DCT
2:16-cv-00202
Tangelo IP LLC v. Dollar General Corp
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Tangelo IP, LLC (Texas)
- Defendant: Dollar General Corporation (Tennessee)
- Plaintiff’s Counsel: Collins, Edmonds, Schlather & Tower, PLLC
- Case Identification: 2:16-cv-00202, E.D. Tex., 03/11/2016
- Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendant conducts regular business in the district, and the cause of action arises from Defendant's activities there, including its interactive website and mobile app accessible in the district.
- Core Dispute: Plaintiff alleges that Defendant’s electronic catalogs, accessible via its website and mobile applications, infringe a patent related to creating interactive, shoppable online replications of physical publications.
- Technical Context: The technology bridges traditional print advertising with e-commerce by allowing consumers to interact with and purchase items from an online version of a physical catalog or advertisement.
- Key Procedural History: The complaint notes that the patent-in-suit is part of a priority chain dating back to September 23, 1999. It also preemptively argues that the claimed technology is not an abstract idea and is rooted in computer technology, suggesting an anticipation of a patent eligibility challenge under 35 U.S.C. § 101.
Case Timeline
| Date | Event |
|---|---|
| 1999-09-23 | Earliest Priority Date for U.S. Patent No. 8,429,005 |
| 2013-04-23 | Issue Date for U.S. Patent No. 8,429,005 |
| 2016-03-11 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 8,429,005, “Method for Determining Effectiveness of Display of Objects in Advertising Images,” issued April 23, 2013 (the “’005 Patent”).
U.S. Patent No. 8,429,005 - “Method for Determining Effectiveness of Display of Objects in Advertising Images”
The Invention Explained
- Problem Addressed: The patent describes the frustration consumers experience when they see an item in traditional media, like a print magazine, but have no easy way to find more information about it or purchase it online. This creates a disconnect between print advertising and e-commerce (’005 Patent, col. 1:53-col. 2:14).
- The Patented Solution: The invention provides a system where a "physical publication page" is replicated as an "interactive and electronic replication" online. A consumer can use a page number or unique code from the physical publication to access this interactive online version. On the interactive page, the consumer can select depictions of products to get more information and initiate a purchase (’005 Patent, Abstract; col. 3:28-44). The system is designed to link a "traditional visual media object" to a corresponding interactive electronic representation via a unique identifier (’005 Patent, col. 4:1-5).
- Technical Importance: The technology aimed to create a direct commercial link between the static world of print publications and the dynamic, transactional environment of the internet, thereby measuring the effectiveness of specific print advertisements (’005 Patent, col. 2:51-62).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 3, 5-11, 13-17, and 19-20 (Compl. ¶19).
- Independent Claim 1, a method claim, requires:
- Associating a page number of a physical publication page with an interactive and electronic replication of at least a portion of that page.
- The physical publication page must have at least two different products appearing on it, with the page number also visible.
- Providing the interactive and electronic replication from a host computer in response to receiving an input representing the page number.
- The interactive replication must include "exact reproductions" of the appearances of the at least two products.
- The replication must enable a user to obtain additional information on the products.
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are Defendant’s "electronic catalogs at www.dollargeneral.com," specifically including those at a URL for "Ads-and-Promos/Current-Ad," and the "Dollar General Mobile Application" for Android and iOS (Compl. ¶20).
Functionality and Market Context
- The complaint alleges that these electronic catalogs and mobile apps provide an "electronic and interactive replication of product images appearing in a corresponding physical publication page" (Compl. ¶18, ¶20). This functionality allegedly allows users to view an online version of a physical ad, see exact duplications of products, select them to receive more information, and initiate an online purchase (Compl. ¶18). The complaint does not provide specific details on the commercial importance of the accused instrumentalities beyond their general availability.
