Modern Font Applications v. W W Grainger Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Modern Font Applications LLC (Utah)
  • Defendant: W. W. Grainger, Inc. (Illinois)
  • Plaintiff’s Counsel: KUNZLER BEAN & ADAMSON, PC
• Case Identification: Modern Font Applications LLC v. W. W. Grainger, Inc., 2:19-cv-00214, D. Utah, 04/01/2019
• Venue Allegations: Venue is alleged based on Defendant’s operation of regular and established places of business within the judicial district, specifically citing branch locations in Salt Lake City and Ogden, Utah.
• Core Dispute: Plaintiff alleges that Defendant’s iOS application for mobile devices infringes a patent related to methods for delivering and enabling non-standard fonts on a user's device.
• Technical Context: The technology concerns ensuring the consistent display of custom or non-standard fonts within software, a capability important for branding, design fidelity, and user experience in network-delivered documents and applications.
• Key Procedural History: The patent-in-suit claims a priority date of 2001, which the complaint notes predates the introduction of modern mobile operating systems like Apple's iOS and Google's Android.

Case Timeline

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, issued February 6, 2018

The Invention Explained

• Problem Addressed: The patent’s background section describes the problem of electronic documents displaying incorrectly when viewed on a computer that lacks the specific fonts used by the document’s author, forcing the operating system to substitute fonts and alter the intended appearance (’421 Patent, col. 1:56-65). Prior art solutions, such as rendering text as non-scalable images or using proprietary font players, are described as inefficient, slow, and functionally limited (’421 Patent, col. 2:1-53).
• The Patented Solution: The invention proposes a method where computer-readable formatting information for non-standard fonts is delivered to a user's computer along with a network document (’421 Patent, Abstract). A downloaded "exposure module" then makes this font information available to the computer's operating system, either temporarily or permanently, by installing it or updating a system font table. This allows the operating system to render the non-standard fonts natively, as if they were standard fonts, thereby preserving full functionality like copying, pasting, and editing (’421 Patent, col. 3:21-39; Fig. 6).
• Technical Importance: The described approach sought to integrate non-standard fonts at the operating system level, which could provide superior performance and deeper functional integration compared to application-level workarounds common at the time (’421 Patent, col. 2:54-59).

Key Claims at a Glance

• The complaint asserts independent claims 1 and 11 (Compl. ¶41).
• Independent Claim 1 (a non-transitory computer-readable medium) recites elements including:
  • An "electronic file package" with display characters and instructions for identifying external fonts.
  • A "font package" with external font files, separate from the executable instructions.
  • An "exposure module" for installing the external font files into a "temporary fonts directory" on a hand-held device.
  • The display characters being displayed by a "program module of the operating system" using the external font files.
  • A "system font table" of the device being "updated to reflect an availability of the external font files."
• Independent Claim 11 (a hand-held device) recites elements including a processor and memory with instructions to:
  • Download an electronic file that references a "font package."
  • Install an "exposure module" that automatically installs or exposes the font package.
  • Cause the exposure module to install the font package into a "temporary fonts directory."
  • Cause a "system font table" to be updated to reflect the font's availability.
• The complaint reserves the right to assert other claims, including dependent claim 6 (Compl. ¶41).

III. The Accused Instrumentality

Product Identification

Defendant’s W.W. Grainger, Inc. application for iOS devices, including at least version 5.23.0 (the "Accused Product") (Compl. ¶41).

Functionality and Market Context

The complaint alleges the Accused Product is an iOS application distributed as an electronic file package (.ipa file) that is downloaded from an application store server (Compl. ¶¶43, 47). This package is alleged to contain display characters, executable instructions, and separate external font files (e.g., .ttf files) (Compl. ¶¶43-45). The complaint alleges that upon installation, the iOS operating system updates a system font table by reading a font listing in the application’s Info.plist file (using the UIAppFonts key), which makes the external fonts available for use by the application (Compl. ¶49). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

’421 Patent Infringement Allegations

Identified Points of Contention

• Scope Questions: The infringement theory raises the question of whether the iOS mechanism of registering an application-specific font via the Info.plist file constitutes an "update" to a "system font table" as contemplated by the patent. The patent specification appears to emphasize making fonts available for broad, inter-application use (’421 Patent, col. 7:31-35), whereas the UIAppFonts key typically makes a font available only to the application that provides it.
• Technical Questions: What evidence will show that the accused .ipa file functions as the claimed "exposure module"? The patent describes this module as an active component, akin to an ActiveX control, that performs the installation (’421 Patent, col. 11:41-42). A court may need to determine whether a passive application package, whose contents are installed by the operating system itself, meets the definition of the claimed "module."

V. Key Claim Terms for Construction

The Term: "system font table"

• Context and Importance: This term's construction is critical, as the Plaintiff's infringement theory depends on the Info.plist file of an iOS app being construed as a "system font table." The outcome of this construction may be dispositive for infringement.
• Intrinsic Evidence for a Broader Interpretation: Claim 1 requires only that the table is "updated to reflect an availability of the external font files." Plaintiff may argue this language is broad enough to cover any system-level list or file that the operating system consults to find and load available fonts, even if their use is scoped to a single application.
• Intrinsic Evidence for a Narrower Interpretation: The specification describes a benefit of the invention as enabling copy-and-paste of non-standard characters "to any other application being control[led] by [the] operating system" (’421 Patent, col. 13:30-35; Fig. 6). This may support a narrower construction requiring a globally accessible, system-wide font table, rather than an application-specific registration list like Info.plist.

The Term: "exposure module"

• Context and Importance: The complaint alleges the .ipa file itself is the "exposure module." Practitioners may focus on this term because the patent appears to describe a functionally distinct software component, and the defense may argue that the accused product relies on standard OS installation procedures, not a separate claimed module.
• Intrinsic Evidence for a Broader Interpretation: The claim language requires a "module for installation" (’421 Patent, col. 16:18). Plaintiff may argue that the collection of metadata and instructions within the .ipa file collectively serves this purpose, thereby functioning as the claimed module.
• Intrinsic Evidence for a Narrower Interpretation: The specification provides examples of the "exposure module" as an "ACTIVEX® control" or a browser plug-in that communicates with the OS via function calls (’421 Patent, col. 11:41-42, col. 12:55-65). This suggests an active, executable component, in contrast to a passive data archive like an .ipa file that is acted upon by the operating system's installer.

VI. Other Allegations

Indirect Infringement

The complaint alleges inducement based on Defendant's advertisements and marketing materials, which allegedly "encourage customers to use" the Accused Product in an infringing manner (Compl. ¶53). It also alleges contributory infringement, stating the product is especially adapted for practicing the invention and not a staple article of commerce (Compl. ¶54).

Willful Infringement

The complaint does not explicitly allege willfulness but does allege that Defendant had notice of the ’421 patent "since at least June 2018 based upon marking" (Compl. ¶52) and includes a prayer for enhanced damages pursuant to 35 U.S.C. § 284 (Compl., Prayer for Relief ¶3).

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

• A core issue will be one of definitional scope: can the term "system font table," which the patent suggests enables inter-application use, be construed to cover an application-specific font registration mechanism like the UIAppFonts key in an iOS Info.plist file?
• A key evidentiary question will be one of technical identity: does the standard installation process for a packaged iOS application (.ipa file) by the iOS operating system meet the claim requirement for an active, distinct "exposure module" as described in the patent specification, or is there a fundamental mismatch in technical operation?