27).
- The essential elements of independent claim 1 include:
- A processor programmed to initiate operations comprising:
- identifying a present physical location of a mobile device, based upon wireless communication between the mobile device and at least one beacon;
- 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;
- responsive to receiving from the mobile device a response to the first message indicating that the at least one application is disabled, authorizing the mobile device to establish presence on a network maintained for the physical location.
- The complaint reserves the right to assert additional claims.
U.S. Patent No. 9,654,617 - “Selectively Providing Content to Users Located Within a Virtual Perimeter”
- Patent Identification: U.S. Patent No. 9,654,617, "Selectively Providing Content to Users Located Within a Virtual Perimeter," issued May 16, 2017.
The Invention Explained
- Problem Addressed: As a continuation of the ’385 Patent, this patent addresses the same problem of providing location-specific network services that are more robust than what is available through standard web browsers (’617 Patent, col. 1:12-28).
- The Patented Solution: The invention is embodied as a computer program product on a storage medium. The program code, when executed, performs the method of identifying a mobile device's location via a beacon, communicating a message to disable a specific application, receiving a response confirming disablement, and then authorizing network access. This shifts the claimed invention from a system or method to the software that enables it. (’617 Patent, Abstract; col. 2:30-47).
Key Claims at a Glance
- The complaint asserts independent claim 1 (a computer program product) (’617 Patent, Compl. ¶43).
- The essential elements of independent claim 1 include:
- A computer readable storage medium with program code executable by a processor to perform a method comprising:
- identifying a present physical location of a mobile device based on wireless communication with a beacon;
- responsive to determining the location, communicating a message specifying an application to be disabled;
- responsive to receiving a response indicating disablement, authorizing the mobile device to establish network presence.
- The complaint reserves the right to assert additional claims.
U.S. Patent No. 10,477,011 - “Selectively Providing Content to Users Located Within a Virtual Perimeter”
- Patent Identification: U.S. Patent No. 10,477,011, "Selectively Providing Content to Users Located Within a Virtual Perimeter," issued November 12, 2019.
- Technology Synopsis: This patent, from the same family, describes a system that uses beacons to identify a mobile device’s location within a virtual perimeter. The system retrieves location-specific rules and a user profile, and based on this data, it selects and authorizes specific content to be made available to the user’s mobile device via an application. (’011 Patent, Abstract).
- Asserted Claims: Claims 1, 8, and 15 are asserted (Compl. ¶59).
- Accused Features: The complaint alleges that the Canary Systems' "Auto-Mode Switching" feature, which uses a geofence to detect if a user is "home" or "away," infringes by retrieving location-specific rules and user profile data to select and present content, such as push notifications with video. (Compl. ¶¶12, 17-18, 56-57).
U.S. Patent No. 10,728,382 - “Selectively Providing Content to Users Located Within a Virtual Perimeter”
- Patent Identification: U.S. Patent No. 10,728,382, "Selectively Providing Content to Users Located Within a Virtual Perimeter," issued July 28, 2020.
- Technology Synopsis: This patent claims a method focused on a negative condition. It describes identifying a device’s location via a beacon and sending a message to disable an application. Critically, if the system does not receive a response confirming the application is disabled, it denies the mobile device authorization to establish network presence. (’382 Patent, Abstract).
- Asserted Claims: Claims 1, 8, and 15 are asserted (Compl. ¶75).
- Accused Features: The infringement allegation centers on the Canary Systems' logic for granting network access. The complaint alleges the system denies network presence or certain functionalities if it does not receive a response indicating that a specified application (e.g., the camera in "home" mode) is disabled. (Compl. ¶¶18, 72-74).
III. The Accused Instrumentality
- Product Identification: The accused instrumentalities are Defendant’s Canary Pro and Canary View smart home security monitors and the corresponding Canary App, collectively referred to as the "Canary Systems" (Compl. ¶8).
- Functionality and Market Context:
- The Canary Systems operate by creating a "geofence (or a virtual boundary)" around a user's location during setup. The complaint includes a screenshot from the Canary setup process showing a request for permission to use Bluetooth and Location Services, which is required for "Auto Mode-Switching." (Compl. ¶10). This mode-switching automatically changes the system's operational state based on whether the user's mobile device is detected entering or leaving the geofence (Compl. ¶12). Another screenshot provided in the complaint explains this functionality, stating "The app on your smartphone communicates with Canary to detect when you enter or leave the geofence." (Compl. ¶12).
- The system has at least three modes: "away," "home," and "night." These modes determine the system's behavior, such as whether it monitors for activity, sends push notifications with video, or disables the camera and microphone entirely (Compl. ¶18). The complaint alleges this functionality is based on wireless communication between the mobile device and the Canary monitor, which it characterizes as a "beacon" (Compl. ¶¶10, 21).
