1:14-cv-00220
Intellectual Ventures I LLC v. Erie Indemnity Co
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Intellectual Ventures I LLC and Intellectual Ventures II LLC (Delaware)
- Defendant: Erie Indemnity Company, et al. (collectively "Erie") (Pennsylvania)
- Plaintiff’s Counsel: Picadio Sneath Miller & Norton, P.C.; Nix, Patterson & Roach, LLP
- Case Identification: 1:14-cv-00220, W.D. Pa., 08/21/2014
- Venue Allegations: Venue is alleged to be proper as the Defendants reside in the district, have conducted substantial business in the forum, and have allegedly engaged in infringing acts within the district.
- Core Dispute: Plaintiffs allege that Defendants’ online services, internal computer systems, and mobile applications infringe four patents related to network-based information management, mobile user interfaces, and file analysis.
- Technical Context: The technologies at issue relate to foundational methods for remote system monitoring, portable user profiles, structured database searching, and automated file characterization, which are key components of enterprise IT infrastructure and online service delivery.
- Key Procedural History: The complaint alleges that Plaintiffs contacted Defendants regarding licensing beginning in June 2014, but received no response. Critically, subsequent to the filing of this complaint, all four patents-in-suit underwent Inter Partes Review (IPR) proceedings at the U.S. Patent and Trademark Office. These IPRs resulted in the cancellation of all claims asserted from the '581, '002, and '298 patents, as well as claims 1 and 7 from the '434 patent. The post-filing cancellation of these claims would be dispositive of the infringement allegations against them.
Case Timeline
| Date | Event |
|---|---|
| 1998-01-31 | '581 Patent Priority Date |
| 1999-04-30 | '298 Patent Priority Date |
| 1999-07-07 | '002 Patent Priority Date |
| 1999-12-29 | '434 Patent Priority Date |
| 2003-01-21 | '434 Patent Issued |
| 2003-02-11 | '581 Patent Issued |
| 2003-04-08 | '002 Patent Issued |
| 2010-07-13 | '298 Patent Issued |
| 2014-06-XX | Plaintiffs' licensing outreach to Defendants begins |
| 2014-08-21 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,519,581 B1, "Collection of Information Regarding a Device or a User of a Device Across a Communication Link," Issued February 11, 2003
The Invention Explained
- Problem Addressed: The patent describes existing systems for collecting diagnostic or user data from a computer as being inflexible and often requiring manual operation. Modifying what data is collected or how it is analyzed typically requires changing the source code of a single, monolithic application (’581 Patent, col. 1:21-50).
- The Patented Solution: The invention proposes a modular system composed of separate "discovery agents" and "discovery rules." Discovery agents are simple programs that collect specific data points (e.g., hardware configuration). Discovery rules are separate code sequences that analyze the collected data to determine if an action is needed. A central "discovery engine" coordinates the system, activating the necessary agents based on the data required by the rules, thereby decoupling data collection from data analysis (’581 Patent, Abstract; Fig. 1).
- Technical Importance: This modular architecture allows for the dynamic and remote monitoring of computer systems, a key function for network administration and remote technical support (’581 Patent, col. 2:7-17).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶30).
- Essential elements of claim 1 include:
- A method of collecting information, comprising:
- transmitting a discovery rule across a communication link to a computer system, wherein the discovery rule is to be applied to data about the computer system or a user to generate information, and wherein the data is collected by a discovery agent located in the computer system, and
- receiving the information from the computer system.
- The complaint does not explicitly reserve the right to assert other claims from this patent.
U.S. Patent No. 6,546,002 B1, "System and Method for Implementing an Intelligent and Mobile Menu-Interface Agent," Issued April 8, 2003
The Invention Explained
- Problem Addressed: The patent notes that conventional computer interfaces, such as the Windows "Start" menu, are tied to a specific device and operating system. A user's personalized settings, application shortcuts, and bookmarks are not easily portable between different computers (e.g., a work PC and a home Mac) or device types (e.g., a computer and a cellular phone) (’002 Patent, col. 1:19 - col. 2:12).
- The Patented Solution: The invention describes a "mobile interface agent" (MIA) that stores a user's profile, settings, and pointers to resources in a centralized, network-accessible database managed by a "profile manager." A user can log into their MIA from any connected device to access their personalized menu and resources. The system is designed to be platform-independent, supporting data portability and cross-platform access (’002 Patent, Abstract; Fig. 3).
