DCT

2:19-cv-00211

Modern Font Applications v. Smith

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:19-cv-00211, D. Utah, 04/01/2019
  • Venue Allegations: Plaintiff alleges venue is proper in the District of Utah because Defendants operate one or more regular and established places of business in the district, including a specific Chick-fil-A franchise location in Centerville, Utah.
  • Core Dispute: Plaintiff alleges that Defendant’s mobile applications for iOS and Android devices infringe a patent related to the delivery and rendering of non-standard fonts on a client device.
  • Technical Context: The technology addresses the challenge of ensuring that custom fonts used in an application or document are displayed correctly on a user's device, even if that device's operating system does not have the fonts pre-installed.
  • Key Procedural History: The patent-in-suit is part of a family with a priority date tracing back to 2001. Plaintiff asserts it is the exclusive licensee of the patent and that it has provided notice of the patent to the public via marking on licensed articles since at least June 2018.

Case Timeline

Date Event
2001-07-16 Earliest Priority Date for U.S. Patent No. 9,886,421
2018-02-06 U.S. Patent No. 9,886,421 Issues
2018-06-01 Alleged Notice of Infringement to Defendant (approximate date)
2018-12-14 Release of Accused Chick-fil-A iOS App (v. 6.0.10)
2019-03-21 Release of Accused Chick-fil-A Android App (v. 6.1.0)
2019-04-01 Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 9,886,421 - Allowing Operating System Access to Non-Standard Fonts in a Network Document

  • Patent Identification: U.S. Patent No. 9,886,421, issued February 6, 2018.

The Invention Explained

  • Problem Addressed: The patent's background section describes a problem from the early era of the web: when an author creates an electronic document (like a webpage) using custom, "non-standard" fonts, a reader's computer will display it incorrectly if it lacks those fonts, often substituting a default font and altering the intended appearance (’421 Patent, col. 1:56-65). Prior art solutions, such as representing text as static images, were inefficient, increasing download times and preventing resizing or styling (e.g., italicizing) (’421 Patent, col. 2:5-20). Other solutions using proprietary font "players" were described as "sluggish" and prevented the use of native operating system functions like copying and pasting text (’421 Patent, col. 2:49-53).
  • The Patented Solution: The invention proposes a method and system where, along with a network document, a "font package" containing the necessary non-standard font data is delivered to the user's computer (’421 Patent, col. 3:10-21). An "exposure module" then either permanently installs or, more centrally, "temporarily exposes" this font information to the client device's operating system. This allows the operating system itself to render the text correctly, preserving native functionality like copy, paste, and printing as if the fonts were standard (’421 Patent, Abstract; col. 3:21-39).
  • Technical Importance: This approach aimed to allow for greater creative and branding consistency in web documents and applications across diverse user computers without compromising core OS functionality or performance (’421 Patent, col. 15:42-55).

Key Claims at a Glance

  • The complaint asserts independent claims 1 and 11 (Compl. ¶41).
  • Independent Claim 1 (System Claim) essential elements include:
    • A non-transitory computer-readable medium accessible by a hand-held device.
    • An "electronic file package" with display characters and executable instructions.
    • A "font package" with one or more external font files, where the font package is "separate from" the executable instructions.
    • An "exposure module" for installing the external font files into a "temporary fonts directory" on the device.
    • The font files are received from a computer after the hand-held device requests them.
    • A "program module of the operating system" displays the characters using the external fonts.
    • A "system font table" of the device is "updated to reflect an availability" of the external fonts.
  • Independent Claim 11 (Device Claim) essential elements include:
    • A hand-held device with a processor and memory.
    • The device is configured to download an "electronic file" that references a "font package."
    • It installs an "exposure module" that automatically installs the font package into a "temporary fonts directory."
    • This causes a "program module" of the OS to render characters using the font.
    • It causes a "system font table" to be updated to reflect the font's availability.
  • The complaint reserves the right to assert claim 6 and other dependent claims (Compl. ¶41).

III. The Accused Instrumentality

Product Identification

  • The "Chick-fil-A application for iOS devices" (version 6.0.10 and later) and the "Chick-fil-A application for Android devices" (version 6.1.0 and later) (Compl. ¶41).

Functionality and Market Context

  • The complaint alleges that the accused mobile applications are distributed as files (.ipa for iOS, .apk for Android) that function as the claimed "electronic file package" (Compl. ¶42-43). These application files are alleged to contain both executable instructions and separate, external font files (e.g., .otf files or files in a /res/font/ directory) that constitute the claimed "font package" (Compl. ¶44-45).
  • The complaint further alleges that the application file itself serves as the "exposure module," which, upon installation, places the font files into a "temporary fonts directory" on the user's device. This directory is allegedly deleted when the application is updated or removed (Compl. ¶46). The installation of these fonts is alleged to cause the device's operating system to update a "system font table," thereby making the custom fonts available for the application to use (Compl. ¶49).
  • No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

