Push Data LLC v. ASICS American Corp

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Push Data LLC (Delaware)
  • Defendant: ASICS America Corporation (California)
  • Plaintiff’s Counsel: Beaty Legal PLLC
• Case Identification: 4:23-cv-00921, E.D. Tex., 10/18/2023
• Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendant ASICS maintains multiple established places of business in the district, including retail locations in Frisco and Plano, Texas.
• Core Dispute: Plaintiff alleges that Defendant’s Runkeeper mobile fitness application infringes three expired patents related to geographical web browsing and location-based push notifications.
• Technical Context: The technology at issue involves using a mobile device's geographical location to trigger the delivery of relevant digital content from a remote server, a foundational concept for many modern mobile applications.
• Key Procedural History: The three patents-in-suit are part of the same patent family and expired in November 2018. The complaint does not reference any prior litigation, licensing history, or post-grant proceedings involving these patents.

Case Timeline

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

U.S. Patent No. 7,058,395 - “GEOGRAPHICAL WEB BROWSER, METHODS, APPARATUS AND SYSTEMS” (Issued 06/06/2006)

The Invention Explained

• Problem Addressed: At the time of the invention, mobile technology lacked the ability to automatically control a network application, like a web browser, based on a user's location by selectively filtering locally broadcast information (Compl. ¶14; ’395 Patent, col. 2:57-62). Users were required to manually select an icon or navigate to find information specific to their local area (Compl. ¶14; ’395 Patent, col. 2:62-64).
• The Patented Solution: The patent describes systems and methods that allow a mobile device to maintain a primary network connection (e.g., cellular) while using information received on an auxiliary channel (e.g., a local broadcast from a Wi-Fi-like access point) to control the flow of information on that primary connection (’395 Patent, col. 4:25-30). This enables a "geographical web browser" where a user can navigate for information by physically moving into different geographic areas, triggering the automatic delivery of relevant content (Compl. ¶15; ’395 Patent, Fig. 1).
• Technical Importance: The invention proposed a framework for providing location-based push services that were not widely available at the time, improving the way mobile devices and remote servers could interact based on geographical context (Compl. ¶49, ¶54).

Key Claims at a Glance

• The complaint asserts independent claims 1 and 22.
• Essential Elements of Independent Claim 1: A method comprising:
  • Receiving a user interest indication and a location indication for a mobile unit.
  • Identifying an information item that comports with the user's interest and is associated with the user's location.
  • Causing information about the item to be sent to a wireless access station.
  • The station then wirelessly transmits the information via "one or more unsolicited pushed messages" to the mobile unit "without the need to continuously maintain an active user-interactive client-server application layer session."
• Essential Elements of Independent Claim 22: A method comprising:
  • Identifying an information item that comports with a user interest.
  • Causing a "communication push message" to be wirelessly transmitted to a mobile unit, which contains information about further downloadable content.
  • Receiving a client-request packet from the mobile unit in response to a user's selection to download the further content.
  • Sending the further content to the mobile unit in response to the request.
  • The push message acts as a notification, allowing the user to selectively download the content.
• The complaint reserves the right to assert additional claims (Compl. ¶84).

U.S. Patent No. 7,292,844 - “GEOGRAPHICAL WEB BROWSER, METHODS, APPARATUS AND SYSTEMS” (Issued 11/06/2007)

The Invention Explained

• Problem Addressed: As a continuation of the same parent application, this patent addresses the same technical problem as the ’395 Patent: the prior art's inability to automatically provide location-relevant information to a mobile device to control a network application (’844 Patent, col. 2:57-64).
• The Patented Solution: The patent discloses methods for a remote server to interact with a mobile device to provide location-based content. The core concept remains a "geographical web browser" that allows a user to navigate network content by physically moving through different areas, with the server managing the delivery of relevant information based on location and user preferences (Compl. ¶13; ’844 Patent, Abstract). The architecture described in Figure 1 of the specification is central to this solution (’844 Patent, Fig. 1).
• Technical Importance: This invention provides specific client-server communication protocols to enable the broader concept of geographical browsing, a key technological step toward modern location-aware applications (Compl. ¶46, ¶49).

Key Claims at a Glance

• The complaint asserts independent claims 1, 25, 32, 37, and 46. The analysis will focus on the first asserted independent claim.
• Essential Elements of Independent Claim 1: A method performed by a remote server system in an environment with at least two wireless network access stations, comprising:
  • Receiving a first request from a wireless handheld device via a first wireless packet network access station.
  • Transmitting a server response to the device, indicating the availability of content related to the first request.
  • Receiving a second request from the device, which is "automatically generated by the wireless handheld device... without requiring user action."
  • Coupling the available content to the device via a second wireless packet network access station.
• The complaint reserves the right to assert additional claims (Compl. ¶105).

Multi-Patent Capsule

• Patent Identification: U.S. Patent No. 7,212,811, “GEOGRAPHICAL WEB BROWSER, METHODS, APPARATUS AND SYSTEMS,” Issued May 1, 2007.
• Technology Synopsis: As part of the same patent family as the ’395 and ’844 patents, this patent discloses technology for a "geographical web browser" that allows a user to navigate network applications by physically moving through different locations (’811 Patent, Abstract). The system uses location information derived from GPS or local broadcast signals to automatically trigger the delivery of relevant web pages and other content from a server to a mobile device (Compl. ¶13, ¶15).
• Asserted Claims: At least independent claim 5 (Compl. ¶124, ¶128).
• Accused Features: The complaint alleges that the ASICS Runkeeper application and its associated servers infringe by performing a method where a remote server receives a request from a mobile device, responds with content availability, receives a second automatically generated request from the device, and then delivers the content in an environment with at least two wireless networks (e.g., cellular and WiFi) (Compl. ¶122-123).

