DCT
2:23-cv-00256
Tiare Technology Inc v. Ulta Beauty Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Tiare Technology, Inc. (Delaware)
- Defendant: Ulta Beauty, Inc. (Delaware)
- Plaintiff’s Counsel: The Davis Firm, PC
- Case Identification: 2:23-cv-00256, E.D. Tex., 05/30/2023
- Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendant operates multiple regular and established stores in the district, distributes its accused mobile application to users there, and derives significant revenue from mobile ordering within the district.
- Core Dispute: Plaintiff alleges that Defendant’s mobile application, which allows users to order products for in-store or curbside pickup, infringes patents related to mobile-ordering systems that incorporate user location tracking.
- Technical Context: The technology at issue involves systems that integrate mobile ordering with the real-time location tracking of a user's device to streamline service and order fulfillment in a specific venue.
- Key Procedural History: The complaint notes that Plaintiff has previously resolved patent disputes with numerous other companies. It also details an extensive prosecution history for the asserted patents before the U.S. Patent & Trademark Office, highlighting that the patents were allowed after examiners considered and withdrew patent-eligibility rejections under 35 U.S.C. § 101. The complaint further references a prior case in the same district, Tiare Technology, Inc. v. Whataburger Restaurants LLC, where the court reportedly denied challenges to the eligibility of the asserted patents.
Case Timeline
| Date | Event |
|---|---|
| 2002-09-23 | Earliest Priority Date for ’729, ’414, and ’224 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 |
| 2023-05-30 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,682,729 - Patron Service System and Method
The Invention Explained
- Problem Addressed: The patent’s background section describes inefficiencies in service at large venues like resorts, where patrons placing orders for items like food or beverages are difficult for staff to locate for delivery, leading to delays and dissatisfaction (’729 Patent, col. 1:22-2:60). Conventional kiosk-based or staff-operated point-of-sale systems are described as inadequate because they either require the patron to leave their location or fail to solve the problem of locating a mobile patron for delivery (’729 Patent, col. 2:22-57).
- The Patented Solution: The invention proposes a system using wireless "portable patron units" (e.g., handheld devices) that allow patrons to place orders directly. A central server communicates with these units, processes orders, and, critically, determines the current location of the patron's unit to facilitate efficient delivery by staff, who may use corresponding "portable staff units" that display patron locations (’729 Patent, Abstract; Fig. 1).
- Technical Importance: The complaint alleges that by integrating patron-operated mobile ordering with real-time location tracking, the invention provided a technical improvement over the fixed or staff-centric systems that existed at the time of invention (Compl. ¶36).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶57).
- Essential elements of claim 1, a method claim, include:
- Providing a patron with a wireless patron unit by providing a "venue specific application program" for download onto a patron-owned device.
- Connecting the wireless patron unit to a server.
- Entering a patron order 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.
- 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
The Invention Explained
- Problem Addressed: This patent shares a specification with the ’729 Patent and addresses the same technical problem of inefficiently locating mobile patrons within a large venue to fulfill service requests (’414 Patent, col. 1:22-2:60).
- The Patented Solution: The invention described is a computer-implemented method, seemingly focused on the server-side logic, for managing location-based services. The solution involves providing a venue-specific application to a mobile device, authenticating the user, and then repeatedly receiving location information from the device to determine its location at a "first time" and an "updated location" at a "second time," and mapping these locations to a region associated with the venue (’414 Patent, Abstract; col. 26:6-36).
- Technical Importance: The complaint asserts that the claimed subject matter is a technical solution to the problem of tracking distributed mobile devices, which was an unconventional use of technology at the claimed priority date, improving upon prior systems that lacked such capability (Compl. ¶¶37-39, 46).
Key Claims at a Glance
- The complaint asserts independent claim 8 (Compl. ¶76).
- Essential elements of claim 8, a method claim, include:
- Providing a "venue-specific application" to a mobile device over a wireless channel.
