DCT
1:15-cv-21651
Shipping Transit LLC v. Potpourri Group Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Shipping and Transit, LLC (Florida)
- Defendant: Potpourri Group, Inc. (Massachusetts)
- Plaintiff’s Counsel: WRM Law, LLC
- Case Identification: 1:15-cv-21651, S.D. Fla., 04/30/2015
- Venue Allegations: Plaintiff alleges venue is proper in the Southern District of Florida because Defendant conducts business in the district, sells and sends products and electronic notifications to customers in Florida, and has offices and agents in the state.
- Core Dispute: Plaintiff alleges that Defendant’s "ADVANCE SHIP NOTICE" and "SHIPPING CONFIRMATION EMAIL" services infringe four U.S. patents related to systems for vehicle tracking and advance notification of arrival.
- Technical Context: The technology at issue addresses methods for monitoring the location of a moving vehicle or package and automatically notifying a party of its impending arrival based on predefined events, a key function in modern logistics and e-commerce.
- Key Procedural History: The complaint discloses that two of the four patents-in-suit have undergone post-grant review at the U.S. Patent and Trademark Office. U.S. Patent No. 7,030,781 was the subject of an Ex Parte Reexamination, and U.S. Patent No. 6,904,359 was the subject of an Inter Partes Reexamination. Such proceedings can result in claim amendments or cancellations that may narrow the enforceable scope of the patents.
Case Timeline
| Date | Event |
|---|---|
| 1993-05-18 | Earliest Priority Date for ’970, ’359, and ’781 Patents |
| 2000-03-01 | Priority Date for ’998 Patent |
| 2005-06-07 | U.S. Patent No. 6,904,359 Issues |
| 2005-12-13 | U.S. Patent No. 6,975,998 Issues |
| 2006-04-18 | U.S. Patent No. 7,030,781 Issues |
| 2008-07-15 | U.S. Patent No. 7,400,970 Issues |
| 2010-05-25 | Reexamination Certificate for U.S. Patent No. 6,904,359 Issues |
| 2013-07-02 | Reexamination Certificate for U.S. Patent No. 7,030,781 Issues |
| 2015-04-30 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,400,970 - "System and Method for an Advance Notification System for Monitoring and Reporting Proximity of a Vehicle"
- Issued: July 15, 2008
The Invention Explained
- Problem Addressed: The patent’s background describes the inefficiency and uncertainty individuals face when waiting for the arrival of a vehicle, such as a school bus or a commercial delivery truck, which can be affected by traffic, maintenance issues, or other delays (U.S. Patent No. 7,400,970, col. 2:11-49).
- The Patented Solution: The invention provides an automated system where a user can request notifications about a vehicle's proximity. A central system monitors the vehicle's travel data and, in response to a user request, communicates information about its location or impending arrival to the user at a remote location (U.S. Patent No. 7,400,970, col. 2:50-65; Fig. 1). This allows the user to monitor a vehicle’s progress on demand.
- Technical Importance: The solution moves beyond simple, fixed-range proximity alerts to a networked system that allows users to actively query for and receive customized, real-time status updates on vehicle travel.
Key Claims at a Glance
- The complaint asserts unspecified "claims" of the patent (Compl. ¶14). Independent claim 1 is representative.
- Independent Claim 1 of the ’970 Patent includes the following essential elements:
- "means for enabling communication with a user that is designated to receive delivery of a package;"
- "means for presenting one or more selectable options to the user...including at least an activation option for instigating monitoring of travel data..."
- "means for requesting entry by the user of a package identification number..."
- "means for identifying the vehicle based upon the entry;"
- "means for requesting entry by the user of contact information..."
- "means for monitoring the travel data;"
- "means for initiating the notification communication pertaining to the vehicle with the user, based upon the travel data."
- Practitioners will note that this claim is drafted in "means-plus-function" format under 35 U.S.C. § 112(f). The scope of each "means for" element is limited to the corresponding structure described in the patent's specification and its equivalents.
U.S. Patent No. 6,904,359 - "Notification Systems and Methods with User-Definable Notifications Based Upon Occurance of Events"
- Issued: June 7, 2005
The Invention Explained
- Problem Addressed: The patent identifies the common problem of individuals and businesses having to wait for vehicles without precise information on their arrival time, leading to wasted time and inefficiency for passengers, delivery recipients, and companies (U.S. Patent No. 6,904,359, col. 1:40-54).
- The Patented Solution: The invention is a system that allows a user to predefine the specific event that will trigger an arrival notification. Instead of a fixed alert, a user can specify that they wish to be notified when a vehicle is a particular distance away, a certain amount of time away, or when it reaches a specific geographic location (U.S. Patent No. 6,904,359, col. 2:63–col. 3:4). This user-definable trigger is a core aspect of the described solution (U.S. Patent No. 6,904,359, Fig. 33).
