Skyhook Wireless Inc v. Combain Ab

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Skyhook Wireless, Inc. and Skyhook Holding, Inc. (Delaware)
  • Defendant: Combain Mobile AB (Sweden)
  • Plaintiff’s Counsel: Global IP Law Group, LLC
• Case Identification: 1:19-cv-11230, D. Mass., 11/29/2019
• Venue Allegations: Venue is alleged to be proper because the Defendant is a foreign corporation organized under the laws of Sweden and may be sued in any judicial district. The complaint also alleges that the Defendant has committed acts of infringement in the District of Massachusetts.
• Core Dispute: Plaintiff alleges that Defendant’s location positioning service infringes six U.S. patents related to Wi-Fi based location positioning technology, including methods for collaboratively building and updating a central database of wireless access points.
• Technical Context: The technology at issue enables the determination of a mobile device's geographic location by referencing a database of known Wi-Fi access points, a method that complements or replaces GPS in environments where satellite signals are weak.
• Key Procedural History: The complaint alleges a history of licensing its patent portfolio to five of Defendant's competitors, including a settled lawsuit against Google that resulted in a $90 million payment to the Plaintiff. It also alleges that Plaintiff first notified Defendant of its patent claims and offered a license on December 7, 2016, and that subsequent licensing discussions occurred over a period of two years prior to the litigation.

Case Timeline

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

U.S. Patent No. 7,397,424 - “System and method for enabling continuous geographic location estimation for wireless computing devices”

The Invention Explained

• Problem Addressed: The patent’s background section describes the difficulty of obtaining continuous and accurate geographic location data for mobile devices, noting that satellite-based systems like GPS fail in enclosed areas, while systems relying on wireless beacons require a pre-existing database. (’424 Patent, col. 1:36-54).
• The Patented Solution: The invention proposes a hybrid positioning system on a wireless device that can switch between a primary mode using a positioning network like GPS and a secondary mode that uses a local database of wireless beacons when GPS signals are unavailable. (’424 Patent, Abstract; col. 3:1-12). The system also describes a method for building and updating this database, wherein a device uses its own known position (e.g., from GPS) to determine the location of newly detected beacons and periodically forwards this new information to a central database, which in turn distributes updates to other devices. (’424 Patent, col. 3:21-40; col. 8:17-30).
• Technical Importance: This approach enabled more consistent location tracking by filling in gaps where GPS was unavailable, while also providing a distributed method for building the necessary Wi-Fi beacon database. (Compl. ¶14).

Key Claims at a Glance

• The complaint asserts independent claim 15. (Compl. ¶27).
• Essential elements of Claim 15 include:
  • maintaining a central database of wireless beacons;
  • wirelessly coupling the central database to a plurality of wireless computing devices;
  • enabling each wireless computing device to determine identification and positional information about wireless beacons not contained in the central database without communicating with the central database;
  • periodically forwarding the identification and positional information about wireless beacons not contained in the central database from the wireless computing devices to the central database;
  • updating the central database to include the forwarded identification and positional information; and
  • periodically directing the updates of the central database to the plurality of wireless computing devices.
• The complaint does not explicitly reserve the right to assert dependent claims for this patent.

U.S. Patent No. 9,402,154 - “Methods for providing location of wireless devices using Wi-Fi”

The Invention Explained

• Problem Addressed: The patent addresses the need for a method to provide location services using a database of Wi-Fi access points, with a focus on how such a database is constructed and maintained. (’154 Patent, col. 1:29-53).
• The Patented Solution: The invention describes a server-based method centered on a "collaborative database." This database contains geographic locations of Wi-Fi access points and is built from data received from a plurality of different mobile devices operated by different users. (’154 Patent, col. 2:5-15). In operation, a user's device sends a location request containing the MAC addresses of nearby access points to the server. The server queries the collaborative database, determines the device's location based on the stored data, and returns the result to the device. (’154 Patent, Abstract).
• Technical Importance: This patent formalizes the concept of a crowdsourced or collaborative model for building and maintaining a large-scale Wi-Fi positioning database, leveraging the installed base of user devices to map the environment. (Compl. ¶¶59-62).