IV. Analysis of Infringement Allegations
’385 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a processor programmed to initiate executable operations comprising: identifying a present physical location of a mobile device, based upon wireless communication between the mobile device and at least one beacon; | The Canary Systems identify the location of a user's mobile device based on wireless communication (e.g., Bluetooth) with the Canary monitor (alleged to be a beacon). | ¶¶10, 21 | col. 4:40-49 |
| responsive to determining that the mobile device is located at a particular physical location, communicating to the mobile device at least a first message...specifying at least one application to be disabled... | When the system determines the user is "home," it engages "home mode," which communicates a message to the mobile device that can result in the camera and microphone being disabled entirely. | ¶¶15, 18, 24 | col. 10:33-44 |
| responsive to receiving from the mobile device a response to the first message indicating that the at least one application is disabled, authorizing...the mobile device to establish presence on a network... | The Canary Systems receive a response indicating the application is disabled and, in response, authorize the mobile device to establish presence on the network. | ¶¶25-26 | col. 10:45-52 |
’617 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a computer program product comprising a computer readable storage medium having program code stored thereon, the program code executable by a processor to perform a method comprising: identifying a present physical location of a mobile device...based upon wireless communication...and at least one beacon; | The Canary App is a computer program product stored in memory that, when executed, identifies the mobile device's location based on wireless communication with the Canary monitor (beacon). | ¶¶11, 36-37 | col. 4:40-49 |
| responsive to determining that the mobile device is located at a particular physical location, communicating...at least a first message...that specifies at least one application to be disabled... | When the app determines the user is home, it communicates a message resulting in the engagement of "home mode," which can include disabling the camera and microphone. | ¶¶15, 18, 40 | col. 10:33-44 |
| responsive to receiving from the mobile device a response to the first message indicating that the at least one application is disabled, authorizing...the mobile device to establish presence on a network... | The app receives a response confirming the mode change/disablement and, responsive to that, authorizes the mobile device to establish presence on the network. | ¶¶41-42 | col. 10:45-52 |
- Identified Points of Contention:
- Scope Questions: A central question may be whether the term "beacon," as used in the patents, can be construed to read on the Canary monitor, and whether the accused "geofence" functionality reads on the claimed method of identifying location "based upon wireless communication between the mobile device and at least one beacon." The patents describe using beacon signal properties to define a perimeter (’385 Patent, col. 4:11-36), while the accused product appears to rely on the smartphone's broader location services (GPS, Wi-Fi, cellular) to detect entry/exit from a geofence (Compl. ¶12). The role of the alleged Bluetooth communication between the phone and monitor in this location determination process will be a key factual issue.
- Technical Questions: The infringement theory hinges on the idea that changing the Canary System's "mode" (e.g., disabling the camera in "home" mode) is equivalent to "disabling...at least one application" as required by the claims. A potential point of contention is whether changing a setting within the Canary App constitutes disabling an "application," or if the claims require the deactivation of a separate, entire software application.
V. Key Claim Terms for Construction
The Term: "beacon"
- Context and Importance: The patents require location to be determined based on communication with a "beacon." The construction of this term is critical to determine if the Canary monitor qualifies and if the accused system's geofencing mechanism meets this limitation. Practitioners may focus on this term because the accused product's primary location-sensing mechanism appears to be the smartphone's GPS-based geofencing, not necessarily signal analysis from the Canary monitor itself.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent specification does not provide a rigid definition, stating a beacon "can include a transceiver that transmits a wireless beacon signal" and provides a Bluetooth Low-Energy (BLE) transmitter as one example, which may support a reading on any device that transmits a local wireless signal to establish presence (’385 Patent, col. 3:9-12).
- Evidence for a Narrower Interpretation: The detailed description repeatedly discusses using beacon signal characteristics, such as UUID, major/minor values, and signal strength, to "determine (or estimate) a distance" and thereby define the virtual perimeter (’385 Patent, col. 4:11-36). This context suggests a "beacon" is a device whose signals are actively used for this proximity calculation, not just any device that communicates wirelessly.
The Term: "application to be disabled"
- Context and Importance: Infringement requires communicating a message to disable an "application." Whether changing a feature state within the Canary App (e.g., turning off the camera) meets this limitation is a core dispute.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term "disabled" is not explicitly defined in the patent, which could allow for an interpretation that includes deactivating a primary function of an application, rather than halting the entire program. The patent defines "mobile application" broadly as code "configured to be executed by a processor of a mobile device" (’385 Patent, col. 3:6-9).
- Evidence for a Narrower Interpretation: The specification provides examples of disabling entire categories of applications, such as "image/video capture applications" or "media playback applications" (’385 Patent, col. 10:4-14). This may support an argument that "disabling an application" refers to preventing the application itself from running, not merely changing a setting within it.
VI. Other Allegations
- Indirect Infringement: The complaint does not include separate counts for indirect infringement. However, it contains boilerplate language alleging infringement when the accused products are "used and/or operated in their intended manner or as designed" (Compl. ¶32), which could form the basis for a future claim of induced infringement. The complaint does not currently plead specific facts to support inducement, such as citing user manuals that instruct infringing use.
- Willful Infringement: The complaint alleges willfulness based on notice provided by the filing of the lawsuit itself. The prayer for relief requests enhanced damages for "knowing and deliberate" conduct with notice "being made at least as early as the service date of this complaint" (Compl. p. 12, ¶d). No facts suggesting pre-suit knowledge of the patents are alleged.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of technical implementation: Can the patents' requirement for location detection "based upon...at least one beacon" be satisfied by the accused system's use of smartphone-native "geofencing," which primarily relies on GPS or Wi-Fi signals, or does the claim require the location to be determined from the properties of a signal transmitted by the Canary monitor itself?
- A key question of claim scope will be whether changing an operational mode that deactivates a feature within the Canary App (e.g., disabling the camera in "home" mode) constitutes "disabling at least one application," as required by the claims, or if the patent language requires the deactivation of an entire, distinct software program.
- An evidentiary question will be one of causality: Does the complaint provide sufficient evidence that the accused system's authorization to "establish presence on a network" is truly "responsive to" receiving a confirmation that an application has been disabled, as the claim requires, or are these functionalities merely concurrent but not causally linked in the claimed sequence?