DCT
3:24-cv-01178
Yillio Inc v. Uber Tech Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Yillio, Inc. (North Carolina)
- Defendant: Uber Technologies, Inc. (Delaware)
- Plaintiff’s Counsel: Dickinson Wright PLLC; Whitaker Chalk Swindle & Schwartz PLLC
- Case Identification: 3:24-cv-01178, N.D. Tex., 05/16/2024
- Venue Allegations: Plaintiff alleges venue is proper in the Northern District of Texas because Defendant is registered to do business in Texas, has transacted business in the district, and maintains a regular and established place of business in Dallas.
- Core Dispute: Plaintiff alleges that Defendant’s Uber and Uber Eats services infringe three patents related to systems and methods for providing route-based advertising and vendor-reported business information to users over a network.
- Technical Context: The technology at issue falls within the domain of location-based services and contextual advertising, specifically focusing on presenting points of interest to users relative to a defined travel path.
- Key Procedural History: The complaint asserts that U.S. Patent Nos. 8,650,176 and 8,943,037 are continuations of U.S. Patent No. 8,285,696, indicating the patents-in-suit belong to the same family and share a common specification.
Case Timeline
| Date | Event |
|---|---|
| 2006-06-09 | Priority Date for ’696, ’176, and ’037 Patents |
| 2012-10-09 | ’696 Patent Issued |
| 2014-02-11 | ’176 Patent Issued |
| 2015-01-27 | ’037 Patent Issued |
| 2024-05-16 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,285,696 - Apparatus and methods for providing route-based advertising and vendor-reported business information over a network, Issued October 9, 2012
The Invention Explained
- Problem Addressed: The patent identifies a problem with prior art methods for obtaining information like fuel prices, which relied on searching databases by a static location (e.g., zip code or street address) and often contained outdated information (Compl. ¶24; ’696 Patent, col. 1:22-48). These methods did not allow users to find information specifically along a contemplated travel route (Compl. ¶28).
- The Patented Solution: The invention proposes a method where a user provides a query identifying a travel route, and the system accesses a database of business information that vendors have "self-reported" through a dedicated interface. The system then provides the user with information and advertisements from vendors located in geographic proximity to that specific route (’696 Patent, Abstract; col. 6:11-22).
- Technical Importance: This approach enabled the display of business information dynamically based on its proximity to a user’s specific path, rather than just a general geographic area (Compl. ¶25).
Key Claims at a Glance
- The complaint asserts at least independent Claim 1 (Compl. ¶30, ¶72).
- Claim 1 Elements:
- Receiving from the user a query identifying a contemplated route;
- Accessing a computer database of self-reported business information from vendors, each having an identified geographic location, where the information has been previously supplied by vendors through a vendor interface and stored;
- Providing to the user information from the database for a set of vendors extracted based on geographic proximity to the user's route, wherein the vendor interface is configured so each vendor can also specify an advertising budget; and
- Providing to the user advertising from the set of vendors based on data from the database and on advertising budgets supplied by the vendors.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 8,650,176 - Apparatus and methods for providing route-based advertising and vendor-reported business information over a network, Issued February 11, 2014
The Invention Explained
- Problem Addressed: As a continuation of the ’696 Patent, the ’176 Patent addresses the same problem of prior art location-based searches being limited to static areas rather than dynamic travel routes (Compl. ¶38; ’176 Patent, col. 1:24-49).
- The Patented Solution: The solution is similar to that of the ’696 Patent, involving a system that provides route-based business information and advertising from a database of self-reported vendor data. This patent’s claims add a specific commercial component: pricing the advertising based on the vendor's distance from the user's route (’176 Patent, col. 2:2-6).
- Technical Importance: The invention introduces a dynamic advertising pricing model where cost is tied directly to the vendor's proximity to a user's planned path, a key indicator of relevance (Compl. ¶40, ¶43).
Key Claims at a Glance
- The complaint asserts at least independent Claim 1 (Compl. ¶44).
- Claim 1 Elements:
- Receiving from the user a query identifying a contemplated route;
- Accessing a computer database of self-reported business information from vendors with identified geographic locations, supplied via a vendor interface;
- Providing the user with business information for vendors extracted based on geographic proximity to the route;
- Providing the user advertising from the set of vendors based on data from the database; and
- Pricing the advertising based, at least in part, on the distance of each vendor’s geographic location from the contemplated route.
