DCT

1:23-cv-08186

Weisner v. Google LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:23-cv-08186, S.D.N.Y., 09/28/2023
  • Venue Allegations: Venue is based on Defendant Google's regular and established place of business within the Southern District of New York, specifically a large office located at 111 Eighth Avenue, New York.
  • Core Dispute: Plaintiff alleges that Defendant’s Google Maps service, specifically its "Your Timeline" and "Your Places" features, infringes three patents related to creating and using digital physical location histories for targeted advertising.
  • Technical Context: The technology at issue involves using a mobile device's location data to create a historical log of a user's real-world visits to vendors, which is then used as a basis for serving relevant digital advertisements.
  • Key Procedural History: The complaint notes prior litigation between the parties involving different patents (20-cv-02862-AKH). It also states that Shmuel Nemanov, a co-inventor and co-owner of the patents-in-suit, has been joined as an involuntary party for refusing to participate in the lawsuit. Plaintiff alleges it has the exclusive right to sue for infringement under an agreement with Nemanov, and that it provided Google with written notice of infringement for all three asserted patents prior to filing the complaint.

Case Timeline

Date Event
2007-06-07 Earliest Priority Date for all Asserted Patents
2020-06-16 U.S. Patent No. 10,685,068 Issued
2020-06-18 Notice of ’068 Patent Infringement to Google
2020-12-08 U.S. Patent No. 10,860,667 Issued
2020-12-08 Notice of ’667 Patent Infringement to Google
2021-11-02 U.S. Patent No. 11,163,839 Issued
2022-05-08 Notice of ’839 Patent Infringement to Google
2023-09-28 First Amended Complaint Filed

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

U.S. Patent No. 11,163,839 - "Mobile Communication Device with Location histories Configured to Link Individual Member to Vendor Members of Network"

  • Patent Identification: U.S. Patent No. 11,163,839, "Mobile Communication Device with Location histories Configured to Link Individual Member to Vendor Members of Network," issued November 2, 2021 (Compl. ¶17).

The Invention Explained

  • Problem Addressed: The patent addresses the shortcomings of early mobile-web search and advertising, where results for real-world locations were based on generic web popularity rather than a user's specific physical location history or personal tastes, leading to irrelevant results and untailored ads (Compl. ¶¶ 28-29).
  • The Patented Solution: The invention proposes a handheld mobile device with software that creates a "digital history" of a user's "physical encounters" with vendors. This location-based history, identified by URLs, allows for the serving of targeted advertisements based on a user's real-world activities, thereby marrying one's physical activities to the virtual world (Compl. ¶¶ 19, 30). The specification describes this as providing a "new venue for businesses to advertise in" on a user's "digital leg history" (’839 Patent, Abstract; specification as cited in Compl. ¶34).
  • Technical Importance: This approach sought to make digital advertising more personally relevant by grounding it in a user's documented, real-world interactions with businesses (Compl. ¶31).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶18, 128).
  • The essential elements of independent claim 1 include:
    • A handheld mobile communication device with software.
    • The software configures the device to, upon a physical encounter between a mobile user ("individual member") and a "vendor member," transmit or generate a location history entry.
    • This entry includes key data (like a URL), location, and time of the encounter.
    • The software maintains a viewable and searchable physical encounter history on the device, which includes a "visual timeline."
    • The location history is configured to include clickable advertisements from vendor members.
  • The complaint does not explicitly reserve the right to assert dependent claims for the ’839 Patent.

U.S. Patent No. 10,685,068 - "Targeting individuals for advertising using digital physical location histories"

  • Patent Identification: U.S. Patent No. 10,685,068, "Targeting individuals for advertising using digital physical location histories," issued June 16, 2020 (Compl. ¶47).

The Invention Explained

  • Problem Addressed: The patent identifies a need for an advertising platform that moves beyond generic digital advertising by linking it to a consumer's physical interactions with businesses (Compl. ¶¶ 53, 61-62).
  • The Patented Solution: The invention describes a computer-implemented method and system for creating an advertising platform built on a "member network." The system automatically generates entries of physical encounters between users and vendors, creating a location history. This history is then used to serve advertisements to the user based on a "profile of the key data" (e.g., URLs) recorded in their account (’068 Patent, Abstract; Compl. ¶¶ 49, 64). The specification explains that companies can offer to place ads on accounts of users who have a particular profile based on the URLs in their history (’068 Patent, col. 16:44-52, as cited in Compl. ¶66).
  • Technical Importance: The system aims to reduce the "randomness" of digital marketing by serving ads that are tailored to a consumer's demonstrated interests as evidenced by their physical visit history (Compl. ¶¶ 65, 73).

Key Claims at a Glance

  • The complaint asserts independent claims 1, 16, and 30 (Compl. ¶48, 132).
  • The essential elements of independent claim 1 (a method claim) include:
    • Maintaining a processing system that provides accounts to an "individual member" and a "stationary vendor member" of a network.
    • Providing an application on a mobile device that automatically transmits or generates an entry of a physical encounter.
    • Maintaining a physical encounter history on a database, which can be accumulated from multiple devices.
    • The application maintains a viewable, searchable history on the device, including a "visual timeline."
    • Serving advertisements from vendor members on the user's physical encounter history, with the content of the ads based on a profile of the key data in that history.
  • The complaint asserts claims 1-30 (Compl. ¶132).

