Stump Printing Co Inc v. Electronic Communication Tech LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Stump Printing Co., Inc. (“Shindigz”) (Indiana)
  • Defendant: Electronic Communication Technologies, LLC (“ECT”) (Florida)
  • Plaintiff’s Counsel: Barrett McNagny LLP
• Case Identification: 1:17-cv-00128, USDC IN/ND, 03/30/2017
• Venue Allegations: Plaintiff alleges venue is proper because Defendant sent threatening letters into the district and because Plaintiff has a regular and established place of business in the district.
• Core Dispute: Plaintiff seeks a declaratory judgment that its e-commerce order and shipping notification systems do not infringe Defendant’s patents, and that those patents are invalid and ineligible for patenting, in response to infringement allegations from Defendant.
• Technical Context: The technology relates to automated, secure notification systems that provide status updates about a "mobile thing" (e.g., a package delivery) and include authentication features to prevent fraud.
• Key Procedural History: The complaint notes that Defendant ECT is a non-practicing entity. It further alleges that the patents-in-suit are continuations of U.S. Patent No. 7,119,716, which, along with other related patents, was held invalid as being directed to patent-ineligible subject matter under 35 U.S.C. § 101 by the U.S. District Court for the Central District of California in 2014. This prior invalidation of family members sharing the same disclosure is presented as a central issue for the validity of the current patents-in-suit.

Case Timeline

Date	Event
2003-05-28	Earliest Priority Date for ’414, ’239, and ’261 Patents
2008-01-15	Issue Date: U.S. Patent No. 7,319,414
2011-01-25	Issue Date: U.S. Patent No. 7,876,239
2014-09-14	Related patents held invalid in Eclipse IP v. McKinley Equip. Corp.
2016-06-21	Issue Date: U.S. Patent No. 9,373,261
2017-02-06	ECT sends demand letter to Shindigz
2017-03-30	Complaint for Declaratory Judgment filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 9,373,261 - "Secure Notification Messaging with Delivery or Pickup Representatives"

• Patent Identification: U.S. Patent No. 9,373,261, "Secure Notification Messaging with Delivery or Pickup Representatives," issued June 21, 2016.

The Invention Explained

• Problem Addressed: The patent identifies the need for individuals to know the precise arrival or departure time of a "mobile thing" (MT), such as a package delivery, to avoid uncertainty and inconvenience (Compl. ¶12; ’261 Patent, col. 2:50-60). A related problem is ensuring that such notifications are genuine and not fraudulent communications like "phishing" (Compl. ¶12; ’261 Patent, Abstract).
• The Patented Solution: The invention proposes an automated system that sends notifications about an MT's status and includes a security layer. The system allows a party to select "authentication information," stores it, and then provides that information back to the party's device during a notification session, thereby giving the recipient confidence that the message is from a legitimate source (’261 Patent, Abstract; col. 3:52-69).
• Technical Importance: The technology sought to enhance the security and reliability of automated notifications for logistics and services, a key requirement for building user trust in the growing e-commerce and on-demand service economy (’261 Patent, col. 2:45-60).

Key Claims at a Glance

• The complaint identifies claim 11 as having been asserted by ECT (Compl. ¶6).
• Independent claim 11 recites an automated notification system comprising a processor and memory with computer code containing several key means for:
  • Enabling a first party to input or select authentication information for use in a subsequent notification session.
  • Storing the authentication information.
  • Monitoring location or travel information associated with a mobile thing (MT).
  • Causing the initiation of a notification session with the first party's device.
  • Providing the stored authentication information to the device during the session "to indicate that the first party that the notification communication session was initiated by an authorized source."
  • Enabling the first party to select whether or not to communicate with a second party (e.g., a delivery driver) having access to particulars of the pickup or delivery.

U.S. Patent No. 7,876,239 - "Secure Notification Messaging Systems and Authentication Indicia"

• Patent Identification: U.S. Patent No. 7,876,239, "Secure Notification Messaging Systems and Authentication Indicia," issued January 25, 2011.

