DCT

1:17-cv-03526

Weight Watchers Intl Inc v. Fenlander Software Solutions Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:17-cv-03526, S.D.N.Y., 05/11/2017
  • Venue Allegations: Venue is based on allegations that Defendants transact business in the Southern District of New York by contracting to supply goods and selling the accused product into the district through interactive websites and online application stores.
  • Core Dispute: Plaintiff alleges that Defendant’s "Ultimate Food Value Diary" mobile application infringes three patents related to proprietary, points-based methods for weight management.
  • Technical Context: The technology concerns data-processing methods that simplify nutritional tracking for weight control by converting multiple food characteristics (e.g., calories, fat, fiber, protein) into a single numerical "points" value.
  • Key Procedural History: The complaint alleges that the individual Defendants were previously subscribing customers of Plaintiff, and therefore had knowledge of Plaintiff's patented systems prior to developing the accused product. The complaint also notes that Plaintiff contacted Defendants prior to filing suit to demand removal of the accused product from app stores.

Case Timeline

Date Event
1995-11-01 ’531 and ’885 Patents Priority Date
2000-03-21 ’531 Patent Issue Date
2005-04-12 ’885 Patent Issue Date
2008-08-29 ’482 Patent Priority Date
2013-02-26 ’482 Patent Issue Date
2017-05-11 Complaint Filing Date

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

U.S. Patent No. 8,382,482 - “Processes And Systems For Achieving And Assisting In Improved Nutrition Based On Food Energy Data And Relative Healthfulness Data”

  • Issued: February 26, 2013 (’482 Patent)

The Invention Explained

  • Problem Addressed: The patent’s background section describes the difficulty consumers face in evaluating the overall healthfulness of food products from complex nutritional labels and notes that existing simplified systems (like the "Traffic Light Labeling" system) still require considerable consumer judgment. (’482 Patent, col. 2:20-38).
  • The Patented Solution: The invention discloses a data processing system that calculates a food’s energy value using a formula that weights different macronutrients (protein, carbohydrates, fat, fiber) based on their "metabolic conversion efficiency." (’482 Patent, col. 3:9-14). This process yields a single numerical value that aims to more accurately reflect a food’s impact on the body than a simple calorie count, thereby simplifying a consumer’s decision-making process. (’482 Patent, Abstract).
  • Technical Importance: The claimed solution provides a method for consolidating complex, multi-variable nutritional data into a single, actionable metric for consumers, a key challenge in the mass-market weight management field. (Compl. ¶17-18).

Key Claims at a Glance

  • The complaint asserts independent claims 1, 6, 11, and 21. (Compl. ¶72).
  • The essential elements of independent method claim 1 include:
    • Obtaining the weight of protein, fat, non-dietary fiber carbohydrates, and dietary fiber for a candidate food serving.
    • Inputting these weights into a data processing system.
    • Determining a whole number value for the food serving by:
      • First, determining a food energy data (FED) value based on applying specific weighting factors (metabolic efficiency factors) to the energy conversion values of at least three of the macronutrients.
      • Second, dividing the resulting FED value by a predetermined factor and saving the result.
    • Determining a daily whole number benchmark for the user.
    • Selecting, consuming, and tracking the whole number values of food servings against the daily benchmark.
    • Repeating the process on successive days.
  • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

U.S. Patent No. 6,878,885 - “Process For Controlling Body Weight”

  • Issued: April 12, 2005 (’885 Patent)

The Invention Explained

  • Problem Addressed: The patent identifies that conventional "calorie counting" is not an ideal method for weight control because other nutritional factors are important, but accounting for these factors requires "more complex mathematics which is difficult in the bustle of daily life." (’885 Patent, col. 1:47-53).
  • The Patented Solution: The invention provides a process and corresponding apparatus (such as a handheld calculator) for calculating a single "Points" value for a food serving. (’885 Patent, FIG. 1). The formula converts a food's calories, total fat, and dietary fiber into this single value, which a user then tracks against a daily allotted range. The system also accounts for physical activity by allowing a user to earn "activity Points" that modify their daily allowance. (’885 Patent, col. 4:35-42).
  • Technical Importance: This technology represents a foundational method for abstracting complex nutritional data into a simple, proprietary, single-value system, which proved to be a commercially significant innovation in the weight management industry. (Compl. ¶17).