U.S. Patent No. 10,860,667 - "Physical location history with key data using positioning system"

  • Patent Identification: U.S. Patent No. 10,860,667, "Physical location history with key data using positioning system," issued December 8, 2020 (Compl. ¶86).

Multi-Patent Capsule

  • Technology Synopsis: The ’667 Patent is directed to a method and system for creating a "membership-only network" for individuals and businesses to document physical interactions (Compl. ¶96). A key advantage is the aggregation and collection of data exclusively from network participants, which serves to refine the data set and eliminate the "randomness and irrelevancy of aggregated data" from the general internet (Compl. ¶¶ 97-98).
  • Asserted Claims: Independent claims 1, 9, and 17 are asserted, along with dependent claims (Compl. ¶¶ 87, 91-95, 135).
  • Accused Features: The complaint alleges Google's system creates a member network through its accounts for individuals and businesses. It accuses the Google Maps "Your Timeline" feature of documenting and displaying physical encounters, thereby linking individual members to business members through this system (Compl. ¶¶ 106-108).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are Google's Pixel and Android phones that contain an operating system including the Google Maps application, specifically its "Your Timeline" and "Your Places" features (Compl. ¶¶ 39-40, 78, 107).

Functionality and Market Context

  • The complaint alleges that the "Your Timeline" and "Your Places" features function as software interfaces that allow individual Google account holders to access, search, and review their past location history (Compl. ¶43). This history is accumulated automatically and documents a user's physical encounters with businesses that maintain a "Google Business Profile" (Compl. ¶¶ 44-45).
  • When a user views their timeline, they can see profiles of businesses they have visited, which the complaint characterizes as "advertisement profiles" (Compl. ¶46). A screenshot provided in the complaint shows a user's location history entry for "The Penrose," which, when selected, leads to the business's profile page with its key data (Compl. p. 11).
  • The complaint further alleges that Google uses this location history data to serve advertisements, both for businesses a user has previously visited and for businesses with a "similar profile" to those the user has visited (Compl. ¶¶ 81, 83). A screenshot shows a search result for a restaurant, "Green Pavilion," which the user has never visited but is presented as a "67% match" based on the user's location history (Compl. p. 22).

IV. Analysis of Infringement Allegations

'839 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A handheld mobile communication device configured for communication with at least one processing system to create and use location histories on the device... Google's Pixel and Android phones are handheld mobile communication devices that run Google Maps to create and use location histories (Compl. ¶40). ¶¶39-40 col. 1:16-24
...software for configuring the device to, upon instances of a physical encounter between the individual member... and a vendor member... transmit to, or generate on, the at least one processing system a location history entry of the physical encounter... The Google Maps software includes a "Your Timeline" feature that automatically records a user's physical visits to businesses, creating entries in the user's location history (Compl. ¶40, 43). ¶¶40, 43 col. 4:1-12
...the software also for maintaining a viewable physical encounter history on the device that... is searchable by the time, by the URL or data associated with the URL of the vendor member, and by the location... the physical encounter history... includes in at least one mode a visual timeline... "Your Timeline" provides a software interface for users to access, search, and review their past location history (Compl. ¶43). The complaint includes a screenshot described as showing the "'Google Maps Timeline'... in mobile view," which displays a map-based visual timeline of a user's travel and visited locations (Compl. p. 9). ¶¶42, 43 col. 4:13-23
...wherein the location history is configured to include advertisements from the plurality of vendor members... wherein the advertisements are clickable such that when the individual member clicks on a particular advertisement... the individual member is taken... to a web site... Through the "Your Timeline" feature, individuals can view and click on "Google Business" advertisement profiles for places they have visited (Compl. ¶46). A screenshot shows that clicking "See Place Details" for a visited business leads the user to that business's advertisement/profile page (Compl. p. 11). ¶46 col. 4:29-37

