DCT
6:20-cv-00765
Panther Innovations LLC v. Birch Grove Software Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Panther Innovations, LLC (Texas)
- Defendant: Birch Grove Software, Inc. d/b/a ActivTrak (Delaware)
- Plaintiff’s Counsel: Connor Kudlac Lee PLLC; Hall Booth Smith, P.C.
- Case Identification: 6:20-cv-00765, W.D. Tex., 08/21/2020
- Venue Allegations: Venue is alleged to be proper based on Defendant maintaining a regular and established place of business within the district and having committed acts of infringement in the district.
- Core Dispute: Plaintiff alleges that Defendant’s ActivTrak employee monitoring and workforce analytics software infringes a patent related to supervising, monitoring, and controlling activities performed on a client computer device.
- Technical Context: The technology at issue falls within the domain of user activity monitoring software, a market that serves corporate compliance, employee productivity, and parental control use cases.
- Key Procedural History: The complaint notes that the asserted patent’s claims contain typographical errors that were corrected during prosecution, with the applicant filing a reply to distinguish the terms “intercept” and “interpret.” This prosecution history may be relevant to the construction of claim terms related to blocking user activity.
Case Timeline
| Date | Event |
|---|---|
| 2003-10-15 | ’797 Patent Priority Date |
| 2009-03-10 | ’797 Patent Issue Date |
| 2018-01-01 | Accused Product wins first mentioned award |
| 2020-08-21 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,502,797 - “Supervising Monitoring and Controlling Activities Performed on a Client Device”
- Issued: March 10, 2009
The Invention Explained
- Problem Addressed: The patent addresses the challenge faced by parents, employers, and law enforcement in effectively monitoring computer usage, particularly when users can bypass simple filters or use encryption to hide their activities (’797 Patent, col. 1:21-62).
- The Patented Solution: The invention describes a client-server system where a monitoring application on a "client device" records user actions, captures real-time screenshots (even of encrypted content), and forwards this data to a "supervisor server" (’797 Patent, Abstract). A human supervisor can then remotely review the activity and configure rules to automatically intercept and block prohibited activities based on content keywords, application type, time of day, or other parameters (’797 Patent, col. 2:46-58).
- Technical Importance: The patent asserts that its method of capturing screenshots of encrypted communications is particularly useful for counter-terrorism and child protection, allowing supervisors to see content that would otherwise be obscured (’797 Patent, col. 2:60-67).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 7 (Compl. ¶35).
- The essential elements of independent claim 1 include:
- monitoring user-activity performed on the client device;
- determining whether content includes specific keywords (e.g., sex, drugs, violence) by "selecting notification activity from a menu";
- instructing the client device to intercept and block the user-activity if the content includes the specified keywords;
- determining if attempted user-activity matches a rule defining a class, time, or duration of activity;
- instructing the client device to intercept and block the user-activity if it matches the rule;
- capturing screenshots of real-time user activity, including from encrypted applications; and
- transmitting the captured screenshots.
- The complaint reserves the right to assert additional claims and modify its infringement theories upon discovery (Compl. ¶37, ¶56).
III. The Accused Instrumentality
Product Identification
The accused instrumentality is Defendant's "user activity monitoring and workforce analytics" software and service, marketed under the trademark "ActivTrak" (the "Accused Product") (Compl. ¶23).
Functionality and Market Context
The Accused Product is described as a "cloud-native user activity monitoring and analytics solution" that deploys an "ActivTrak Agent" on a client device (Compl. ¶25, ¶28). This agent allegedly "collects data and executes responses to user activity while running unnoticed in the background" (Compl. ¶28). The complaint highlights features including "Real-Time User Activity," "Alarms," "Website Blocking," and "Screenshots" (Compl. ¶27). The product is marketed to businesses for improving workforce productivity, managing remote teams, and ensuring data compliance (Compl. ¶26).