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
’005 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method for providing to a user an interactive and electronic replication... comprising: associating a page number of a physical publication page with an interactive and electronic replication of at least a portion of a physical publication page; | Defendant’s system, via a host computer, allegedly associates a page number of a physical publication with an electronic and interactive replication of that page (Compl. ¶18). | ¶18 | col. 14:21-36 |
| the physical publication page having at least two different products appearing on the physical publication page; the page number appearing on the physical publication page along with the at least two different products; the page number and the two different products being visible on the physical publication page; | The complaint alleges that Defendant’s corresponding physical publication page has products appearing thereon with the page number (Compl. ¶18). | ¶18 | col. 12:16-24 |
| receiving by a host computer comprising at least one computer processor an input representing the page number; providing from the host computer the interactive and electronic replication... in response to receiving the input representing the page number; | An application executed by the host computer allegedly provides the electronic and interactive representation to a user's computing device in response to receiving an input representing the page number (Compl. ¶18). | ¶18 | col. 13:10-14 |
| the interactive and electronic replication... including duplications of the appearances of the at least two different products; the duplications of the appearances... being exact reproductions of the appearances of the at least two different products contained within the physical publication page; | The complaint alleges that the electronic and interactive replication provided by Defendant comprises "exact duplications of the appearances of the products" (Compl. ¶18). | ¶18 | col. 14:55-60 |
| the interactive and electronic replication enabling the user to obtain additional information on the at least two different products... and... enables a user to initiate an online purchase of the first product; | The complaint alleges that "selection of the selectable portions provides additional product information about the products and enables a user to initiate an online purchase of products" (Compl. ¶18). | ¶18 | col. 15:10-23 |
- Identified Points of Contention:
- Scope Questions: A central dispute may concern the term "physical publication page." The case may turn on whether Defendant's online weekly advertisements are considered replications of a corresponding "physical" document, as required by the claim, or if they are primarily digital creations that also happen to be printed.
- Technical Questions: The claim requirement for "exact reproductions" raises an evidentiary question. The analysis will require a factual comparison between the accused online ads and their corresponding paper versions to determine if the online version is an "exact reproduction" or a functionally similar but visually distinct derivative.
V. Key Claim Terms for Construction
The Term: "physical publication page"
Context and Importance: This term is foundational to the infringement theory. The asserted claims are directed to creating an interactive version of a pre-existing physical item. If the accused online ads are not based on a "physical publication page," the infringement claim may fail. Practitioners may focus on this term because it appears to be the primary link between the patented method and the accused system.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification discusses "traditional visual media" to include a wide array of sources like "magazines, newspapers, catalogs, books, mailings, billboards, signs, paintings, posters and the like" (’005 Patent, col. 1:32-37). A party could argue this shows intent to cover any media that has a physical manifestation, including modern retail circulars.
- Evidence for a Narrower Interpretation: The patent’s detailed examples and figures focus heavily on traditional, bound magazines (e.g., FIG. 2, showing magazine 210). A party could argue the invention is limited to these specific types of publications and does not extend to weekly, disposable ad flyers, which may have different characteristics.
The Term: "exact reproductions"
Context and Importance: The degree of similarity required between the physical page and the electronic replication is critical. A narrow definition of "exact" could absolve a defendant whose online version differs in layout, resolution, or content, even if it is functionally equivalent.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim uses the phrase "duplications of the appearances," which could be argued to mean a replication of the general look and feel, rather than a pixel-for-pixel copy. The overall goal of the patent is to let a user recognize the online page from the physical one, suggesting functional and visual correspondence is the key, not technical identity.
- Evidence for a Narrower Interpretation: The claim explicitly uses the word "exact." The specification reinforces this, stating the interactive representation can be an "exact reproduction of the corresponding traditional visual media object" (’005 Patent, col. 14:55-58). A party could argue this language imposes a very high, literal standard of identity that any variation would fail to meet.
VI. Other Allegations
- Indirect Infringement: The prayer for relief seeks an injunction against contributing to or inducing infringement (Compl. ¶27.C), but the body of the complaint does not contain specific factual allegations detailing the knowledge or intent required for such claims.
- Willful Infringement: The complaint alleges willful infringement and seeks enhanced damages (Compl. ¶27.D). The stated basis for willfulness appears to be post-filing knowledge of the patent, as the complaint alleges only "constructive notice" pre-suit and explicitly "reserves the right to take discovery regarding Defendant’s first actual notice" (Compl. ¶21).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: does the term "physical publication page," which is central to the asserted claims, read on the weekly advertising circulars that form the basis of Defendant’s accused online ads? The answer will likely depend on whether these circulars are viewed as "physical publications" in the manner contemplated by the patent.
- A key evidentiary question will be one of technical fidelity: does the accused online catalog meet the claim requirement of being an "exact reproduction" of the physical ad? This will require a factual comparison and a legal construction of how "exact" the replication must be to infringe.
- A likely threshold question will be patent eligibility: given the complaint's preemptive arguments that the invention is not an abstract idea (Compl. ¶11-14), a challenge under 35 U.S.C. § 101 concerning whether the claims are directed to a patent-ineligible abstract idea implemented on a generic computer is a probable area of dispute.