’421 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a non-transitory computer-readable medium... including: an electronic file package including a plurality of display characters and computer executable instructions for identifying the plurality of display characters for display and for identifying one or more external fonts used to render at least one of the plurality of display characters; Defendant provides the Accused Products on a storage device (e.g., an app store server). The iOS and Android application files are alleged to be the "electronic file package" containing both display characters and executable instructions for rendering those characters with external fonts (Compl. ¶42-43). ¶42, ¶43 col. 16:3-9
a font package comprising one or more external font files that include formatting information... the font package separate from the computer executable instructions for identifying the plurality of display characters for display; and The application files for both iOS and Android allegedly contain font packages (e.g., as .otf files or in a /res/font/ directory) that are separate files from the primary executable files (Compl. ¶44-45). ¶44, ¶45 col. 16:10-15
an exposure module for installation of the one or more external font files in a temporary fonts directory on the hand-held device... The application installer files (.apk or .ipa) are alleged to function as the "exposure module." They allegedly place the external font files in a temporary directory that is deleted when the application is updated or removed (Compl. ¶46). ¶46 col. 16:16-19
...wherein in response to the one or more external font files being installed, a system font table of the hand-held device is updated to reflect an availability of the external font files. After the application is installed, a "system font table" in the mobile operating system is allegedly updated to reflect that the external font files are available for use by the application. For Android, this is alleged to happen when the OS loads fonts from the /res/font/ directory (Compl. ¶49). ¶49 col. 16:30-33

Identified Points of Contention

  • Scope Questions: A central question may be whether a modern, self-contained mobile application package (.ipa or .apk) falls within the scope of terms like "network document" and "electronic file package," which the patent describes primarily in the context of early-2000s web pages and HTML documents (’421 Patent, col. 3:1-4). Similarly, the complaint alleges the entire application package is the "exposure module," whereas the patent specification suggests this could be a separate component like an ActiveX control requested after the initial document (’421 Patent, Fig. 5, steps 412-414).
  • Technical Questions: A key factual question will likely be whether the accused products' operation matches the claim limitation requiring an update to "a system font table of the hand-held device." Modern mobile operating systems heavily sandbox applications. The dispute may focus on whether an application making a font available within its own sandboxed environment constitutes an update to a "system" font table, as that term might have been understood in a less-sandboxed OS environment from the patent’s priority era. The complaint alleges this update occurs, but does not specify the precise OS-level mechanism (Compl. ¶49).

V. Key Claim Terms for Construction

The Term: "system font table"

  • Context and Importance: This term is recited in both asserted independent claims (1 and 11) and is critical to the infringement analysis. The allegation that the accused apps "updated" this table is a cornerstone of the infringement theory (Compl. ¶49). Practitioners may focus on this term because the font-handling mechanisms in modern, sandboxed mobile operating systems may differ significantly from the global system-level tables (e.g., a Windows Registry) common in the desktop operating systems of the patent's priority period.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: Plaintiff may argue that the term should be read functionally to cover any OS-level data structure that tracks font availability for an application. The specification's discussion of updating the table "to reflect the new temporary font files" (’421 Patent, col. 13:60-61) and its subsequent use by the OS to render text could support an interpretation that covers modern, app-scoped font registration mechanisms.
    • Evidence for a Narrower Interpretation: Defendant may argue the term refers to a specific, centralized, OS-wide component. Figure 6 of the patent depicts a "System Font Table 506" and a "System Registry 509" as distinct components of the "Operating System 505," separate from any single application (’421 Patent, Fig. 6). This could support a narrower construction requiring a modification to a global, rather than an application-specific, data structure.

The Term: "exposure module"

  • Context and Importance: This term is also central to the asserted claims. The complaint alleges the entire application package (.apk or .ipa) constitutes the "exposure module" (Compl. ¶46). How this term is construed will determine whether a self-contained application can meet the claim limitation, or if a separate, secondary component is required.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent's abstract describes an "exposure module" that "is also downloaded," which does not explicitly preclude it from being part of a single, larger download package. The claims require a module for installation, which Plaintiff will argue is a functional description met by the installer logic within an .apk or .ipa file.
    • Evidence for a Narrower Interpretation: The flowchart in Figure 5 depicts a process where a user first requests a "network document" (step 401) and then, as a separate action, the system processes code that "requests exposure module 501" (step 412). This sequence suggests two distinct entities—the document and the module—and could support an argument that the "exposure module" must be a separate component from the primary application or document file.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges active inducement, stating that Defendant's advertisements, website, and app store listings "encourage customers to infringe" by downloading and using the accused applications (Compl. ¶53). It also pleads contributory infringement, alleging the accused products are "especially made or... adapted for use" in an infringing manner and are not staple articles of commerce with substantial non-infringing uses (Compl. ¶54).
  • Willful Infringement: The complaint alleges that Defendants have had "notice of their infringement of the ‘421 patent since at least June 2018" (Compl. ¶52). This allegation of pre-suit knowledge forms the basis for a claim of willful infringement.

VII. Analyst’s Conclusion: Key Questions for the Case

  • A core issue will be one of definitional scope: can claim terms rooted in the early-2000s web architecture, such as "network document" and "exposure module", be construed to read on the structure of a modern, self-contained, sandboxed mobile application package?
  • A key evidentiary question will be one of technical mechanism: does the process of an iOS or Android application making its bundled fonts available for its own use constitute an "update" to a "system font table" as required by the claims, or is this a fundamentally different, non-infringing technical operation that occurs within the application's isolated sandbox?
  • The case may also turn on the question of direct infringement: the complaint focuses on system claims (e.g., claim 1, directed to a "non-transitory computer-readable medium"). The analysis will need to determine if Defendant's act of placing the application on an app store server for download constitutes making or selling an infringing system, or if infringement only occurs upon installation and use by the end-user, which would place greater importance on the indirect infringement allegations.