DCT
6:22-cv-01229
Mellaconic IP LLC v. Fourth Enterprises LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Mellaconic IP LLC (Texas)
- Defendant: Fourth Enterprises, LLC (Delaware)
- Plaintiff’s Counsel: SAND, SEBOLT & WERNOW CO., LPA
- Case Identification: 6:22-cv-01229, W.D. Tex., 11/29/2022
- Venue Allegations: Plaintiff alleges venue is proper in the Western District of Texas on the basis that Defendant, a Delaware corporation, maintains a place of business in the district and has therefore been incorporated in the district for venue purposes under the Supreme Court's TC Heartland decision.
- Core Dispute: Plaintiff alleges that Defendant’s "HotSchedules App" infringes a patent related to using a mobile device's geographical location as a form of authentication to autonomously enable a requested action on a server.
- Technical Context: The technology at issue involves context-aware computing, specifically using location data from a user's device to trigger or authorize actions on a remote system, a method commonly used for workforce management and secure access control.
- Key Procedural History: The asserted patent is subject to a terminal disclaimer. The complaint does not mention any prior litigation, inter partes review proceedings, or licensing history related to the patent-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2009-03-31 | '435 Patent Priority Date |
| 2018-05-29 | '435 Patent Issue Date |
| 2022-11-29 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,986,435 - AUTONOMOUS, NON-INTERACTIVE, CONTEXT-BASED SERVICES FOR CELLULAR PHONE
Issued May 29, 2018
The Invention Explained
- Problem Addressed: The patent background section notes that services provided by cellular phones, despite their increasing capabilities, generally require explicit interaction with the user ('435 Patent, col. 1:32-34).
- The Patented Solution: The invention describes a system where a device can provide "autonomous, non-interactive context-based services" by using data about the user, the device's operating conditions, or its external environment to make decisions ('435 Patent, col. 1:19-23; col. 3:20-29). A central concept involves one device receiving a request for an action and using the geographical location of a second, user-associated device as a form of authentication to autonomously perform the requested action ('435 Patent, Claim 1).
- Technical Importance: This approach allows for the automation of processes that depend on a user's physical presence, potentially increasing convenience and security by using location as a proxy for authentication without requiring manual user input for that specific step ('435 Patent, col. 7:31-39).
Key Claims at a Glance
- The complaint asserts at least independent Claim 1 (Compl. ¶19).
- The essential elements of independent Claim 1 are:
- A method to perform an action, comprising:
- receiving, by a first device at a first geographical location, one or more messages from a second device;
- the message(s) indicating geographical location information of the second device (at a second geographical location);
- the message(s) including a request for a first action to be performed by the first device;
- wherein the geographical location information of the second device acts as authentication for the first action; and
- autonomously performing, by the first device, the authenticated first action based on the message(s).
- The complaint does not explicitly reserve the right to assert dependent claims, but states that Defendant infringes "at least one claim of the '435 Patent" (Compl. ¶19).
III. The Accused Instrumentality
Product Identification
- The "Fourth's HotSchedules App" and its related systems (collectively, the "Accused Product") (Compl. ¶20).
Functionality and Market Context
- The Accused Product is a software application that allows users to perform actions such as "clocking in, clocking out" for work (Compl. ¶20). The system involves a user's mobile device running the HotSchedules app communicating with a "Fourth server" (Compl. ¶21-22). The mobile app sends location information to the server, which uses that information to determine if the user is within a designated "area/geofence" (Compl. ¶25). The ability to clock in or out is permitted only when the user is within this geofence, effectively using the user's location to authenticate the time-clocking action (Compl. ¶24-25).
- The complaint alleges Defendant is in the business of providing "communication services" (Compl. ¶4). No other details regarding the product's market position are provided.
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
The complaint alleges infringement of at least Claim 1 of the '435 Patent but does not include its referenced claim chart exhibit. The narrative allegations are summarized below.
