DCT
2:25-cv-00609
Nostromo LLC v. Walgreen Co
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Nostromo LLC (Texas)
- Defendant: Walgreen Co. d/b/a Walgreens (Illinois)
- Plaintiff’s Counsel: Fabricant LLP
- Case Identification: 2:25-cv-00609, E.D. Tex., 06/06/2025
- Venue Allegations: Plaintiff alleges venue is proper because Defendant has multiple regular and established places of business in the district, has transacted business involving the accused products in the district, and has previously not contested venue in the district in other patent cases.
- Core Dispute: Plaintiff alleges that Defendant’s Walgreens Mobile Application, which uses geofencing to provide location-based notifications and offers, infringes a patent related to providing customized location-based information services to portable electronic devices.
- Technical Context: The technology concerns systems that automatically deliver relevant information (e.g., commercial offers, local event data) to a mobile device when it enters a specific geographic area, based on user-defined preferences.
- Key Procedural History: An ex parte reexamination of the patent-in-suit was requested on June 27, 2024. The resulting Reexamination Certificate, issued February 27, 2025, confirmed the patentability of asserted independent claim 1, among other claims. This confirmation may strengthen the patent's presumption of validity regarding the prior art considered during the proceeding.
Case Timeline
| Date | Event |
|---|---|
| 2008-12-23 | ’970 Patent Priority Date |
| 2013-10-15 | ’970 Patent Issue Date |
| 2024-06-27 | Ex parte reexamination requested for the ’970 Patent |
| 2025-02-27 | Reexamination Certificate issued for the ’970 Patent |
| 2025-06-06 | Complaint Filing Date |
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"
The Invention Explained
- Problem Addressed: The patent describes a problem with conventional navigation services where users must actively request location-based information. This process is not automatic, and the information provided often contains content not of interest to the user or covers an administrative district larger than the user's area of interest (’970 Patent, col. 1:21-41).
- The Patented Solution: The invention is a method and system for automatically providing customized, real-time, location-based information. A user pre-sets preferences, such as categories of information (e.g., traffic, weather, local events) and a desired geographic range (’970 Patent, col. 4:35-53). A central system receives the user's device location, determines if a pre-set "condition" has been met (e.g., the device enters a specified area), and if so, automatically selects and transmits information from a database that matches the user’s location and preferences (’970 Patent, Abstract; col. 2:1-20). Figure 1 illustrates this system, showing the interaction between a portable device (3), a central server (1) with various modules (11-15), and base stations (2) (’970 Patent, Fig. 1).
- Technical Importance: The technology aims to shift location-based services from a user-pull model (active requests) to a system-push model (automatic, customized delivery), increasing timeliness and relevance for the end-user (’970 Patent, col. 1:33-38).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶15).
- Independent Claim 1:
- (a) providing an information platform and a user preference settings database for respectively receiving and recording preference settings for categories of information and location range from a user of the portable electronic device;
- (b) setting and storing in a condition database at least one condition for triggering information services provision to the portable electronic device;
- (c) receiving positioning information that includes a location of the portable electronic device by having a positioning module; and
- (d) determining through use of a condition module whether the at least one condition for triggering information services provision stored in the condition database has been met, and when the condition has been met, selecting location information from a location information database in accordance with the positioning information and the preference settings for categories of information and location range, and transmitting the selected location information to the portable electronic device.
- The complaint reserves the right to assert other claims (’970 Patent, Prayer for Relief ¶a).
III. The Accused Instrumentality
Product Identification
- The Walgreens Mobile Application and its associated "digital fencing and/or geofencing applications," servers, and databases (Compl. ¶14, ¶16).
Functionality and Market Context
- The complaint alleges the accused instrumentality uses geofencing technology to identify when a customer's mobile device enters a physical Walgreens store location (Compl. ¶19). Upon crossing the geofence, the system sends notifications to the user's device, such as alerts for "coupons, loyalty points, available products, and coupons" (Compl. ¶20). The complaint includes a visual reference describing how the app prompts users to enter an "in-store mode" upon entering a store, which provides access to loyalty points and a product finder. A screenshot of text from an article alleges that Walgreens has rolled out this "beacon initiative to all of its 8,000 plus physical locations, which are now either geofenced or digitally fenced" (Compl. p. 5). This suggests a large-scale commercial implementation of the accused functionality.
