Nostromo LLC v. ecobee Tech ULC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Nostromo LLC (Texas)
  • Defendant: Ecobee Technologies ULC d/b/a Ecobee (British Columbia, Canada)
  • Plaintiff’s Counsel: Fabricant LLP
• Case Identification: 2:24-cv-00120, E.D. Tex., 02/20/2024
• Venue Allegations: Venue is alleged to be proper because the defendant is not a resident of the United States and may be sued in any judicial district.
• Core Dispute: Plaintiff alleges that Defendant’s smart home and security systems, which provide location-based functionality, infringe a patent related to methods for delivering customized, location-based information services to portable devices.
• Technical Context: The technology concerns systems that can automatically provide users with pre-selected types of information when their mobile device enters a specific geographic area, a foundational concept in modern smart-home automation and location-aware applications.
• Key Procedural History: An ex parte reexamination of the patent-in-suit was concluded, with a certificate issued that confirmed the patentability of claims 1-3, 8, 10-12, and 17. This proceeding affirms the validity of the asserted independent claim over the art considered by the USPTO, which may strengthen the patent's presumption of validity during litigation.

Case Timeline

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

U.S. Patent No. 8,559,970, Method for Providing Location-Based Services, Location-Based Information Services Systems, and Portable Electronic Device, Issued October 15, 2013

The Invention Explained

• Problem Addressed: The patent identifies shortcomings in prior art location-based services, noting that they require active user requests for information, often provide content that is not of interest to the user, and cover administrative districts that are geographically larger than the user's area of interest (’970 Patent, col. 1:21-42).
• The Patented Solution: The invention is a method and system that automates the delivery of customized location-based information. A user pre-defines their preferences, such as categories of information (e.g., weather, traffic) and a specific location range (e.g., a 10-kilometer radius) (’970 Patent, col. 6:49-54). A back-end system receives positioning data from the user's portable device, determines when a pre-set condition is met (e.g., the device entering the specified range), and then automatically selects and transmits the relevant, preferred information to the user’s device (’970 Patent, Abstract; col. 2:3-20). The system is designed to be passive from the user’s perspective after the initial setup.
• Technical Importance: This approach enabled a shift from user-initiated, pull-based information retrieval to system-initiated, push-based delivery of location-specific data, personalized to a user's explicit preferences.

Key Claims at a Glance

• The complaint asserts infringement of at least independent claim 1 (Compl. ¶16).
• Essential elements of independent claim 1 include:
  • Providing an information platform and user preference database for receiving and recording preference settings (categories of information and location range).
  • Setting and storing in a condition database at least one condition for triggering information services provision.
  • Receiving positioning information that includes a location of the portable electronic device.
  • Determining if the stored condition has been met, and if so, selecting location information from a database in accordance with the positioning information and preference settings, and transmitting it to the portable device.
• The complaint does not explicitly reserve the right to assert dependent claims.

III. The Accused Instrumentality

• Product Identification: The accused products include the "Ecobee Smart Security System" and a broad range of Ecobee smart home products such as thermostats, cameras, and sensors, along with their interoperating mobile applications and associated services (Compl. ¶11, ¶15).
• Functionality and Market Context: The complaint alleges that the Ecobee Smart Security System performs a method of providing location-based services to a user's mobile device via the Ecobee Mobile Application (Compl. ¶17). This system allegedly uses "geofencing" to receive a mobile phone's positioning data (Compl. ¶19). When a user's device crosses a pre-set geofence boundary (e.g., around their "Home location"), the system determines that a condition has been met and triggers an action, such as providing an alert or information to the user's phone (Compl. ¶18, ¶20). The complaint includes a screenshot from a major retailer's website to demonstrate that Defendant's products are offered for sale in the judicial district (Compl. p. 2, Fig. 1).

IV. Analysis of Infringement Allegations

’970 Patent Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: A central dispute may arise over the meaning of "selecting location information from a location information database" and "transmitting the selected location information." The complaint alleges selecting "Home location" (Compl. ¶20). The defense may argue this is merely a label for a geofence trigger and does not constitute the selection and transmission of substantive "location information" (e.g., "weather and traffic conditions") as contemplated by the patent's specification (’970 Patent, col. 6:35-36).
  • Technical Questions: What evidence demonstrates that the accused Ecobee system performs all the steps of claim 1(d)? Specifically, it raises the question of whether the system, upon a geofence trigger, actually "select[s] location information from a location information database" or if it simply triggers a pre-programmed state change (e.g., arming a security system) without selecting or transmitting new "location information" to the device.

V. Key Claim Terms for Construction

• The Term: "location information"

• Context and Importance: This term is critical because the final step of the asserted claim requires "selecting" and "transmitting" this information. The viability of the infringement allegation depends on whether the accused system's output (e.g., an alert or status change) qualifies as "location information." Practitioners may focus on this term because the complaint's example ("Home location") appears to be a label, whereas the patent specification describes more substantive data.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The term is not explicitly defined, which could support an argument for its plain and ordinary meaning. The claim itself does not limit the type of location information.
  • Evidence for a Narrower Interpretation: The specification provides examples of "location information" such as "weather and traffic conditions and local events" (’970 Patent, col. 6:35-36) and news updates (’970 Patent, col. 5:25-32). A defendant may argue these examples limit the term to substantive, dynamic data about a location, rather than a simple status or alert triggered by it.

• The Term: "condition for triggering information services provision"

• Context and Importance: The infringement theory hinges on the accused "geofence" trigger (Compl. ¶20) meeting this limitation. The scope of "information services provision" will determine whether a simple security system state change (e.g., arming/disarming) falls within the claim.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The claim language is general. One of the patent's examples is a condition where "the location included in the positioning information is determined for a first time within a time period to correspond to a service area location of a base station" (’970 Patent, col. 8:41-44), which is functionally similar to a geofence trigger.
  • Evidence for a Narrower Interpretation: The consistent framing of the invention as providing "information services" (’970 Patent, col. 1:12) suggests the trigger must lead to the provision of informational content, not merely a device state change. A defendant could argue that arming a security system is a control function, not an "information service."

VI. Other Allegations

• Indirect Infringement: The complaint alleges inducement of infringement by customers and end-users, citing Defendant's instructions, product literature, packaging, and website as evidence of intent (Compl. ¶21, ¶23).
• Willful Infringement: Willfulness is alleged based on two theories: first, that Defendant had knowledge of its infringement at least as of the date of the complaint (Compl. ¶22), and alternatively, that Defendant was "willfully blind" by maintaining a policy of not reviewing patents in its industry, a practice alleged to have begun as early as the patent's issuance date (Compl. ¶22).

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

The dispute will likely center on claim interpretation and the application of that interpretation to the accused technology, especially given that the asserted independent claim's validity has been confirmed in a recent reexamination. Key questions for the court will include:

1. A core issue will be one of definitional scope: Does the term "location information" as used in the patent require the transmission of substantive, descriptive data about a location (like weather or points of interest), or can it be construed to cover a system-status notification (like an alert) that is triggered by location?
2. A related evidentiary question will be one of functional operation: Does the accused Ecobee geofencing system, which triggers alerts for a security system, actually perform the claimed step of "selecting location information from a location information database," or does it execute a fundamentally different technical process, such as a pre-programmed command-and-control function based on a location trigger?
3. A third question will relate to damages and willfulness: Given the allegation of willful blindness dating back to the patent's issuance, the court may need to examine the extent to which a defendant’s alleged policy of not reviewing third-party patents can support a finding of pre-suit willfulness.