DCT

2:22-cv-00489

Tiare Technology Inc v. Dunkin Donuts LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:22-cv-00489, E.D. Tex., 12/23/2022
  • Venue Allegations: Plaintiff alleges venue is proper because Defendant is registered to do business in Texas, has regular and established places of business within the Eastern District, and offers the accused mobile application to customers in the District.
  • Core Dispute: Plaintiff alleges that Defendant’s mobile ordering application infringes three patents related to systems and methods for mobile, location-aware ordering within a specific venue or venues.
  • Technical Context: The technology at issue involves using patron-operated mobile devices to place orders and tracking the device's location to coordinate order fulfillment, a central feature of the modern quick-service restaurant industry.
  • Key Procedural History: The complaint notes that Plaintiff has previously resolved patent disputes with numerous other companies in the restaurant and retail sectors. It also details an extensive prosecution history for its patent family, highlighting arguments made to the U.S. Patent & Trademark Office to overcome patent eligibility rejections under 35 U.S.C. § 101, which may indicate a focus on patent validity in this case.

Case Timeline

Date Event
2002-09-23 Earliest Priority Date for Asserted Patents
2014-03-25 U.S. Patent No. 8,682,729 Issues
2018-12-18 U.S. Patent No. 10,157,414 Issues
2021-12-07 U.S. Patent No. 11,195,224 Issues
2022-12-23 Complaint Filed

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

U.S. Patent No. 8,682,729 - "Patron Service System and Method"

  • Patent Identification: U.S. Patent No. 8,682,729, "Patron Service System and Method," issued March 25, 2014 (Compl. ¶¶22-23).

The Invention Explained

  • Problem Addressed: The patent describes inefficiencies in conventional service venues, such as resorts, where patrons had difficulty placing orders and staff had difficulty locating patrons for delivery (’414 Patent, col. 1:41-2:2). Fixed kiosks and staff-operated handhelds were identified as inconvenient solutions that required patrons to leave their location or wait for staff assistance (’414 Patent, col. 2:22-56).
  • The Patented Solution: The invention provides a patron with a wireless unit (e.g., a smartphone) that runs a venue-specific application, connects to a server, and allows the patron to place an order directly (’414 Patent, Abstract). Crucially, the system determines the unit's location and updates that location as the patron moves, enabling staff to efficiently find the patron for order fulfillment (Compl. ¶36).
  • Technical Importance: The technology provided a technical solution for centralized, real-time location tracking of mobile devices to facilitate service delivery, an improvement over static kiosk-based systems or staff-only mobile point-of-sale devices (Compl. ¶¶36, 38).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (’729 Patent, Claim 1; Compl. ¶56).
  • The essential elements of claim 1 include:
    • Providing a patron with a wireless patron unit.
    • Connecting the wireless patron unit to a server.
    • Entering a patron order for an item or service into the wireless patron unit.
    • Determining a current location of the wireless patron unit.
    • Updating a status of the order and the current location of the unit when the patron moves to a different location.
    • Displaying the patron order on the unit's display.

U.S. Patent No. 10,157,414 - "Patron Service System and Method"

  • Patent Identification: U.S. Patent No. 10,157,414, "Patron Service System and Method," issued December 18, 2018 (Compl. ¶¶24-25).

The Invention Explained

  • Problem Addressed: As with the related ’729 Patent, this patent addresses the technical challenge of efficiently fulfilling patron orders in a large or dispersed venue by locating the mobile patron after an order has been placed (’414 Patent, col. 1:41-2:2).
  • The Patented Solution: This patent claims a server-centric method where one or more processors provide a venue-specific application to a mobile device, authenticate the user, and receive location information from the device (’414 Patent, Claim 8). The server then maps the location to a region associated with a venue, receives an order, and subsequently receives and determines updated location information from the device at a later time to track the user's movement (’414 Patent, col. 26:7-52).
  • Technical Importance: The invention describes the back-end technical architecture for managing multiple mobile users, their orders, and their changing locations to coordinate real-time service fulfillment (Compl. ¶¶38-39).

