Backertop Licensing LLC v. Justworks Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Backertop Licensing LLC (Texas)
  • Defendant: Justworks, Inc. (Delaware)
  • Plaintiff’s Counsel: Murthy Patent Law PLLC
• Case Identification: 1:22-cv-10142, S.D.N.Y., 11/29/2022
• Venue Allegations: Plaintiff alleges venue is proper because Defendant conducts substantial business in the Southern District of New York, including selling or offering to sell the accused product.
• Core Dispute: Plaintiff alleges that Defendant’s Justworks Hours mobile application infringes two patents related to managing mobile device network access by disabling certain applications based on the device's presence within a defined physical location.
• Technical Context: The technology concerns location-based services, specifically using wireless beacons to trigger a handshake protocol that controls a mobile application's behavior and authorizes network access within a virtual perimeter.
• Key Procedural History: The complaint notes that during the prosecution of the application leading to the '385 Patent, the patentee overcame a November 5, 2015 non-final rejection. Plaintiff alleges that the inventive concept of the claims, involving a response from the mobile device confirming an application's disablement prior to authorizing network presence, was found to be novel over the cited prior art.

Case Timeline

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

U.S. Patent No. 9,332,385 - “Selectively providing content to users located within a virtual perimeter,” Issued May 3, 2016

The Invention Explained

• Problem Addressed: The patent's background section describes a disparity in user experience between native mobile applications and web browsers, noting that applications are often superior because they can store resources locally and avoid the "lag time" associated with retrieving all data from a a web server (Compl. ¶31-32; ’385 Patent, col. 1:9-27).
• The Patented Solution: The invention proposes a location-based network access control method. When a mobile device enters a "virtual perimeter" defined by beacons, a server sends a message commanding the device to disable at least one application. Only after the device sends a confirmation response back, indicating the application has been disabled, is the device authorized to "establish presence on a network maintained for the physical location" (Compl. ¶29; ’385 Patent, Abstract; col. 1:30-44).
• Technical Importance: The complaint alleges this approach provides a specific technical solution to improve network efficiency by ensuring certain applications are inactive before granting network access, which it characterizes as a technical improvement over prior art methods of filtering content (Compl. ¶35).

Key Claims at a Glance

• The complaint asserts at least independent claim 1 and also recites independent claim 8 (Compl. ¶18, ¶30).
• Claim 1 (Method) requires:
  • Identifying a mobile device’s present physical location based on wireless communication with a beacon.
  • Communicating a first message to the device specifying at least one application to be disabled.
  • Receiving a response from the device indicating the application is disabled.
  • Authorizing the device to establish network presence in response to receiving the confirmation.
• The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 9,654,617 - “Selectively providing content to users located within a virtual perimeter,” Issued May 16, 2017

The Invention Explained

• Problem Addressed: As a continuation of the application for the ’385 Patent, this patent addresses the same technical problem: the inefficiency and user experience lag of web browsers compared to native mobile applications (Compl. ¶52-53; ’617 Patent, col. 1:12-28).
• The Patented Solution: The solution is substantively identical to that of the ’385 Patent but is claimed as a "computer program product" comprising a storage medium with code to perform the method, rather than as the method itself. It recites the same core process: detecting location, sending a command to disable an application, receiving confirmation, and then authorizing network presence (Compl. ¶51; ’617 Patent, Abstract; col. 1:31-47).
• Technical Importance: The complaint makes the same arguments regarding the technical importance as for the '385 Patent, focusing on the specific messaging constructs as an improvement over the prior art (Compl. ¶56).

Key Claims at a Glance

• The complaint asserts at least independent claim 1 (Compl. ¶40).
• Claim 1 (Computer Program Product) requires:
  • A computer-readable storage medium with program code that, when executed, performs a method.
  • The method comprises the same core steps as claim 1 of the ’385 Patent: identifying location via a beacon, communicating a message to disable an application, receiving a response indicating disablement, and authorizing network presence.
• The complaint does not explicitly reserve the right to assert dependent claims.

III. The Accused Instrumentality

Product Identification

• The Justworks Hours mobile application (Compl. ¶6).