IV. Analysis of Infringement Allegations
Claim Chart Summary
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| monitoring user-activity performed on the client device, including viewed, sent, created, or received on the client device | The Accused Product's "ActivTrak Agent" monitors website viewing activity on the client machine to track user activity. | ¶39 | col. 14:13-15 |
| determining whether the content includes at least one of sex drugs, violence, infidelity, hate language, and a predefined word by selecting notification activity from a menu | The Accused Product allows the creation of custom alarms based on user-defined criteria, such as accessing a blocked domain, based on "pre-selected criteria." The complaint references a document illustrating the creation of custom alarms. (Compl. ¶41) | ¶40, ¶41 | col. 14:16-19 |
| instructing the client device to intercept and block the user-activity from occurring on the client device, automatically and in real-time, if the content is determined to include at least one of [a keyword] | The Accused Product intercepts and blocks access to certain websites and activities if the content is determined to include a predefined word. | ¶42 | col. 14:20-24 |
| determining whether the user-activity attempted on the client device matches a particular rule, wherein the rule defines at least one of the following: (i) a class of user activity... (ii) a time... (iii) a duration... | The Accused Product raises alarms based on rules that define user activity, including duration and class of activity (e.g., categorizing a website or application). | ¶44 | col. 14:25-31 |
| instructing the client device to [intercept] and block initiation of the user activity... if the user activity attempted to be performed on the client device matches the rule | The Accused Product sets "alarms that terminate (i.e., block) activity that matches a rule." | ¶43, ¶45 | col. 14:32-36 |
| capturing screen shots of real-time user activity... including those screen shots for which user-supplied content is transmitted or received in a encrypted or unencrypted format | The Accused Product captures screenshots of both encrypted (https) and unencrypted (http) webpages. | ¶46 | col. 14:37-41 |
| transmitting the captured screen shots | The Accused Product transmits captured screenshots, for instance, through custom alarms that email notifications and screenshots, or by sending them to a Google Cloud storage server. | ¶47 | col. 14:42 |
Identified Points of Contention
- Scope Questions: Claim 1 requires determining prohibited content by "selecting notification activity from a menu." The patent specification illustrates this with dropdown menus (’797 Patent, Fig. 4). The complaint alleges infringement based on the Accused Product’s interface for creating custom alarms with user-defined criteria (Compl. ¶41). This raises the question of whether the accused interface, which may offer more free-form input than simple dropdowns, falls within the scope of the term "menu" as used in the patent.
- Technical Questions: Claim 1 recites two distinct steps for blocking user activity: one triggered by specific content (e.g., keywords) and a second triggered by a rule (e.g., class, time, duration). The complaint appears to map both limitations to the Accused Product's general "Alarms" and "Website Blocking" features (Compl. ¶42-45). This raises the question of whether the Accused Product performs two functionally separate blocking operations as claimed, or if a single function is being mapped to two distinct claim elements.
V. Key Claim Terms for Construction
The Term: "menu"
- Context and Importance: This term appears in the limitation "selecting notification activity from a menu." Its construction is critical because the patent figures depict conventional dropdown menus (’797 Patent, Fig. 4), while the accused product allegedly uses a more flexible interface for creating custom alarms (Compl. ¶41). The outcome of the infringement analysis for this element may depend on whether the accused interface is considered a "menu."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that "menu" should be given its plain meaning as any interface presenting a set of selectable options, which could encompass the accused rule-creation system. The specification does not explicitly define or limit the term.
- Evidence for a Narrower Interpretation: A party could argue that Figure 4, which illustrates the "Setup Alerts" interface with multiple dropdown boxes for selecting content levels and alert frequency, defines the scope of "menu" for the purposes of the invention (’797 Patent, Fig. 4, items 405-412).
The Term: "intercept and block"
- Context and Importance: This phrase appears twice in Claim 1, first tied to content and second to rules. The complaint alleges that features like "Website Blocking" meet this limitation (Compl. ¶42). Practitioners may focus on this term because the applicant, during prosecution, corrected the language from "interpret and block," suggesting "intercept" was specifically chosen for its technical meaning (Compl. ¶36, fn. 1). The dispute may turn on whether "intercept" requires a specific pre-emptive action (e.g., at the network level) versus a more general reactive "block" (e.g., terminating an application).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent summary states the system can "intercept and block the initiation of certain activities to prevent them from taking place," which could be read broadly to cover any form of prevention (’797 Patent, col. 2:51-53).
- Evidence for a Narrower Interpretation: The explicit correction during prosecution from "interpret" to "intercept" could be used to argue that "intercept" carries a specific technical weight distinct from merely "blocking" and implies a pre-emptive, rather than reactive, mechanism. The flow chart in Figure 9 also shows "Intercept User Activity" as a distinct step after a rule is matched (’797 Patent, Fig. 9).
VI. Other Allegations
Indirect Infringement
The complaint does not plead a separate count for indirect infringement and does not allege the specific factual elements required for inducement (e.g., intent to cause infringement) or contributory infringement (e.g., providing a non-staple component). The allegations are focused on direct infringement by Defendant's making, using, and selling of the Accused Product (Compl. ¶35).
Willful Infringement
The complaint alleges that Defendant had knowledge of the ’797 Patent "at least as of the service of the present Complaint" (Compl. ¶50). This allegation supports a claim for post-suit willfulness but does not plead any facts to suggest pre-suit knowledge of the patent or its infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "menu," which is illustrated in the patent with dropdown lists for pre-set categories, be construed to cover the Accused Product's interface for creating custom alarms with user-defined rules and criteria?
- A key evidentiary question will be one of functional distinction: does the Accused Product's alarm and blocking system perform two separate and distinct blocking operations as required by Claim 1—one based on a simple content match and a second based on a multifaceted rule match—or is there a fundamental mismatch in technical operation that may challenge the infringement allegation?