DCT
1:24-cv-00152
Schoeneckers Inc v. Jive Software LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Schoeneckers, Inc., d/b/a BI Worldwide (Minnesota)
- Defendant: Jive Software, LLC and Ignite Enterprise Software Solutions, LLC (Delaware / Texas)
- Plaintiff’s Counsel: The Dacus Firm, P.C.; Carlson Caspers Vandenburgh & Lindquist PA
- Case Identification: 1:24-cv-00152, W.D. Tex., 02/13/2024
- Venue Allegations: Plaintiff alleges venue is proper in the Western District of Texas because Defendants maintain a regular and established place of business in Austin and have committed acts of infringement in the district.
- Core Dispute: Plaintiff alleges that Defendant’s gamification platform infringes patents related to portable and customizable software for providing user incentives on websites.
- Technical Context: The technology at issue falls within the "gamification" sector, where game-like mechanics such as points, leaderboards, and achievements are integrated into non-game contexts like websites to drive user engagement.
- Key Procedural History: The complaint alleges that Defendant Jive was a customer of Plaintiff's predecessor, Bunchball, from 2012 until 2022, licensing the patented "Nitro Platform." After ceasing to be a customer, Jive allegedly continued to offer a "strikingly similar" platform. Plaintiff asserts it provided Defendant with notice of infringement, including claim charts, beginning in May 2023.
Case Timeline
| Date | Event |
|---|---|
| 2007-07-18 | Earliest Priority Date for ’764, ’421, and ’339 Patents |
| 2007 | Plaintiff's predecessor (Bunchball) launches Nitro platform |
| 2012 | Defendant Jive begins licensing Plaintiff's Nitro platform |
| 2014-07-01 | ’764 Patent Issued |
| 2017-10-03 | ’421 Patent Issued |
| 2022 | Jive stops licensing the Nitro platform |
| 2022-11-15 | ’339 Patent Issued |
| 2023-05-18 | Plaintiff sends first notice of infringement letter to Defendant |
| 2023-07-10 | Plaintiff provides claim charts to Defendant |
| 2024-02-13 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,768,764 - "Method and System for Embedding a Portable and Customizable Incentive Application on a Website"
- Issued: July 1, 2014.
The Invention Explained
- Problem Addressed: The patent identifies the inefficiency and high cost for website operators who had to independently develop unique incentive software for their specific sites, resulting in programs that were not portable or easily customizable (’764 Patent, col. 1:26-39).
- The Patented Solution: The invention provides a system where a portable incentive application, hosted on a "second site" (e.g., a central server), can be easily embedded into a "first site" (e.g., a customer's website) via a data network (’764 Patent, col. 3:14-34). This allows the first site to offer sophisticated, customizable incentives like points and leaderboards to its visitors without needing to build the underlying logic, as illustrated in the system architecture of Figure 1 (’764 Patent, Fig. 1).
- Technical Importance: This approach enabled the widespread adoption of "gamification" by providing a standardized, embeddable platform that uncoupled the complex incentive logic from the host website's own codebase (Compl. ¶11).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 10 (Compl. ¶19).
- Key elements of method claim 10 include:
- Providing an incentive application from a network site to be embedded in a first and second Web site.
- Receiving and storing activity information from a first viewer on the first Web site and a second viewer on the second Web site.
- Awarding incentive information to each viewer based on their respective activity.
- Providing the awarded incentive information back to the respective viewers on their respective Web sites to incentivize further activity.
- The complaint does not explicitly reserve the right to assert dependent claims for this patent.
U.S. Patent No. 9,779,421 - "Method and System for Embedding a Portable and Customizable Incentive Application on a Website"
- Issued: October 3, 2017.
The Invention Explained
- Problem Addressed: As with its parent patent, the ’421 Patent addresses the problem that incentive programs were typically custom-built for each website, making them difficult to deploy across multiple sites and expensive to create (’421 Patent, col. 1:35-44).
