DCT
6:22-cv-01015
Backertop Licensing LLC v. JAMF Software LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Backertop Licensing LLC (Texas)
- Defendant: JAMF Software LLC (Minnesota)
- Plaintiff’s Counsel: Fresh IP, PLC
- Case Identification: 6:22-cv-01015, W.D. Tex., 09/29/2022
- Venue Allegations: Plaintiff alleges venue is proper because Defendant maintains a regular and established place of business in the district (Austin, TX) and has committed acts of alleged infringement within the district.
- Core Dispute: Plaintiff alleges that Defendant’s mobile device management software infringes patents related to selectively controlling mobile device applications and network access based on the device's physical location.
- Technical Context: The technology relates to location-based services and mobile device management (MDM), a field focused on allowing administrators (e.g., schools, parents) to enforce policies on mobile devices.
- Key Procedural History: The complaint does not allege any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history related to the patents-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2015-02-13 | Priority Date for ’385 and ’617 Patents |
| 2016-05-03 | U.S. Patent No. 9,332,385 Issued |
| 2017-05-16 | U.S. Patent No. 9,654,617 Issued |
| 2022-09-29 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,332,385 - "Selectively Providing Content to Users Located Within a Virtual Perimeter", Issued May 3, 2016
The Invention Explained
- Problem Addressed: The patent describes a technical environment where users increasingly access content through mobile applications rather than web browsers, as apps can offer a superior and more integrated user experience by leveraging device functionality (’385 Patent, col. 1:10-28). The implicit problem is how to control this mobile application environment within a specific physical space, such as a business or school.
- The Patented Solution: The invention proposes a system where the physical location of a mobile device is identified using wireless beacons. Responsive to the device being at a specific location, the system communicates a message requiring at least one application on the device to be disabled. Only after receiving a response from the mobile device confirming the application is disabled does the system authorize the device to "establish presence on a network" (e.g., grant Wi-Fi access) maintained for that location (’385 Patent, Abstract; col. 2:30-43). The flowchart in Figure 4 illustrates this conditional, quid-pro-quo process (’385 Patent, FIG. 4).
- Technical Importance: This approach provides a mechanism for a venue owner to enforce policies on devices seeking to use its local network, for example, by disabling distracting or non-secure applications as a precondition for network access (’385 Patent, col. 10:8-21).
Key Claims at a Glance
- The complaint asserts independent claims 1 (method) and 8 (system) (Compl. ¶20).
- The essential elements of independent claim 1 include:
- Identifying a mobile device’s present physical location based on wireless communication with a beacon.
- Communicating a "first message" to the device specifying at least one application to be disabled.
- Receiving a "response" from the device indicating the application is disabled.
- In response to receiving the confirmation, "authorizing" the device to "establish presence on a network maintained for the physical location."
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 9,654,617 - "Selectively Providing Content to Users Located Within a Virtual Perimeter", Issued May 16, 2017
The Invention Explained
- Problem Addressed: As a continuation of the application leading to the ’385 Patent, the ’617 Patent addresses the same technical problem of controlling the mobile application environment within a defined physical area (’617 Patent, col. 1:11-28).
- The Patented Solution: The ’617 Patent claims a "computer program product" comprising a non-transitory storage medium with executable code to perform a method substantially similar to that claimed in the ’385 Patent. The code, when executed, directs a processor to identify a device's location, send a message to disable an application, receive confirmation, and then authorize network access as a result (’617 Patent, Abstract; col. 2:31-46).
- Technical Importance: The invention is framed as a software product, directly targeting the program code that implements the location-based policy enforcement method.
Key Claims at a Glance
- The complaint asserts independent claim 1 (computer program product) (Compl. ¶35).
- The essential elements of the method performed by the program code in independent claim 1 include:
- Identifying a mobile device's location via a beacon.
- Communicating a message to the device to disable an application.
- Receiving a response indicating the application is disabled.
- Authorizing the device to establish presence on the local network.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are Defendant’s "jamf | SCHOOL and jamf | Parent software systems and apps" (collectively, "JAMF Systems") (Compl. ¶11).
Functionality and Market Context
- The complaint alleges JAMF Systems are mobile device management platforms that allow administrators (such as parents or schools) to set location-based "Device Rules" for a child's mobile device (Compl. ¶13, ¶15). These rules can restrict access to specified applications or categories of applications (e.g., "Games") when the device is detected at a pre-defined location (e.g., "Home," "School") (Compl. ¶16).
- The system allegedly uses wireless communication with beacons (e.g., iBeacon) to determine the device's location (Compl. ¶13). The complaint includes a screenshot from a Jamf Parent instructional guide for setting a location-based rule, which involves selecting "Location" as the rule type. (Compl. ¶15, p. 4). Another included visual shows a user selecting the "Games" category of applications to restrict (Compl. ¶16, p. 5). The complaint also references a marketing video showing location-based rules for "HOME" and "LIBRARY" (Compl. ¶17, p. 6).
