PerdiemCo LLC v. Insight Mobile Data Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: PerDiemCo LLC (Texas)
  • Defendant: Insight Mobile Data, Inc. (Maryland)
  • Plaintiff’s Counsel: Davidson Berquist Jackson & Gowdey LLP
• Case Identification: 8:19-cv-01166, D. Md., 04/22/2019
• Venue Allegations: Venue is alleged to be proper in the District of Maryland because Defendant is a Maryland corporation with a regular and established place of business in the district.
• Core Dispute: Plaintiff alleges that Defendant’s StreetEagle fleet management system infringes three patents related to user-configurable, software-based location tracking and event monitoring.
• Technical Context: The technology concerns systems for tracking the location of objects (e.g., vehicles via GPS), allowing users to define geographic zones (geofences), and generating automated alerts when an object's location has a specific relationship to a zone, such as entering or exiting it.
• Key Procedural History: The complaint highlights an extensive prior litigation history for the patent family in the Eastern District of Texas (EDTX). It alleges that related patents were asserted against eleven companies, all of which resulted in settlement and licensing agreements. The complaint notes that the patents-in-suit issued after the USPTO considered prior art from these EDTX litigations and ten associated Inter Partes Review (IPR) proceedings. The complaint further states that during the EDTX litigation, a magistrate judge issued findings, adopted by the district judge, that construed key claim terms and affirmed the patent eligibility (§101) and written description support (§112) for claims of related patents.

Case Timeline

Date	Event
2005-12-23	Earliest Priority Date for all Patents-in-Suit (Provisional Application 60/752,879)
2016-11-02	EDTX Court Order in related litigation denies Motion to Dismiss for lack of standing
2017-06-13	U.S. Patent No. 9,680,941 Issues
2018-01-16	U.S. Patent No. 9,871,874 Issues
2018-07-10	U.S. Patent No. 10,021,198 Issues
2019-04-22	Complaint Filed

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

U.S. Patent No. 10,021,198 - “Software-Based Mobile Tracking Service with Video Streaming When Events Occur” (Issued Jul. 10, 2018)

The Invention Explained

• Problem Addressed: The patent addresses the need for a flexible system that correlates events with the physical location of objects and conveys information about such events to designated computing devices (’198 Patent, col. 1:52-58). Existing location-aware applications were described as often being predetermined, lacking user-level customization (’198 Patent, col. 1:30-34).
• The Patented Solution: The invention is a software-based service where users can define geographic zones on a map and define an "object location event" based on a condition, such as an object entering or exiting that zone. The system manages the conveyance of information about this event to specific users based on user identification codes and access control codes, creating distinct "information-sharing environments" for different sets of users (’198 Patent, Abstract; col. 2:6-18).
• Technical Importance: This approach enables a multi-tenant, user-configurable tracking and alerting service, allowing different customers or groups to create and manage their own private tracking rules and notification schemes within a larger system architecture (’198 Patent, col. 6:57-64).

Key Claims at a Glance

• The complaint asserts one or more claims, with a focus on independent claim 1 (Compl. ¶24).
• Claim 1 of the ’198 Patent includes the following essential elements:
  • A method for controlling conveyance of location information provided as an Internet service via a computer server executing database management software.
  • Providing two tiers of administrative privileges: a "first administrator" who maintains the overall environment and can define "second information sharing environments" for purchasers, and "second administrators" who can define user groups within their respective environments.
  • Providing second database management software on user computing devices that enables a "first authorized user" to:
    • (a) define an "event condition" based on an object's location relative to a zone, and
    • (b) define an "event information access code" (a first access list) specifying which users receive an alert when the event occurs.
  • The server software monitors the object location, determines when the event condition is met, and conveys the alert only to the users on the access list.
• The complaint reserves the right to assert additional claims (Compl. ¶24).

