DCT
1:20-cv-00578
Boxey Tech LLC v. ASICS America Corp
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Boxey Tech LLC (Texas)
- Defendant: ASICS America Corp; ASICS Digital, Inc. (Delaware, with principal places of business in Ohio and Massachusetts, respectively)
- Plaintiff’s Counsel: Sand, Sebolt & Wernow Co., LPA
- Case Identification: 1:20-cv-00578, S.D. Ohio, 09/21/2020
- Venue Allegations: Venue is alleged to be proper based on Defendant ASICS America Corp maintaining a regular and established place of business in the district.
- Core Dispute: Plaintiff alleges that Defendants’ "Runkeeper" fitness application and associated services infringe patents related to methods for computing and selecting travel paths between geographical locations based on the popularity of intermediate points.
- Technical Context: The technology lies in the field of digital navigation, offering an alternative to traditional turn-by-turn directions by generating routes based on landmarks and popular locations, which can be more intuitive for users, especially in areas with unnamed streets.
- Key Procedural History: The complaint alleges that Defendants acquired Fitness Keeper, Inc., the operator of the accused "Runkeeper" application, in 2016. The asserted U.S. Patent No. 8,731,833 is a continuation of U.S. Patent No. 8,560,238, indicating a direct familial relationship and shared technical disclosure between the two patents-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2011-02-01 | Earliest Priority Date for '238 and '833 Patents |
| 2013-10-15 | U.S. Patent No. 8560238 Issues |
| 2014-05-20 | U.S. Patent No. 8731833 Issues |
| 2016 | ASICS acquires Fitness Keeper, Inc. (operator of Runkeeper) |
| 2020-09-21 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,560,238, "COMPUTING PATHS BETWEEN GEOGRAPHICAL LOCALITIES," issued October 15, 2013
The Invention Explained
- Problem Addressed: The patent identifies a shortcoming in conventional navigation systems that provide turn-by-turn directions. Such directions are less effective in areas where streets may not have names or where people navigate using landmarks rather than street signs, a common situation in some developing countries (’238 Patent, col. 1:25-30; Compl. ¶21).
- The Patented Solution: The invention proposes a system that computes paths by incorporating the "popularity" of various "geographical localities" (e.g., landmarks, stores, major intersections). When multiple routes to a destination exist, the system can select the path that transits through more popular, and thus more easily recognizable, intermediate points, making navigation more intuitive for the traveler (’238 Patent, Abstract; col. 3:20-34). The patent describes that this popularity can be "crowd-sourced" by scanning informational sources like websites to determine which localities are mentioned most often (’238 Patent, col. 3:40-44).
- Technical Importance: The technology represents a shift from purely geometric, street-grid-based routing to a more semantic, human-centric model that leverages common knowledge and landmarks.
Key Claims at a Glance
- The complaint asserts independent claim 13 (Compl. ¶20, 38).
- Claim 13 requires a method comprising:
- receiving a set of connections between geographical localities;
- receiving a request to provide a path from a first to a second locality;
- determining a plurality of paths between the localities, where a first path includes a third locality but not a fourth, and a second path includes the fourth locality but not the third; and
- identifying a path based at least in part on a popularity rating for the third and fourth localities.
U.S. Patent No. 8,731,833, "COMPUTING PATHS BETWEEEN GEOGRAPHIC LOCALITIES," issued May 20, 2014
The Invention Explained
- Problem Addressed: As a continuation of the ’238 Patent, the ’833 Patent shares the same specification and addresses the same problem: the inadequacy of standard turn-by-turn directions in environments where navigation is based on landmarks rather than street names (’833 Patent, col. 1:25-30).
- The Patented Solution: The invention, as claimed in this patent, involves a computer-implemented method that receives indications of four distinct geographical localities. It then determines at least two different paths between two of the localities, with each path uniquely including one of the other two localities. A final path is selected based on the relative popularity ratings of those unique intermediate localities (’833 Patent, Abstract; col. 3:20-34).
