DCT

2:23-cv-00411

PerdiemCo LLC v. Geoforce Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:23-cv-00411, E.D. Tex., 09/13/2023
  • Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendant maintains its corporate headquarters and a regular and established place of business in Plano, Texas, within the district, and has allegedly committed acts of infringement there.
  • Core Dispute: Plaintiff alleges that Defendant’s Geoforce Track & Trace platform for asset and vehicle tracking infringes nine patents related to location-based tracking, event notification, and access control systems.
  • Technical Context: The technology concerns systems for tracking the location of mobile objects, defining geographic zones (geo-fences), and automatically conveying event-based notifications to authorized users based on multi-level administrative privileges.
  • Key Procedural History: The complaint notes that the patents-in-suit belong to a portfolio that has been the subject of numerous prior litigations, resulting in settlements with twenty-two litigants and licenses with thirty licensees. It also states that during the prosecution of the first-issued patent, the USPTO considered and overcame a subject matter eligibility rejection under 35 U.S.C. § 101.

Case Timeline

Date Event
2005-12-23 Patent Priority Date for all Patents-in-Suit
2017-06-13 U.S. Patent No. 9,680,941 Issued
2018-01-16 U.S. Patent No. 9,871,874 Issued
2018-07-10 U.S. Patent No. 10,021,198 Issued
2018-07-12 Plaintiff provides "Notice of Infringement Letter" to Cartasite LLC
2018-07-20 Cartasite's counsel acknowledges receipt of notice letter
2018-08-23 Plaintiff's counsel provides email with claim chart and patent summaries to Cartasite
2019-03-XX Defendant Geoforce Inc. acquires Cartasite LLC
2019-08-27 U.S. Patent No. 10,397,789 Issued
2020-03-24 U.S. Patent No. 10,602,364 Issued
2020-10-27 U.S. Patent No. 10,819,809 Issued
2021-07-13 U.S. Patent No. 11,064,038 Issued
2023-04-04 U.S. Patent No. 11,622,237 Issued
2023-08-01 U.S. Patent No. 11,716,595 Issued
2023-09-13 Complaint Filed

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

U.S. Patent No. 9,680,941 - “Location Tracking System Conveying Event Information Based on Administrator Authorizations,” Issued June 13, 2017

The Invention Explained

  • Problem Addressed: Prior art location tracking systems could convey the location of a device but lacked the ability to correlate location with specific "events" or convey information about such events to designated computing devices (Compl. ¶46; ’941 Patent, col. 1:55-60).
  • The Patented Solution: The invention describes a system where an administrator can define groups of users and mobile devices. A second-level administrator (e.g., a service subscriber) can then define geographic zones and event conditions (e.g., a device entering a zone). When an event occurs, the system conveys information to authorized users based on access controls, providing enhanced privacy and control independent of the system's primary administrator (Compl. ¶39-41; ’941 Patent, col. 2:26-31).
  • Technical Importance: The technology provided a structured, multi-level administrative framework for managing access to sensitive location data, allowing for more granular, user-defined control over event-based notifications than was previously available (Compl. ¶38).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶89).
  • Claim 1 of the ’941 Patent requires:
    • Receiving identifiers and location information for multiple mobile devices from one or more servers.
    • Storing information for groups of users based on group identification codes.
    • A first administrator having a first level of administrative privilege to authorize a user as a second administrator.
    • The second administrator having a second level of administrative privilege to perform administrative functions not performed by the first administrator.
    • Checking the first and second levels of administrative privilege before the second administrator performs functions.
    • These functions include setting a zone, an event, an alert, and an access list identifying recipients.
    • Conveying location information based on the information access codes specified under the second level of administrative privilege.

U.S. Patent No. 9,871,874 - “A Multi-Level Database Management System and Method for an Object Tracking Service That Protects User Privacy,” Issued January 16, 2018

The Invention Explained

  • Problem Addressed: The patent addresses the need for a system that can manage access to location and event information across different groups of users while protecting privacy (Compl. ¶20; ’874 Patent, col. 1:51-57).
  • The Patented Solution: The invention discloses a database management system with at least two levels of administrative privilege. A first-level administrator manages the overall service and user groups, while a second-level administrator for a specific group can define event conditions and access lists for notifications within that group. This structure isolates control, so the second administrator's choices for their group are independent of the first administrator and other second administrators ('874 Patent, col. 2:1-19; Compl. ¶39-40).
  • Technical Importance: This hierarchical database structure enables a service provider to offer a customizable tracking service while delegating the granular control over privacy and notification rules to the end-user or group manager (Compl. ¶38).

