DCT

1:17-cv-07089

Pirri v. Cheek

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:17-cv-07089, S.D.N.Y., 01/15/2018
  • Venue Allegations: Venue is alleged to be proper in the Southern District of New York because a substantial part of the events giving rise to the claims occurred in the district and because most defendants are residents of New York County.
  • Core Dispute: Plaintiff seeks a declaration that Defendants' patent is invalid due to incorrect inventorship and inequitable conduct, alleging the named inventors misappropriated the core idea from the Plaintiff after he disclosed it in confidence to his therapist, one of the defendants.
  • Technical Context: The technology relates to a method for bridging in-person encounters with online social networking by using physical cards containing unique codes to unlock online profiles.
  • Key Procedural History: Plaintiff alleges he conceived the invention and documented it before a notary in 2006. He further alleges that the named inventors filed the patent application after the idea was improperly disclosed to them by the Plaintiff’s therapist in 2008, and that they knowingly submitted false inventor declarations to the USPTO.

Case Timeline

Date Event
2006-09-18 Plaintiff allegedly commits his ideas to paper before a notary public
2006-10-27 Plaintiff allegedly retains a patent attorney for a patentability search
2007-01-24 Patentability search report allegedly confirms novelty of Plaintiff's idea
2008-10-01 Plaintiff allegedly discloses idea to Defendant Richards (approx. date)
2009-01-16 Plaintiff allegedly informs his psychiatrist of Richards' disclosure
2009-11-01 U.S. Patent No. 8,543,465 earliest priority date
2010-11-01 U.S. Patent No. 8,543,465 filing date
2013-09-24 U.S. Patent No. 8,543,465 issue date
2015-07-01 Plaintiff allegedly discovers Defendants' use of the invention (approx. date)
2018-01-15 Complaint Filing Date

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

U.S. Patent No. 8,543,465, “Method and Software Product for Personalized Meeting and Relationship Establishing,” Issued Sep. 24, 2013

The Invention Explained

  • Problem Addressed: The patent’s background section identifies a key drawback of contemporary online dating services: they are “overly impersonal” because users peruse profiles before any personal meeting, which “effectively preclude[s] the initial chemistry or spark” of an in-person encounter (ʼ465 Patent, col. 1:30-46).
  • The Patented Solution: The invention proposes a hybrid online/offline method to reverse this process. An "initiator" first meets a "recipient" in person and gives them a physical card. This card contains a website address and a unique code (’465 Patent, col. 2:57-65). The recipient can then use the code to access the initiator's online profile, bridging the initial real-world interaction with a subsequent online connection. The system is managed by a central organization that provides the cards and hosts the profiles (’465 Patent, Abstract; Fig. 1).
  • Technical Importance: The method sought to merge the spontaneity of traditional, in-person meetings with the information-rich environment of online dating platforms, addressing a perceived gap in the market for social connection tools (’465 Patent, col. 1:50-53).

Key Claims at a Glance

  • The complaint seeks to invalidate the entire patent without specifying claims (Compl. ¶78). The patent contains two independent claims.
  • Independent Claim 1 (Method Claim):
    • An initiator develops a profile with a central organization.
    • The central organization provides the initiator with cards containing an icebreaker, a website, and a code with elements corresponding to the icebreaker.
    • The initiator gives a card to a recipient.
    • The recipient goes to the website and enters the code.
    • The recipient is given access to the initiator's profile.
    • The recipient sends a message to the initiator.
    • The initiator tracks activity, including when the recipient enters the code and sends a message, and the central organization displays this compiled data to the initiator.
  • Independent Claim 2 (Software Product Claim):
    • A non-transitory computer-readable medium containing software for executing the method, including modules for account creation, card code setting, messaging, and activity tracking.

III. The Accused Instrumentality

This action is for a declaratory judgment of patent invalidity, not patent infringement. Therefore, there is no "accused instrumentality" in the traditional sense. The subject of the dispute is the validity of the ’465 Patent itself. The complaint alleges that the Defendants have monetized the invention disclosed in the patent through a business called "Cheekd" (Compl. ¶13) and a website/application called "Networkd" (Compl. ¶65). The complaint alleges that Defendant Cheek promoted the idea as "Online Dating in Reverse" on the television show "Shark Tank" and built a brand around it (Compl. ¶¶14-16, 60). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint does not contain allegations of patent infringement. This section is not applicable.

V. Key Claim Terms for Construction

While this is not an infringement action, the scope of the claims is central to the dispute over inventorship. The definition of key terms may be relevant to determining whether the Plaintiff’s alleged conception aligns with what the patent claims.

  • The Term: "icebreaker" (Claim 1)
  • Context and Importance: The plaintiff alleges he conceived of cards containing "witty quotes or passages" to help the recipient remember the encounter (Compl. ¶30). The patent claims cards with an "icebreaker," defined as "a line of text that includes any of several short, cute or flirtatious phrases" that serves as a "written substitute for an opening oral remark" (’465 Patent, col. 2:20-26). Practitioners may focus on whether the plaintiff's alleged conception of "witty quotes" is coextensive with the patent's claimed "icebreaker," which could be relevant to the ultimate question of inventorship.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification states the icebreaker can be "any of several short, cute or flirtatious phrases" and provides examples like "Act natural. We can get awkward later" and "Don't overthink this" (’465 Patent, col. 2:22-24). This suggests a wide range of possible phrases.
    • Evidence for a Narrower Interpretation: The patent also states that "The text in the icebreaker itself is not a trademark or slogan of the central organization" (’465 Patent, col. 2:26-28). The patent further describes a system where icebreakers can be chosen from a standard list or created by the initiator pending approval, suggesting they are a discrete, managed component of the system rather than any arbitrary text (’465 Patent, col. 4:29-35, col. 8:59-62).

VI. Other Allegations

  • Inequitable Conduct and Incorrect Inventorship: The central patent-related claim is that the ’465 Patent is invalid and unenforceable due to inequitable conduct before the USPTO (Compl. ¶¶66-78).
    • Factual Basis: The complaint alleges that Plaintiff Pirri disclosed his detailed invention concept—described as “online dating in reverse”—to his therapist, Defendant Richards, in confidence in October 2008 (Compl. ¶41). It is alleged that Richards then disclosed the idea to Defendant Cheek (Compl. ¶42-43).
    • Knowledge and Intent: The complaint alleges the named inventors knew they were not the true inventors when they filed the application and submitted sworn declarations to the USPTO claiming inventorship (Compl. ¶¶54, 69-71). This act of submitting allegedly false declarations with knowledge of their falsity is asserted as evidence of a clear intent to deceive the USPTO (Compl. ¶74).
    • Materiality: The complaint alleges that the misrepresentation of inventorship was material, stating that "the USPTO would not have issued U.S. Patent No. 8,543,465 had it known that the inventor information was false" (Compl. ¶73).

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

The resolution of this case appears to hinge on questions of fact regarding the origin of the invention and the state of mind of the named inventors during prosecution.

  • A core issue will be one of inventorship and corroboration: What evidence, beyond the plaintiff's notarized documents and testimony, can be presented to establish that he was the true and sole inventor of the claimed method and that he communicated the complete conception to the defendants prior to the patent's priority date?
  • A second key issue will be the standard for inequitable conduct: Assuming the plaintiff proves he was the inventor, can he establish by clear and convincing evidence that the named inventors acted with the specific, affirmative intent to deceive the USPTO? The court will have to weigh the evidence to determine if the defendants' actions rose above mere negligence to the level of a deliberate scheme to defraud the patent office.