Key Claims at a Glance

  • The complaint asserts independent claim 8 (’414 Patent, Claim 8; Compl. ¶75).
  • The essential elements of claim 8 include:
    • Providing a venue-specific application to a mobile computing device over a wireless channel.
    • Communicating with the device to authenticate a user based on a security protocol.
    • Receiving location information from the device.
    • Determining a location of the device at a first time.
    • Mapping the location to a region associated with a venue.
    • Receiving order information from the device.
    • Receiving updated location information from the device.
    • Determining an updated location of the device at a second time based on the updated information.

U.S. Patent No. 11,195,224 - "Patron Service System and Method"

  • Patent Identification: U.S. Patent No. 11,195,224, "Patron Service System and Method," issued December 7, 2021 (Compl. ¶¶26-27).

Technology Synopsis

  • The ’224 Patent claims a system for locating multiple electronic devices. A server provides a venue-specific application to these devices, receives and determines their locations, receives an order from one particular device, and in response, sends data indicating the updated location of that particular device to a computing system associated with the venue for display (’224 Patent, Claim 10). This patent focuses on the system-level coordination of tracking multiple users and communicating specific location updates for order fulfillment.

Asserted Claims

  • The complaint asserts independent claim 10 (’224 Patent, Claim 10; Compl. ¶95).

Accused Features

  • The complaint accuses the overall system architecture of the Dunkin' mobile ordering service, which manages orders and locations for a plurality of users simultaneously, of infringing the ’224 Patent (Compl. ¶¶102-113).

III. The Accused Instrumentality

Product Identification

  • Defendant’s mobile application (the "Accused Products") (Compl. ¶9, fn. 1).

Functionality and Market Context

  • The Accused Product is a "venue-specific application" for the Defendant's chain of stores that allows users to select a store, build an order from a menu, and submit it for pickup (Compl. ¶¶18, 51). The complaint alleges the application tracks the user's location via the mobile device's services for several purposes, including to "find nearby stores" and to predict the user's "arrival time at our drive-through or pick-up counter after you have placed an order, allowing our restaurants' crew members to better sequence your order" (Compl. ¶52). A three-panel screenshot in the complaint illustrates the user interface for selecting a location, adding an item to an order, and reviewing the order for submission (Compl. p. 14). The complaint alleges that mobile ordering is an exponentially growing market and that the accused application generates significant revenue for the Defendant (Compl. ¶¶1, 54).

IV. Analysis of Infringement Allegations

U.S. Patent No. 8,682,729 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
providing at least one patron with a wireless patron unit... Defendant provides its mobile application program for download onto a patron's smartphone or tablet. ¶65 ’414 Patent, Abstract
connecting the wireless patron unit to a server... The application connects to Defendant's server over a Wi-Fi or cellular connection to transmit and receive data. ¶66 ’414 Patent, Abstract
entering a patron order for at least one item or service provided by the venue into the wireless patron unit; A user selects menu items within the application to place an order for food or beverages from a Dunkin' store. ¶67 ’414 Patent, Abstract
determining a current location of the wireless patron unit; Defendant's system determines the current location of the user's device to find nearby stores and facilitate ordering. ¶68 ’414 Patent, Abstract
updating... the current location of the wireless patron unit when the patron moves to a different location... Defendant tracks the location of the device as it approaches the store to time order preparation and pickup. ¶72 ’414 Patent, col. 26:45-47
displaying the patron order on a display of the wireless patron unit. The application displays the user's order on the device's screen for review before and after submission. ¶73 ’414 Patent, col. 4:26-31

U.S. Patent No. 10,157,414 Infringement Allegations

Claim Element (from Independent Claim 8) Alleged Infringing Functionality Complaint Citation Patent Citation
providing, over a wireless communications channel..., a venue-specific application to a mobile computing device; Defendant provides its mobile application to users over wireless channels via mobile application stores. ¶83 col. 26:10-12
communicating... to authenticate, based on a security protocol, a user of the venue-specific application... Defendant's system authenticates users through a login and password and secures financial information for purchases. ¶¶85-86 col. 26:13-17
receiving, by the one or more processors, location information from the mobile computing device; Defendant's servers receive location information from the device's enabled location services. ¶87 col. 26:18-20
mapping, by the one or more processors, the location to a region that is associated with a venue; The system maps the device's location to a geographic region associated with a nearby Dunkin' store. ¶90 col. 26:24-26
receiving, by the one or more processors, updated location information from the mobile computing device; Defendant's servers receive updated location information as the user travels toward the store. ¶92 col. 26:45-47
determining, by the one or more processors, an updated location of the mobile computing device at a second time... The system determines updated locations at multiple points after the order is placed to predict arrival time. ¶93 col. 26:48-52