- Technical Importance: This invention describes a portable, persistent user environment, a concept that is foundational to modern cloud-based services and "follow-me" user profiles that are independent of a specific device (’002 Patent, col. 3:13-20).
Key Claims at a Glance
- The complaint asserts independent claim 11 and dependent claim 9 (Compl. ¶34).
- Essential elements of independent claim 11 include:
- A method for retrieving user specific resources and information stored either on a local device or a network server, comprising the steps of:
- displaying the mobile interface on the local device, the mobile interface including a plurality of pointers corresponding to the user specific resources and information;
- retrieving user profile and configuration data from the network server to the local device, wherein the user profile and configuration data is used to update the data associated with the mobile interface;
- retrieving the user specific resources and information using the plurality of pointers displayed on the mobile interface.
- The complaint alleges infringement of "one or more claims" of the patent, reserving the right to assert others (Compl. ¶25).
U.S. Patent No. 6,510,434 B1, "System and Method for Retrieving Information From a Database Using an Index of XML Tags and Metafiles," Issued January 21, 2003
Technology Synopsis
The patent addresses ambiguity and inefficiency in database searches by describing a system using an index built with XML tags and associated "metafiles." The metafiles provide additional contextual information and define relationships between search terms, domains (e.g., "Restaurant"), and categories (e.g., "Cuisine") to disambiguate user queries and improve search relevance (’434 Patent, Abstract; col. 2:26-34).
Asserted Claims
Independent claims 1 and 7, and dependent claim 9 (Compl. ¶38).
Accused Features
The complaint accuses Defendants' "database services and systems that return information based on the content of metafiles" of infringement (Compl. ¶38).
U.S. Patent No. 7,757,298 B2, "Method and Apparatus for Identifying and Characterizing Errant Electronic Files," Issued July 13, 2010
Technology Synopsis
This patent describes a method for identifying undesirable or "errant" files on computer systems by generating a unique "checksum" for a file. This checksum is then compared against a pre-compiled library of checksums corresponding to known errant files (e.g., unauthorized software, malicious files). This technique provides a more reliable method of automated detection than simply checking file names or sizes (’298 Patent, Abstract; col. 2:40-49).
Asserted Claims
Independent claim 1 (Compl. ¶42).
Accused Features
The complaint alleges that Defendants' "software and services that search and identify potentially malicious information" infringe the patent (Compl. ¶42).
III. The Accused Instrumentality
Product Identification
The complaint broadly accuses a range of Defendants' systems, including their public-facing website (erieinsurance.com), internal "computer systems and software," "back-end configuration management and distribution software," the "ERIEmobile application," and other database and security services (Compl. ¶¶ 25, 30, 34, 38, 42).
Functionality and Market Context
The accused instrumentalities are the digital infrastructure and customer-facing applications that support the business operations of the Erie Insurance Group, a provider of property, casualty, and life insurance (Compl. ¶¶ 24-25). The complaint alleges these systems perform functions related to configuration management, mobile user interface delivery, database searching, and identification of malicious files (Compl. ¶¶ 30, 34, 38, 42). The complaint does not contain specific details about the architecture or operation of these systems.
No Probative Visual Evidence
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint makes high-level infringement allegations without providing detailed factual support or claim charts.
'581 Patent Infringement Allegations
The complaint alleges that Defendants' "back-end configuration management and distribution software and services" infringe at least claim 1 (Compl. ¶30). This suggests a theory that Erie's internal IT infrastructure for monitoring or updating its systems practices the claimed method. However, the complaint does not provide sufficient detail for analysis of how these systems allegedly "transmit a discovery rule" or use a "discovery agent."
