DCT
1:22-cv-00597
BoardActive Corp v. Foursquare Labs Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: BoardActive Corporation (Georgia)
- Defendant: Foursquare Labs, Inc. (Delaware)
- Plaintiff’s Counsel: Armstrong Teasdale LLP
- Case Identification: 1:22-cv-00597, D. Del., 04/04/2023
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendant is incorporated in Delaware, conducts substantial business in the district, and has allegedly committed acts of patent infringement there.
- Core Dispute: Plaintiff alleges that Defendant’s location-based marketing solutions, particularly its Pilgrim SDK, infringe two patents related to delivering interactive, location- and time-based advertising to mobile devices.
- Technical Context: The technology at issue operates in the mobile advertising sector, aiming to make traditional out-of-home advertising (like billboards) interactive and measurable by delivering related digital content to consumers' mobile devices based on their location and behavior.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant with pre-suit notice of its patent portfolio, including the patents-in-suit, via a letter dated May 19, 2020. Subsequent to the filing of this First Amended Complaint, two Inter Partes Review (IPR) proceedings were initiated against the patents-in-suit (IPR2023-00918 and IR2023-00919). These proceedings ultimately resulted in the cancellation of all claims of both the '620 Patent and the '108 Patent, a development that is dispositive for the infringement claims.
Case Timeline
| Date | Event |
|---|---|
| 2017-04-10 | Earliest Priority Date for ’620 and ’108 Patents |
| 2020-04-14 | U.S. Patent No. 10,621,620 Issued |
| 2020-05-19 | Plaintiff sends notice letter to Defendant |
| 2020-06-23 | U.S. Patent No. 10,692,108 Issued |
| 2023-04-04 | First Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,621,620 - “Platform for Location and Time Based Advertising”
The Invention Explained
- Problem Addressed: The patent identifies the shortcomings of traditional and digital signage, which are typically non-interactive. This passivity burdens consumers who must remember or write down information to act on an advertisement, thereby reducing the ad's effectiveness and measurability (Compl. ¶¶ 8-9; ’620 Patent, col. 2:16-29).
- The Patented Solution: The invention is a platform that allows an administrator to register physical or virtual assets (e.g., a billboard's location), associate media content with those assets, and define rules for delivering that content to a consumer's mobile device. This delivery is triggered by specific conditions, such as the consumer's location or the time of day, transforming a passive viewing into an interactive experience on the user's device (’620 Patent, Abstract; col. 7:21-34).
- Technical Importance: The technology sought to create a direct, actionable link between out-of-home advertising and a consumer's mobile device, making static advertisements dynamically interactive and providing advertisers with engagement analytics (’620 Patent, col. 2:52-57).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 1 (Compl. ¶31). The right to assert other claims is reserved.
- Essential elements of independent claim 1, a method, include:
- Registering asset data, including a first geolocation for a physical or virtual asset.
- Receiving media content to associate with the asset.
- Specifying a plurality of rules, including a first rule for delivery based on consumer profile data and a second rule for updating the content based on a second geolocation.
- Receiving an activation command based on a spatial, time-based, or event-based trigger.
- Comparing the first rule and profile data to determine whether to deliver the media content.
- Delivering the content when the first rule is met.
- Tracking the consumer's location after delivery.
- Comparing the second rule and the tracked location to determine whether to update the content.
- Updating the media content when the second rule is met.
U.S. Patent No. 10,692,108 - “Platform for Location and Time Based Advertising”
The Invention Explained
- Problem Addressed: Similar to the ’620 Patent, the invention addresses the non-interactive nature of conventional advertising and the resulting difficulty for advertisers to measure reach and effectiveness (Compl. ¶¶ 8-9; ’108 Patent, col. 2:25-34).
- The Patented Solution: The invention describes a method for creating a "content distribution campaign" by defining a set of rules, including a specific geolocation, a time period, and at least one action to be performed by a consumer. The system then tracks the consumer to confirm they have met the specified conditions (e.g., are within a location radius and have performed the action) before "establishing that the consumer is eligible" for the campaign (’108 Patent, Abstract; col. 3:20-24).
- Technical Importance: This approach focuses on qualifying consumers for a campaign by verifying a sequence of events, enabling more complex, conditional advertising than simple proximity-based alerts (’108 Patent, col. 3:1-9).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 13 (Compl. ¶46). The right to assert other claims is reserved.
- Essential elements of independent claim 13, a method, include:
- Specifying a content distribution campaign with media content associated with a geolocation.
- Specifying a plurality of rules, including the geolocation, a time period, and at least one action for the consumer to perform.
