Tiare Technology Inc v. Subway Sandwich Shops LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Tiare Technology, Inc. (Delaware)
  • Defendant: Subway Sandwich Shops LLC, et al. (collectively “Subway”) (Connecticut, Delaware, Florida)
  • Plaintiff’s Counsel: The Davis Firm, PC
• Case Identification: 2:23-cv-00254, E.D. Tex., 05/30/2023
• Venue Allegations: Plaintiff alleges venue is proper because Defendant operates regular and established places of business (franchise stores) in the district, distributes its mobile application to users in the district, and derives revenue from infringing activities within the district.
• Core Dispute: Plaintiff alleges that Defendant’s mobile ordering application and associated systems infringe three patents related to mobile, location-aware service and ordering systems.
• Technical Context: The technology concerns systems that allow patrons at a venue to order goods and services from a personal wireless device, with the system tracking the device's location to facilitate order fulfillment.
• Key Procedural History: The complaint notes that the asserted patent family underwent extensive examination at the U.S. Patent and Trademark Office, including overcoming rejections under 35 U.S.C. § 101 (Alice). It also references a prior case in the same district where the court denied a motion to dismiss challenging the eligibility of related patent claims.

Case Timeline

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 (’729 Patent).
• The Invention Explained:
  • Problem Addressed: The patent’s background describes service inefficiencies at large venues like resorts, where patrons struggle to find staff to place orders and staff struggle to locate patrons for delivery, especially if the patron moves after ordering ( Compl. ¶39; ’729 Patent, col. 1:40-2:6). It identifies limitations of both fixed, centrally-located kiosks and staff-operated handheld point-of-sale (POS) devices, which do not solve the problem of locating a mobile patron ('729 Patent, col. 2:21-56).
  • The Patented Solution: The invention provides a "portable patron unit" (a wireless mobile device) that allows a patron to place an order directly. The system connects this unit to a central server, which processes the order and, critically, determines the patron unit's location to facilitate fulfillment. The system is designed to update the order's status and the patron's location on the unit itself ('729 Patent, Abstract; col. 4:18-41).
  • Technical Importance: The claimed method represented a shift from staff-mediated or fixed-kiosk ordering to a patron-centric system where ordering, status updates, and location tracking for delivery were integrated on a personal mobile device (Compl. ¶42).
• Key Claims at a Glance:
  • The complaint asserts at least independent claim 1 (Compl. ¶62).
  • Essential elements of Claim 1 include:
    • Providing a patron with a wireless patron unit (e.g., by providing a venue specific application program for download).
    • Connecting the wireless patron unit to a server.
    • Entering a patron order for an item or service into the 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.
    • Displaying the patron order on the unit's display.
  • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

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 (’414 Patent).
• The Invention Explained:
  • Problem Addressed: As a continuation of the same patent family, the ’414 Patent addresses the same service and location-tracking problems in large venues as the ’729 Patent (Compl. ¶39; ’414 Patent, col. 1:22-2:56).
  • The Patented Solution: This patent claims a server-side computer-implemented method. The method involves providing a "venue-specific application" to a mobile device, authenticating the user, and receiving location information from the device at a first time. The server then maps this location to a region associated with the venue, receives an order, and subsequently receives and determines an updated location of the device at a second time ('414 Patent, Abstract; col. 26:5-33).
  • Technical Importance: The invention provides a technical solution for centralized, real-time location tracking of distributed mobile devices by integrating location technology into a venue-specific application and communicating location updates over a wireless network to a server (Compl. ¶¶44, 52).
• Key Claims at a Glance:
  • The complaint asserts at least independent claim 8 (Compl. ¶81).
  • 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 the device's location 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.
  • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

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 (’224 Patent).
• Technology Synopsis: The ’224 Patent claims a system for locating electronic devices, comprising processors and data stores. The system provides a venue-specific application to multiple mobile devices, receives first and second location signals from them to determine their locations over time, and, in response to receiving order information from one device, sends data indicating its updated location to a computing system associated with the venue for display in a graphical user interface (’224 Patent, Abstract; col. 26:2-27).
• Asserted Claims: Independent claim 10 is asserted (Compl. ¶101).
• Accused Features: The complaint accuses Subway’s mobile application system, which provides the app to users, tracks device location to determine proximity to a store for order pickup, and sends location-related data to venue computing systems (Compl. ¶¶108-119).

III. The Accused Instrumentality

Product Identification

• The accused instrumentality is Defendant’s mobile ordering solution, which includes the Subway mobile application and the back-end servers and software that support its functionality (Compl. ¶15, fn. 1; ¶56).