Key Claims at a Glance

  • The complaint asserts independent claims 1 and 44 (Compl. ¶106).
  • Claim 1 of the ’874 Patent requires:
    • A database management system used in a mobile device tracking service that tracks locations of mobile devices.
    • Accessing one or more databases by servers controlled under a first level of administrative privilege of a service administrator.
    • The service being provided to users who are identified by user identification codes (UIDs) and track mobile devices identified by device identification codes (DIDs).
    • The system allows a second administrator, authorized by the first, to use a second level of administrative privilege.
    • The second administrator specifies an information access code comprising an access list that identifies which users are allowed to receive location or event information.
  • Claim 44 of the ’874 Patent requires:
    • A method for tracking mobile objects.
    • Using a first level of administrative privilege by a system administrator to control user membership in groups.
    • Assigning a second level of privilege to a second administrator for a group.
    • The second administrator controls the sending of notifications within that group, independent of the system administrator.
    • The second administrator specifies an event condition and an access list for the group.
    • Only authorized users on the access list receive alerts, thereby providing enhanced privacy.

U.S. Patent No. 10,021,198 - "Software-Based Mobile Tracking Service with Video Streaming When Events Occur," Issued July 10, 2018

  • Patent Identification: U.S. Patent No. 10,021,198, "Software-Based Mobile Tracking Service with Video Streaming When Events Occur," Issued July 10, 2018 (Compl. ¶24).
  • Technology Synopsis: This patent describes a system where an alert, generated when a location-based event condition is met, comprises a video transmitted to a computing device. The system uses a multi-level administrative structure to manage access and conveyance of this event information (’198 Patent, Abstract; claim 12).
  • Asserted Claims: Independent claim 1 (Compl. ¶123).
  • Accused Features: The complaint accuses Defendant's tracking products and services generally, without specifying features related to video streaming (Compl. ¶66, 123).

U.S. Patent No. 10,397,789 - "Method for Controlling Conveyance of Event Information About Carriers of Mobile Devices Based on Location Information Received from Location Information Sources Used by the Mobile Devices," Issued August 27, 2019

  • Patent Identification: U.S. Patent No. 10,397,789, "Method for Controlling Conveyance of Event Information About Carriers of Mobile Devices Based on Location Information Received from Location Information Sources Used by the Mobile Devices," Issued August 27, 2019 (Compl. ¶25).
  • Technology Synopsis: The technology involves a multi-administrator system for defining location-based events and managing notifications. A key aspect is the use of multiple levels of administrative privilege, where a first administrator controls overall group membership and a second administrator controls event notifications within a specific group (’789 Patent, Abstract; claim 1).
  • Asserted Claims: Independent claim 1 (Compl. ¶140).
  • Accused Features: The complaint accuses Defendant's tracking platform of using a multi-level administrative structure to control access to location data and event notifications (Compl. ¶38-41, 140).

U.S. Patent No. 10,602,364 - "Method for Conveyance of Event Information to Individuals Interested Devices Having Phone Numbers," Issued March 24, 2020

  • Patent Identification: U.S. Patent No. 10,602,364, "Method for Conveyance of Event Information to Individuals Interested Devices Having Phone Numbers," Issued March 24, 2020 (Compl. ¶26).
  • Technology Synopsis: This patent focuses on conveying event notifications to devices based on their phone numbers. The method includes defining event conditions based on mobile device locations relative to a zone and using an access list to determine which recipients receive an alert when the event occurs (’364 Patent, Abstract; claim 1).
  • Asserted Claims: The complaint asserts claim 3, which is dependent on independent claim 1 (Compl. ¶157).
  • Accused Features: The complaint accuses Defendant's tracking platform of providing event-based notifications to users based on defined conditions (Compl. ¶37, 157).