IV. Analysis of Infringement Allegations
’970 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| (a) providing an information platform and a user preference settings database for respectively receiving and recording preference settings for categories of information and location range from a user of the portable electronic device; | The Walgreens Mobile Application and associated servers function as an information platform and database for receiving and recording user preference settings for information categories and location range. | ¶16 | col. 7:16-21 |
| (b) setting and storing in a condition database at least one condition for triggering information services provision to the portable electronic device; | The Walgreens Mobile Application sets and stores conditions, such as "custom alerts," in a condition database to trigger information services. | ¶17 | col. 7:22-25 |
| (c) receiving positioning information that includes a location of the portable electronic device by having a positioning module; | The geofencing functionality of the Walgreens Mobile Application receives positioning data from the mobile device via positioning modules within the device. | ¶18 | col. 7:26-29 |
| (d) determining through use of a condition module whether the at least one condition... has been met, and when the condition has been met, selecting location information... and transmitting the selected location information... | When a geofence is crossed (the condition is met), the system selects Walgreens store location information based on the device's real-time position and user preferences and transmits it to the device. | ¶19 | col. 7:30-38 |
- Identified Points of Contention:
- Scope Questions: A central question may be whether the functionality of the Walgreens app, which appears focused on commercial offers within a pre-defined store boundary, meets the claim requirement for user-defined "preference settings for categories of information and location range." The patent describes users selecting from categories like "weather and traffic conditions" and specifying a "radius distance" (’970 Patent, col. 4:35-53). The complaint does not specify the degree of customization available to the Walgreens app user.
- Technical Questions: What evidence does the complaint provide that the accused system involves a user actively setting a "location range" and "categories of information" as contemplated by the patent, versus simply opting-in to receive generic, pre-programmed marketing alerts when entering any Walgreens location? The infringement analysis may depend on the level of user control over the triggering conditions and the content received.
V. Key Claim Terms for Construction
The Term: "condition for triggering information services"
Context and Importance: This term is central to the infringement analysis, as it defines the event that initiates the patented method. Practitioners may focus on this term because its scope will determine whether simply crossing a pre-set geofence, as alleged in the complaint (Compl. ¶19), is sufficient to meet the limitation.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Claim 2, a dependent claim, recites more specific conditions, such as a location being determined "for a first time within a time period" or corresponding to a "specified local event" (’970 Patent, col. 7:40-52). The absence of this specificity in independent claim 1 could suggest a broader meaning that encompasses any pre-defined trigger.
- Evidence for a Narrower Interpretation: The specification provides examples of conditions such as "a specified point in time subsequent to receipt of the positioning information is determined to have been reached" or a "specified local event is determined to be associated with the specified location" (’970 Patent, col. 2:35-42). A party could argue these examples limit the term to more dynamic or event-based triggers than a static, pre-defined geofence.
The Term: "preference settings for categories of information and location range"
Context and Importance: The infringement hinge on whether the accused app allows users to specify preferences with the granularity required by the claims. The complaint alleges this element is met but provides limited detail on the actual user interface or options (Compl. ¶16).
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term itself is not explicitly defined, which may support an interpretation covering any user choice that influences the type of information received within a certain area, even if the choices are limited (e.g., opting in or out of "deals").
- Evidence for a Narrower Interpretation: The specification gives examples of a user selecting categories like "weather and traffic conditions" and specifying a location range via a "radius distance" from their location (’970 Patent, col. 4:35-53). This could support a narrower construction requiring a system where the user actively defines both the type of content and the geographic scope of the alerts.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement by asserting that Walgreens provides the Mobile Application to its customers and supplies them with instructions on how to operate the infringing technology, with the intent to cause its customers to directly infringe the ’970 Patent (Compl. ¶21, ¶23).
- Willful Infringement: The complaint alleges willful infringement based on willful blindness. It claims Defendant adopted a "policy of not reviewing the patents of others" to remain ignorant of its infringing activities, despite a high probability that it would learn of them (Compl. ¶22).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim scope and factual mapping: Does the Walgreens Mobile Application’s functionality, which appears to trigger pre-set marketing alerts upon entering a store, meet the claim requirement for a system where a user establishes "preference settings for categories of information and location range"? The case may turn on evidence demonstrating the extent of user customization within the app.
- A second key question will be one of definitional scope: Can the term "condition for triggering information services" be construed broadly enough to read on the crossing of a static, company-defined geofence, or does the patent’s context imply a more dynamic or user-specified trigger?
- Finally, an evidentiary question will concern willfulness: Can Plaintiff substantiate its allegation that Defendant maintained a "policy of not reviewing patents" to establish the specific intent required for willful blindness, particularly given that the patent was recently confirmed in reexamination?