Weisner v. Google LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Sholem Weisner (New York)
  • Defendant: Google LLC (Delaware)
  • Plaintiff's Counsel: Jacob Ginsburg, Esq. PLLC
• Case Identification: 1:23-cv-08186, S.D.N.Y., 09/28/2023
• Venue Allegations: Plaintiff alleges venue is proper in the Southern District of New York because Google maintains a regular and established place of business in the District and has committed the alleged acts of infringement there.
• Core Dispute: Plaintiff alleges that Google's location-based services, including the "Your Timeline" and "Your Places" features within Google Maps, infringe three U.S. patents related to creating and using digital histories of users' physical locations to deliver targeted advertising.
• Technical Context: The technology at issue involves using a mobile device's positioning system to log a user's real-world movements and commercial encounters, and then leveraging that historical data to provide more relevant advertising.
• Key Procedural History: The complaint notes a prior patent suit between the parties involving different patents. It also alleges that Plaintiff Sholem Weisner holds the exclusive right to sue for infringement under an "Agreement Between Owners," as co-inventor Shmuel Nemanov has refused to join the suit and is named as an Involuntary Party. Plaintiff also alleges providing Google with written notice of infringement for all three patents-in-suit prior to filing the complaint.

Case Timeline

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

U.S. Patent No. 11,163,839 - "Mobile Communication Device with Location histories Configured to Link Individual Member to Vendor Members of Network"

• Patent Identification: U.S. Patent No. 11,163,839, "Mobile Communication Device with Location histories Configured to Link Individual Member to Vendor Members of Network," issued November 2, 2021.

The Invention Explained

• Problem Addressed: The complaint alleges that prior to 2007, online search and advertising were not effectively tailored to a user's real-world physical activities and preferences, relying instead on "virtual encounters" and cyber activity that did not discern the most relevant physical locations or inclinations Compl. ¶¶28-29
• The Patented Solution: The invention is described as a handheld mobile device with software that creates a digital history of a user's "physical encounters" with businesses (vendor members) Compl. ¶19 This location history, defined by URLs or associated data, is then used to link vendor members to the user by serving "clickable advertisements on to the location history" Compl. ¶32 The specification is cited as describing this as a "new venue for businesses to advertise in" by leveraging a user's "digital leg history" Compl. ¶34 '839 Patent, col. 2:18-24
• Technical Importance: The claimed invention aims to reduce the "randomness of how digital advertising" is served by making it more useful and relevant, tailoring it to an individual's tastes as revealed by their past physical encounters with businesses Compl. ¶31

Key Claims at a Glance

• The complaint asserts independent claim 1 Compl. ¶128
• Claim 1 Elements:
  • A handheld mobile communication device with software.
  • Upon a physical encounter between a mobile "individual member" and a "vendor member," the software transmits or generates a location history entry including the vendor's key data (e.g., URL), location, and time of the encounter.
  • The software interacts with a positioning system and accumulates a location history.
  • The software maintains a viewable and searchable physical encounter history on the device, which includes a visual timeline.
  • The location history is configured to include clickable advertisements from vendor members, where clicking takes the user to the vendor's web site.
• The complaint also alleges infringement of "at least several of the dependent claims" Compl. ¶121

U.S. Patent No. 10,685,068 - "Targeting individuals for advertising using digital physical location histories"

• Patent Identification: U.S. Patent No. 10,685,068, "Targeting individuals for advertising using digital physical location histories," issued June 16, 2020.

The Invention Explained

• Problem Addressed: The patent's background describes prior art "surf history" as insufficient to "meaningfully characterize the life of the user," noting a need for a "digital leg history" that reflects a person's actual physical activities '068 Patent, col. 1:29-39 It also identifies a business need for "new venues in which to advertise" that are more targeted than conventional internet advertising '068 Patent, col. 2:18-24
• The Patented Solution: The invention is a method and system for creating a "digital leg history" by capturing data from physical encounters between an "individual member" and a "stationary vendor member" '068 Patent, abstract A mobile application automatically transmits an entry of the encounter to a processing system, which maintains a database of these histories '068 Patent, col. 3:1-15 This history is then used to serve advertisements to the individual, with the content of the ads based on a profile derived from the key data (e.g., URLs) in their encounter history '068 Patent, col. 4:32-38
• Technical Importance: The invention proposes to improve web searching and advertising by grounding them in a user's real-world interactions, allowing smaller businesses to "feature more heavily" in search results relevant to a user's unique tastes '068 Patent, col. 2:54-63

Key Claims at a Glance

• The complaint asserts independent claims 1, 16, and 30 Compl. ¶48
• Claim 1 Elements (Method):
  • Maintaining a processing system that provides accounts to an "individual member" and a "stationary vendor member" of a "member network."
  • Providing an application that configures a mobile device to automatically transmit an entry of a physical encounter at the vendor's premises.
  • The entry includes key data (e.g., URL) of the individual and vendor, and the location.
  • Maintaining a physical encounter history on a database, which can be accumulated from multiple devices.
  • The application maintains a viewable, searchable physical encounter history on the device, including a visual timeline.
  • Serving, by the processing system, advertisements on the physical encounter history, with the ad content based on a profile of the key data in that history.
• The complaint states that claims 1-30 are infringed Compl. ¶132

U.S. Patent No. 10,860,667 - "Physical location history with key data using positioning system"

