DCT
2:23-cv-00415
Tiare Technology Inc v. Jo Ann Stores LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Tiare Technology, Inc. (Delaware)
- Defendant: Jo-Ann Stores, LLC (Ohio)
- Plaintiff’s Counsel: The Davis Firm, PC
- Case Identification: 2:23-cv-00415, E.D. Tex., 09/14/2023
- Venue Allegations: Plaintiff alleges venue is proper because Defendant operates regular and established places of business within the district, is registered to do business in Texas, and distributes its accused mobile application to users in the district.
- Core Dispute: Plaintiff alleges that Defendant’s mobile application, which facilitates online ordering and in-store pickup, infringes three patents related to mobile ordering systems that incorporate patron location tracking.
- Technical Context: The technology at issue resides at the intersection of mobile e-commerce and location-based services, specifically enabling a customer to order from a specific commercial venue via a mobile device whose location is tracked to facilitate order fulfillment.
- Key Procedural History: The complaint highlights that the asserted patents underwent extensive examination at the USPTO, successfully overcoming patent eligibility rejections under 35 U.S.C. § 101. Plaintiff also notes that in a separate case in the same district, the court denied motions to dismiss that challenged the eligibility of the same family of patents.
Case Timeline
| Date | Event |
|---|---|
| 2002-09-23 | Priority Date for ’729, ’414, and ’224 Patents |
| 2014-03-25 | ’729 Patent Issued |
| 2014-09-12 | Non-Final Rejection issued during prosecution of a related patent |
| 2015-07-15 | Notice of Allowance issued for related patent after amendments |
| 2017-12-29 | Non-Final Rejection issued during prosecution of ’414 Patent |
| 2018-12-18 | ’414 Patent Issued |
| 2020-04-29 | Non-Final Rejection issued during prosecution of ’224 Patent |
| 2021-12-07 | ’224 Patent Issued |
| 2023-09-14 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,682,729 - "Patron Service System and Method" (Issued March 25, 2014)
The Invention Explained
- Problem Addressed: The patent’s background section describes inefficiencies in service industries like resorts, where patrons struggle to place orders and staff struggle to locate patrons for delivery in large, open areas like a beach or pool. (’8682729 Patent, col. 1:40-2:55). Conventional solutions like fixed kiosks were inconvenient, and staff-operated handhelds did not solve the problem of locating a mobile patron. (’8682729 Patent, col. 2:22-57).
- The Patented Solution: The invention provides a system where patrons use a "wireless patron unit" to place orders for items or services. (’8682729 Patent, col. 3:1-16). A central component of the system is its ability to determine the "current location of the wireless patron unit," which enables staff to find the patron for delivery and allows the system to update both the order status and the patron's location on the patron's device. (’8682729 Patent, Abstract).
- Technical Importance: At the time of invention in the early 2000s, the technology represented an unconventional integration of nascent mobile computing with location tracking to solve a specific logistics problem in the service industry, moving beyond fixed-point or staff-centric systems. (Compl. ¶¶36-38).
Key Claims at a Glance
- The complaint asserts at least independent claim 1. (Compl. ¶57).
- Claim 1 (Method):
- Providing a patron with a wireless patron unit with a venue-specific application.
- Connecting the patron unit to a server.
- Entering a patron order for an item or service into the unit.
- Determining a current location of the unit.
- Updating a status of the order and the current location on 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 the ’729 Patent.
U.S. Patent No. 10,157,414 - "Patron Service System and Method" (Issued December 18, 2018)
The Invention Explained
- Problem Addressed: As a continuation of the same family, the ’414 Patent addresses the same service and delivery inefficiencies described in the ’729 Patent. (’10157414 Patent, col. 2:22-57).
- The Patented Solution: This patent claims a server-centric method for managing location-based mobile ordering. The claimed method involves a server providing a "venue-specific application," authenticating the user, receiving location information from the mobile device, and, crucially, "mapping" that location to a pre-defined region associated with the venue. (’10157414 Patent, Abstract). The server then receives order information and subsequently receives and determines updated locations as the user moves. (’10157414 Patent, col. 26:7-51).
- Technical Importance: The invention provides a specific technical architecture for location-based e-commerce, focusing on the server's role in processing location data and correlating it with venue-specific geographic areas, a key step in operationalizing such a service. (Compl. ¶¶38-39).