- Technical Importance: This approach provides a high degree of customization, allowing users to tailor notifications to their specific schedules and needs rather than relying on a one-size-fits-all alert system.
Key Claims at a Glance
- The complaint asserts unspecified "claims" of the patent (Compl. ¶14). Independent claim 1, as amended during Inter Partes Reexamination, is representative.
- Independent Claim 1 of the ’359 Patent (as amended) includes the following essential elements:
- "permitting the user to predefine one or more events that will cause creation and communication of the vehicle status report..."
- "permitting the user to establish a first communication link with a host computer system...the vehicle whose travel is being monitored...the host computer system being remote from the vehicle;"
- "receiving during the first communication link...an identification of the one or more events relating to the status, wherein the one or more events comprises at least one of the following: distance information...location information...time information...or a number of one or more stops..."
- "storing the predefined one or more events..."
- "analyzing data indicative of travel of the mobile vehicle;"
- "initiating a second communication link from the host computer system to a remote communications device to be notified...based upon occurrence of the predefined one or more events..."
- "delivering the vehicle status report from the host computer..."
Multi-Patent Capsule: U.S. Patent No. 6,975,998
- Patent Identification: U.S. Patent No. 6,975,998, "Package Delivery Notification System and Method," issued December 13, 2005.
- Technology Synopsis: The ’998 Patent describes a system that provides advance notification of a package delivery. The system stores package data, determines an order of delivery for a vehicle, and uses this schedule to transmit a notification message to a recipient indicating a precise, approximate time that the package is expected to arrive (U.S. Patent No. 6,975,998, Abstract).
- Asserted Claims: The complaint asserts unspecified "claims" (Compl. ¶14); Independent Claim 1 is representative.
- Accused Features: The "ADVANCE SHIP NOTICE" and "SHIPPING CONFIRMATION EMAIL" services (Compl. ¶14).
Multi-Patent Capsule: U.S. Patent No. 7,030,781
- Patent Identification: U.S. Patent No. 7,030,781, "Notification System and Method that Informs a Party of Vehicle Delay," issued April 18, 2006.
- Technology Synopsis: The ’781 Patent discloses a system for managing vehicle delays. An on-board vehicle unit (VCU) compares its actual progress to a pre-programmed schedule. If the vehicle is ahead of or behind schedule, it communicates this deviation to a base station control unit (BSCU), which then adjusts its schedule for notifying passengers of the vehicle's arrival (U.S. Patent No. 7,030,781, Abstract). The patent's Ex Parte Reexamination Certificate confirms claims 5 and 11 but cancels claims 1-4, 6-10, and 12-14.
- Asserted Claims: The complaint asserts unspecified "claims" (Compl. ¶14); Independent Claim 5 is a representative surviving claim.
- Accused Features: The "ADVANCE SHIP NOTICE" and "SHIPPING CONFIRMATION EMAIL" services (Compl. ¶14).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are Defendant’s "ADVANCE SHIP NOTICE" and "SHIPPING CONFIRMATION EMAIL" services (Compl. ¶14).
Functionality and Market Context
- The complaint alleges these are services that use "tracking and notification technologies" (Compl. ¶14). The complaint does not provide sufficient detail for analysis of the specific technical implementation or operation of these services. No screenshots, technical documents, or detailed descriptions of how the services function are included in the complaint. No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint alleges infringement in a conclusory manner, stating that "every claim limitation, or its equivalent, is found in" the accused services, but provides no specific mapping of product features to claim elements (Compl. ¶14).
U.S. Patent No. 7,400,970 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| "means for enabling communication with a user that is designated to receive delivery of a package" | Defendant’s services allegedly provide a means to communicate with package recipients. | ¶14 | col. 4:5-15 |
| "means for presenting one or more selectable options to the user...including at least an activation option for instigating monitoring of travel data" | Defendant’s services allegedly present options to users for monitoring packages. | ¶14 | col. 4:16-24 |
| "means for requesting entry by the user of a package identification number or package delivery number" | Defendant’s services allegedly request a package number from the user. | ¶14 | col. 4:25-29 |
| "means for identifying the vehicle based upon the entry" | Defendant’s services allegedly identify the delivery vehicle associated with the package number. | ¶14 | col. 4:30-32 |
| "means for monitoring the travel data" | Defendant’s services allegedly use "tracking technologies" to monitor the package/vehicle. | ¶14 | col. 4:37-39 |
| "means for initiating the notification communication pertaining to the vehicle with the user, based upon the travel data" | Defendant’s "SHIPPING CONFIRMATION EMAIL" service allegedly initiates a notification to the user. | ¶14 | col. 4:43-46 |
U.S. Patent No. 6,904,359 Infringement Allegations
| Claim Element (from Independent Claim 1, as amended) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| "permitting the user to predefine one or more events that will cause creation and communication of the vehicle status report" | Defendant’s services allegedly permit users to predefine notification triggers. | ¶14 | col. 35:23-28 |
| "analyzing data indicative of travel of the mobile vehicle" | Defendant’s services allegedly use "tracking technologies" to analyze vehicle movement. | ¶14 | col. 35:48-50 |
| "initiating a second communication link...to be notified, when appropriate, based upon occurrence of the predefined one or more events" | Defendant’s services allegedly send a notification email when a predefined event occurs. | ¶14 | col. 35:51-56 |
| "delivering the vehicle status report from the host computer to the notified remote communications device" | Defendant’s services allegedly deliver a status report, such as a "SHIPPING CONFIRMATION EMAIL," to the user. | ¶14 | col. 35:57-61 |
Identified Points of Contention:
- Pleading Sufficiency: A primary question will be whether the complaint's generalized allegations meet the plausibility pleading standards established by Twombly and Iqbal. The complaint does not allege specific facts explaining how the accused "ADVANCE SHIP NOTICE" and "SHIPPING CONFIRMATION EMAIL" services perform the functions required by each claim limitation.