Identified Points of Contention

  • Scope Questions: A central question may be whether the term "venue" as used in the patents, which heavily features examples of a single resort with a pool and beach, can be construed to read on a distributed chain of separate quick-service restaurant locations as alleged (Compl. ¶51; ’414 Patent, col. 4:18-22).
  • Technical Questions: The complaint alleges that Defendant "tracks the location of the smartphone or tablet" to predict arrival time (Compl. ¶52). A key factual question will be what technical evidence supports the claim that the accused system performs the specific step of "updating" the location "when the patron moves," as required by Claim 1 of the ’729 Patent, versus performing a single location check at a later point in time.

V. Key Claim Terms for Construction

The Term: "venue-specific application"

Context and Importance

  • This term appears in the independent claims of the '414 and '224 patents and was added during prosecution to overcome patent eligibility rejections under 35 U.S.C. § 101 (Compl. ¶¶47-48). Its construction will therefore be critical for both infringement and validity analyses. Practitioners may focus on this term because the dispute will likely center on whether an application for a national chain of stores qualifies as "venue-specific," or if the term requires specificity to a single, discrete location.

Intrinsic Evidence for Interpretation

  • Evidence for a Broader Interpretation: The patent specification describes the invention being used in "various other venues including, but not limited to, stadiums, arenas, retail locations, zoos, transportation centers..." (’414 Patent, col. 4:3-6). This language may support an interpretation that a "venue" can be a type of establishment (e.g., "retail locations") rather than a single geographic place.
  • Evidence for a Narrower Interpretation: The background and primary embodiments described in the specification are heavily focused on the context of a single, contiguous hospitality location like a "resort" with a "pool, beach, spa, deck, lounge" (’414 Patent, col. 4:18-22). This context may support a narrower construction tied to an application for a single, localized establishment.

The Term: "updating ... the current location of the wireless patron unit when the patron moves to a different location"

Context and Importance

  • This limitation from claim 1 of the ’729 Patent is central to the dynamic tracking aspect of the invention. The infringement analysis will depend on whether the accused functionality constitutes "updating" in response to patron movement. Practitioners may focus on this term because its definition will determine the type of technical evidence required to prove infringement, such as whether periodic location polling is sufficient or if active detection of movement is required.

Intrinsic Evidence for Interpretation

  • Evidence for a Broader Interpretation: The claim language does not specify the frequency, mechanism, or trigger for the update, only that it occurs "when the patron moves." This could be interpreted to cover any second location determination that occurs after an initial one while the patron is in transit. The specification also describes the system tracking location in "real-time" (’414 Patent, col. 15:25-27).
  • Evidence for a Narrower Interpretation: The phrase "when the patron moves" could be interpreted to require that the system's update is responsive to the act of moving. An example in the specification discusses a patron wishing to "relocate from the beach to the pool," which could suggest the system is designed to track movement within a contiguous venue, potentially implying a more active or continuous tracking capability (’414 Patent, col. 5:7-11).

VI. Other Allegations

  • Indirect Infringement: The complaint alleges induced infringement, asserting that Defendant provides its mobile application through app stores and instructs and encourages users to operate it in a manner that directly infringes the asserted patents (Compl. ¶¶60, 79, 99).
  • Willful Infringement: Willfulness is alleged based on Defendant's knowledge of the asserted patents from at least the date of the complaint's filing. The allegations appear to be based on potential post-suit conduct (Compl. ¶¶61, 80, 100).

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

  • A central issue will be one of definitional scope: can the term "venue-specific application," which was added to the claims to overcome patent eligibility challenges during prosecution, be construed to cover a single application used across a national chain of discrete retail stores, or is its scope limited by the patent's descriptive focus on singular, contiguous hospitality environments?
  • A key evidentiary question will be one of technical operation: what proof will be offered to show that the accused mobile ordering system performs the claimed function of "updating the... location... when the patron moves," and does the alleged arrival-time prediction feature rely on a technical mechanism that meets this claim limitation as understood in light of the patent specification?