The Invention Explained

• Problem Addressed: The patent's background section describes the logistical challenges faced by individuals waiting for scheduled events involving mobile entities, such as commercial package deliveries, school buses, or service technicians, where precise timing is often unknown or variable (’239 Patent, col. 2:25-52).
• The Patented Solution: The patent describes a computer system that gives a recipient "confidence" that a notification is from a "proper authorized source" by bundling authentication information with a status update on a mobile thing (’239 Patent, Abstract). The system monitors the MT, initiates a notification to a user's device, and provides the pre-selected authentication information to the device so the user can verify the message's legitimacy before acting on it (’239 Patent, col. 3:28-41).
• Technical Importance: This system aimed to solve the dual problems of providing timely status updates and verifying the source of those updates in an increasingly automated world.

Key Claims at a Glance

• The complaint identifies claim 54 as having been asserted by ECT (Compl. ¶6).
• Independent claim 54 recites a computer system with a memory storing authentication information and a processor that executes a program to:
  • Permit a party to communicate with the system and provide or select authentication information and a communication method.
  • Monitor travel data associated with a mobile thing.
  • Initiate a notification session with the party's device based on the travel data and the selected communication method.
  • Provide the stored authentication information to the device so the party can verify the notification is from an authorized source.
  • Further enable the party to select a link to communicate over the Internet to verify authenticity.

Multi-Patent Capsule: U.S. Patent No. 7,319,414 - "Secure Notification Messaging Systems and Methods Using Authentication Indicia"

• Patent Identification: U.S. Patent No. 7,319,414, "Secure Notification Messaging Systems and Methods Using Authentication Indicia," issued January 15, 2008.
• Technology Synopsis: As the parent patent in this family, it discloses the foundational systems and methods for providing secure notifications about a "mobile thing" (’414 Patent, Abstract). The core concept is to combat fraudulent communications by including verifiable "authentication information" within a notification message, allowing a recipient to confirm the message's origin (’414 Patent, Abstract; Compl. ¶12).
• Asserted Claims: Claims 23, 28, and 29 were asserted by ECT (Compl. ¶6). Claims 23 and 28 are independent.
• Accused Features: ECT has accused Shindigz's "Order Confirmation" and "Shipping Confirmation" online systems of infringing the ’414 Patent (Compl. ¶13).

III. The Accused Instrumentality

Product Identification

• The accused instrumentalities are the "Order Confirmation" and "Shipping Confirmation" online systems used by Shindigz's commercial websites (Compl. ¶13).

Functionality and Market Context

• Shindigz operates e-commerce websites selling party supplies (Compl. ¶10). Its accused systems involve automatically generating and emailing an order confirmation upon purchase, and later sending a shipping confirmation email when the item is ready to ship (Compl. ¶11). The shipping confirmation email contains a hyperlink to a Shindigz webpage with an estimated delivery date, which in turn links to the package carrier's third-party tracking software (Compl. ¶11). The complaint asserts that these emails contain "no 'authenticating information' such as code words, images, or customer-specific personal information other than name" (Compl. ¶11).
• These functionalities represent standard procedures for modern e-commerce retailers, forming a critical part of the customer service and logistics process.

IV. Analysis of Infringement Allegations

The complaint references a claim chart provided by ECT in a pre-suit letter, but the exhibit containing the chart was not included with the complaint filing. Therefore, a tabular analysis is not possible. The complaint's narrative theory of non-infringement centers on the absence of a key claimed element in its systems.

Shindigz’s primary argument for non-infringement appears to be that its automated emails lack the claimed "authentication information" (Compl. ¶11). The patents-in-suit, including asserted claims 11 of the ’261 Patent and 54 of the ’239 Patent, require the system to provide specific "authentication information" to the user's device for the purpose of verifying that the notification is from an "authorized source." Shindigz contends its emails only contain the customer's name and otherwise lack the types of indicia described in the patents, such as codes or special images (Compl. ¶11; ’414 Patent, col. 62:62-63:15). This suggests a direct challenge to whether Shindigz's standard e-commerce notifications practice a core element of the claimed inventions.

No probative visual evidence provided in complaint.