Functionality and Market Context

• The complaint alleges the accused system provides a "venue-specific application" that is configured for the Subway store chain and may apply to multiple store locations (Compl. ¶57). The application uses a mobile device's location services to identify nearby stores for the user (Compl. ¶58). A user can then select a store, build an order from a menu, and submit it for pickup (Compl. ¶¶24, 73). The system is alleged to track the device's location to determine its arrival or proximity to the selected store for order pickup and provides status updates on the order's progress (Compl. ¶¶58, 77). The complaint includes a screenshot of the "Order Details" screen, which shows the order status progressing from "Received" to "Building" to "Ready!" alongside the selected store location on a map (Compl. p. 16).

IV. Analysis of Infringement Allegations

’729 Patent Infringement Allegations

’414 Patent Infringement Allegations

Identified Points of Contention

• Scope Questions: The infringement theory rests on the interpretation that a national chain of franchise restaurants constitutes a "venue" and that its standard mobile app is a "venue-specific application" as contemplated by the patents. The patents’ specifications, however, focus heavily on the context of a single, contained location like a resort or stadium ('414 Patent, col. 3:59-62). This raises the question of whether the claimed invention’s scope extends to a distributed, multi-location retail environment.
• Technical Questions: A central question may be whether the accused system’s location tracking for store selection and pickup confirmation is technically equivalent to the claimed "updating the current location of the wireless patron unit when the patron moves to a different location" ('729 Patent, cl. 1). The patent’s context suggests a system for finding a patron for delivery within a venue ('729 Patent, col. 2:1-6), which may require a different technical implementation than a system that confirms a patron's arrival at a fixed pickup point.

V. Key Claim Terms for Construction

• The Term: "venue-specific application"

• Context and Importance: This term, found in the independent claims of the ’414 and ’224 Patents, is critical. The infringement case depends on the Subway app qualifying as "venue-specific." Practitioners may focus on whether this term requires an application tailored to a single, contiguous physical location or if it can broadly cover an application for a multi-location business entity.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The complaint alleges the application is venue-specific because its functionality is associated with the "store-chain (e.g., Defendant)" and can apply to "more than one location" (Compl. ¶57). The claim language itself does not explicitly limit the "venue" to a single physical site.
  • Evidence for a Narrower Interpretation: The ’414 Patent specification consistently uses a "resort" as the primary exemplary environment, describing it as a collection of "restaurants, bars, pools, tennis courts, entertainment centers, ski slopes, beaches, spas," all components of a singular hospitality venue (’414 Patent, col. 3:59-4:4). This context may support a narrower construction where the "venue" is a geographically co-located set of facilities.

• 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 defines the dynamic nature of the location tracking. The dispute may turn on whether the accused system's functionality—allegedly determining when a user is in the "proximity of the store" (Compl. ¶78)—meets this requirement, or if the claim requires a more continuous tracking function to locate a patron for delivery.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The plain language does not specify the frequency or purpose of the update, only that it occurs "when the patron moves." This could arguably encompass a one-time update triggered by a geofence upon arrival at a new location (the store).
  • Evidence for a Narrower Interpretation: The patent’s background explains the problem of a staff member being unable to find a patron for delivery because the "patron has moved and is not seated where the original order was taken" ('729 Patent, col. 2:3-6). This context suggests the "updating" function is for solving the specific problem of locating a mobile patron within a service area for delivery, which may differ from merely confirming arrival for pickup.

VI. Other Allegations

• Indirect Infringement: The complaint alleges induced infringement against Subway for all three patents. The basis is that Defendant provides the mobile application to consumers and provides instructions and encouragement (e.g., through app store distribution) for them to use it in a manner that directly infringes the patent claims (Compl. ¶¶66, 85, 105).
• Willful Infringement: Willfulness is alleged for all three patents, based on Defendant having knowledge of the patents and infringement at least as of the filing of the complaint (Compl. ¶¶67, 86, 106).

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

• A core issue will be one of definitional scope: Can the term "venue," rooted in the patents' description of a localized resort or stadium, be construed to cover a distributed national chain of franchise stores? Concurrently, can the standard Subway mobile app be considered a "venue-specific application" under such a construction?
• A key evidentiary question will be one of technical operation: Does the accused system’s alleged use of location data to facilitate order pickup (e.g., determining proximity to a store) perform the specific function of "updating the current location of the... unit when the patron moves," a feature described in the patent specification as a solution for finding a mobile patron for delivery within a larger service area?