- Receiving a first indication that the consumer is within a radius of the geolocation.
- Tracking the consumer to determine if they have performed the specified action.
- Establishing that the consumer is eligible for the campaign when the rules are satisfied.
III. The Accused Instrumentality
Product Identification
The accused products include the Foursquare Console, Foursquare City Guide, Foursquare Swarm, Places API, and Pilgrim SDK (Compl. ¶23). The infringement allegations center on the functionality of the Pilgrim SDK.
Functionality and Market Context
- The complaint alleges that the Pilgrim SDK is a software development kit that enables app developers to incorporate location-based features (Compl. ¶23). Its functionalities allegedly include creating "geofences" around locations to trigger events, delivering "personalized, timely notifications" to users when they enter or exit a venue, and serving "dynamic content" that adjusts based on a user's environment, location, and behavior (Compl. ¶¶32, 33, 34). The complaint presents a screenshot of Foursquare's "Event Types" table, which details triggers such as "entrance," "dwell," and "exit" from a geofence (Compl. ¶35, p. 14).
- The Pilgrim SDK is positioned as a tool for developers to "drive engagement and revenue" by creating "timely, context driven app experiences," indicating its commercial importance in the mobile application ecosystem (Compl. ¶40).
IV. Analysis of Infringement Allegations
’620 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| registering asset data, wherein registering the asset data comprises... registering a first geolocation associated with... a physical asset, and a virtual asset | The Pilgrim SDK allows developers to create and register different types of geofences (e.g., around a specific venue, chain, or lat/long pair), which constitute geolocations associated with physical or virtual assets. | ¶32 | col. 37:45-51 |
| specifying a plurality of rules... specifying: a first rule for delivering the media content, the first rule being associated with at least one element of profile data... and a second rule for updating... associated with a second geolocation | The SDK allegedly uses rules for "Dynamic Creative" ads that adjust to "user behavior" (first rule) and "Dynamic Distance Overlay" which updates based on a user's changing location (second rule and geolocation). | ¶34 | col. 38:1-8 |
| receiving an activation command for triggering a delivery... wherein receiving the activation command comprises at least one of... determining that a spatial trigger has occurred | The SDK allegedly uses "Event Types" like "entrance" and "exit" from a geofence as spatial triggers for delivering content. The complaint provides a screenshot of a table listing these event types. | ¶35 | col. 38:8-14 |
| delivering the media content to a device associated with the consumer when the first rule is met | The SDK allegedly delivers "personalized, timely notifications or... dynamic content to users based on where they are" and "proximity alerts when customers enter or exit a venue." | ¶37 | col. 38:18-22 |
| comparing the second rule and the location in order to determine whether to update the media content; and updating the media content... when the second rule is met | The "Dynamic Distance Overlay" feature allegedly updates text on an ad to show how far a user is from a business, which constitutes updating media content based on a new location. | ¶38 | col. 38:25-30 |
Identified Points of Contention
- Scope Questions: The claim requires a specific two-part rule structure: a "first rule" for initial delivery based on profile data and a "second rule" for updating based on a second geolocation. A potential dispute is whether Foursquare's system, as described in the complaint, actually implements this distinct two-rule framework or uses a more integrated, event-driven logic that does not map directly onto the claim's structure.
- Technical Questions: What evidence does the complaint provide that the Pilgrim SDK performs the explicit step of "comparing the first rule and the at least one element of profile data" before delivery? The allegations focus on delivery based on location triggers, but the link to a distinct comparison with "profile data" as a precondition may be a point of contention.
’108 Patent Infringement Allegations
| Claim Element (from Independent Claim 13) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| specifying a content distribution campaign comprising media content associated with a geolocation | The Pilgrim SDK is allegedly used to create "context-driven app experiences" and "personalized, timely notifications" associated with specific geolocations (geofences). | ¶47 | col. 38:49-53 |
| specifying a plurality of rules... comprising: specifying the geolocation, specifying a period of time, and specifying at least one action to be performed by a consumer | The SDK allegedly allows developers to specify geofences (geolocation), "dwell" time (period of time), and required user interactions like an "Active Check-in" (action to be performed). | ¶48 | col. 38:53-59 |
| receiving a first indication that the consumer is within a radius of the geolocation | The SDK's "entrance" event type is "Triggered on the first GPS signal that is received inside of the geofence," which the complaint alleges meets this limitation. | ¶49 | col. 38:59-61 |
| tracking the consumer... to determine whether the consumer has performed the at least one action | The SDK allegedly tracks "Engagement Metrics" such as ad clicks and "Secondary Action Rate" to measure how an ad leads to another action, allegedly for the purpose of determining if the required action was performed. | ¶49 | col. 38:62-65 |
| establishing that the consumer is eligible for the content distribution campaign when the plurality of rules is satisfied | The complaint alleges that the SDK performs this step as a result of the preceding rule-based tracking and determinations. | ¶49 | col. 39:1-3 |
Identified Points of Contention
- Scope Questions: The key dispute may turn on the meaning of "establishing that the consumer is eligible." Does this require a specific, affirmative computational step where a consumer's status is formally changed to "eligible," or can it be interpreted as the logical outcome of the rules being met, leading directly to content delivery?
