DCT
1:21-cv-01545
Quartz Auto Tech LLC v. Grubhub Holdings Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Quartz Auto Technologies LLC (Delaware)
- Defendant: Grubhub Holdings, Inc. (Delaware)
- Plaintiff’s Counsel: Fitch, Even, Tabin & Flannery LLP
- Case Identification: 1:21-cv-01545, N.D. Ill., 05/11/2021
- Venue Allegations: Plaintiff alleges venue is proper in the Northern District of Illinois because Defendant resides in the district, maintains its principal place of business there, regularly conducts business, and has committed alleged acts of infringement in the district.
- Core Dispute: Plaintiff alleges that Defendant’s on-demand food delivery platform infringes three patents related to location-based event triggering, user activity analysis, and real-time management of service requests.
- Technical Context: The technologies at issue involve using a mobile device's location to trigger actions, analyze movement patterns to infer user activities, and dynamically assign tasks to available individuals, which are core functionalities in the on-demand logistics and "gig economy" sector.
- Key Procedural History: The asserted patents were originally assigned to International Business Machines Corporation (IBM) and were acquired by Plaintiff Quartz Auto in February 2020 after multiple intervening assignments. The complaint notes that the original complaint was served on March 22, 2021, establishing a date of alleged actual knowledge. Subsequent to the complaint, U.S. Patent No. 6,446,004 and U.S. Patent No. 7,370,085 each underwent ex parte reexamination proceedings where the patentability of all asserted claims was confirmed. U.S. Patent No. 7,958,215 was subject to a disclaimer filed December 16, 2020, disclaiming claims 1, 2, and 4.
Case Timeline
| Date | Event |
|---|---|
| 2001-02-28 | U.S. Patent No. 6,446,004 Priority Date |
| 2001-05-03 | U.S. Patent No. 7,370,085 Priority Date |
| 2002-09-03 | U.S. Patent No. 6,446,004 Issue Date |
| 2003-02-12 | U.S. Patent No. 7,958,215 Priority Date |
| 2008-05-06 | U.S. Patent No. 7,370,085 Issue Date |
| 2011-06-07 | U.S. Patent No. 7,958,215 Issue Date |
| 2020-02-12 | Asserted Patents assigned to Quartz Auto |
| 2020-12-16 | Disclaimer of claims 1, 2, and 4 of U.S. Patent No. 7,958,215 |
| 2021-03-22 | Original Complaint served on Defendant |
| 2021-05-11 | Amended Complaint Filed |
| 2023-12-14 | Reexamination Certificate issued for U.S. Patent No. 6,446,004 |
| 2024-04-17 | Reexamination Certificate issued for U.S. Patent No. 7,370,085 |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,446,004 - System and Method for Implementing Proximity or Location Driven Activities
Issued September 3, 2002
The Invention Explained
- Problem Addressed: The patent describes a need for a system to trigger events based on a user's proximity to a general type of location (e.g., any nearby movie theater) rather than a pre-specified, precise address, accommodating users with flexible or uncertain plans (’004 Patent, col. 1:50-58).
- The Patented Solution: The invention is a system and method where a user's mobile device, tracked via GPS, automatically triggers an action when it enters a defined proximity of a qualifying, but not pre-specified, destination. The system can infer the user's intent by accessing an "active calendaring system" and execute a transaction, such as purchasing a ticket or downloading information, without the user needing to stand in line ('004 Patent, col. 2:1-16, 17-23). The system architecture involves a user's mobile device, an active calendar module, and an event proximity server that processes the location data and triggers the activity ('004 Patent, Fig. 2).
- Technical Importance: The technology represents an early approach to context-aware computing, enabling services that react dynamically to a user's real-world position and inferred goals, a foundational concept for modern location-based advertising and services.
Key Claims at a Glance
- The complaint asserts independent claims 1 (a method) and 12 (a system) (Compl. ¶¶ 22, 35).
- Independent Claim 1 requires the steps of: (1) specifying an activity to be executed at an "indeterminate destination location"; (2) storing an executable software code for the activity; (3) determining a mobile device's current location; (4) determining if the destination location is within a predefined proximity range; (5) executing the software code when the device is in range; and (6) transmitting an address of the destination to the mobile device.
- Independent Claim 12 requires a system comprising: (1) a "calendar module" for specifying an activity at an indeterminate destination; (2) a server for storing executable code and determining the mobile device's location; and (3) the server performing the proximity determination, code execution, and address transmission.
- Plaintiff reserves the right to assert dependent claims 2-8, 11, and 13-18 (Compl. ¶ 21).
U.S. Patent No. 7,370,085 - Method, System, and Program for Providing User Location Information with a Personal Information Management Program
Issued May 6, 2008
The Invention Explained
- Problem Addressed: The patent notes a need for applications to more fully exploit wireless computing technology beyond limited Personal Information Management (PIM) functions to provide greater utility to mobile users (’085 Patent, col. 2:5-10).