- Technical Importance: This patent further refines the concept of popularity-based routing by claiming a specific logical framework for comparing two alternative paths via their distinct intermediate landmarks.
Key Claims at a Glance
- The complaint asserts independent claims 1 and 16, and dependent claims 7 and 20 (Compl. ¶34-38, 55, 60).
- Claim 1 requires a method comprising:
- receiving an indication of a first, second, third, and fourth geographical locality;
- determining a first path (from first to second locality) that includes the third but not the fourth locality;
- determining a second path (from first to second locality) that includes the fourth but not the third locality; and
- selecting one of the paths based at least in part on the popularity ratings for the third and fourth localities.
- Claim 16 requires a computing system comprising components configured to perform the core functions of claim 1:
- a component to receive an indication of four geographical localities;
- a component to determine a popularity rating for the third locality;
- a component to determine a popularity rating for the fourth locality;
- a component to determine a path based on these popularity ratings.
III. The Accused Instrumentality
- Product Identification: The "Runkeeper" system, which includes the www.runkeeper.com website, related systems, and mobile applications (Compl. ¶7, 39).
- Functionality and Market Context: The Runkeeper system is described as a service providing "geographic location services for running and other fitness activities" (Compl. ¶7). The complaint alleges that the system performs the patented methods by offering users route suggestions. For instance, it is alleged to present users with different possible routes, such as a "direct freehand route and a popular route," and to suggest a route based on its popularity (Compl. ¶44, 46). The complaint includes a screenshot from the ASICS website announcing the 2016 acquisition of Fitness Keeper, Inc., the operator of Runkeeper, described as a "global fitness tracking app" (Compl. p. 3).
IV. Analysis of Infringement Allegations
'238 Patent Infringement Allegations
| Claim Element (from Independent Claim 13) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| receiving a set of connections between geographical localities, each connection connecting one geographical locality to one other geographical locality with no intermediate geographical localities along the connection; | The Accused Product (e.g., the memory of a smartphone running Runkeeper) receives connections between localities, such as a "First Locality" and "Second Locality." | ¶40 | col. 16:2-6 |
| receiving a request to provide a path from a first geographical locality to a second geographical locality; | The Accused Product receives a user request for a "popular route in a particular area." | ¶41, ¶42 | col. 16:7-9 |
| determining, based at least in part on the received set of connections, a plurality of paths from the first geographical locality to the second geographical locality, wherein a first path includes a third geographical locality but does not include a fourth geographical locality and wherein the second path includes the fourth geographical locality but does not include the third geographical locality; | The Accused Product determines multiple paths, described as being "highlighted in blue colour" and "highlighted in green colour," where each path contains a unique geographical locality (e.g., path segment). | ¶43, ¶44 | col. 16:10-18 |
| and identifying, by the processor, a path between the first geographical locality and the second geographical locality based at least in part on a popularity rating for the third geographical locality and a popularity rating for the fourth geographical locality. | The Accused Product identifies and "suggests a popular route" based on the popularity of different geographical localities between the start and end points. | ¶45, ¶46 | col. 16:19-23 |
'833 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| receiving an indication of a first geographical locality, a second geographical locality, a third geographical locality, and a fourth geographical locality; | The Accused Product receives indications of localities, which are alleged to be "segments among the first and second paths." | ¶48 | col. 14:36-39 |
| determining a first path between the first geographical locality and the second geographical locality, wherein the first path includes the third geographical locality but does not include the fourth geographical locality; | The Accused Product determines a first path, allegedly "highlighted in blue," that includes a third locality (e.g., a "direct freehand route") but not a fourth. | ¶49, ¶50 | col. 14:40-43 |
| determining a second path between the first geographical locality and the second geographical locality, wherein the second path includes the fourth geographical locality but does not include the third geographical locality; and | The Accused Product determines a second path, allegedly "highlighted in green," that includes a fourth locality (e.g., a "popular route") but not the third. | ¶51, ¶52 | col. 14:44-47 |
| selecting, by the processor, one of the determined paths...based at least in part on a popularity rating for the third geographical locality and a popularity rating for the fourth geographical locality. | The Accused Product selects and "suggests the most popular one" based on identifying the popularity of different localities on various routes. | ¶53, ¶54 | col. 14:48-51 |
- Identified Points of Contention:
- Scope Questions: The complaint alleges that "geographical localities are segments among the first and second paths" (Compl. ¶44). A central question may be whether a "segment" of a route qualifies as a "geographical locality" under the patents' definition, which provides examples such as "landmarks, neighborhoods, stores, intersections, religious locations and artifacts, etc." (’238 Patent, col. 3:7-9).