- Technical Questions: Does the tracking of general "Engagement Metrics," as described by Foursquare, equate to the claim's requirement of tracking the consumer specifically "to determine whether the consumer has performed the at least one action" for the purpose of satisfying the campaign rules? The defense could argue that engagement metrics are for general analytics, not for satisfying a specific eligibility condition as claimed.
V. Key Claim Terms for Construction
’620 Patent: "a second rule for updating the media content, the second rule being associated with a second geolocation"
Context and Importance
This limitation is central to the infringement theory, as it requires more than just an initial, location-based ad delivery. The case for infringement depends on showing that Foursquare's system has a distinct, secondary rule specifically for updating already-delivered content based on a new location, separate from the initial delivery rule.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The specification discusses delivering content that is interactive and can be updated, suggesting a flexible system. For example, it mentions that "the content of the AdDrop™ may be configured for functional interactivity with consumer" (’620 Patent, col. 8:61-63).
- Evidence for a Narrower Interpretation: The claim language itself is highly structured, explicitly separating a "first rule" from a "second rule for updating." The absence of a clear, corresponding two-part rule embodiment in the specification may lead a court to construe the term narrowly, requiring a clear separation of functions that may not exist in the accused product.
’108 Patent: "establishing that the consumer is eligible for the content distribution campaign"
Context and Importance
This is the culminating step of the claimed method. The infringement analysis hinges on whether the accused Pilgrim SDK performs an action that can be defined as "establishing eligibility." Practitioners may focus on this term because it implies a specific outcome or state change, not just a series of triggered events.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: A party could argue the term simply means that the conditions precedent for receiving the campaign reward have been met, a logical conclusion rather than a specific software action. The patent states the method is for providing a "platform for location and time-based advertisements" (’108 Patent, Title), suggesting a focus on the overall outcome.
- Evidence for a Narrower Interpretation: The word "establishing" suggests an affirmative act of determination and recording. A court could require evidence that the system specifically sets a flag, creates a record, or otherwise formally designates the consumer's status as "eligible." The specification does not explicitly define the term, leaving it open to construction based on the full context of the claim and the problem the patent purports to solve.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Foursquare induces infringement by providing the Pilgrim SDK to its customers and partners, along with product documentation and advertising that allegedly instruct them on how to implement the infringing functionalities (Compl. ¶¶39-40, 50). It also alleges contributory infringement, stating the accused products are not staple articles of commerce suitable for non-infringing use (Compl. ¶¶41, 51).
- Willful Infringement: The claim for willfulness is based on Foursquare’s alleged actual knowledge of the patents-in-suit. The complaint cites a "Notice Letter" sent on May 19, 2020, which allegedly identified the ’620 Patent and the pending application that became the ’108 Patent (Compl. ¶¶24, 28, 42).
VII. Analyst’s Conclusion: Key Questions for the Case
The subsequent cancellation of all asserted claims in IPR proceedings renders the infringement analysis a historical exercise. Had the patents remained valid, the case would likely have centered on the following core questions:
- A primary issue would have been one of procedural finality: Given the IPR proceedings that invalidated all asserted claims, the foundational basis for the infringement suit has been eliminated, making the substantive technical questions moot for future litigation.
- A key historical question would have been one of structural mapping: Could the plaintiff have demonstrated that the accused Pilgrim SDK’s event-driven architecture implements the specific, sequential, and structurally distinct two-rule system (a "first rule" for delivery and a "second rule" for updating) required by claim 1 of the ’620 Patent, or is there a fundamental mismatch in system architecture?
- A central evidentiary question would have been one of functional definition: Does the accused system’s collection of general "Engagement Metrics" perform the specific, dispositive function of "establishing that the consumer is eligible" for a campaign as recited in claim 13 of the ’108 Patent, or would this have been construed as an overbroad interpretation of the product's functionality?