DCT
1:18-cv-24382
Permitrocket Software LLC v. E Plan Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: PermitRocket Software LLC d/b/a ePermitHub (Florida)
- Defendant: E-Plan, Inc. (California)
- Plaintiff’s Counsel: Kenny Nachwalter, P.A.; Armstrong Teasdale LLP
- Case Identification: 1:18-cv-24382, S.D. Fla., 10/23/2018
- Venue Allegations: Plaintiff alleges venue is proper in the Southern District of Florida, asserting that Defendant E-Plan has engaged in patent enforcement activities within the state, including sending an infringement letter to the Florida-based Plaintiff and informing a Florida-based customer of Plaintiff’s alleged infringement.
- Core Dispute: Plaintiff seeks a declaratory judgment that its "Digital Plan Room" software does not infringe five of Defendant’s patents related to systems for the electronic review and management of construction plans and associated documents.
- Technical Context: The technology involves web-based platforms for managing the complex process of reviewing, commenting on, and approving electronic building plans, a critical function for municipal governments and the construction industry.
- Key Procedural History: The action was precipitated by a February 22, 2018 letter from Defendant’s counsel to Plaintiff’s predecessor, identifying the Patents-in-Suit and alleging infringement. Plaintiff also alleges that on October 12, 2018, Defendant’s representative told one of Plaintiff’s customers that Plaintiff’s products infringe and that Defendant intended to file a lawsuit. These events establish the basis for the "actual, substantial, and continuing justiciable controversy" required for a declaratory judgment action.
Case Timeline
| Date | Event |
|---|---|
| 2007-09-11 | Priority Date (’222, ’617, ’886 Patents) |
| 2011-07-05 | ’222 Patent Issued |
| 2012-07-25 | Priority Date (’643 Patent) |
| 2013-11-26 | ’617 Patent Issued |
| 2015-08-17 | Priority Date (’024 Patent) |
| 2017-06-20 | ’643 Patent Issued |
| 2017-08-01 | ’886 Patent Issued |
| 2017-10-17 | ’024 Patent Issued |
| 2018-02-22 | E-Plan sends infringement letter to ePermitHub's predecessor |
| 2018-10-12 | E-Plan representative allegedly states intent to sue |
| 2018-10-23 | Complaint for Declaratory Judgment filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,975,222 - "System and Method for Dynamic Linking Between Graphic Documents and Comment Data Bases"
The Invention Explained
- Problem Addressed: The patent describes the inefficiency of then-current industry practices for reviewing construction documents, which relied on separate spreadsheets and manual markups of graphic plans, requiring "inefficient, manual correlation of review documentation records and the subject graphic documents" (’222 Patent, col. 1:24-28).
- The Patented Solution: The invention is a computer-implemented method where a "base graphic representation" (e.g., a building plan) is linked to a "coordinate overlay grid." This allows a user to place an identifier (e.g., a symbol) at a specific location on the graphic, which in turn links to a text or graphic comment. The comment can then be displayed by activating the identifier, such as by moving a cursor over its location on the display (’222 Patent, Abstract; col. 2:17-37). The system also describes a "Web whiteboard module" to permit multiple users to collaborate on and mark up the graphic in real-time (’222 Patent, col. 4:11-17).
- Technical Importance: This approach sought to create an integrated and dynamic environment for plan review, streamlining collaboration among reviewers, designers, and owners by directly linking commentary to specific points on a drawing within a single system (’222 Patent, col. 1:13-17).
Key Claims at a Glance
- The complaint seeks a judgment of non-infringement of the ’222 Patent without specifying claims (Compl. ¶20). Independent claim 1 is a representative method claim with the following essential elements:
- Recording a base graphic representation in a computer system, including converting it to a web-supportable format.
- Linking a coordinate overlay grid to the base graphic.
- Using a notation subprogram to allow a user to place a symbol and identifier at a coordinate position on the grid.
- Recording a text comment data record referenced to the identifier.
- Accessing and displaying the comment by "activating said linked data storage structure for a desired coordinate position found by detecting the movement of a cursor over said base graphic representation."
