DCT
2:23-cv-00417
Tiare Technology Inc v. Papa Murphy's Holdings Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Tiare Technology, Inc. (Delaware)
- Defendant: Papa Murphy's Holdings, Inc. (Delaware); Papa Murphy's International, LLC (Delaware); Murphy's Marketing Services, Inc. (Florida); and Papa Murphy's Company Stores, Inc. (Washington)
- Plaintiff’s Counsel: The Davis Firm, PC
- Case Identification: 2:23-cv-00417, E.D. Tex., 09/14/2023
- Venue Allegations: Plaintiff alleges venue is proper because Defendant operates multiple regular and established places of business (stores) within the Eastern District of Texas, 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 infringes three patents related to systems and methods for providing services to patrons in a venue by using location-tracking on mobile devices.
- Technical Context: The technology at issue falls within the mobile commerce and location-based services domain, a market that has seen significant expansion, particularly in the food service industry.
- Key Procedural History: The complaint details an extensive prosecution history for the patent family, noting that claims were allowed after amendments were made to overcome patent eligibility rejections under 35 U.S.C. § 101. The complaint also references a separate case, Tiare Technology Inc v. Whataburger Restaurants LLC, in which the same court allegedly denied challenges to the eligibility of the asserted patents.
Case Timeline
| Date | Event |
|---|---|
| 2002-09-23 | Earliest Patent Priority Date (’729, ’414, ’224 Patents) |
| 2014-03-25 | ’729 Patent Issued |
| 2014-09-12 | Related patent application claims rejected under § 101 |
| 2015-07-15 | Related patent application claims allowed after amendment |
| 2017-12-29 | ’414 Patent application claims rejected under § 101 |
| 2018-10-31 | ’414 Patent Notice of Allowance issued |
| 2018-12-18 | ’414 Patent Issued |
| 2020-04-29 | ’224 Patent application claims rejected under § 101 |
| 2021-12-07 | ’224 Patent Issued |
| 2023-09-14 | Complaint Filing Date |
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. ¶¶25-26).
- The Invention Explained:
- Problem Addressed: The patent describes drawbacks of conventional service systems in venues like resorts, where patrons faced inconvenience. Systems like "centrally-located kiosks" required patrons to leave their location to place an order, while staff-operated handheld POS systems did not allow patrons to initiate orders themselves and created challenges in locating the patron for delivery. (’414 Patent, col. 2:21-57).
- The Patented Solution: The invention provides a system centered on a "wireless patron unit" (e.g., a mobile device) given to a patron. This unit runs a "venue specific application program," connects to a server, and allows the patron to place an order directly. Crucially, the system determines the patron unit's location and updates its status, solving the problem of fulfilling orders for a mobile customer. (’414 Patent, Abstract; col. 3:1-17).
- Technical Importance: The technology provided a technical solution to the problem of tracking and servicing mobile users within a venue by integrating user-initiated ordering and location determination on a single portable device. (Compl. ¶¶39-40).
- Key Claims at a Glance:
- The complaint asserts independent claim 1. (Compl. ¶60).
- Essential elements of claim 1 include:
- A method of using a wireless patron unit within a venue
- providing at least one patron with a wireless patron unit
- connecting the wireless patron unit to a server
- entering a patron order for at least one item or service provided by the venue into the wireless patron unit
- determining a current location of the wireless patron unit
- 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
- displaying the patron order on a display of the wireless patron unit
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. ¶¶27-28).
- The Invention Explained:
- Problem Addressed: As with its parent, the ’414 Patent addresses the technical challenges of providing timely service to patrons who may be mobile within a large area, where fixed-kiosk or staff-centric systems proved inefficient for both order placement and fulfillment. (’414 Patent, col. 1:40-col. 2:57).
- The Patented Solution: The patent describes a computer-implemented method, focusing on the server-side operations. The system provides a "venue-specific application" to a mobile device, authenticates the user, and then repeatedly receives location information from the device. It maps this location to a specific region associated with the venue and, upon receiving an order, continues to track the device's updated location to facilitate service. (’414 Patent, Abstract; Fig. 13).
- Technical Importance: This invention claims a specific technical process for a centralized server system to manage, authenticate, and track distributed mobile devices in real-time for the purpose of order fulfillment. (Compl. ¶41).
- Key Claims at a Glance:
- The complaint asserts independent claim 8. (Compl. ¶79).
