DCT
3:11-cv-00287
Northmobiletech LLC v. Simon Property Group Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: NorthMobileTech LLC (Wisconsin)
- Defendant: Simon Property Group, Inc. and Simon Property Group, L.P. (Delaware / Indiana)
- Plaintiff’s Counsel: Solheim Billing & Grimmer, S.C.; Senniger Powers LLP
- Case Identification: 3:11-cv-00287, W.D. Wis., 07/26/2011
- Venue Allegations: Venue is alleged to be proper as Plaintiff is a resident of the district and Defendants own property, conduct substantial business, and derive revenue within the district.
- Core Dispute: Plaintiff alleges that Defendant’s "Simon App" mobile application and associated marketing systems infringe a patent related to methods for providing location-specific marketing to mobile device users at shopping facilities.
- Technical Context: The technology at issue involves an early implementation of location-based services, where a mobile device user's presence at a specific commercial venue triggers the delivery of interactive, targeted marketing content and promotions.
- Key Procedural History: The complaint notes that prior to this action, on April 20, 2011, Defendant Simon Property Group, L.P. filed a declaratory judgment action in the Southern District of Indiana seeking a declaration of non-infringement and invalidity of the patent-in-suit. The existence of this earlier-filed case raises potential procedural issues regarding jurisdiction and the "first-to-file" rule.
Case Timeline
| Date | Event |
|---|---|
| 2005-11-25 | ’130 Patent Priority Date |
| 2010-09-28 | ’130 Patent Issued |
| 2011-04-20 | Defendant files declaratory judgment action in S.D. Ind. |
| 2011-07-26 | First Amended Complaint filed in W.D. Wis. |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,805,130 - "Marketing Method" (Issued Sep. 28, 2010)
The Invention Explained
- Problem Addressed: The patent identifies a need for a new advertising method, observing that traditional retail marketing is becoming less effective as consumers grow more "stressed for time" and retailers in crowded environments like shopping malls struggle to differentiate themselves. (Compl., Ex. 1, ’130 Patent, col. 1:13-25).
- The Patented Solution: The invention proposes a server-based method where a consumer at a specific facility, such as a shopping mall, uses a mobile device to initiate contact with a "promotions server" ( Compl., Ex. 1, ’130 Patent, FIG. 1). The server, upon identifying the facility's location, returns a menu of choices specific to that facility (e.g., store categories). When the user selects a menu item, the server delivers one or more targeted marketing messages, such as promotions or sales information, for relevant stores within the facility. (’130 Patent, col. 2:17-33). The patent describes determining the user's location through methods including the specific cell sector providing service to the facility. (’130 Patent, col. 2:8-16).
- Technical Importance: The patented method provides a system for merchants to "more actively, in real time, drive extremely qualified traffic to their store" by delivering timely, permission-based offers to shoppers already physically present in the mall. (’130 Patent, col. 2:57-62).
Key Claims at a Glance
- The complaint asserts infringement of "one or more claims" without specifying them. (Compl. ¶14). Independent claim 1 is representative:
- A marketing method performed at a server system.
- Receiving a wireless call or message from a mobile device.
- Determining the mobile device is located at a "given shopping facility."
- Correlating a menu of choices specific to that facility.
- Returning information to the mobile device to "provision" it with the menu.
- After the user makes a selection from the menu, receiving that choice.
- Returning to the mobile device one or more "text-based marketing messages" that include a "marketing incentive" for a store in that facility.
No probative visual evidence provided in complaint.
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is a "mobile application program called 'SIMON MALLS - more choices' (the Simon App)" and the associated server infrastructure used to operate it. (Compl. ¶7).
Functionality and Market Context
- The complaint alleges the Simon App "interacts with servers operated by or under the control of Defendants which distribute marketing material to the public related to Defendants' shopping facilities." (Compl. ¶7). The complaint characterizes Defendants as the largest shopping mall owner in the United States, suggesting the accused system has significant commercial reach. (Compl. ¶4). The complaint does not provide further technical details on how the Simon App or its associated servers operate.
IV. Analysis of Infringement Allegations
The complaint does not contain a claim chart or detailed, element-by-element infringement allegations. The analysis below maps the general allegations to the elements of representative claim 1.