- The Patented Solution: The invention gathers a series of time-stamped position coordinates from a user's wireless device and processes this data to determine if the "rate of change in distance per unit of time" indicates a predefined activity, such as driving or walking ('085 Patent, col. 10:40-49; Abstract). This derived activity information can then be used to supplement a PIM program, allowing a user to compare their scheduled events with their actual, automatically logged activities ('085 Patent, col. 10:49-56).
- Technical Importance: This technology focuses on abstracting high-level user context (the activity) from raw location data streams, a critical step for building sophisticated logistics, fleet management, and personal analytics systems.
Key Claims at a Glance
- The complaint asserts independent claim 1 (a method) (Compl. ¶ 62).
- Independent Claim 1 requires the steps of: (1) generating position coordinates of a wireless device and associated time information; (2) "processing" the position and time information to determine if a "rate of change in distance per unit of time" in a series of coordinates indicates a predefined activity; and (3) generating information on that determined activity.
- Plaintiff reserves the right to assert dependent claims 2, 8–11, 15, 16, and 19 (Compl. ¶ 61).
U.S. Patent No. 7,958,215 - System Management Using Real Time Collaboration
Issued June 7, 2011
- Technology Synopsis: This patent addresses delays in responding to IT system problems or other service requests. The solution uses real-time collaboration (e.g., instant messaging) to manage alerts by automatically detecting an available and qualified "candidate," assigning responsibility for the "problem condition" to that candidate, and automatically re-assigning it to a second candidate if the first does not accept responsibility within a set time (’215 Patent, Abstract; col. 2:1-14).
- Asserted Claims: The complaint asserts dependent claim 3 (which incorporates non-asserted claims 1 and 2) and independent claims 5 and 14 (Compl. ¶¶ 85, 94, 105).
- Accused Features: The complaint alleges that the Grubhub Platform’s dispatch system infringes by treating a delivery request as a "problem condition" and a driver as a "candidate." The accused features include automatically detecting an available driver, assigning the delivery request, receiving confirmation of acceptance, and assigning the request to a second driver if the first declines or fails to respond in time (Compl. ¶¶ 89-93).
III. The Accused Instrumentality
Product Identification
The "Grubhub Platform," which includes the Grubhub and Seamless consumer applications, the "Grubhub for Drivers" mobile application, and the associated server-side hardware and software (Compl. ¶ 15).
Functionality and Market Context
The Grubhub Platform is an online and mobile system for on-demand restaurant food delivery. Its core accused functionality involves coordinating a network of drivers to fulfill customer orders. The platform uses server-side algorithms and location data from drivers' mobile devices to match an available driver with a new delivery request from a merchant, typically based on proximity and other efficiency parameters (Compl. ¶¶ 14, 25, 27). The complaint emphasizes that Grubhub's business is centered on this on-demand delivery service (Compl. ¶ 16).
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
'004 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| specifying an activity to be executed at an indeterminate destination location | The Grubhub for Drivers app enables a driver to begin "taking offers," specifying availability for a pickup, without knowing the specific merchant location in advance. | ¶24 | col. 2:53-54 |
| storing an executable software code corresponding to the activity | Grubhub's servers store and use algorithms to match drivers with delivery requests and coordinate the delivery. | ¶25 | col. 9:15-18 |
| determining a current location of a mobile computing device | The Grubhub for Drivers app on the driver's phone periodically collects location information. | ¶26 | col. 5:29-33 |
| determining whether the destination location is within a predefined proximity range from the current location of the mobile computing device | The server's matching process pairs a driver with a nearby delivery pickup location that is within a predetermined proximity range. | ¶27 | col. 6:2-4 |
| executing the executable software code at a time when the destination location is within the proximity range of the mobile computing device | The server's matching algorithm executes to make a match only when an available delivery is within the proximity range of the driver. | ¶28 | col. 14:49-55 |
| and transmitting an address of the destination location to the mobile computing device | Upon matching, a server transmits an offer containing the merchant's address to the driver's app. | ¶29 | col. 14:55-57 |
Identified Points of Contention
- Scope Question: Does a driver indicating they are "taking offers" meet the claim limitation of "specifying an activity to be executed at an indeterminate destination location"? The analysis may focus on whether the driver specifies the activity, or merely their availability for an activity to be specified by the system.
- Scope Question: For system claim 12, the complaint alleges the "Scheduling" feature, where drivers select work "blocks," constitutes the claimed "calendar module" (Compl. ¶ 37). The construction of "calendar module" will be critical, specifically whether a work availability tool meets the definition as described in the patent, which contemplates a more traditional calendaring system ('004 Patent, col. 5:41-47).