III. The Accused Instrumentality

• Product Identification: The "Accused Instrumentalities" are identified as the ASICS mobile application, commonly known as Runkeeper, available on both Apple and Android platforms, along with its associated back-end servers and client-side software (Compl. ¶66).
• Functionality and Market Context: The complaint alleges that the Accused Instrumentalities operate by having a remote server engage in a multi-step communication process with the mobile application (Compl. ¶80, ¶101, ¶122). This alleged process involves the server receiving an initial request, responding with the availability of content, receiving a second, automatically generated request from the app, and then delivering the content to the app (Compl. ¶80, ¶101, ¶122). This functionality is alleged to be performed in an environment where devices can connect to both cellular and WiFi networks (Compl. ¶81, ¶102, ¶123). The complaint notes that ASICS acquired Runkeeper for a reported $85 million, suggesting its commercial significance (Compl. ¶79).

No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint references infringement claim charts in Exhibits D, E, and F, but these exhibits were not filed with the complaint. The narrative infringement theory is summarized below.

• '395 Patent Infringement Allegations: The complaint alleges that the accused Runkeeper system infringes by performing a method where a remote server receives a first request from a mobile device, the server responds that content is available, the server then receives a second request "which is automatically generated by the handheld device," and finally the server delivers the content related to the first request (Compl. ¶80). This process is alleged to occur in an environment with at least two wireless networks, such as cellular and WiFi (Compl. ¶81).
• '844 Patent Infringement Allegations: The complaint provides a narrative infringement theory for the ’844 Patent that is identical to the one provided for the ’395 Patent. It alleges the same method where a remote server receives a first request, responds with content availability, receives a second automatically generated request, and then delivers the content to the mobile device over one of at least two available wireless networks (Compl. ¶101-102).
• Identified Points of Contention:
  • Scope Questions: A potential point of contention for the ’395 Patent is an apparent mismatch between the complaint's narrative infringement theory and the language of the asserted claims. The narrative alleges a request-response-request sequence (Compl. ¶80), while asserted claims 1 and 22 require the process to be initiated by "unsolicited pushed messages" or a "communication push message." This raises the question of whether a server's response to a device's initial request can be construed as an "unsolicited" message.
  • Technical Questions: For the ’844 Patent, the narrative theory appears to align more closely with asserted claim 1. The central technical question will be evidentiary: what proof can be adduced to show that the accused application performs the specific two-request sequence required by the claim, particularly the limitation that the second request is "automatically generated... without requiring user action" (Compl. ¶101)?

V. Key Claim Terms for Construction

• The Term: "unsolicited pushed messages" (’395 Patent, Claim 1)

  • Context and Importance: The definition of this term is critical because the complaint's infringement theory is based on a request-response model (Compl. ¶80), which may conflict with the concept of an "unsolicited" message. The outcome of the case for this patent may depend on whether a server's response, prompted by a client's request, can still be considered part of an "unsolicited" communication sequence.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification discusses controlling information flow on a primary network connection using information from an "auxiliary channel," which could be argued to encompass a wide variety of secondary triggers beyond simple broadcasts (’395 Patent, col. 4:25-30).
    • Evidence for a Narrower Interpretation: The specification frequently describes the triggering information in the context of "locally broadcast packets" and "electronic signs," which a mobile unit passively receives as it enters a broadcast domain, implying a one-way, unrequested transmission (’395 Patent, col. 3:32-42).

• The Term: "automatically generated by the wireless handheld device... without requiring user action" (’844 Patent, Claim 1)

  • Context and Importance: This term is the central mechanism of the asserted infringement method. Practitioners may focus on this term because its construction will determine what level of software automation is required to infringe. The dispute will likely concern whether a background sync operation in the accused app meets this limitation.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A party might argue that any background process not directly and immediately initiated by a user's physical interaction (e.g., a button press) is "automatic" and "without user action."
    • Evidence for a Narrower Interpretation: The specification describes scenarios where unsolicited "pushed information packets" could "trigger... downloading of related information," suggesting a direct, programmatic cause-and-effect relationship initiated by a server-side event, rather than a routine background client process (’395 Patent, col. 4:9-13).

VI. Other Allegations

• Willful Infringement: The complaint does not explicitly allege willful infringement. However, in the prayer for relief, it requests a declaration that the case is "exceptional" under 35 U.S.C. § 285 (Compl. p. 25). The factual basis for this appears to rest on alleged post-suit knowledge, as the complaint alleges Defendant gained knowledge of the patents and its infringement "since at least the filing of the Original Complaint in this action" (Compl. ¶65). No allegations of pre-suit knowledge are made.

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

This case appears to present two central questions for the court's determination:

1. A core issue will be one of claim scope versus pleading: For the ’395 Patent, can the infringement theory presented in the complaint, which describes a multi-step request-response protocol, satisfy claim limitations requiring an "unsolicited pushed message"? The apparent disconnect between the pleaded facts and the claim language suggests claim construction will be a critical battleground.

2. A key evidentiary question will be one of technical proof: For the ’844 and ’811 patents, can Plaintiff develop evidence in discovery to prove that the accused Runkeeper system actually performs the specific, multi-step communication method recited in the claims? The allegations, made on "information and belief," will require detailed technical evidence of a server response triggering an "automatically generated" second client request "without user action."