’130 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| receiving from a mobile wireless communications device a wireless call or message; | The Simon App, running on a user's device, allegedly sends messages or requests to Defendants' servers. | ¶7 | col. 4:47-49 |
| determining that said mobile wireless communications device is located at a given shopping facility; | Defendants' system, by operating the Simon App, allegedly determines the user's location at one of Defendants' shopping facilities. | ¶7, ¶14 | col. 4:49-51 |
| correlating a menu of choices specific to said given shopping facility with said given shopping facility; | Defendants' servers allegedly correlate marketing material, which could constitute a menu of choices, with the specific shopping facility where the user is located. | ¶7 | col. 4:51-53 |
| responsive to said receiving, returning to said wireless communications device information to provision said wireless communications device with said menu of choices; | Defendants' servers allegedly return information to the Simon App that provides the user with marketing-related choices. | ¶7 | col. 4:53-57 |
| subsequent to said returning said information, on receiving from said wireless communications device a choice selected from said menu, returning to said wireless communications device one or more text-based marketing messages...comprising a marketing incentive... | Upon a user's interaction with the Simon App, Defendants' servers allegedly return marketing materials, which are alleged to be infringing text-based messages with an incentive. | ¶7, ¶14 | col. 4:58-col. 5:2 |
- Identified Points of Contention:
- Scope Questions: A central question may be whether the "Simon App" system architecture meets the claim requirement for the "server system" itself to perform the "determining" of the device's location. The claim states "at a server system: ... determining...". If the app on the mobile device determines its own location (e.g., via GPS) and merely reports it to the server, it raises the question of whether the server itself is "determining" the location as required by the claim.
- Technical Questions: The complaint does not provide evidence on the nature of the information sent to and from the Simon App. A key factual question will be whether the "marketing material" distributed by the accused system qualifies as "text-based marketing messages" containing a "marketing incentive" as those terms are used in the patent. For instance, do graphical, in-app displays fall within the scope of "text-based messages"?
V. Key Claim Terms for Construction
The Term: "determining that said mobile wireless communications device is located at a given shopping facility"
Context and Importance: This term is critical because it defines where and how the system becomes aware of the user's location, which is the trigger for the patented method. The dispute will likely focus on whether the server must actively deduce the location or can passively receive it from the mobile device. Practitioners may focus on this term because the patent specification places emphasis on network-based location methods (cell sector ID) that differ from modern app-based GPS reporting.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself does not specify the method of determination, a potentially allowing for any method performed "at a server system," including processing location data sent from the device.
- Evidence for a Narrower Interpretation: The specification describes embodiments where the location is identified via a "cell sector established for the facility," implying the network infrastructure and server play a more active role in the determination. (’130 Patent, col. 2:8-16). This could support an argument that the server must do more than simply receive a GPS coordinate.
The Term: "text-based marketing messages"
Context and Importance: The nature of the delivered content is a core limitation. The construction of this term will determine whether modern, in-app graphical offers are covered by a claim that specifies "text-based" messages.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The plain meaning of "text-based" could be argued to include any message that contains text, even if it also includes graphics or is presented within a rich application interface rather than as a standalone text message.
- Evidence for a Narrower Interpretation: The specification explicitly states the message "is preferably a text-based message, such as an SMS message." (’130 Patent, col. 2:31-33). This preference could be used to argue that the claim is limited to SMS-like messages and does not cover integrated, graphical app content.
VI. Other Allegations
- Indirect Infringement: The complaint does not contain separate counts for, or specific factual allegations supporting, indirect infringement (induced or contributory). The allegations are centered on Defendants' direct infringement by "operating" the accused system. (Compl. ¶14).
- Willful Infringement: The complaint alleges that Defendants' infringement "has been and continues to be knowing and willful." (Compl. ¶15). No specific facts are alleged to support pre-suit knowledge beyond the conclusory allegation.
VII. Analyst’s Conclusion: Key Questions for the Case
This case appears to present foundational questions about how patent claims drafted in the era of SMS and cell-tower location apply to the modern ecosystem of GPS-enabled smartphones and rich mobile applications. The resolution will likely depend on the court's construction of key claim terms.
- A central issue will be one of locus of activity: for the system to infringe, must the "server system" itself deduce a user's location, as suggested by some embodiments in the patent, or is it sufficient for the server to simply receive and process location data determined by the mobile device's own GPS?
- A second key issue will be one of technological scope: can the claim term "text-based marketing messages," which the patent links to SMS, be construed broadly enough to read on the integrated, and likely graphical, notifications and offers presented within a modern mobile app interface?