- The complaint does not explicitly reserve the right to assert dependent claims.
Multi-Patent Capsule
- Patent Identification: U.S. Patent No. 8,943,037, Apparatus and methods for providing route-based advertising and vendor-reported business information over a network, Issued January 27, 2015.
- Technology Synopsis: As a continuation in the same patent family, the ’037 Patent relates to a method for providing advertising to a user or a community of users based on information extracted from a database of self-reported vendor data, filtered by geographic proximity to a user-identified travel route (Compl. ¶50, ¶53). The claims are similar in structure to those of the parent patents, focusing on the interaction between a user route query and a vendor database.
- Asserted Claims: The complaint asserts at least independent Claim 1 (Compl. ¶57).
- Accused Features: The complaint alleges that Uber’s services infringe by receiving a user route, accessing a database of self-reported information from restaurant partners via an interface, and providing users with information and advertising based on route proximity and vendor-specified advertising budgets (Compl. ¶107-110).
III. The Accused Instrumentality
Product Identification
The Uber and Uber Eats services (collectively, the "Accused Products") (Compl. ¶61).
Functionality and Market Context
The complaint describes the Accused Products as services that allow a user to identify a "contemplated route," such as for hailing a ride or ordering food delivery (Compl. ¶68, ¶88). In this context, the user is allegedly able to see restaurants or merchants along that route. The services are alleged to access a computer database containing self-reported business information from vendors, such as geographic location, provided through a "sign-up web page for its restaurant partners" (Compl. ¶69, ¶89, ¶108). The system then provides users with business information (e.g., store hours, menus) and advertising (e.g., specials, discounted delivery rates) based on the vendor's proximity to the user's route (Compl. ¶70, ¶90-91, ¶109-110). The complaint positions Uber as the world's largest ridesharing company and a major operator in the food delivery market, alleging the accused technology provides significant competitive advantages (Compl. ¶59-61, ¶63).
IV. Analysis of Infringement Allegations
8,285,696 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| (a) receiving from the user a query identifying a contemplated route | The Accused Products receive a user query for a route, such as when a user hails a ride or orders food through Uber Eats and can see merchants along that route. | ¶68 | col. 6:11-16 |
| (b) accessing a computer database of self-reported business information from vendors, each vendor having an identified geographic location, wherein the self-reported business information has been previously supplied by the vendors through a vendor interface and stored in the database | The Accused Products access a database of self-reported vendor information, such as geographic location, that restaurant partners provide through a sign-up web page. The complaint includes a flowchart from the patent, FIG. 4, showing a user route-planning process (Compl. p. 7). | ¶69 | col. 5:36-41 |
| (c) providing to the user...information from the database concerning the business information of a set of vendors extracted from the database on the basis of geographic proximity to the route identified by the user and wherein the vendor interface is configured so that each vendor can also specify an advertising budget | The Accused Products access the database to provide users with merchant information (e.g., store hours, menus, prices) based on proximity to the route. The vendor can specify an advertising budget. | ¶70 | col. 8:35-40 |
| (d) providing to the user...advertising from the set of vendors based, at least in part, on data retrieved from the database and based on advertising budgets supplied by the set of vendors | The Accused Products provide advertising to the user based on information from the database and advertising budgets supplied by the vendors. | ¶71 | col. 16:1-4 |
- Identified Points of Contention:
- Scope Questions: A central question may be whether the term "contemplated route", described in the patent primarily in the context of vehicle travel for refueling, can be construed to cover the dynamic route of an on-demand food delivery service.
- Technical Questions: The analysis may focus on whether a restaurant sign-up portal in the Uber Eats ecosystem functions as the specific "vendor interface" required by the claims, and whether the information Uber uses is predominantly "self-reported" through that interface as opposed to being aggregated from other sources.