- Essential elements of claim 8 include:
- A computer-implemented method executed by one or more processors
- providing over a wireless communications channel a venue-specific application to a mobile computing device
- communicating with the mobile computing device to authenticate a user
- receiving location information from the mobile computing device
- determining a location of the mobile computing device at a first time
- mapping the location to a region that is associated with a venue
- receiving order information from the mobile computing device
- receiving updated location information from the mobile computing device
- determining an updated location of the mobile computing device at a second time based on the updated location 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. ¶¶29-30).
- Technology Synopsis: This 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 location signals from them to determine their first and second locations over time, and, in response to an order from a particular device, sends data indicating that device's updated location to a computing system associated with the venue for display in a graphical user interface. (’224 Patent, Abstract; col. 25:55-col. 26:32).
- Asserted Claims: Independent claim 10 is asserted. (Compl. ¶99).
- Accused Features: The complaint alleges that Defendant's system, which includes its mobile application and associated servers, infringes by providing a venue-specific application, receiving location information from users' devices, determining device locations, processing orders, and sending location data to store-based systems to facilitate order pickup. (Compl. ¶¶106-117).
III. The Accused Instrumentality
Product Identification
The accused instrumentality is Defendant's mobile ordering application (the "Accused Products") and the associated back-end system. (Compl. ¶12, fn. 1; ¶53).
Functionality and Market Context
- The Defendant's application allows users to find Papa Murphy's stores, build a pizza order from a menu, and submit it for pickup. (Compl. ¶53). The complaint provides a screenshot showing the app's store locator and order summary interface. (Compl. p. 15). The application is described as being "specifically configured for a venue (e.g., a Defendant store) but may apply to more than one location (e.g., multiple Defendant stores)." (Compl. ¶54).
- The system utilizes the mobile device's location services to identify nearby stores for the user and to track the user's location for order pickup, including for curbside service. (Compl. ¶¶55-56). A screenshot in the complaint shows the application's explanation for requesting background location access from the user's mobile device. (Compl. p. 16). The complaint alleges the mobile ordering market has grown exponentially and that Defendant derives significant revenue from the use of its application. (Compl. ¶¶1, 58).
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 to patrons for download onto their smartphones. | ¶69 | col. 25:3-12 |
| connecting the wireless patron unit to a server... | The application connects the user's smartphone to Defendant's servers via a Wi-Fi or cellular connection. | ¶70 | col. 7:1-14 |
| 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 menu items into the application on their smartphone. | ¶71 | col. 3:28-32 |
| determining a current location of the wireless patron unit | The application and associated system determine the smartphone's location via the device's location services. | ¶72 | col. 15:9-14 |
| updating a status of the patron order, and the current location of the wireless patron unit when the patron moves... | The application updates the order status (e.g., "In Progress") and tracks the smartphone's location as the user moves to a store for pickup. | ¶¶74-76 | col. 4:57-62 |
| displaying the patron order on a display of the wireless patron unit | The application displays the user's order on the smartphone's screen. | ¶77 | col. 4:26-32 |
Identified Points of Contention
- Scope Questions: A primary question may be whether a "venue," as described in the patent's context of a contiguous resort, can be construed to read on a single quick-service restaurant location or a chain of such locations. The complaint alleges the app functions for both a single store and a chain. (Compl. ¶54).
- Technical Questions: Claim 1 requires "updating... the current location of the wireless patron unit... on the wireless patron unit." The infringement analysis may turn on whether the complaint provides evidence that the user's changing geographic location is displayed or updated on the user's device screen, or if location data is merely used by the system in the background without being displayed to the patron.