Key Claims at a Glance
- The complaint asserts at least independent claim 8. (Compl. ¶76).
- Claim 8 (Method):
- Providing a venue-specific application to a mobile 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.
- The complaint does not explicitly reserve the right to assert dependent claims for the ’414 Patent.
U.S. Patent No. 11,195,224 - "Patron Service System and Method" (Issued December 7, 2021)
Technology Synopsis
The ’224 Patent claims a system for locating a plurality of mobile electronic devices. The system provides a venue-specific application to these devices, receives location information from them, and determines their initial and updated locations. (’11195224 Patent, col. 25:55-26:22). In response to receiving an order from one specific device, the system sends data indicating its updated location to a separate computing system associated with the venue for display in a graphical user interface, presumably for staff use. (’11195224 Patent, col. 26:15-22).
Asserted Claims
At least independent claim 10. (Compl. ¶96).
Accused Features
The complaint alleges that Defendant's system, which manages multiple users of its mobile app, infringes by providing the venue-specific app, receiving location data from multiple users' devices, determining their updated locations, and, upon receiving an order, sending a user's location data to a computing system associated with the Jo-Ann store. (Compl. ¶¶103-114).
III. The Accused Instrumentality
Product Identification
- Defendant’s "JOANN" mobile application. (Compl. ¶13, fn. 1; Compl. p. 14, visual).
Functionality and Market Context
- The application functions as a mobile ordering platform for the Jo-Ann retail store chain. (Compl. ¶51). It allows users to browse products, select a store, place an order for pickup, and make payments. (Compl. ¶¶18, 50). A central feature alleged to be infringing is its use of the mobile device's location services. The complaint alleges this location tracking is used to find nearby stores and to monitor a user's device, including for order pickup. (Compl. ¶52). The complaint provides a screenshot from a mobile device's operating system indicating that the "JOANN" app "has used your location 191 times in the background over the past 3 days," suggesting persistent location monitoring. (Compl. p. 15, visual).
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 |
|---|---|---|---|
| A method of using a wireless patron unit within a venue... | Defendant performs a method using a smartphone or tablet within the vicinity of its stores. | ¶64 | col. 27:20-22 |
| 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 venue-specific "JOANN" mobile app for download onto patron-owned smartphones via public app stores. | ¶66 | col. 27:23-31 |
| connecting the wireless patron unit to a server... | The application connects the user's smartphone to a server via Wi-Fi or cellular connection. | ¶67 | col. 27:32-35 |
| entering a patron order for at least one item or service provided by the venue into the wireless patron unit... | A user enters an order for items from a store menu into the application on their smartphone. A screenshot shows a shopping cart with an item ready for checkout. | ¶68; p. 19 | col. 27:36-39 |
| determining a current location of the wireless patron unit... | The system determines the location of the user's smartphone, for example, to find local stores. | ¶69 | col. 27:40-41 |
| 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 allegedly updates the order status (e.g., placed, in progress) and tracks the user's location as they move, for example, when approaching a store for pickup. | ¶71-73 | col. 27:42-46 |
| and displaying the patron order on a display of the wireless patron unit. | Defendant displays the patron's order on the smartphone screen, as shown in an order confirmation screenshot. | ¶74; p. 19 | col. 27:47-49 |
U.S. Patent No. 10,157,414 Infringement Allegations
| Claim Element (from Independent Claim 8) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A computer-implemented method executed by one or more processors... | Defendant performs the computer-implemented method. | ¶83 | col. 26:7-9 |
| providing, over a wireless communications channel...a venue-specific application to a mobile computing device... | Defendant provides its "JOANN" app over cellular/WiFi networks to users' smartphones. | ¶84 | col. 26:10-13 |
| communicating...to authenticate, based on a security protocol, a user of the venue-specific application... | The system authenticates a user via login and password and secures financial information. | ¶85-87 | col. 26:14-19 |
| receiving...location information from the mobile computing device... | The system receives location information from the smartphone's location services. A screenshot shows the app's request for location access. | ¶88; p. 15 | col. 26:20-22 |
| determining...a location of the mobile computing device at a first time based on the location information... | The system determines the phone's location based on the received location data. | ¶90 | col. 26:23-25 |
| mapping...the location to a region that is associated with a venue... | The system maps the phone's location to a region associated with a store or group of nearby stores. | ¶91 | col. 26:26-28 |
| receiving, from the mobile computing device, order information... | The system receives order information when a user selects items and proceeds through checkout. | ¶92 | col. 26:29-32 |
| receiving...updated location information from the mobile computing device... | The system receives updated location information as it tracks the phone's location over time, for example as it approaches a store. | ¶93 | col. 26:33-35 |
| and determining...an updated location of the mobile computing device at a second time based on the updated location information. | The system determines updated locations at multiple points in time based on the received data. | ¶94 | col. 26:36-39 |
Identified Points of Contention
- Scope Questions: The infringement theory rests on applying patents written in the context of on-site service delivery at a resort to a retail "buy online, pick up in store" model. This raises the question of whether a retail store chain, and the user's journey to it, constitutes a "venue" and activity "within the vicinity of the venue" as those terms are used in the patent.