U.S. Patent No. 9,680,941 - “Location Tracking System Conveying Event Information Based on Administrator Authorizations” (Issued Jun. 13, 2017)

The Invention Explained

• Problem Addressed: The patent identifies the same need as the ’198 Patent for a system to define and manage location-based events and the conveyance of information related to those events (’941 Patent, col. 1:55-61).
• The Patented Solution: This patent specifically claims a system architecture built on a hierarchical, two-level administrative structure. A "first administrator" defines groups and can authorize a user within a group to become a "second administrator." This second administrator is then empowered to specify "information access codes" that control how location and event information is shared within that group, effectively creating a delegated and partitioned system for managing tracking services (’941 Patent, Abstract; col. 2:10-24).
• Technical Importance: The invention provides a scalable and secure framework for a service provider to offer location tracking services to multiple, distinct customers, where each customer can manage its own users and access rules without interfering with others.

Key Claims at a Glance

• The complaint asserts one or more claims, with a focus on independent claim 1 (Compl. ¶33).
• Claim 1 of the ’941 Patent includes the following essential elements:
  • A location tracking system with one or more servers that receive identifiers and location information for mobile devices.
  • The servers are configured to store information for user groups, which are defined by a "first administrator" with a "first level of administrative privilege."
  • The first administrator can authorize a user in a group to be a "second administrator" with a "second level of administrative privilege."
  • The second administrator specifies "information access codes" to control conveyance of location and event information.
  • The system includes interfaces for the second administrator to define zones and events, and the server compares incoming location data against these definitions to determine whether to send an alert based on the access codes.
• The complaint reserves the right to assert additional claims (Compl. ¶34).

U.S. Patent No. 9,871,874 - “Multi-Level Database Management System and Method for an Object Tracking Service That Protects User Privacy” (Issued Jan. 16, 2018)

• Technology Synopsis: This patent describes a database management system for a tracking service with an emphasis on protecting user privacy through a multi-level administrative structure. It claims a system where administrators define access controls, such as access lists and user groups, to ensure that location and event data is conveyed only to authorized users, thereby creating distinct and private tracking environments (’874 Patent, Abstract).
• Asserted Claims: Independent claim 11 is asserted (Compl. ¶42).
• Accused Features: The complaint accuses Defendant's StreetEagle system, alleging its use of a multi-user database architecture with customer-configurable alerts and user permissions infringes the patent's claims for a privacy-protecting, multi-level management system (Compl. ¶¶ 20-22, 42).

III. The Accused Instrumentality

Product Identification

The accused instrumentality is Defendant’s fleet management system, advertised as "StreetEagle" (Compl. ¶20).

Functionality and Market Context

The StreetEagle system is described as a web-based fleet management application that provides GPS tracking, monitoring, and alerts for vehicles (Compl. ¶¶ 20-21). The system allegedly uses servers that interface with a Database Management System (DBMS) (Compl. ¶22). A central feature highlighted in the complaint is the ability for subscribers to choose from over 20 different types of alerts, including alerts triggered by a vehicle "entering/exiting zones" (geofencing) or speeding (Compl. ¶20). This functionality allows customers to define event-based rules and receive notifications based on vehicle activity (Compl. ¶20).

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint.

The complaint incorporates by reference exemplary claim charts as Exhibits G, H, and I, but these exhibits were not filed with the complaint document itself (Compl. ¶¶ 24, 33, 42). The infringement theory is therefore summarized in prose based on the narrative allegations.

’198 Patent Infringement Allegations

The complaint alleges that the StreetEagle system directly infringes at least claim 1 of the ’198 Patent (Compl. ¶24). The infringement theory posits that Insight Mobile operates as the "first administrator" of an Internet service (StreetEagle), providing its customers with "second information sharing environments" for their respective vehicle fleets (Compl. ¶¶ 21-22). The customers, acting as "second administrators" or "authorized users," allegedly use the StreetEagle software to define "event conditions" (e.g., a vehicle entering a geofence) and "event information access codes" (by selecting which users receive an alert for that event). The StreetEagle servers are alleged to then monitor vehicle locations, determine when the condition is met, and convey an alert only to the designated users, thereby mapping the accused system's operation to the elements of claim 1 (Compl. ¶¶ 20, 24).