- Scope Questions (’970 Patent): For the means-plus-function claims of the ’970 Patent, a central issue will be identifying the corresponding structure disclosed in the specification for each "means for" element and then determining whether the accused services utilize an identical or equivalent structure.
- Technical Questions (’359 Patent): A key question is what evidence the complaint provides that Defendant's services allow a user to "predefine" an event (e.g., notification at 5 miles out, or upon crossing a specific street) as required by the claim, versus simply providing a standardized, system-generated notification.
V. Key Claim Terms for Construction
For the ’970 Patent:
- The Term: "means for monitoring the travel data" (from Claim 1)
- Context and Importance: As a means-plus-function element, its scope is not limitless but is confined to the specific algorithm or structure disclosed in the patent for performing the monitoring function. Practitioners may focus on this term because the infringement analysis will depend entirely on whether the accused services use the same or an equivalent structure to that disclosed in the ’970 Patent's specification.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term itself is functional, and a party might argue for a broad range of equivalents.
- Evidence for a Narrower Interpretation: The specification describes the corresponding structure as a "monitoring mechanism 69" that compares travel data from a vehicle to preference data in a storage unit (U.S. Patent No. 7,400,970, col. 8:44-51; Fig. 5). This specific implementation will likely define the structural boundaries of the claim term.
For the ’359 Patent:
- The Term: "predefine one or more events" (from Claim 1)
- Context and Importance: The core of the infringement question for the ’359 Patent may hinge on this term. Practitioners may focus on this term because its construction will determine whether a standard, system-initiated shipping notification falls within the claim, or if the claim requires an affirmative, user-customized trigger.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification broadly states the invention is for "allowing a user to define when a user will receive a vehicle status report" (U.S. Patent No. 6,904,359, Abstract).
- Evidence for a Narrower Interpretation: The specification provides detailed embodiments where the user actively selects notification triggers, such as "Time Before Arriving," "Distance To Be Traveled Before Arriving," or "At A Location Of Your Choice," using a graphical user interface (U.S. Patent No. 6,904,359, Figs. 33-36, col. 5:62–col. 6:4). These specific examples suggest "predefine" requires active user input to set a custom rule, not merely consenting to receive notifications.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement and contributory infringement with conclusory language, stating Defendant acted "with knowledge that the induced acts constituted infringement, or acted with willful blindness" (Compl. ¶17). It does not plead specific facts demonstrating Defendant’s knowledge of the patents or its intent to cause infringement by third parties.
- Willful Infringement: The complaint alleges willfulness through the phrase "willful blindness" and requests increased damages (Compl. ¶17; p. 4, ¶B). No specific facts are alleged to support a claim of pre-suit knowledge or egregious conduct.
VII. Analyst’s Conclusion: Key Questions for the Case
- Pleading Sufficiency: A threshold issue will be one of factual specificity: Do the complaint's allegations, which state only that Defendant's named services use "tracking and notification technologies" that meet every claim element, provide sufficient factual content to state a plausible claim for relief, or will they be found deficient under the Twombly/Iqbal pleading standard?
- Claim Scope and Construction: The case will likely turn on questions of definitional scope. For the '970 patent, what is the specific structure corresponding to the "means for monitoring" and other means-plus-function limitations, and is that structure present in the accused services? For the '359 patent, does the term "predefine," in the context of the patent's specification, require active, customized rule-setting by a user, or can it cover a user's passive receipt of a standard system-generated shipping notice?
- Impact of Reexamination History: A central legal question will be the effect of post-grant proceedings: How will the claim amendments made during the Inter Partes Reexamination of the ’359 Patent, and the cancellation of numerous claims during the Ex Parte Reexamination of the ’781 Patent, limit the plaintiff's infringement theories and potentially give rise to arguments of prosecution history estoppel, thereby narrowing the enforceable scope of the asserted portfolio?