Key Claims at a Glance

• The complaint asserts independent claim 1. (Compl. ¶27).
• Essential elements of Claim 1 include:
  • maintaining on a database server, a collaborative database containing geographic location information pertaining to Wi-Fi access points received from a plurality of Wi-Fi- and GPS-enabled mobile devices operated by a plurality of different users;
  • the collaborative database includes records where at least a first portion are based on data from a first user's device and a second portion are based on data from a second user's device;
  • receiving, at a server, a location request from a first mobile device, including a MAC address of a detected Wi-Fi access point;
  • retrieving geographic location data for the access point from the collaborative database;
  • determining, via a processor, a geographic location of the first mobile device based on the retrieved data; and
  • returning the determined geographic location to the first mobile device.
• The complaint does not explicitly reserve the right to assert dependent claims for this patent.

U.S. Patent No. 8,909,245 - “System and method for estimating positioning error within a WLAN-based positioning system”

• Patent Identification: U.S. Patent No. 8,909,245, “System and method for estimating positioning error within a WLAN-based positioning system,” issued December 9, 2014. (Compl. ¶23).
• Technology Synopsis: This patent describes a method for estimating the expected error of a position calculation in a WLAN positioning system. The error estimation is based on the "spatial spread" of the WLAN access points detected by the user's device, which predicts the relative accuracy of the position estimate. (Compl. ¶72).
• Asserted Claims: Independent claim 1 is asserted. (Compl. ¶27).
• Accused Features: The complaint alleges that the Combain Positioning Service provides position estimates that include an expected error, and that this error is based on the spatial spread of surrounding WLAN access points. (Compl. ¶¶75, 78-79).

U.S. Patent No. 8,031,657 - “Server for updating location beacon database”

• Patent Identification: U.S. Patent No. 8,031,657, “Server for updating location beacon database,” issued October 4, 2011. (Compl. ¶24).
• Technology Synopsis: This patent discloses a Wi-Fi location server system that includes logic to identify potential errors in submitted location data. The logic involves grouping readings into subsets, comparing attributes between subsets, and excluding information with potential errors when determining an access point's position. (Compl. ¶86).
• Asserted Claims: Independent claim 1 is asserted. (Compl. ¶27).
• Accused Features: The complaint alleges Combain uses computer-implemented logic to identify potential errors in location information by grouping readings into subsets, comparing them, and discarding reports based on potential errors. (Compl. ¶¶94-96, 99).

U.S. Patent No. 8,155,673 - “Estimation of position using WLAN access point radio propagation characteristics in a WLAN positioning system”

• Patent Identification: U.S. Patent No. 8,155,673, “Estimation of position using WLAN access point radio propagation characteristics in a WLAN positioning system,” issued April 10, 2012. (Compl. ¶25).
• Technology Synopsis: This patent describes a method of characterizing a WLAN access point for later use in location estimation. The method involves measuring power values, estimating a signal coverage area, dividing that area into sections, and assigning a weight to each section based on the power values. (Compl. ¶105).
• Asserted Claims: Independent claim 1 is asserted. (Compl. ¶27).
• Accused Features: The complaint alleges that the Combain Positioning Service performs a method of characterizing Wi-Fi access points by measuring signal strengths, estimating coverage areas, dividing those areas, and assigning weights to effectively weigh signals during location estimation. (Compl. ¶¶107-113).

U.S. Patent No. 8,837,363 - “Server for updating location beacon database”

• Patent Identification: U.S. Patent No. 8,837,363, “Server for updating location beacon database,” issued September 16, 2014. (Compl. ¶26).
• Technology Synopsis: This patent discloses a method of deriving position information for Wi-Fi access points by applying a "reverse triangulation algorithm" to data sets collected during a "comprehensive traversal of the geographic area." (Compl. ¶119).
• Asserted Claims: Independent claim 18 is asserted. (Compl. ¶27).
• Accused Features: The complaint alleges that Combain derives position information for Wi-Fi access points by applying a reverse triangulation algorithm to sets of data collected during a comprehensive traversal of a geographic area. (Compl. ¶124).

III. The Accused Instrumentality

Product Identification

• The Combain Positioning Service and Combain Location API. (Compl. ¶¶6, 9).