- The Patented Solution: The patent describes a system where a centralized network site receives user activity data from multiple, distinct customer websites via an Application Programming Interface (API) (’421 Patent, col. 11:47-52). The central site's engine processes this data to award incentives (e.g., points, achievements) and provides that information back to an application embedded in the customer websites, thereby engaging users (’421 Patent, col. 4:4-14, Abstract).
- Technical Importance: The invention refines the concept of a portable gamification engine, clarifying its operation across different computer systems and its use of an API for communication, a standard for modern web services integration.
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 12 (Compl. ¶35).
- Key elements of method claim 12 include:
- Receiving and storing activity information from a viewer at a first website via an API.
- Awarding first incentive information to the viewer based on that activity.
- Providing the awarded information to an incentive application embedded in the first website.
- Repeating the process for a second viewer on a second website, where the first and second websites are provided by different computer systems.
- The complaint does not explicitly reserve the right to assert dependent claims for this patent.
U.S. Patent No. 11,501,339 - "Method and System for Embedding a Portable and Customizable Incentive Application on a Website"
- Issued: November 15, 2022 (Compl. ¶50).
Technology Synopsis
- Continuing the technology of the parent patents, the ’339 Patent claims a computer-implemented system for providing a portable incentive application. It addresses the need for a universally portable and customizable incentive program by describing a system with a second site (server) that provides incentive logic and data to a first site (client website), enabling features like points, leaderboards, and avatars (’339 Patent, col. 1:39-53; col. 4:46-54).
Asserted Claims
- At least independent system claim 12 (Compl. ¶51).
Accused Features
- The complaint alleges that the Defendants' gamification platform, which incentivizes user engagement on customer websites, infringes the ’339 Patent (Compl. ¶¶ 13, 51).
III. The Accused Instrumentality
Product Identification
- The "gamification platform" offered by Jive Software, LLC and Ignite Enterprise Software Solutions, LLC (Compl. ¶13). The complaint specifically points to Jive's "Advanced Gamification Module" (Compl. ¶15, Ex. J).
Functionality and Market Context
- The accused platform is alleged to provide services that incentivize user engagement on customer websites, making it "strikingly similar" to and a direct competitor of Plaintiff's "Bunchball Nitro" platform (Compl. ¶¶ 13, 15). The complaint alleges that Jive's own support website contains an article detailing the installation of a "Nitro-Bunchball-Gamification-Plugin," suggesting a functional link between the accused product and the patented technology (Compl. ¶15). This webpage is described as providing instructions for installing a plugin for Jive's on-premise software (Compl. ¶15).
IV. Analysis of Infringement Allegations
’764 Patent Infringement Allegations
| Claim Element (from Independent Claim 10) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| providing an incentive application from a network site over a data network to a first Web site ... the incentive application to be embedded in the first Web site | The complaint alleges Defendants' platform is provided to its customers for embedding into their websites to offer gamification services. | ¶19-27 | col. 4:31-36 |
| receiving and storing, at the network site, activity information of a first viewer from a provider of the first Web site | Defendants' platform is alleged to receive and store information about user activities on its customers' websites. | ¶19-27 | col. 4:10-14 |
| awarding incentive information to the first viewer based on the activity information of the first viewer | Defendants' platform allegedly processes the stored user activity data to award incentives, such as points or status. | ¶19-27 | col. 4:45-54 |
| providing, using the incentive application at the first Web site, the first incentive information awarded to the first viewer ... to incentivize additional activity of the first viewer | Defendants' platform allegedly displays the awarded incentives to users on the customer websites to encourage further engagement. | ¶19-27 | col. 4:55-60 |
’421 Patent Infringement Allegations
| Claim Element (from Independent Claim 12) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| receiving and storing, at a network site, activity information of a first viewer from a first website ... the activity information of the first viewer received from the first website using an application programming interface (API) | Defendants' platform is alleged to operate a central network site that receives user activity information from its customers' websites. | ¶35-43 | col. 11:47-52 |
| awarding, by the network site, first incentive information to the first viewer based on the activity information of the first viewer | The central "network site" of Defendants' platform allegedly awards incentives based on the received user activity. | ¶35-43 | col. 12:2-4 |
| providing the first incentive information to a first incentive application embedded in the first website...the first incentive information to be displayed to the first viewer by the first website | The awarded incentives are allegedly provided back to the application embedded in the customer's website for display to the user. | ¶35-43 | col. 12:5-9 |
| ...the first and second websites being provided by different computer systems. | Defendants' platform is alleged to provide services to multiple customers, whose websites operate on separate and distinct computer systems. | ¶35-43 | col. 12:15-17 |
Identified Points of Contention
- Architectural Questions: The patents claim a system involving a "first site" (customer website) and a "second site" or "network site" (the incentive provider). A central question will be whether the architecture of the accused Jive platform maps onto this claimed structure.