• Identified Points of Contention:
  • Scope Questions: Does a customer's name or an order number, common in confirmation emails, constitute "authentication information" as that term is used in the patents? A central dispute may be whether the term requires information specifically chosen or designed for security verification, or if it can be read more broadly to cover any data that identifies a transaction.
  • Technical Questions: Does the act of providing a hyperlink to a company's own website, which then links to a third-party shipper, perform the function of "providing... authentication information to the personal communications device that indicates... the notification is from an authorized source" as required by the claims? The court may need to determine if this multi-step, hyperlink-based process is equivalent to the more integrated authentication methods described in the patent specifications.

V. Key Claim Terms for Construction

• The Term: "authentication information"

• Context and Importance: This term is central to the dispute, as Shindigz's non-infringement defense is built on the assertion that its systems do not provide it (Compl. ¶11). The construction of this term could be dispositive for both infringement and, potentially, validity, as it defines the scope of the purported security feature of the invention.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification provides a non-limiting list, stating the information can be "a logo, trademark, coat of arms, symbol, pre-defined symbol or text, a numeric code, a sound, music, a distinctive ring, or an image," which could be argued to encompass a wide range of identifiers (’414 Patent, col. 95:29-32).
  • Evidence for a Narrower Interpretation: The patent repeatedly frames the term in the context of security and verification, describing embodiments where it is used to "verify authenticity" or confirm the message is from a "proper authorized source" (’239 Patent, Abstract; ’261 Patent, Abstract). Figures and descriptions of a "certification verification server" and matching of images or codes could support a narrower construction requiring a specific security function beyond mere identification (’414 Patent, Fig. 16A; col. 63:31-48).

• The Term: "monitoring travel data associated with a mobile thing"

• Context and Importance: All asserted independent claims require this step. The parties may dispute whether Shindigz's system, which sends an email when an item is "ready to ship" and links to a third party, is actually "monitoring travel data."

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The patent describes a "base station control unit" that monitors the "mobile thing," which could be interpreted broadly as any system that receives and processes status updates, even if the primary tracking is done by another entity (’261 Patent, Fig. 1).
  • Evidence for a Narrower Interpretation: The detailed description focuses heavily on systems that actively track location via GPS or by comparing current location values to a predetermined schedule, suggesting a more hands-on monitoring process than simply receiving a "ready to ship" status update from a different system and outsourcing the tracking to a third party (’261 Patent, col. 13:23-44).

VI. Other Allegations

• Indirect Infringement: Shindigz seeks a declaration of non-infringement for indirect infringement (Compl. ¶¶ 23, 25, 27). An underlying claim from ECT would likely allege that by sending confirmation emails with links, Shindigz induces its customers to use the patented method. The basis for such a claim would be that Shindigz provides the system and implicitly instructs customers to perform the steps of receiving and interacting with the notification.
• Willful Infringement: The complaint was filed in response to a demand letter from ECT dated February 6, 2017, which explicitly accused Shindigz of infringement (Compl. ¶6). This letter establishes pre-suit knowledge. ECT could therefore allege in a counterclaim that any continued operation of the accused systems after receiving the letter constitutes willful infringement.

VII. Analyst’s Conclusion: Key Questions for the Case

• A core issue will be one of patent eligibility: given that closely related parent patents with the same disclosure were previously invalidated under 35 U.S.C. § 101, can the asserted claims of these continuation patents survive a similar challenge? The central question for the court will be whether the claims add a sufficient "inventive concept" to the abstract idea of sending a secure notification, or if they are likewise directed to ineligible subject matter.
• A key infringement question will be one of definitional scope: does the term "authentication information," as described in the context of a security and verification function, read on the standard customer and order data contained in Shindigz's routine e-commerce confirmation emails? The outcome of the case may depend heavily on the court's construction of this critical claim term.
• An additional evidentiary question may concern system functionality: does Shindigz's system, which generates a notification and provides a link to a third-party shipper for tracking, actually perform the claimed step of "monitoring travel data," or does it merely act as a pass-through for information generated and monitored entirely by separate entities?