• Patent Identification: U.S. Patent No. 10,860,667, "Physical location history with key data using positioning system," issued December 8, 2020.
• Technology Synopsis: The patent is directed to a method and system for creating a "membership network" that documents and chronicles physical interactions between business members and individual members Compl. ¶96 A stated advantage is the "elimination or dramatic reduction of the randomness and irrelevancy of aggregated data available for the individual user" by collecting data exclusively from network participants Compl. ¶97
• Asserted Claims: Independent claims 1, 9, and 17 Compl. ¶87
• Accused Features: The complaint alleges that Google's Google Maps feature, including "Your Timeline" and "Your Places," infringes the '667 Patent Compl. ¶107

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are Google's mobile communication devices (e.g., Pixel phones), the Android operating system, and features within Google's software services, primarily "Your Timeline" and "Your Places" within Google Maps, as well as Google Search and Google Business Profile (Compl. ¶39; Compl. ¶40).

Functionality and Market Context

The complaint alleges that the accused software provides interfaces ("Your Timeline" and "Your Places") through which Google account holders can access, search, and review their past location history, which is accumulated by their mobile devices Compl. ¶40 Compl. ¶43 This history is then allegedly used to target them with advertisements. For example, a search for a business category like "gas station" on Google.com or Google Maps is alleged to produce advertisements for businesses the user has previously visited Compl. ¶81 The complaint also alleges that Google serves ads for businesses a user has not visited but which are deemed to be a "match" based on the user's location history Compl. ¶83 Compl. ¶85 The complaint includes a screenshot of the "Google Maps Timeline" feature, which shows a user's travel path and visited locations on a given day Compl. p. 10

IV. Analysis of Infringement Allegations

11,163,839 Infringement Allegations

10,685,068 Infringement Allegations

Identified Points of Contention

• Scope Questions: A central question may be whether Google's ecosystem of individual users and businesses with "Google Business Profiles" constitutes a "member network" with "individual members" and "vendor members" as those terms are used in the patents. The court may need to determine if the patents require a more formally defined network than the general user base of Google's services.
• Technical Questions: The infringement theory appears to vary between patents. For the '839 Patent, the allegation centers on advertisements being included in the location history interface itself Compl. p. 12 For the '068 Patent, the allegations focus on advertisements being served in response to a search query, where the search results are influenced by the location history Compl. p. 20 Compl. p. 22 A key technical and legal question will be whether serving an ad in a separate search context that is merely informed by the location history meets the claim limitation of serving an advertisement "on the physical encounter history."

V. Key Claim Terms for Construction

• The Term: "serving... advertisements... on the physical encounter history" '068 Patent, Claim 1 and "location history is configured to include advertisements" '839 Patent, Claim 1
• Context and Importance: The construction of these related phrases may be dispositive. The dispute may turn on whether the advertisements must be presented as integrated entries within the chronological location history interface itself, or if the claims can be read to cover advertisements presented in other contexts (like search results) that are merely targeted using the location history data. The complaint appears to allege both infringement theories.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The title of the '068 Patent, "Targeting individuals for advertising using digital physical location histories," could suggest that the history is a tool for targeting, not necessarily the exclusive venue for displaying the ad. The method is described as being "based on a profile of the key data recorded in the physical encounter history," which may not require the ad to be displayed on the history itself '068 Patent, Claim 1
  • Evidence for a Narrower Interpretation: The '068 Patent specification repeatedly describes advertising "on the digital history" '068 Patent, col. 5:17-18 and creating a "new venue for business advertising" on that history '068 Patent, col. 2:20-24 Language such as "place advertisements on digital leg history account holders" '068 Patent, col. 16:46-47 could be interpreted to mean the ads are displayed directly within the history interface, a reading potentially supported by the "Sponsored" ad screenshot in the complaint Compl. p. 12

VI. Other Allegations

• Indirect Infringement: The complaint makes a conclusory allegation of inducement for the '839 Patent Compl. ¶130 but does not plead specific facts, such as identifying instructions in user manuals or other materials, that would allegedly encourage users to perform the infringing acts.
• Willful Infringement: The complaint alleges that the infringement was and is willful based on Google's alleged knowledge of the patents. This knowledge is primarily based on written notices of infringement allegedly sent to Google for the '068 Patent on June 18, 2020, the '667 Patent on December 8, 2020, and the '839 Patent on May 8, 2022 Compl. ¶111 Compl. ¶113 The complaint alleges that Google continued its infringing activities despite these notices Compl. ¶114

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

• A core issue will be one of definitional scope: does Google's vast ecosystem of individual account holders and businesses with Google Business Profiles constitute the more structured "member network" of "individual members" and "vendor members" contemplated by the patent claims, or is there a material difference in structure and relationship between the entities?
• A key question of claim construction will be determinative: what is the required location and context for the infringing "advertisements"? The case may turn on whether serving an ad "on" or "in" the location history requires the advertisement to be an integrated entry within the user's timeline view, or if the claim language is broad enough to cover advertisements in separate search results that are targeted using data derived from that history.
• An underlying evidentiary question will be one of causation: to what extent can Plaintiff prove that the specific advertisements served in the accused products are served "based on a profile of the key data recorded in the physical encounter history," as claimed, versus being based on other factors like search keywords, general demographics, or non-physical browsing history?