- Authenticating a user of the application 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 that is 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
- Technology Synopsis: This patent addresses the same general problem of locating mobile patrons for service delivery. The claimed solution is a system that provides a venue-specific application to a plurality of mobile devices, determines their initial and updated locations, and, in response to receiving an order from one device, sends data indicating that device's updated location to a separate computing system associated with the venue for display in a graphical user interface (’224 Patent, Abstract).
- Asserted Claims: Independent claim 10 is asserted (Compl. ¶96).
- Accused Features: The complaint accuses Defendant's system of infringing by providing its mobile application, receiving location information from users' devices, determining their locations, receiving orders, and tracking user locations to facilitate order pickup (Compl. ¶¶103-113).
III. The Accused Instrumentality
Product Identification
- Defendant's mobile application for its Ulta Beauty stores (Compl. ¶3 fn. 1).
Functionality and Market Context
- The complaint alleges the accused product is a "venue-specific application" associated with both the Defendant's store chain and its individual store locations (Compl. ¶51). The application allows a user to select a store, place an order for products, and pick up the order (Compl. ¶18). A central feature alleged to be infringing is the application's use of the smartphone's location services to determine the user's location, which is used to find nearby stores and to facilitate curbside pickup by tracking when the user's device is approaching the store (Compl. ¶52). The complaint provides a composite screenshot of the accused application, displaying a store search interface, a shopping bag summary, and an order details screen for pickup (Compl. p. 15). Plaintiff alleges this mobile ordering functionality has generated significant revenue for the Defendant (Compl. ¶55).
IV. Analysis of Infringement Allegations
’729 Patent 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... by providing at least one venue specific application program to the at least one patron for downloading into a patron-owned wireless communication device | Defendant provides its mobile application for patrons to download to their smartphones from app stores. | ¶66 | col. 4:18-25 |
| connecting the wireless patron unit to a server | The downloaded application connects the patron's smartphone to Defendant's server via a Wi-Fi or cellular connection. | ¶67 | col. 6:8-15 |
| entering a patron order for at least one item or service provided by the venue into the wireless patron unit | A patron uses the application on their smartphone to enter an order for products sold by Defendant. | ¶68 | col. 4:29-32 |
| determining a current location of the wireless patron unit | Defendant's system determines the current location of the patron's smartphone via the application. | ¶69 | col. 6:38-42 |
| updating a status of the patron order, and the current location of the wireless patron unit when the patron moves to a different location, on the wireless patron unit | Defendant tracks the smartphone's location as the patron moves (e.g., approaches a store for pickup) and updates the order status within the application. | ¶¶71, 73 | col. 5:28-44 |
| displaying the patron order on a display of the wireless patron unit | The application displays the patron's order on the smartphone's screen. | ¶74 | col. 4:26-29 |
- Identified Points of Contention:
- Scope Questions: A central question may be whether a retail store chain like Ulta qualifies as a "venue" as that term is used in the patent, which describes the invention primarily in the context of hospitality environments like resorts and pools. The interpretation of "venue specific application program" may also be contested, specifically whether an app that serves a national chain of stores meets this limitation.
- Technical Questions: The claim requires "updating... the current location of the wireless patron unit... on the wireless patron unit." It is an open question what evidence the complaint provides that the accused system updates the location on the device itself, as opposed to merely tracking the location on a central server.