Key Claims at a Glance

  • The complaint asserts independent claims 1, 7, and 12. (Compl. ¶¶91-92, 95).
  • The essential elements of independent system claim 12 include:
    • A system for determining Points for food servings ingested by a person, where the Points (p) for each serving are characterized by an equation incorporating calories (c), fat (f), and dietary fiber (r) (p = c/k1 + f/k2 - r/k3).
    • A process for determining the number of Points remaining for a user, comprising:
      • Determining basic Points allotted based on the person's body weight.
      • Determining "activity Points" based on the person's weight, and the intensity and duration of physical exercise.
      • Adding the basic and activity Points together and subtracting the total Points for food ingested to determine the remaining balance.
  • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

Multi-Patent Capsule

  • Patent Identification: U.S. Patent No. 6,040,531, “Process For Controlling Body Weight,” issued March 21, 2000 (’531 Patent).
  • Technology Synopsis: An early patent in the same family as the ’885 Patent, the ’531 Patent discloses a process for controlling body weight by calculating a single numerical "point" value for food servings based on their caloric content, total fat, and dietary fiber. This method simplifies diet tracking by allowing a user to manage their consumption against a daily range of allotted points rather than tracking multiple nutritional metrics separately. (’531 Patent, Abstract; col. 2:45-56).
  • Asserted Claims: Independent claims 1, 13, and 17. (Compl. ¶111).
  • Accused Features: The complaint accuses the "weight tracking features, points calculator, food database, and algorithm of the Infringing Product" of infringement. (Compl. ¶111).

III. The Accused Instrumentality

Product Identification

  • The "Ultimate Food Value Diary" mobile application. (Compl. ¶48).

Functionality and Market Context

  • The complaint alleges the accused product is a mobile application designed to "mimic Weight Watchers' System" by allowing users to track and calculate "Weight Watchers Points values" for food and activities. (Compl. ¶48). The application is alleged to include a weight tracker and a "Points calculator." (Compl. ¶48).
  • Plaintiff alleges the product is marketed as a tool to be used with existing weight loss programs and is advertised as being compatible with specific Weight Watchers plans. (Compl. ¶62). The complaint further alleges that the application copies the "look and feel" of Weight Watchers' own mobile application, including the use of a "blue circle" to display calculated points values. (Compl. ¶63).
  • The product is allegedly sold through major mobile application stores, including those operated by Apple, Google, and Amazon, and is positioned to compete with and serve as a substitute for Plaintiff's own digital products. (Compl. ¶7, 47).
  • No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

’482 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a) obtaining weight of protein... b) obtaining weight of fat... c) obtaining weight of non-dietary fiber carbohydrates... d) obtaining weight of dietary fiber... The app's calculator and food database functionalities obtain or utilize these specific macronutrient values to perform calculations. ¶72, 77 col. 32:5-10
f) determining a whole number value for each candidate food serving via a processor... comprising: 1) determining... food energy data, FED value, based at least in part on three of: i) W(PRO)xCp... ii) W(FAT)xCf... iii) W(CHO)xCc... iv) W(DF)xCdf... The app is alleged to use a "computational algorithm or its equivalent" to calculate a points value, which necessarily involves processing nutrient data according to a formula. ¶77 col. 32:11-29
g) determining a daily whole number benchmark data for the human being... The app's "weight tracker" and its function as a mimic of the Plaintiff's system allegedly provide users with a daily target or budget. ¶48, 77 col. 32:33-36
h) during a day, selecting food servings... i) automatically displaying... a sum of whole number values... j) consuming the selected food servings until the sum... is less than or equal to the daily whole number benchmark data... The app's core alleged functionality enables users to track their consumption of calculated food values against a daily budget. ¶48, 72 col. 32:37-49

Identified Points of Contention

  • Technical Question: The primary technical question is evidentiary. The complaint alleges the accused app uses an algorithm that is the "equivalent" of the patented method (Compl. ¶77), but provides no direct evidence of the specific mathematical formulas, weighting factors, or "metabolic efficiency factor[s]" employed by the app. A central point of contention will be whether discovery reveals that the accused app's code implements the specific multi-part calculation required by claim 1.
  • Scope Question: A potential question for the court may be how to interpret "determining a daily whole number benchmark data" in element (g). The analysis may turn on whether a simple user-set goal within the app meets this limitation, or if the limitation requires the system itself to calculate the benchmark based on user biometrics as described in the patent specification. (’482 Patent, col. 14:1-15).