'068 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A computer-implemented method... comprising: maintaining a processing system in communication with a positioning system, the processing system configured to provide an account to an individual member, and to a stationary vendor member... Google provides Google accounts to individual users and Google Business Profiles to businesses, which are offered to businesses that are members of the Google network (Compl. ¶44, 107). These accounts are part of a system that uses positioning data to track location history (Compl. ¶40, 43). ¶¶44, 107 col. 12:49-57
...providing an application that configures a mobile communication device... to, upon instances of a physical encounter... automatically transmit to, or generate on, the processing system an entry of the physical encounter... Google Maps on Android devices is an application that automatically creates entries in a user's location history when they physically visit a business location (Compl. ¶40, 43, 78). ¶¶40, 78 col. 13:2-15
...maintaining, on a database of the processing system, a physical encounter history... the individual member's account is configured to allow the physical encounter history to be accumulated from multiple devices... Google maintains the "Your Timeline" and "Your Places" location history for its account members, which can be reviewed and searched (Compl. ¶43). ¶43 col. 13:21-29
...serving, by the processing system, advertisements of particular stationary vendor members on the physical encounter history... a content of the advertisements based on a profile of the key data recorded in the physical encounter history... Google serves business advertisements to users when they search on Google.com or Google Maps (Compl. ¶80). These ads are targeted based on location history, as shown in a screenshot where a search for "gas station" elicits an ad for a Sunoco station the user previously visited (Compl. p. 20). ¶¶80-81 col. 16:44-52
...wherein the content of the advertisements comprise the key data of the particular stationary vendor member. The business advertisements displayed contain the key data of the business (Compl. ¶70). The complaint includes a screenshot of a search for "supermarket" that returns a result for a previously visited ShopRite, with the result containing key data like a link to its website and hours (Compl. p. 21). ¶¶70-71, 83 col. 13:42-45

Identified Points of Contention

  • Scope Questions: A primary question will be whether the "Google Business Profile" pages and location-history-informed search results generated by the accused features constitute "advertisements" as the term is used in the patent claims. Google may argue this is informational content generated for all users, whereas the patent may be read to require a more formal, paid advertising relationship.
  • Technical Questions: The patents describe a "member network" of "individual members" and "vendor members." A key dispute will likely focus on whether the general population of Google account holders and businesses with Google Profiles constitutes such a network, particularly as some patent embodiments describe a more formal sign-up process that may include a fee (’068 Patent, col. 8:61-64).
  • Factual Questions: The complaint alleges that Google serves ads for unvisited businesses that are "similar in profile" to visited ones (Compl. ¶83). The basis for this similarity and the mechanism by which Google's system makes this determination (e.g., the "67% match" shown on p. 22 of the complaint) will be a significant point of factual inquiry and discovery.

V. Key Claim Terms for Construction

  • The Term: "advertisement"

  • Context and Importance: This term is critical to the infringement analysis for all three patents. Plaintiff's theory depends on construing Google Business Profiles, location-based search results, and suggestions as "advertisements." If these features are not considered "advertisements," the infringement case may be significantly weakened. Practitioners may focus on this term because its definition distinguishes between presenting neutral, factual information and actively promoting a vendor, which is the core of the dispute.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification states an object is to "provide such a method and apparatus that also serves the function of allowing a business to advertise itself on the digital history" and for an "entry in the digital history which functions as an advertisement" (’839 Patent, specification as cited in Compl. ¶34). This suggests a functional definition where any entry promoting a business could be an "advertisement."
    • Evidence for a Narrower Interpretation: Claim 1 of the ’839 patent requires the location history to be "configured to include advertisements from the plurality of vendor members," which may suggest a purpose-built system for placing ads, rather than an automatic generation of informational profiles for every visited location.

  • The Term: "member network" (with "individual member" and "vendor member")

  • Context and Importance: The claims are consistently framed around a "member network." The viability of the infringement allegations hinges on whether Google's ecosystem of users and businesses maps onto this claimed structure.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The complaint alleges Google "offers membership accounts for individuals and businesses alike" (Compl. ¶107), suggesting anyone with a Google account is a "member." The patent abstracts speak generally of linking a person's physical activities to a digital history, which could support a broad interpretation.
    • Evidence for a Narrower Interpretation: The ’068 patent specification describes an embodiment where "customers of the system of the present invention sign up at a web site for a fee and obtain an account with the system, thereby becoming a member of the network" (’068 Patent, col. 8:61-64). This could support a narrower construction requiring a specific, formal, and potentially commercial relationship to establish membership in the claimed "network," as opposed to the general and free nature of Google accounts.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement to infringe the ’839 Patent, but does not plead specific facts explaining how Google allegedly encourages its users to perform the claimed steps (Compl. ¶130). For the ’068 and ’667 patents, only direct infringement is alleged in the formal counts.
  • Willful Infringement: Willfulness is alleged for all three patents based on pre-suit knowledge (Compl. ¶¶119-120). The complaint asserts that Google received written notice of infringement of the ’839 Patent on or about May 8, 2022; the ’068 Patent on or about June 18, 2020; and the ’667 Patent on or about December 8, 2020, and continued its infringing activities despite this knowledge (Compl. ¶¶ 111, 113-114).

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

  • A core issue will be one of definitional scope: Can the term "advertisement," as used throughout the patents-in-suit, be construed to cover the automatically generated business profiles and location-history-informed search results within Google Maps, or does it require a more formal, paid-for promotional placement?
  • A second central question concerns system architecture: Does Google's open ecosystem of all Google account holders and businesses with public profiles constitute the "member network" recited in the claims, or do the patent specifications require a more discrete, formally joined network of participants dedicated to the location-history service?
  • A key evidentiary question will be one of functional operation: What is the specific mechanism by which the accused Google features recommend unvisited businesses, and does that mechanism operate based on a "profile of the key data" from a user's physical encounter history, as required by the claims and suggested by the "67% match" allegation?