’941 Patent Infringement Allegations

The complaint alleges that the StreetEagle system directly infringes at least claim 1 of the ’941 Patent (Compl. ¶33). This theory relies on a similar mapping of the business relationship to the claimed administrative hierarchy. Insight Mobile is cast as the "first administrator" providing the StreetEagle service platform, while its customers are cast as "second administrators" who are granted the privilege to manage their own fleets (Compl. ¶20). These customers allegedly use the system to define user groups and configure access controls ("information access codes") that govern which of their personnel receive alerts for specific, user-defined events, mirroring the two-tiered authorization structure required by claim 1 (Compl. ¶33).

Identified Points of Contention

• Scope Questions: A central question may be whether the commercial relationship between a SaaS provider (Insight Mobile) and its customers fits the claimed hierarchy of a "first administrator" creating and delegating privileges to a "second administrator." A court will have to determine if this common business model is equivalent to the specific, tiered administrative structure recited in the claims.
• Technical Questions: The infringement theory hinges on equating the act of setting up a notification in the StreetEagle system with "defin[ing] an event information access code." The analysis may turn on whether the accused system's functionality of selecting alert recipients from a list is technically and legally equivalent to defining an "access code," a term that can imply a security or authentication mechanism.

V. Key Claim Terms for Construction

The complaint references prior claim constructions from the EDTX litigation (Compl. ¶17, Exhibit E), but the order was not attached. Based on the patent language and infringement allegations, the following terms may be central to the dispute.

The Term: "first administrator" / "second administrator"

• Context and Importance: This two-tiered administrative structure is foundational to claims in both the ’198 and ’941 patents. The viability of the infringement case depends on successfully mapping the defendant-customer relationship onto this claimed hierarchy.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification discusses the invention in the context of an "Internet service" where a "purchaser of the service can set up a company-wide information-sharing environment," language that may support Plaintiff's theory of a SaaS provider and its customer (’198 Patent, col. 6:57-64).
  • Evidence for a Narrower Interpretation: The claims require the first administrator to "assign each authorized user... to only one of said second information sharing environments" and the second administrator to "assign each authorized user of the respective second information sharing environment to one or more of said groups" (’198 Patent, cl. 1). Defendant may argue this requires a more formal and exclusive assignment of privileges within a unified system than what is typical in a standard SaaS customer relationship.

The Term: "event information access code"

• Context and Importance: The infringement allegations depend on showing that the accused StreetEagle system allows users to define this element. The core question is whether creating a notification rule qualifies as defining an "access code."
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification states that an "access code specifies the individual users and/or groups of users having access to the information" (’198 Patent, col. 7:54-57). This language could support an interpretation where any rule that directs information to a specific user qualifies as an access code.
  • Evidence for a Narrower Interpretation: The specification also describes access codes in contexts that suggest a security function, such as using a "password" or including a "clearance classification code" (’198 Patent, col. 8:4-24). A defendant may argue that the term requires an authentication or security-based restriction, not just a content-routing rule.

VI. Other Allegations

• Indirect Infringement: The complaint alleges both induced and contributory infringement for all three patents-in-suit. Inducement is based on allegations that Defendant supplies the StreetEagle system with the knowledge and intent that its customers will use it in an infringing manner, supported by providing instructions, documentation, and "interactive data fields" that guide users to perform the infringing steps (Compl. ¶¶ 27, 36, 45).
• Willful Infringement: Willfulness is alleged for all three patents. The basis for willfulness is alleged pre-suit knowledge of the patents and infringement via "prior correspondence from counsel for Plaintiff to Defendant and its President," as well as continued infringement after the complaint was filed (Compl. ¶¶ 30, 39, 48).

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

The resolution of this dispute may turn on the following central questions:

• A core issue will be one of structural analogy: Can the two-tiered "first administrator" and "second administrator" hierarchy, as claimed in the patents, be construed to read on the typical commercial relationship between a Software-as-a-Service (SaaS) provider and its customers?
• A key question of claim scope will be: Does the term "event information access code" require a security or authentication function, or can it be broadly construed to cover any user-configured rule that directs a notification to a specific recipient?
• A significant procedural question will be: What weight will the court give to the prior claim constructions and validity findings from the extensive EDTX litigation involving the same patent family, which the plaintiff has prominently featured in its complaint?