Functionality and Market Context

• The complaint identifies the accused product and alleges it is made available for purchase and download through platforms like the Google Play store (Compl. ¶15-17). However, the complaint does not describe the specific technical functions or features of the Justworks Hours application itself. No probative visual evidence provided in complaint. It alleges the product is marketed and sold throughout the United States, including within the Southern District of New York (Compl. ¶17).

IV. Analysis of Infringement Allegations

The complaint alleges that the Justworks Hours mobile application directly infringes, either literally or equivalently, at least claim 1 of both the '385 and '617 Patents (Compl. ¶18, ¶40). However, the complaint does not contain specific factual allegations mapping features of the accused product to the elements of the asserted claims.

’385 Patent Infringement Allegations

’617 Patent Infringement Allegations

• Identified Points of Contention:
  • Technical Questions: The primary question is evidentiary: what proof can be shown that the Justworks Hours application performs the specific, sequential handshake required by the claims? Specifically, does the accused product (1) receive a command to disable an application, (2) send a confirmation of that disablement, and (3) subsequently gain authorization for network presence as a direct result of that confirmation? The complaint does not provide facts to support this sequence of operations.
  • Scope Questions: A potential dispute may arise over whether the accused product's functionality, once revealed in discovery, falls within the scope of the claims. For example, a question may be raised as to whether any location-based feature in the accused app constitutes the specific "disable-confirm-authorize" protocol claimed in the patents.

V. Key Claim Terms for Construction

• The Term: "application to be disabled"

  • Context and Importance: The meaning of "disabled" is critical to infringement. The case will turn on whether any action performed by the accused product can be characterized as "disabling" an application in the manner required by the claims. Practitioners may focus on this term to determine if merely closing an application, restricting its features, or a more formal OS-level deactivation is required.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification uses the term "deactivate" (e.g., ’385 Patent, col. 9:26-27), which could be argued to encompass a wide range of actions that render an application non-functional or inaccessible.
    • Evidence for a Narrower Interpretation: The patent provides examples such as deactivating "image/video capture applications" or "playback of music and/or videos" (’385 Patent, col. 9:61-67). This could support an argument that "disabled" means preventing the core function of an entire application, not merely a feature, and requires an active intervention by a control application or service.

• The Term: "authorizing... to establish presence on a network"

  • Context and Importance: This term is central to the claimed causal chain. The dispute will likely involve what constitutes "authorizing" network presence and whether this authorization is contingent upon the prior "disablement" step.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A plaintiff may argue the term covers any grant of network connectivity that follows the confirmation step, such as completing a "handshake process with the mobile device for the mobile device to establish presence on the network" (’385 Patent, col. 5:30-33).
    • Evidence for a Narrower Interpretation: A defendant may argue that the term requires a formal authorization sequence with a distinct network infrastructure, as depicted in the patent's system diagrams (e.g., ’385 Patent, Fig. 2), which show a "Location Authentication Server" (220) and a "content streaming server" (230) mediating access. This could be used to argue that simply allowing an application to use a pre-existing internet connection does not meet this limitation.

VI. Other Allegations

• Indirect Infringement: The complaint alleges inducement based on Defendant promoting its products online and "providing customers with instructions and/or manuals for using the Justworks Accused Products" (Compl. ¶20, ¶42). The complaint also pleads contributory infringement (Compl. ¶21, ¶43).
• Willful Infringement: The complaint seeks treble damages for "willingly" infringing and requests that the case be found "exceptional" under 35 U.S.C. § 285 (Compl. ¶1, ¶G). No specific facts are alleged to support pre-suit knowledge of the patents.

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

• A central issue will be one of evidentiary proof: Can Plaintiff produce evidence demonstrating that the Justworks Hours application performs the specific, three-step "disable-confirm-authorize" protocol recited in the asserted claims? The complaint's lack of factual detail suggests this will be a primary focus of discovery and dispute.
• The case may also turn on a question of definitional scope: How broadly will the court construe key claim terms such as "application to be disabled" and "authorizing... to establish presence on a network"? The outcome of claim construction will determine whether the technical operation of the accused product, once established, can be found to meet the specific requirements of the patented method.