’885 Patent Infringement Allegations

Claim Element (from Independent Claim 12) Alleged Infringing Functionality Complaint Citation Patent Citation
...a process for determining a number of Points remaining... comprising: determining the basic Points allotted based on the person's current body weight; The app's function as a mimic of the Plaintiff's system allegedly includes providing a daily points budget based on user characteristics. ¶17, 48, 97 col. 6:45-51
determining activity Points based on the weight of the person and on the intensity level and duration of physical exercise...; The app is alleged to allow users to calculate points values for "daily activities." ¶48 col. 6:5-14
adding the basic Points and activity Points and subtracting the total Points (sum of the p values) for food servings ingested... to determine the number of Points remaining. The app's "points calculator" and "weight tracker" features are alleged to perform this core tracking and calculation function. ¶48, 97 col. 8:20-27

Identified Points of Contention

  • Technical Question: Similar to the '482 Patent, a key question will be whether the accused app's algorithm for calculating food values and "activity Points" is technically equivalent to the specific process claimed. The complaint alleges the app calculates "Weight Watchers Points values" (Compl. ¶48), but the case will depend on evidence showing the underlying formulas are the same or equivalent.
  • Scope Question: A potential dispute may arise over the term "system" as used in claim 12. Questions may be raised as to whether a software application running on a general-purpose mobile device constitutes the claimed "system," especially given that patent embodiments illustrate a dedicated physical calculator. (’885 Patent, FIG. 1).

V. Key Claim Terms for Construction

Term ('482 Patent): "metabolic efficiency factor" (claim 1)

  • Context and Importance: This term is a critical component of the formula for calculating the "food energy data" (FED) value, which distinguishes the invention from simple calorie counting. The construction of this term will determine the scope of the formula itself and whether an algorithm must be based on specific scientific principles of metabolic conversion or if any set of weighting constants for macronutrients could fall within the claim.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification provides specific numerical ranges for the factors (e.g., "W(PRO) is selected from a range 0.7<=W(PRO)<=0.9"). (’482 Patent, col. 33:59-62). A party may argue this disclosure of a range, rather than a single fixed value, supports a broader construction covering functionally similar weighting schemes.
    • Evidence for a Narrower Interpretation: The term itself, along with the detailed description, suggests the factor is not arbitrary but is tied to the scientific concept of how efficiently the human body converts different nutrients into energy. (’482 Patent, col. 3:9-14). A party may argue the term should be limited to factors that are demonstrably based on such a scientific principle.

Term ('885 Patent): "activity Points" (claim 12)

  • Context and Importance: This term defines the credit a user receives for physical exercise. Its construction is important because it will determine whether any method of assigning numerical credit for exercise infringes, or if the method must conform to the specific calculation method disclosed in the patent.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim language does not specify how "activity Points" must be calculated, only that they are "based on the weight of the person and on the intensity level and duration of physical exercise." (’885 Patent, col. 14:10-14). This could support a construction that covers any algorithm using those inputs to generate a numerical exercise credit.
    • Evidence for a Narrower Interpretation: The specification discloses a specific mathematical formula for calculating activity points: PA = (k4 x kg body weight x minutes of activity) / 100. (’885 Patent, col. 4:35-42). A party may argue that the term "activity Points" should be construed as being implicitly limited to values derived from this or a structurally equivalent formula.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges both induced and contributory infringement. It alleges inducement based on Defendants marketing and providing instructions for the app, thereby encouraging end-users to perform the patented methods. (Compl. ¶75, 95, 114). It alleges contributory infringement on the basis that the app's features—the calculator, database, and algorithm—are a material part of the invention, are especially adapted for infringing use, and have no substantial non-infringing use. (Compl. ¶77, 79, 97, 99, 116, 118).
  • Willful Infringement: The complaint alleges willful infringement based on Defendants’ alleged pre-suit knowledge of the patents. This knowledge is purportedly based on the individual Defendants having been "subscribing customer[s] of Weight Watchers" who knew the system was patented, and on Plaintiff having sent a cease-and-desist letter prior to litigation. (Compl. ¶46, 49, 84, 104, 123).

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

  • A key evidentiary question will be one of algorithmic equivalence: What evidence will emerge from discovery to demonstrate that the accused application’s internal software algorithm performs the specific, multi-factor mathematical calculations—including the application of "metabolic efficiency factor[s]"—required by the asserted patent claims?
  • A central issue of claim construction will be one of definitional scope: Will terms such as "metabolic efficiency factor" and "activity Points" be construed broadly to encompass any functionally similar weighting of nutrients and crediting of exercise, or will they be limited more narrowly to the specific formulas and scientific principles disclosed in the patent specifications?
  • The allegations regarding the defendants' history as former customers raise a significant question of intent: Can Plaintiff prove that Defendants had pre-suit knowledge of the specific patents-in-suit and deliberately copied the patented system, which would be central to the claim for willful infringement and potential enhanced damages?