- Technical Questions: The complaint alleges the Accused Product "identifies the popularity" of localities and "suggests a popular route" (Compl. ¶46) but does not specify how this popularity is determined. The patents describe a method of computing popularity by scanning informational sources like websites (’238 Patent, col. 3:40-44). A key factual question will be whether the Runkeeper application's method for determining a "popular route" (e.g., by aggregating past user run data) performs the same function as the method described and claimed in the patents.
V. Key Claim Terms for Construction
The Term: "geographical locality"
- Context and Importance: This term is the fundamental unit of the claimed invention. Its construction will determine whether the claims cover abstract route points and segments or are limited to more concrete, recognizable places. Practitioners may focus on this term because the infringement theory appears to equate "localities" with "segments" of a path (Compl. ¶44).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent states that examples of localities "are landmarks, neighborhoods, stores, intersections, religious locations and artifacts, etc." (’238 Patent, col. 3:7-9). The use of "etc." suggests the list is illustrative, not exhaustive, potentially allowing for other types of locations or points to be included.
- Evidence for a Narrower Interpretation: The "Background" section frames the problem as helping users who "do not think of directions in terms of streets, distances, and turns" but rather in terms of landmarks (’238 Patent, col. 1:28-30). This context suggests a "locality" should be a cognitively recognizable place, which may argue against an arbitrary "segment" of a path qualifying.
The Term: "popularity rating"
- Context and Importance: This term defines the core selection mechanism. The dispute may turn on whether the accused product's method of assessing popularity falls within the scope of this term as defined by the patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims themselves do not recite a specific method for determining the rating, only that a path selection is "based at least in part on" it (’238 Patent, cl. 13). This may support a broad construction that covers any quantitative measure of popularity, regardless of source.
- Evidence for a Narrower Interpretation: The specification's primary disclosure for computing this rating involves "regularly scanning informational sources, e.g., Internet websites, social networking websites, news sources, etc." and increasing a locality's rating when it is found (’238 Patent, col. 3:40-44). A party could argue that this disclosed "crowd-sourcing" from web content implicitly limits the term's scope, potentially excluding popularity derived from other sources like aggregated user GPS data.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendants induced infringement "by encouraging infringement, knowing that the acts Defendants induced constituted patent infringement" (Compl. ¶65). The specific factual basis for this encouragement (e.g., user manuals, advertisements) is not detailed.
- Willful Infringement: The complaint alleges Defendants had knowledge of the patents "at least as of the service of the present Complaint" (Compl. ¶63). This allegation appears to support a claim for post-suit willfulness. The prayer for relief seeks enhanced damages (Compl. Prayer ¶f).
VII. Analyst’s Conclusion: Key Questions for the Case
This case appears to center on two fundamental questions of claim scope and technical operation.
A core issue will be one of definitional scope: can the term "geographical locality," which the patent specification ties to human-recognizable landmarks and places, be construed broadly enough to read on the "segments among the first and second paths" that the accused Runkeeper application allegedly uses?
A key evidentiary question will be one of functional operation: does the accused Runkeeper system's method for determining a "popular route"—presumably by aggregating GPS data from its user base—constitute a system for identifying a path based on a "popularity rating" as that term is used in the patents, especially given the specification's focus on "crowd-sourcing" from web content?