- Providing a web whiteboard module for real-time multi-user collaboration and markup.
- Entering a graphic overlay representation registered to the base graphic.
U.S. Patent No. 8,595,617 - "System and Method for Dynamic Linking Between Graphic Documents and Comment Data Bases"
The Invention Explained
- Problem Addressed: As a continuation of the application leading to the ’222 Patent, the ’617 Patent addresses the same problem of inefficient and disconnected review processes for construction documents (’617 Patent, col. 1:25-33).
- The Patented Solution: The patent describes a similar method of linking a coordinate overlay grid to a base graphic to associate comments with specific locations. A key part of the described solution is accessing and displaying a comment by "detecting the movement of a cursor over said base graphic representation" to a location with an identifier (’617 Patent, col. 5:42-46). The invention also adds the step of identifying differences between the base graphic and at least one other graphic representation (’617 Patent, col. 5:51-54).
- Technical Importance: This patent builds on the prior invention by adding functionality for version comparison and database querying, further enhancing the system's utility for managing complex, evolving project plans (’617 Patent, col. 5:55-59).
Key Claims at a Glance
- The complaint seeks a judgment of non-infringement of the ’617 Patent without specifying claims (Compl. ¶24). Independent claim 1 is a representative method claim with the following essential elements:
- Recording a base graphic representation of a project.
- Linking a coordinate overlay grid to the base graphic.
- Enabling a user to identify a coordinate position with a symbol and identifier.
- Recording a text comment data record referenced to the identifier.
- Accessing and displaying the comment by "detecting the movement of a cursor over said base graphic representation."
- Identifying differences between the base graphic and another graphic representation.
- Providing a query program to search and access databases.
U.S. Patent No. 9,720,886 - "System and Method for Dynamic Linking Between Graphic Documents and Comment Data Bases"
Technology Synopsis
This patent, part of the same family as the ’222 and ’617 patents, further describes a system for linking comments to specific coordinates on a graphic document. A central feature is the ability to display a comment in response to a user positioning a cursor over an identifier on the graphic representation (’886 Patent, Claim 1).
Asserted Claims
The complaint does not specify claims; independent claim 1 is representative.
Accused Features
The complaint alleges non-infringement on the basis that its product does not "display comment data based on a coordinate position found by detecting movement of a cursor" (Compl. ¶27).
U.S. Patent No. 9,684,643 - "Management of Building Plan Documents Utilizing Comments and a Correction List"
Technology Synopsis
This patent addresses the management of building plan comments by associating metadata (e.g., project type, discipline, category) with comments. The system allows a user to search for comments and, critically, provides a user interface through which a user can select comments to be included in a generated "plan correction list" (’643 Patent, Abstract; col. 2:10-15).
Asserted Claims
The complaint does not specify claims; independent claim 1 is representative.
Accused Features
The complaint alleges non-infringement because its product allegedly does not provide a search user interface or a user interface for selecting comments to be included in a plan correction list (Compl. ¶31).
U.S. Patent No. 9,792,024 - "Systems and Methods for Management and Processing of Electronic Documents Using Video Annotations"
Technology Synopsis
This patent describes a system for annotating defects in video files related to building projects. The invention provides a toolbox of geometrical shapes that a user can drag and drop onto a video frame to highlight a defect, with the system then associating the annotation with the video file and a specific task (’024 Patent, Abstract).
Asserted Claims
The complaint does not specify claims; independent claim 1 is representative.
Accused Features
The complaint alleges non-infringement on the grounds that its product "does not involve or support the use of video files" (Compl. ¶35).
III. The Accused Instrumentality
Product Identification
- "ePermitHub's Digital Plan Room" product (Compl. ¶19, ¶23, ¶27, ¶31, ¶35).
Functionality and Market Context
- The complaint describes the accused product as an "online, web-based platform that facilitates communication between design professionals and the authority having jurisdiction over land development and construction activities for the purpose of plan review and approval" (Compl. ¶8).
- The complaint offers very little detail on the affirmative functionality of the product, focusing instead on what it allegedly does not do. It states that E-Plan is a "direct competitor" of ePermitHub in the United States (Compl. ¶9).