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' smartphones over wireless channels via app stores. | ¶87 | col. 26:11-13 |
| communicating... to authenticate... a user of the venue-specific application... | The system authenticates a user through a login and password for the application. | ¶¶89-90 | col. 26:14-18 |
| receiving, by the one or more processors, location information from the mobile computing device | Defendant's processors receive location information from the smartphone's location services. | ¶91 | col. 26:19-20 |
| determining, by the one or more processors, a location of the mobile computing device at a first time... | Defendant's processors determine the smartphone's location based on the received information. | ¶93 | col. 26:21-23 |
| mapping, by the one or more processors, the location to a region that is associated with a venue | Defendant's processors map the smartphone's location to a region associated with a nearby store. | ¶94 | col. 26:24-26 |
| receiving, from the mobile computing device, order information for the venue... | Defendant's processors receive order information selected by the user through the application. | ¶95 | col. 26:27-30 |
| receiving... updated location information from the mobile computing device | Defendant's processors receive updated location information as the user travels toward the store for pickup. | ¶96 | col. 26:31-32 |
| determining... an updated location of the mobile computing device at a second time... | Defendant's processors determine the smartphone's updated location at a later time based on the new information. | ¶97 | col. 26:33-35 |
Identified Points of Contention
- Scope Questions: As with the ’729 Patent, the construction of "venue" and "region that is associated with a venue" will be central. The analysis may explore whether the system's identification of a nearby store constitutes "mapping the location to a region" as required by the claim.
- Technical Questions: A key factual question may be the location of the processing. The claim requires server-side processors to perform steps like "determining" and "mapping" the location. The dispute may focus on what evidence shows these specific steps occur on Defendant's servers, as claimed, rather than primarily on the user's mobile device.
V. Key Claim Terms for Construction
The Term: "venue-specific application"
- Context and Importance: This limitation was added to the claims of the ’414 and ’224 patents during prosecution to overcome § 101 patent eligibility rejections, making its construction critical for both infringement and validity analyses. (Compl. ¶¶50-51). Practitioners may focus on this term because its scope will determine whether an application designed for a national chain of stores falls within the claim, or if it is limited to an application for a single, discrete location.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states that the system may be used in "various other venues including, but not limited to, stadiums, arenas, retail locations," which could support construing the term to cover applications for multi-location retail chains. (’414 Patent, col. 4:3-6). The complaint alleges the app is configured for a store but applies to many stores. (Compl. ¶54).
- Evidence for a Narrower Interpretation: The detailed description heavily emphasizes the "resort" as the primary embodiment, describing a single, contiguous environment. (’414 Patent, col. 3:55-67). A party could argue that the term should be narrowed by this disclosure and by the arguments made during prosecution to secure the patent's allowance.
The Term: "venue"
- Context and Importance: The definition of "venue" is inextricably linked to "venue-specific application" and is fundamental to the infringement case. The dispute will question whether an individual Papa Murphy's restaurant constitutes a "venue" as contemplated by the patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification provides a non-limiting list of venues that includes "restaurants, bars, pools, tennis courts" and "retail locations," which directly supports applying the term to a restaurant. (’414 Patent, col. 3:65-67; col. 4:5-6).
- Evidence for a Narrower Interpretation: A party may argue that the patent's consistent use of a "resort" as the primary example, with integrated services like pools and beaches, implies a more complex, single-proprietor environment than a standalone quick-service restaurant. (’414 Patent, col. 3:18-26).
VI. Other Allegations
Indirect Infringement
The complaint alleges active inducement of infringement for all three asserted patents. The alleged basis is that Defendant supplies the Accused Products to consumers through app stores and provides instructions and encouragement for users to operate the application in a manner that directly infringes the patent claims. (Compl. ¶¶64, 83, 103).
Willful Infringement
Willfulness is alleged for all asserted patents. The complaint pleads that Defendant has had actual knowledge of the patents "since at least as early as the filing and service of this Complaint" and that its continued infringement thereafter will be willful and deliberate. It also alleges Defendant was "willfully blind" to the existence of the patents pre-suit. (Compl. ¶¶65, 84, 104).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "venue," rooted in patent specification examples of contiguous resort environments, be construed to cover individual, geographically dispersed quick-service restaurant locations? The interpretation of the related term "venue-specific application," which was added to overcome patent eligibility rejections, will be central to this question.
- A key evidentiary question will be one of infringement locus: does the complaint and subsequent discovery provide sufficient technical evidence to demonstrate that the accused system performs the claimed processing steps—such as "mapping... the location to a region"—on its back-end servers, as required by claims like claim 8 of the ’414 Patent, or do these functions occur primarily on the user's mobile device?
- A persistent legal question may concern patent eligibility: despite the extensive prosecution history and a favorable ruling in a prior case cited in the complaint, the issue of whether the claims are directed to a patent-ineligible abstract idea of mobile ordering, rather than a specific technical improvement to computer functionality, may be re-litigated, focusing on the patent's contribution over pre-digital business practices.