'002 Patent Infringement Allegations
| Claim Element (from Independent Claim 11) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| displaying the mobile interface on the local device, the mobile interface including a plurality of pointers corresponding to the user specific resources and information | The complaint identifies the "ERIEmobile application" as the accused "mobile interface" that displays user-specific resources through its interactive elements. | ¶34 | col. 5:10-18 |
| retrieving user profile and configuration data from the network server to the local device, wherein the user profile and configuration data is used to update the data associated with the mobile interface | The allegation that the ERIEmobile application displays "user-specific resources" implies that it retrieves user data from a network server to configure the application. | ¶34 | col. 12:49-54 |
| retrieving the user specific resources and information using the plurality of pointers displayed on the mobile interface. | A user is alleged to interact with the ERIEmobile application's interface elements ("pointers") to access their specific insurance data and services. | ¶34 | col. 5:1-5 |
Identified Points of Contention
- Evidentiary Questions: The complaint's allegations are conclusory. A primary point of contention will be whether Plaintiff can produce evidence demonstrating that Erie's systems actually operate in the specific manner required by the claims. For the '581 Patent, this raises the question of what evidence exists for a "discovery rule" and "discovery agent" architecture within Erie's back-end systems.
- Technical Questions: For the '002 Patent, a key technical question is whether the accused ERIEmobile application's architecture matches the specific data flow required by claim 11: first retrieving "profile and configuration data" to update the interface, and then separately retrieving "user specific resources" in response to a user's interaction with the interface's "pointers."
V. Key Claim Terms for Construction
Term: "discovery rule" (’581 Patent)
- Context and Importance: This term is the central component of the claimed method. Its construction will determine whether any generic configuration script or command infringes, or if it must be a distinct, executable code sequence as described in the patent's preferred embodiments.
- Intrinsic Evidence for a Broader Interpretation: The claim itself simply refers to a "rule," which could be argued to encompass a wide range of instructions (’581 Patent, col. 12:65-67).
- Intrinsic Evidence for a Narrower Interpretation: The specification consistently describes the "discovery rule" and "discovery agent" as "separate code sequences or separate programs" (’581 Patent, Abstract; col. 3:21-25) and provides an "IF...THEN" logical structure as an example, suggesting a more specific meaning than a general command (’581 Patent, col. 4:56-65).
Term: "mobile interface" (’002 Patent)
- Context and Importance: The definition of this term is critical to the scope of the claims. Practitioners may focus on this term because its construction will determine if any application on a mobile device qualifies, or if it must possess the specific network-based, profile-synchronizing, and platform-agnostic capabilities that are a focus of the patent's disclosure.
- Intrinsic Evidence for a Broader Interpretation: The claim language itself does not explicitly limit the term beyond its plain meaning of an interface on a mobile device (’002 Patent, col. 17:11-12).
- Intrinsic Evidence for a Narrower Interpretation: The specification repeatedly describes the invention as overcoming the limitations of device-specific interfaces by using a network-based "profile manager" to enable a user to "dynamically recreate the configuration and pointer information stored on another personal computer" (’002 Patent, col. 2:54-61). This context suggests the term may be limited to an interface with such portable, network-centric capabilities.
VI. Other Allegations
Indirect Infringement
The complaint's prayer for relief seeks to enjoin "contributory infringement and/or inducing infringement" (Compl. Prayer ¶c). However, the body of the complaint contains no factual allegations to support the required elements of knowledge and intent for any theory of indirect infringement, focusing instead on allegations of direct infringement under 35 U.S.C. § 271(a) (Compl. ¶¶ 30, 34, 38, 42).
Willful Infringement
The complaint does not explicitly plead willful infringement. It does, however, allege pre-suit knowledge based on licensing overtures and a notification letter (Compl. ¶¶ 26-27). These allegations may form the basis for a later claim of post-filing willfulness.
VII. Analyst’s Conclusion: Key Questions for the Case
- Claim Validity: The foremost issue is the impact of the post-filing IPR proceedings. With all asserted claims from three of the four patents, and most asserted claims from the fourth, having been cancelled, a threshold question is whether any viable infringement case remains. The viability of the suit may depend entirely on the single surviving asserted claim (claim 9 of the '434 patent).
- Evidentiary Sufficiency: For any surviving claim, a key question will be evidentiary. The complaint offers high-level, conclusory allegations of infringement. The case will likely turn on whether Plaintiff can produce specific evidence that maps the complex, detailed requirements of the patent claims onto the actual architecture and operation of Defendants' diverse IT systems.
- Definitional Scope: Should the case proceed, a central issue will be one of claim construction. For example, can the term "mobile interface" (’002 patent), described in the specification as a novel, cross-platform, profile-driven system, be construed broadly enough to cover a conventional, single-purpose mobile banking or insurance application? The answer to such construction questions will be pivotal in determining the scope of the patents and the potential for infringement.