IV. Analysis of Infringement Allegations
’385 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| based on wireless communication between a mobile device and at least one beacon, identifying a present physical location of a mobile device | The JAMF Systems operate based on wireless communication with a beacon (e.g., iBeacon) to identify the physical location of a child's mobile device. | ¶21 | col. 1:30-33 |
| responsive to determining that the mobile device is located at a particular physical location, communicating to the mobile device at least a first message, the first message specifying at least one application to be disabled while the mobile device is present at the physical location | The system communicates a policy restriction message to the mobile device that specifies an application (e.g., games) to be disabled or restricted at that location. A visual from a tutorial video shows a rule being set to block games. | ¶23-24, p. 6 | col. 1:33-39 |
| responsive to receiving from the mobile device a response to the first message indicating that the at least one application is disabled | The complaint alleges the infringing instrumentalities "receive a response to the first message from the mobile device, indicating that the at least one application is disabled." | ¶25 | col. 1:39-42 |
| authorizing, using a processor, the mobile device to establish presence on a network maintained for the physical location | The complaint alleges the system authorizes the mobile device to establish presence on a network, such as by "authorizing Wi-Fi," responsive to the device's location and the application of policies. | ¶26, ¶17 | col. 1:42-43 |
’617 Patent Infringement Allegations
| Operations in Claim 1 (performed by program code) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| identifying, by the processor, a present physical location of a mobile device | JAMF Systems' program code, when executed, identifies the device's location via wireless communication with a beacon. | ¶37 | col. 2:33-36 |
| communicating, by the processor, to the mobile device at least a first message, the first message specifying at least one application to be disabled | The program code directs the communication of a message to the device to enforce a location-based rule, such as disabling a games application. | ¶39-40 | col. 2:36-41 |
| responsive to receiving from the mobile device a response to the first message indicating that the at least one application is disabled | The program code allegedly processes a response from the mobile device indicating that the specified application has been disabled. | ¶41 | col. 2:41-44 |
| authorizing, by the processor, the mobile device to establish presence on a network maintained for the physical location | The program code, upon receiving the response, allegedly directs a processor to authorize the device to establish presence on a local network. | ¶42 | col. 2:44-46 |
Identified Points of Contention
- Functional Questions: A central question is whether the accused JAMF Systems perform the claimed function of "authorizing... presence on a network" in exchange for disabling an application. The complaint alleges this (Compl. ¶17, ¶26), but the supporting evidence primarily describes applying application restrictions based on location (Compl. ¶15-16). The dispute may turn on whether applying a policy to an already-connected device is equivalent to the claimed step of granting network access that was previously withheld.
- Evidentiary Questions: The complaint's allegations regarding the "response" message indicating an application is disabled are stated in a conclusory manner (Compl. ¶25, ¶41). A key evidentiary question for the court will be whether the accused system’s architecture actually includes this specific server-client communication step, or if policies are simply pushed to the device and enforced locally without a confirmation "response" message back to a server.
V. Key Claim Terms for Construction
’385 and ’617 Patents
- The Term: "authorizing... the mobile device to establish presence on a network maintained for the physical location"
- Context and Importance: The interpretation of this term is critical to the infringement analysis. Practitioners may focus on this term because the core of the infringement theory depends on whether the accused product's function of applying app-restriction rules satisfies this limitation. The dispute will likely center on whether "authorizing... to establish presence" requires a conditional grant of initial network access (e.g., connecting to Wi-Fi) or if it can be read more broadly to include modifying the permissions of an already-connected device.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patents' "Summary" sections broadly frame the invention as relating to "providing network services" generally, which could support an argument that modifying policies on a network constitutes a form of authorization (’385 Patent, col. 1:8).
- Evidence for a Narrower Interpretation: The flowchart in Figure 4, common to both patents, depicts "Authorize the mobile device to establish presence on a network" as the final step (410), which occurs only after and if a response is received confirming an application is disabled (408). This sequence suggests a discrete, conditional grant of access, rather than a modification of an existing connection (’385 Patent, FIG. 4).
VI. Other Allegations
- Indirect Infringement: The complaint does not contain separate counts for indirect infringement. However, it alleges that Defendant "produces, sells, and offers for sale" the accused systems and that they infringe when "used and/or operated in their intended manner or as designed" (Compl. ¶11, ¶32, ¶48). The inclusion of screenshots from instructional materials (Compl. pp. 3-6) may be intended to support a future argument for induced infringement by showing Defendant instructs its customers on how to use the products in an allegedly infringing way.
- Willful Infringement: The complaint alleges willfulness based on notice provided by the filing of the lawsuit itself, requesting enhanced damages for any post-filing infringement (Compl., Prayer for Relief ¶d). There are no allegations of pre-suit knowledge or notice.
VII. Analyst’s Conclusion: Key Questions for the Case
This case appears to present two central questions for the court that bridge claim construction and infringement analysis:
A core issue will be one of functional scope: Does the accused JAMF System—which applies application-level restrictions to a device based on its location—perform the specific method claimed by the patents, which appears to be a quid-pro-quo exchange of disabling an app in return for gaining access to a local network? The resolution will likely depend on the construction of the claim term "authorizing... to establish presence on a network."
A key evidentiary question will be one of architectural match: Does the accused system's operation involve the specific, sequential communication steps required by the claims—notably, a "response" from the mobile device confirming an application is disabled, which then triggers the network authorization? The complaint asserts these steps occur, but the case will depend on whether discovery shows a corresponding technical reality in the JAMF Systems' architecture.