U.S. Patent No. 10,819,809 - "Method for Controlling Conveyance of Event Notifications in Sub-Groups Defined Within Groups Based on Multiple Levels of Administrative Privilege," Issued October 27, 2020

  • Patent Identification: U.S. Patent No. 10,819,809, "Method for Controlling Conveyance of Event Notifications in Sub-Groups Defined Within Groups Based on Multiple Levels of Administrative Privilege," Issued October 27, 2020 (Compl. ¶27).
  • Technology Synopsis: This invention describes a method for managing event notifications within sub-groups. It details a multi-level privilege system where a group administrator can define sub-groups and a sub-group administrator can control notifications and access for users within that sub-group (’809 Patent, Abstract; claims 3, 5).
  • Asserted Claims: Independent claim 1 (Compl. ¶174).
  • Accused Features: The complaint alleges that Defendant’s system uses multiple levels of administrative privilege to control user access and notifications within defined groups (Compl. ¶38-41, 174).

U.S. Patent No. 11,064,038 - "Method for Tracking Mobile Objects Based on Event Conditions Met at Mobile Object Locations," Issued July 13, 2021

  • Patent Identification: U.S. Patent No. 11,064,038, "Method for Tracking Mobile Objects Based on Event Conditions Met at Mobile Object Locations," Issued July 13, 2021 (Compl. ¶28).
  • Technology Synopsis: The patent covers a method where a tracking service, using multiple levels of administrative privilege, tracks mobile objects and conveys event notifications. An event occurs when a condition is met related to the object's location, and notifications are sent to recipients specified in an access list (’038 Patent, Abstract; claim 1).
  • Asserted Claims: Independent claim 1 (Compl. ¶191).
  • Accused Features: The complaint accuses Defendant's tracking platform of providing event-based notifications to authorized users based on defined geographic conditions and user privileges (Compl. ¶37-39, 191).

U.S. Patent No. 11,622,237 - "A Method That Logs Locations of a Mobile Computing Device in a Log File," Issued April 4, 2023

  • Patent Identification: U.S. Patent No. 11,622,237, "A Method That Logs Locations of a Mobile Computing Device in a Log File," Issued April 4, 2023 (Compl. ¶29).
  • Technology Synopsis: This invention relates to logging the location of a mobile device. The system uses a hierarchical administrative structure where an administrator can define events that trigger the logging of location data, with access to this information controlled by access codes (’237 Patent, Abstract; claim 1).
  • Asserted Claims: Independent claims 1, 5, and 10 (Compl. ¶208).
  • Accused Features: The complaint accuses Defendant's tracking platform, which by its nature logs location data, of infringing the patented methods for controlling access to this data (Compl. ¶66, 208).

U.S. Patent No. 11,716,595 - "A Method for Conveying Event Information Based on Roles Assigned to Users of a Location Tracking Service," Issued August 1, 2023

  • Patent Identification: U.S. Patent No. 11,716,595, "A Method for Conveying Event Information Based on Roles Assigned to Users of a Location Tracking Service," Issued August 1, 2023 (Compl. ¶30).
  • Technology Synopsis: The technology describes a method where event information is conveyed based on user roles. The system allows an administrator to assign different roles to users, which dictates their ability to set event conditions, define zones, and receive notifications (’595 Patent, Abstract; claim 1).
  • Asserted Claims: Independent claim 1 (Compl. ¶225).
  • Accused Features: The complaint accuses Defendant’s system of using a role-based or privilege-based system to manage user access to tracking data and event notifications (Compl. ¶38-39, 225).

III. The Accused Instrumentality

Product Identification

  • The complaint identifies the "Accused Instrumentalities" as Defendant’s tracking products and services, including but not limited to the "Geoforce Track & Trace platform" (Compl. ¶66-67). This platform supports various applications for tracking non-powered equipment, powered equipment, and vehicles, and includes mobile applications for iOS and Android (Compl. ¶67, p. 15).

Functionality and Market Context

  • The Geoforce Track & Trace platform is alleged to be a system that enables customers and users to monitor the location of assets and vehicles (Compl. ¶67). The complaint alleges the platform resides within Amazon Web Services (AWS) and uses a set of APIs collectively called the Geoforce Platform (Compl. ¶73-74). The complaint asserts that these tracking products are commercially important and that Defendant would be at a disadvantage in the marketplace without them (Compl. ¶69).

IV. Analysis of Infringement Allegations

The complaint references but does not include exemplary claim chart exhibits (Exhibits B-1 through B-9) that purportedly detail the infringement of each asserted patent (Compl. ¶89, 106, 123, 140, 157, 174, 191, 208, 225). In the absence of this evidence, the infringement theory is based on the complaint's narrative allegations.