Functionality and Market Context

• The accused instrumentality is a location positioning service that utilizes a database of Wi-Fi access points to provide location estimates to its customers. (Compl. ¶28). The complaint alleges that Combain builds and maintains this database by collecting Wi-Fi access point data from its users' mobile devices when they are using location-aware applications. (Compl. ¶45). This collected data allegedly includes MAC addresses and longitude/latitude coordinates of wireless access points, which Combain then uses to update its central database. (Compl. ¶¶46-48). Users of the service are then able to request position estimates based on this updated database. (Compl. ¶49).
• No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

’424 Patent Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: A central question may be the scope of the term "determine... positional information" as performed by the wireless computing device "without communicating with the central database." The infringement allegation rests on the idea that a mobile device using its own location-determining capability (e.g., GPS) to record the coordinates of a newly seen Wi-Fi access point satisfies this element (Compl. ¶46). It raises the question of whether a single, raw data point collected by a device constitutes a "determination" of positional information, or if that term requires a more definitive calculation, which may occur on Defendant's servers.

’154 Patent Infringement Allegations

• Identified Points of Contention:
  • Technical Questions: The claim requires that the "collaborative database" is built from data received from a "plurality of different users," with distinct portions coming from at least a first and second user. A key evidentiary question will be what proof Plaintiff can offer that Defendant's database is constructed in this specific collaborative manner, as opposed to being built from other sources or a single source.

V. Key Claim Terms for Construction

• The Term: "determine... positional information about wireless beacons... without communicating with the central database" (’424 Patent, Claim 15)

• Context and Importance: The construction of this term is critical because it addresses whether a key step of the claimed method is performed by the end-user's mobile device or by the Defendant's central system. Infringement may turn on whether a mobile device's act of recording its own GPS-derived location alongside a newly detected Wi-Fi beacon's MAC address constitutes "determining" that beacon's positional information.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The patent specification describes a "scanner" that is arranged to "obtain positional information about itself" and use that information to "derive the geographic location of the wireless beacons." (’424 Patent, col. 3:28-32). This language may support an interpretation where the device itself performs the act of determination.
  • Evidence for a Narrower Interpretation: The specification also describes a "calculation algorithm" that processes "a series of readings" from different positions to arrive at an "estimated position" of a beacon. (’424 Patent, col. 6:17-22; Fig. 4). This may support a narrower view that a single data point is insufficient to "determine" the position, and that a more complex, multi-point analysis is required, which may only be performed by the central server.

• The Term: "collaborative database" (’154 Patent, Claim 1)

• Context and Importance: This term is the foundation of Claim 1, which requires the database to be built from data "received from a plurality of... different users." The viability of the infringement claim depends on whether the accused database meets this specific, recited structure.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The parent ’424 patent describes a "collaborative database" as one that is "continually being updated with data about new wireless beacons" obtained from multiple participating devices, suggesting a general crowdsourcing model. (’424 Patent, col. 8:6-9).
  • Evidence for a Narrower Interpretation: The claim language is highly specific, requiring "at least a first portion of the database records" to be based on data from a "first user" and "at least a second portion... different than the first portion" to be based on data from a "second user." This language could be interpreted to require discrete, traceable contributions from different users, a standard that an aggregated and anonymized database might not meet.

VI. Other Allegations

• Indirect Infringement: The complaint alleges inducement, stating that Combain’s accused services "were designed and intended to be used and/or practiced in the methods covered by the Patents-in-Suit." (Compl. ¶29).
• Willful Infringement: The complaint alleges that Defendant had knowledge of the patents-in-suit since at least December 7, 2016, as a result of direct communications and licensing discussions. (Compl. ¶¶33, 52, 83, 102, 116, 134). The complaint alleges that despite this knowledge and the "objectively high likelihood" of infringement, Defendant's conduct has been willful and deliberate. (Compl. ¶¶134-135).

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

• A core issue will be one of definitional scope: can the act of a single mobile device recording its own coordinates next to a newly observed Wi-Fi signal be construed as "determining" the "positional information" of that new signal source, as required by claim 15 of the ’424 patent, or does this determination require server-side analysis of multiple data points?
• A key evidentiary question will be one of proof: what evidence can be presented to establish that the accused database is "collaborative" in the specific manner recited by claim 1 of the ’154 patent—namely, that it is built from distinct data contributions from a "plurality of different users"?
• A central factual dispute will likely concern willfulness: given the detailed allegations of pre-suit notice and licensing negotiations extending back several years, the focus will be on what reasonable, good-faith basis Defendant developed for non-infringement or invalidity that justified its continued activities.