- Technical Questions: For the ’729 Patent, a key question is whether the accused app performs the specific step of simultaneously updating both the order status and the user's location on the user's device. For the ’414 Patent, the analysis may focus on the "mapping" limitation and what technical evidence exists that the accused system maps a precise location coordinate to a defined "region" rather than simply using coordinates to calculate proximity to a known store address.
V. Key Claim Terms for Construction
The Term: "venue"
- Context and Importance: This term is foundational to the scope of all asserted patents. Its construction will determine whether the patents, which heavily feature resort-based examples, can read on Defendant's retail store operations. Practitioners may focus on this term because the factual context of a retail pickup order may differ significantly from the on-site food and beverage delivery described in the patent's background.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification explicitly states that the system may be used in "various other venues including, but not limited to, stadiums, arenas, retail locations, zoos, transportation centers..." (’414 Patent, col. 4:5-10).
- Evidence for a Narrower Interpretation: The Background section and numerous embodiments are framed exclusively in the context of "luxury and upscale hotels, resorts, cruise lines," solving problems specific to those environments, such as service delivery to a "beach, pool deck, or other resort location." (’414 Patent, col. 2:22-31).
The Term: "venue-specific application"
- Context and Importance: This limitation was added during prosecution to overcome patent eligibility rejections, making its meaning critical to validity and infringement. (Compl. ¶47). The dispute may center on whether a publicly available app for a national retail chain is "venue-specific" in the manner contemplated by the patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent abstract describes providing an application "for downloading into a patron-owned wireless communication device," which aligns with the app store distribution model. (Compl. ¶65; ’729 Patent, Abstract). The complaint alleges the app is "specifically configured for a venue (e.g., a Defendant store) but may apply to more than one location (e.g., multiple Defendant stores)." (Compl. ¶51).
- Evidence for a Narrower Interpretation: The term was added to distinguish over prior art and abstract ideas. A defendant may argue it implies a higher degree of specificity than a general retail app, perhaps pointing to specification language about applications for a single resort or for use only during a "patron's visit to the venue." (’729 Patent, Abstract).
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement, stating that Defendant encourages and instructs consumers to use the accused mobile application in an infringing manner by making it available through app stores and providing user instructions. (Compl. ¶¶61, 80, 100).
- Willful Infringement: Willfulness is alleged based on Defendant's knowledge of the patents and infringement as of the filing and service of the complaint, suggesting a theory of post-suit willfulness. (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," rooted in the patent’s detailed descriptions of hospitality environments like resorts, be construed to cover a distributed retail chain’s mobile ordering and pickup system, where much of the user interaction may occur far from the physical store?
- A key evidentiary question will be one of technical proof: what evidence will be presented to demonstrate that the accused system performs the specific server-side function of "mapping" a user's location to a defined "region" associated with a store, as required by Claim 8 of the ’414 patent, beyond simply determining proximity?
- A central legal question will concern patent eligibility: given the extensive prosecution history overcoming § 101 rejections and a favorable ruling in a prior case, can the specific functionality of Defendant’s retail e-commerce application be distinguished in a way that successfully revives the argument that the claims are directed to an abstract idea without an inventive concept?