  • ’941 Patent Infringement Allegations: The complaint's narrative suggests that the Geoforce platform infringes by providing a tracking service with a multi-level administrative structure. It is alleged that Geoforce, acting as a first-level administrator, provides the platform to its customers, who act as second-level administrators. These customers can then allegedly define user groups, set event conditions such as geo-fences, and control which of their own users receive notifications, thereby mapping to the elements of claim 1 (Compl. ¶37-41, 87-91).
  • ’874 Patent Infringement Allegations: The infringement theory for the ’874 Patent parallels that of the ’941 Patent, focusing on the system's alleged use of a multi-level database management system to protect user privacy. The complaint alleges that the Geoforce platform's separation of privileges—whereby a system administrator (Geoforce) controls overall access while a group administrator (the customer) controls notification policies for their specific group—infringes the claimed method of providing enhanced privacy through tiered access control (Compl. ¶39-41, 104-108).

No probative visual evidence provided in complaint.

V. Key Claim Terms for Construction

The Term: "administrative privilege" (’941 Patent, claim 1; ’874 Patent, claim 44)

  • Context and Importance: The core of the patents-in-suit is the claimed multi-level administrative structure. The scope of infringement will depend on whether the user/customer permission hierarchy in the Geoforce platform constitutes the distinct "first level" and "second level" of "administrative privilege" as described in the patents. Practitioners may focus on this term because its construction will determine if a standard software-as-a-service customer relationship meets the claimed structural limitations.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes the first administrator as a "system administrator of the tracking service" and the second as a "service subscriber," which could suggest the terms map broadly onto a typical provider-customer relationship (Compl. ¶39).
    • Evidence for a Narrower Interpretation: The specification details that the "system administrator does not exercise control of the sending of notifications within groups," and the second administrator's control is "exercised independent of the system administrator" (Compl. ¶39-40). This could support a narrower construction requiring a specific and formal separation of duties that may not be present in all multi-user software platforms.

The Term: "access list" (’874 Patent, claim 44)

  • Context and Importance: The infringement analysis will turn on whether the accused platform's mechanism for selecting notification recipients qualifies as the claimed "access list." The term's construction is critical because it links the administrative structure to the function of providing "enhanced privacy."
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent uses the term in the context of identifying authorized users who can "receive the alerts/notifications" (’874 Patent, col. 7:25-30), which could broadly cover any user-selection feature in a software interface.
    • Evidence for a Narrower Interpretation: The patent specifies that "Only authorized users identified by the second administrator on an access list can receive the alerts/notifications, thereby providing enhanced privacy" (Compl. ¶41). This linkage to an express privacy function could support a narrower definition that requires more than a simple notification preference setting.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges that Defendant induces infringement by providing instruction materials, user guides, customer support, and training to its customers and users, which allegedly direct and encourage them to use the Accused Instrumentalities in an infringing manner (Compl. ¶84-85, 93-95).
  • Willful Infringement: Willfulness is alleged based on Defendant’s purported knowledge of the patents-in-suit by no later than March 2019. This allegation stems from Defendant's acquisition of Cartasite LLC, a company that Plaintiff had allegedly put on notice of infringement of at least the ’941, ’874, and ’198 patents via a notice letter and follow-up communications in July and August 2018 (Compl. ¶75-83, 99). The complaint further alleges that Defendant has a policy of not substantively investigating or responding to written notices of patent infringement (Compl. ¶101).

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

  • A central issue will be one of structural correspondence: does the customer and user management architecture of the Geoforce platform map onto the specific two-tiered "administrative privilege" structure required by the asserted claims, or does it represent a more conventional multi-tenant software system that falls outside the claims' scope?
  • A key question for willfulness and damages will be one of corporate succession of knowledge: to what extent did Geoforce inherit Cartasite's alleged pre-acquisition knowledge of the patents-in-suit, and what level of due diligence, if any, was performed during the acquisition to investigate potential infringement?
  • Given the extensive litigation and licensing history cited by the Plaintiff, a significant procedural question will be the preclusive effect of prior proceedings: how will claim constructions, validity findings, or settlement terms from prior cases involving this patent portfolio influence the current litigation?