’414 Patent 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' smartphones over cellular or WiFi networks. | ¶84 | col. 26:8-11 |
| communicating... to authenticate, based on a security protocol, a user of the venue-specific application | The system authenticates a user through a login and password for the application. | ¶¶85-87 | col. 26:12-16 |
| receiving, by the one or more processors, location information from the mobile computing device | Defendant's processors receive location data from the smartphone's location services. | ¶88 | col. 26:17-19 |
| determining, by the one or more processors, a location of the mobile computing device at a first time based on the location information | Defendant's processors determine the location of the smartphone based on the received location data. | ¶90 | col. 26:20-22 |
| mapping, by the one or more processors, the location to a region that is associated with a venue | The system is alleged to map the determined location to a region associated with a store or group of stores. | ¶91 | col. 26:23-25 |
| receiving, from the mobile computing device, order information for the venue | Defendant's system receives order information that a user inputs into the application. | ¶92 | col. 26:26-29 |
| receiving, by the one or more processors, updated location information from the mobile computing device | Defendant's processors receive updated location information as the user moves, for instance, when approaching a store for pickup. | ¶93 | col. 26:30-32 |
| determining, by the one or more processors, an updated location of the mobile computing device at a second time | Defendant's processors determine an updated location of the smartphone based on the new location information. | ¶94 | col. 26:33-36 |
- Identified Points of Contention:
- Scope Questions: The construction of "mapping the location to a region that is associated with a venue" will be significant. The question is whether using GPS coordinates to identify the nearest store constitutes "mapping to a region" in the manner contemplated by the patent, or if the claim requires mapping to a predefined sub-area within a venue (e.g., a "curbside pickup zone").
- Technical Questions: The claim recites distinct steps of determining a location at a "first time" and an "updated location" at a "second time." It raises the question of how the accused functionality of continuous location tracking for curbside pickup maps onto this two-step process.
V. Key Claim Terms for Construction
- The Term: "venue"
- Context and Importance: This term appears in the asserted independent claims of both the ’729 and ’414 Patents. Its construction is critical because the accused instrumentality is a retail store application, whereas the patent specifications are heavily oriented toward hospitality settings like resorts. A narrow construction limited to such hospitality environments could support a non-infringement defense.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states that the invention relates to systems for "resorts, stadiums, arenas, and other venues" (’414 Patent, col. 1:19-21) and later clarifies that the term "resort" can refer to hospitality venues including "retail locations" (’414 Patent, col. 3:56-67). This may support an interpretation that includes retail stores.
- Evidence for a Narrower Interpretation: The "Background" section almost exclusively discusses problems specific to large, sprawling environments where patrons are difficult to locate for service delivery (e.g., "on the beach, at the pool") (’414 Patent, col. 1:39-44). This context, focused on solving a location problem distinct from a typical retail transaction, may support a narrower definition.
- The Term: "venue-specific application"
- Context and Importance: This limitation is also present in the asserted independent claims of both the ’729 and ’414 Patents. The infringement allegation rests on the theory that Defendant’s app, which works for its national chain of stores, is "venue-specific." A construction requiring specificity to a single physical location, rather than a brand or chain, could undermine the infringement case.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not appear to provide an explicit definition. An application configured to provide ordering and location-tracking services for a specific chain of stores (the "venue") could plausibly be considered "venue-specific" under a plain and ordinary meaning.
- Evidence for a Narrower Interpretation: The Abstract describes providing an application "that can be used during the at least one patron's visit to the venue" (’414 Patent, Abstract). This phrasing, tied to a specific "visit," could suggest the application is intended for use at a discrete location, potentially supporting an argument that a nationally-functional application is a general e-commerce app, not a venue-specific one.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement for all asserted patents. The factual basis is that Defendant supplies its mobile application through app stores and provides instructions to users on how to use it in an allegedly infringing manner, with the specific intent to encourage that infringement (Compl. ¶¶61, 80, 100).
- Willful Infringement: The complaint alleges willful infringement for all asserted patents, based on knowledge acquired "at least as early as the filing and service of this Complaint." This suggests a theory of post-filing willfulness for any continued infringement (Compl. ¶¶62, 81, 101).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "venue," which is described in the patent specification primarily in the context of sprawling hospitality environments like resorts and beaches, be construed to cover a chain of retail stores and their associated mobile commerce operations?
- A second key issue will be one of technical application: does the functionality of the accused "buy online, pick up in store" application perform the specific, ordered steps recited in the method claims, particularly with respect to how and when patron location is determined, updated, and mapped to a "region"?
- A dispositive question related to both scope and technology will be the construction of "venue-specific application." The case may turn on whether an application that serves an entire national retail chain can be considered "specific" to a "venue" in the manner contemplated by the patents-in-suit.