'435 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method to perform an action, comprising: receiving, by a first device located at a first geographical location, one or more messages that: | The "first device" is alleged to be a "Fourth server" located at a "Fourth data centre," which receives messages from a mobile device running the HotSchedules app. | ¶21 | col. 11:40-42 |
| indicate geographical location information of a second device located at a second geographical location, | The messages are alleged to be "geolocation information messages" indicating the location of the mobile device with the HotSchedules app. | ¶21-22 | col. 11:43-44 |
| and include a request for a first action to be performed by the first device, | The "first action" is "enabling user for clocking in, clocking out," which is requested by the user. | ¶23 | col. 11:45-47 |
| wherein the one or more messages are received from the second device, and wherein the geographical location information of the second device acts as authentication to allow the first action to be performed by the first device; | It is alleged that the mobile device's location "acts as authentication" because it "permits the first device (e.g., Fourth server) to perform the first action (e.g., enabling user for clocking in, clocking out)." | ¶23-24 | col. 11:48-51 |
| and autonomously performing, based at least on the received one or more messages, by the first device, the authenticated first action. | It is alleged the Fourth server autonomously performs the action of "enabling user for clocking in, clocking out" when a user with the app is within a geofence set by an administrator. | ¶25 | col. 11:52-55 |
- Identified Points of Contention:
- Scope Questions: A potential issue is whether the "Fourth server" qualifies as a "first device" in the context of a patent that repeatedly uses "cellular phone" as its primary exemplar ('435 Patent, Title, col. 1:19-23). The claim's use of the generic term "device" may support the plaintiff's position.
- Technical Questions: The complaint alleges the "first action" is "enabling user for clocking in" (Compl. ¶23, ¶25). A court may need to determine if the system "autonomously perform[s]" this action. If the system merely enables a button that the user must then manually press, it raises the question of whether the action itself was performed autonomously, or only the prerequisite authentication step. The sequence of operations—specifically, whether a "request" is received before location is used for authentication—may also be a point of dispute.
V. Key Claim Terms for Construction
The Term: "autonomously performing"
- Context and Importance: This term is central to the infringement analysis. Its construction will determine whether the system must complete the entire "first action" (e.g., clocking an employee in) without any final user input, or whether autonomously enabling the user to complete the action is sufficient.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent defines "autonomous services" as those "provided by cellular phone 100 for user 104, without interaction with or intervention by user 104" ('435 Patent, col. 2:53-55). This could support an interpretation where any system-driven step that does not require direct user command is "autonomous."
- Evidence for a Narrower Interpretation: The specification provides examples of autonomous services such as automatically routing a call to voicemail ('435 Patent, col. 5:45-49), which suggests the system completes the entire task. A defendant may argue that if the user must perform a final manual step (e.g., pressing a "clock in" button), the action itself is not "autonomously perform[ed]."
The Term: "acts as authentication"
- Context and Importance: The validity of the infringement theory depends on whether providing location information that satisfies a geofence rule constitutes "authentication" as claimed. Practitioners may focus on this term because it equates a contextual state (location) with a security function (authentication).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent specification directly supports this concept, stating that for certain actions, "providing this location information as the authentication information may be sufficiently authenticating" ('435 Patent, col. 8:62-65). Claim 1 itself structurally defines the location information as performing this function.
- Evidence for a Narrower Interpretation: The patent also discusses authentication in the context of "credit card or automatic teller machine transactions" ('435 Patent, col. 7:32-35). A party could argue that this context implies a higher standard for "authentication" than simply confirming physical presence, which might be viewed as a condition precedent rather than authentication itself.
VI. Other Allegations
Indirect Infringement
- The complaint alleges that Defendant induced infringement by "encouraging infringement" and that its "encouraging acts actually resulted in direct patent infringement" (Compl. ¶31). The complaint does not, however, allege specific facts supporting this claim, such as references to user manuals or marketing materials that instruct users on the infringing use.
Willful Infringement
- The complaint alleges that Defendant had knowledge of the '435 Patent "at least as of the service of the present Complaint" (Compl. ¶29). This allegation supports a claim for post-filing willfulness only. The prayer for relief seeks enhanced damages pursuant to 35 U.S.C. §285 (Compl., p. 9, ¶f).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction: can the phrase "autonomously performing... the authenticated first action" be construed to cover a system that autonomously authenticates a user's location to enable a subsequent, manually-triggered action (e.g., clocking in), or does the claim require the entire action to be completed without user intervention?
- A key evidentiary question will be one of technical operation: does the Accused Product's architecture align with the sequence required by Claim 1? Specifically, the court will likely examine whether the system receives "a request for a first action" from the user's device in the same message that provides the location data for authentication, or whether the system's logic constitutes a different, non-infringing sequence of operations.