- Technical Questions: The complaint alleges that after Jive stopped licensing Plaintiff's Nitro platform in 2022, it began offering a "strikingly similar" service (Compl. ¶15). A key evidentiary issue will be the degree of technical similarity between Jive's current platform and the licensed Nitro platform. The allegation that Jive's own support website references a "Nitro-Bunchball" plugin raises the question of whether Jive's current system is a mere continuation of the licensed technology or has been independently re-engineered (Compl. ¶15).
V. Key Claim Terms for Construction
The Term: "incentive application"
- Context and Importance: This term is the core of the claimed invention. Its construction will determine the scope of protection—whether it is limited to a specific type of software module or broadly covers any system that provides gamification features. Practitioners may focus on this term because the infringement analysis depends on whether Jive's "Advanced Gamification Module" is an "incentive application" as claimed.
- Intrinsic Evidence for a Broader Interpretation: The specification suggests the term is not limited to a particular implementation, stating it can be a "software application that is written in any programmable software language" and that its functions can be provided via an "application program interface (API)" (’339 Patent, col. 4:9-11; col. 4:55-61).
- Intrinsic Evidence for a Narrower Interpretation: The figures and embodiments consistently depict the "portable incentive application" (2010) as a discrete component on a "First Site" that is distinct from the "Incentive Application Logic/Engine" (2025) on the "Second Site" (’339 Patent, Fig. 20). This could support a narrower construction requiring a specific client-side component.
The Term: "embedding an incentive application"
- Context and Importance: This phrase defines the technical relationship between the customer's website and the incentive platform. The interpretation of "embedding" will be critical for determining whether the way Jive's platform integrates with its customers' sites meets the claim limitation.
- Intrinsic Evidence for a Broader Interpretation: The specification discloses that the application can be embedded in any website that supports "OBJECT\EMBED tags," which were common methods for including external content (’339 Patent, col. 7:35-39). This could be argued to cover a range of modern web integration techniques that achieve the same result.
- Intrinsic Evidence for a Narrower Interpretation: The description often links the embedding process to the generation of a visible "incentive screen 50" on the "first site 40" (’339 Patent, col. 4:16-19; Fig. 1). This could support a narrower reading that requires the integration to include a distinct, visible user interface element, as opposed to a purely server-side or background API integration.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement. It asserts that Defendants encourage their customers to use the platform in an infringing manner and that the platform has no substantial non-infringing uses because its intended, normal use results in infringement (Compl. ¶¶ 29, 45, 61).
- Willful Infringement: The complaint alleges willfulness based on both pre- and post-suit knowledge. The basis for pre-suit knowledge includes Defendant Jive's prior licensing of the patented technology from 2012-2022 and Plaintiff's notice letters with claim charts sent between May and October 2023 (Compl. ¶¶ 14, 16).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of architectural mapping: Does the accused Jive gamification platform operate using the "first site"/"second site" architecture described in the patents, where a central "network site" provides incentive logic to applications "embedded" in distinct customer websites, or is there a fundamental difference in its technical design?
- A key evidentiary question will be one of technical succession and intent: To what extent is Jive's current platform, offered after its license to Plaintiff's technology ended, based on the previously licensed "Nitro" platform? The evidence of Jive's own documentation referencing a "Nitro-Bunchball-Plugin" will be central to arguments regarding both literal infringement and the knowledge required for willful infringement.