8,650,176 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| (a) receiving from the user a query identifying a contemplated route | The Accused Products receive a user query for a route, such as for a ride or food delivery. | ¶88 | col. 6:11-16 |
| (b) accessing a computer database of self-reported business information from vendors, each vendor having an identified geographic location, wherein the self-reported business information has been previously supplied by the vendors through a vendor interface... | The Accused Products access a database of self-reported vendor information provided by restaurant partners through a sign-up web page. | ¶89 | col. 5:36-41 |
| (c) providing to the user...information from the database concerning the business information of a set of vendors extracted from the database on the basis of geographic proximity to the route... | When a user hails a ride or orders food, the Accused Products access and provide merchant information (store hours, menus, prices) based on proximity to the user's route. | ¶90 | col. 6:53-62 |
| (d) providing to the user...advertising from the set of vendors based, at least in part, on data retrieved from the database | Uber Eats provides specials and discounted delivery rates to a user based on information retrieved from the database in response to the user's query. | ¶91 | col. 8:35-40 |
| (e) pricing the advertising based, at least in part, on distance of each vendor's geographic location from the contemplated route | The Accused Products price the advertising based, at least in part, on the distance of the vendor's location from the user's route. | ¶92 | col. 2:3-6 |
- Identified Points of Contention:
- Scope Questions: As with the ’696 Patent, the interpretation of "contemplated route" will be a key issue.
- Technical Questions: A primary point of contention may be evidentiary. The complaint makes a conclusory allegation for element (e) but provides no specific facts explaining how Uber's advertising model allegedly prices ads based on distance from a user's route. The case may turn on whether discovery reveals evidence to support this functional claim.
V. Key Claim Terms for Construction
Term from the ’696 and ’176 Patents
- The Term: "contemplated route"
- Context and Importance: This term is foundational to all asserted claims. Its construction will determine whether the patents’ scope, seemingly rooted in traditional vehicle navigation, extends to the on-demand service models of Uber and Uber Eats. Practitioners may focus on whether a "route" must be a pre-planned travel path or if it can cover the dynamic, system-generated path of a delivery driver.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes receiving a query where a user "may indicate the starting position of the route and the destination address" without limiting the mode of travel or purpose (’696 Patent, col. 6:40-42). This suggests any path between two points could qualify.
- Evidence for a Narrower Interpretation: Many specific embodiments and figures in the patent focus heavily on vehicle-specific parameters like "fuel efficiency," "tank volume," and refueling stops (e.g., "Plan my fillup") (’696 Patent, FIG. 4; col. 8:39-49). This context could support an interpretation limited to user-operated vehicle journeys.
Term from the ’176 Patent
- The Term: "pricing the advertising based, at least in part, on distance of each vendor's geographic location from the contemplated route"
- Context and Importance: This limitation distinguishes Claim 1 of the ’176 Patent and is central to proving its infringement. The dispute will likely center on the nature and directness of the connection between "distance" and "pricing." Practitioners may focus on whether this requires a direct formulaic input or if distance can be one of many factors in a complex ad auction system.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The Summary of the Invention states, "the charge imposed on a given one of the vendors depends at least in part on the distance of the given vendor's geographic location from the route" (’176 Patent, col. 2:3-6). The phrase "depends at least in part" suggests an indirect or partial influence is sufficient.
- Evidence for a Narrower Interpretation: The specification's description of an "AdRoute" feature shows advertising budget options tied to a specified "radius from route" (e.g., "$0.30/ad and 500ft radius") (’176 Patent, FIG. 14). This could be argued to disclose a more specific implementation where distance defines a clear boundary or tier, potentially narrowing the scope of "pricing based on distance."
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement for all three patents. The allegations state that Uber encourages and directs others (e.g., customers and staff), through its promotions and instructions, to use the Accused Products in an infringing manner (Compl. ¶78-82, ¶98-101, ¶117-121).
- Willful Infringement: The complaint does not explicitly allege "willful infringement." However, for each patent, it alleges that Uber has been aware of the patent and its infringement "at least since the filing of this Complaint" (Compl. ¶76, ¶96, ¶115). This allegation may form a basis for seeking enhanced damages for any post-suit infringement, should infringement be found. The prayer for relief also seeks a finding that the case is "exceptional" under 35 U.S.C. § 285 (Compl. p. 29).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: Can the term "contemplated route," which is described in the patents with examples related to personal vehicle travel and refueling, be construed to cover the system-generated delivery paths inherent in on-demand services like Uber Eats?
- A key evidentiary question will be one of technical proof: For the ’176 Patent, what evidence will emerge to show that Uber’s advertising system for vendors actually performs the claimed step of "pricing the advertising based, at least in part, on distance" from a user’s route, as opposed to other metrics like general user location, vendor bid price, or conversion rates?
- A final question will be one of architectural mapping: Does Uber's platform, which integrates information from restaurant partners via a sign-up portal, function in the same way as the "vendor interface" for "self-reported business information" described and claimed in the patents, or is there a fundamental mismatch in how the systems are designed and operate?