'085 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| generating position coordinates of a wireless device and time information indicating times when the position coordinates were generated... | The Grubhub for Drivers app collects GPS-generated latitude and longitude coordinates and timestamps from the driver's mobile device. | ¶64 | col. 13:55-61 |
| processing the position coordinates and time information to determine whether a rate of change in distance per unit of time in a series of position coordinates at times indicates a predefined activity of the user... | Grubhub's servers process the location and time data to determine driver activities such as "driving to a pick-up location, picking up a delivery, driving to the drop-off location." | ¶65 | col. 10:40-49 |
| and generating information on the determined predefined activity for the activity time period. | The platform generates efficiency and reliability parameters, such as time spent on delivery segments and start/end locations. | ¶66 | col. 10:49-54 |
Identified Points of Contention
- Technical Question: What evidence demonstrates that the Grubhub Platform specifically determines user activity based on a "rate of change in distance per unit of time," as required by the claim? The infringement analysis will likely require discovery into whether the accused system uses this specific calculation or employs other heuristics (e.g., geofencing at known locations) to infer activities like "driving" or "picking up."
- Scope Question: The claim preamble recites a "method for providing user location information for a personal information management program." The extent to which the Grubhub Platform can be characterized as a "personal information management program" may be a point of contention requiring claim construction.
V. Key Claim Terms for Construction
Term: "indeterminate destination location" ('004 Patent, Claim 1)
- Context and Importance: This term is fundamental to the infringement theory of the '004 patent. The case may turn on whether a Grubhub driver, by signaling availability to "take offers" without knowing the specific restaurant, is specifying an activity at an "indeterminate" location as the patent contemplates.
- Intrinsic Evidence for a Broader Interpretation: The specification provides an example of a user wanting to watch a specific movie at a non-specific theater, stating "no exact physical location is specified except a distance threshold limit" ('004 Patent, col. 2:53-56). This could support an interpretation where the general category of the destination is known (a restaurant) but the specific instance is not.
- Intrinsic Evidence for a Narrower Interpretation: The patent repeatedly ties the concept to a user's specific desire or plan (e.g., "The user would like to watch a specific movie") ('004 Patent, col. 1:50-51). A defendant may argue the term requires a user-initiated goal for a specific type of destination, whereas a Grubhub driver is merely making themselves available for work assigned by the system.
Term: "rate of change in distance per unit of time" ('085 Patent, Claim 1)
- Context and Importance: This term defines the specific technical mechanism for how "activity" is determined. Infringement of the '085 patent hinges on whether Grubhub's servers actually perform this calculation. Practitioners may focus on this term because it appears to be a precise technical requirement, not a general functional goal.
- Intrinsic Evidence for a Broader Interpretation: The patent describes this as part of a process to "determine a predefined activity associated with the position records" ('085 Patent, col. 10:43-46), suggesting it is a means to an end. A plaintiff might argue that any speed or velocity calculation meets this limitation.
- Intrinsic Evidence for a Narrower Interpretation: The claim language is specific. A defendant could argue that systems using other methods to infer activity, such as analyzing dwell time within geofenced areas (e.g., a driver is stationary at a restaurant), do not literally meet this limitation, even if they achieve a similar outcome of identifying an "activity."
VI. Other Allegations
- Indirect Infringement: The complaint pleads indirect infringement in the alternative, should the court find that drivers are not employees. The allegations for inducement are based on Grubhub providing the platform designed to perform the infringing methods and providing instructions, terms of service, and support materials that allegedly instruct and encourage drivers to use the system in an infringing manner (Compl. ¶¶ 50-52).
- Willful Infringement: Willfulness is alleged based on Grubhub having actual knowledge of the asserted patents since at least March 22, 2021, the date the original complaint was served (Compl. ¶ 53). The allegation centers on continued infringement after receiving notice.
VII. Analyst’s Conclusion: Key Questions for the Case
- A foundational issue will be one of agency and control: can the actions performed on a driver's mobile device be attributed to Grubhub for direct infringement? The case may depend heavily on the factual determination of whether drivers are employees or, alternatively, whether Grubhub's direction and control over their use of the platform is sufficient to establish liability for joint infringement under 35 U.S.C. § 271(a).
- A central legal question will be one of definitional scope: can claim terms rooted in the 2001-2003 era of personal information managers and context-aware computing (e.g., "indeterminate destination location", "calendar module") be construed to read on the functional components of a modern, large-scale gig-economy dispatch system?
- A key evidentiary question will be one of technical implementation: does the accused Grubhub Platform operate in the specific manner required by the claims? For the '085 patent, the dispute may turn on whether Grubhub's system literally calculates a "rate of change in distance per unit of time" to infer driver activity, or if it uses alternative technical methods to achieve a similar commercial result.