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint pleads for declaratory judgment of non-infringement. The analysis below summarizes the plaintiff's stated bases for why its product does not infringe the asserted patents.
’222 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| e) accessing and providing for display a user provided text comment data record by activating said linked data storage structure for a desired coordinate position found by detecting the movement of a cursor over said base graphic representation on a display by the user to a location having a symbol and identifier | The Digital Plan Room product allegedly does not display comment data based on a coordinate position found by detecting cursor movement. | ¶19 | col. 4:26-36 |
’617 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| accessing and providing for display the text comment data record in a worldwide web format document at least in part by activating said linked data storage structure for a desired coordinate position found by detecting the movement of a cursor over said base graphic representation on a display... | The Digital Plan Room product allegedly does not display comment data based on a coordinate position found by detecting cursor movement. | ¶23 | col. 5:40-49 |
Identified Points of Contention
- Scope Questions: A central question for the ’222, ’617, and ’886 patents is the scope of the phrase "detecting the movement of a cursor." Does this phrase require a specific "hover-to-reveal" or "mouse-over" event to trigger the display of a comment, or could it be construed more broadly to cover other user actions, such as clicking on a static icon that is positioned under the cursor?
- Technical Questions: The primary technical question is one of evidence. The complaint makes negative allegations about what its product does not do but is silent on the actual mechanism used to display comments. A key factual dispute will therefore be determining how the ePermitHub product actually links and displays comments, and whether that mechanism falls within the scope of the claims. For the ’643 and ’024 patents, the questions are more direct: does the product provide a "plan correction list" feature, and does it use "video files" at all?
V. Key Claim Terms for Construction
- The Term: "detecting the movement of a cursor over said base graphic representation" (’222 Patent, Claim 1; ’617 Patent, Claim 1)
- Context and Importance: This phrase is the sole basis for the non-infringement allegations for three of the five asserted patents (’222, ’617, and ’886 patents) (Compl. ¶19, ¶23, ¶27). The construction of this term—whether it is limited to a specific type of "hover" action or covers a broader range of user interactions involving a cursor—will be critical to the infringement analysis for this patent family.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patentee (E-Plan) may argue the term is functional and covers any method where the system uses the cursor's current position to activate a feature. The specification describes "activating said linked data storage structure for a desired coordinate position found by detecting the movement of a cursor over said base graphic representation" (’222 Patent, col. 4:30-33). This could be argued to encompass clicking an icon at the cursor’s location, not just passively hovering.
- Evidence for a Narrower Interpretation: The declaratory judgment plaintiff (ePermitHub) may argue that the plain meaning implies an active detection of cursor motion into a specific zone, distinct from a user-initiated click on a static object. The specification states a comment may be accessed and displayed "by positioning a cursor on a desired coordinate position" (’222 Patent, col. 2:34-35), which could support an interpretation where the act of positioning itself, without a separate click event, is the trigger.
VI. Other Allegations
- Indirect Infringement: The complaint includes a blanket denial of direct and indirect infringement for each of the patents-in-suit (e.g., Compl. ¶19, ¶23, ¶27, ¶31, ¶35). However, the complaint does not provide any specific facts to support or analyze the basis for its denial of indirect infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of claim scope and technical operation: Can the claim term "detecting the movement of a cursor," which appears in three of the asserted patents, be construed to read on the specific user interface mechanism employed by the accused "Digital Plan Room" product, or is there a fundamental mismatch between the claimed method and the accused functionality?
- A key evidentiary question will be one of factual functionality: Does the accused product, as a matter of fact, incorporate features for generating a "plan correction list" as required by the ’643 patent, and does it, as a matter of fact, "involve or support the use of video files" as claimed in the ’024 patent? The complaint’s denials on these points create straightforward factual disputes.
- The case will also depend on the sufficiency of evidence: Given the complaint's focus on negative allegations (what the product does not do), the outcome will hinge on the evidence presented by both parties regarding how the accused product actually operates in comparison to the specific limitations recited in the asserted patent claims.