<em>Ikorongo Texas LLC v. Bumble Trading LLC</em>

No. 2022-2044, 2023 WL 5814409 (Fed. Cir. Sept. 8, 2023)

The Federal Circuit affirmed the U.S. District Court for the Western District of Texas decision and canceled Ikorongo Technology LLC’s patent claims under 35 U.S.C. § 251(a), which requires that a reissue patent contain no new matter.  

The U.S. Patent Office issued Patent No. 7,080,139 (‘139 Patent), titled, “Method and apparatus for selectively sharing and passively tracking communication device experiences,” on July 18, 2006. The ‘139 Patent, “includes methods and devices for passively tracking and selectively sharing user experiences with communication device, including computers, web-enabled telephones, and PDAs.” The ‘139 Patent Abstract states that users of new communication technologies have embraced instant messengers and desire new ways of sharing with friends the experiences they have. The ‘139 Patent claims to provide these new ways of sharing experiences to users, such as lists of instant messaging products which share selected aspects of their computer usage experiences.

The asserted claims in the action come from two broadening reissues of the ‘139 Patent. U.S. Patent No. RE45,543 (‘543 Reissue) and U.S. Patent No. RE47,704 (‘704 Reissue), issued on June 2, 2015, and November 5, 2019, respectively, concern collecting and recording visited geographic location data using a satellite-based location-fixing protocol without requiring the sharing of other experience information related to the visit. Other than Bumble or other dating applications, the technology may be used by popular ridesharing apps such as Uber or Lyft.

35 U.S.C. § 251(a) requires an original patent to disclose the reissued invention. The standard for satisfying this requirement is that a reissue patent must fully describe and claim the same invention intended to be secured by the original patent. This requirement is a question of law for a court that may consider expert testimony to ascertain the meaning of a technical or scientific term. In 2014, the Federal Circuit ruled that a specification must “clearly and unequivocally” disclose the newly claimed invention as a separate invention. The original patent requirement is violated if the original specification “merely suggested or indicated” or “serially mentioned” the invention in a reissue claim.

In April 2022, the District Court for the Western District of Texas ruled in favor of the plaintiffs, granting Bumble’s motion for summary judgment and canceling the patent claims asserted by Ikorongo Technology LLC. The lower court found that the specification repeatedly and consistently describes sharing other experience-related information besides the location. Judge Albright held that the combination of location with other alternative possibilities did not make the original invention’s alleged focus, sharing only “geographic” location data, clear and unequivocal. The Court reasoned that the ‘139 Patent does not describe a system or method to share a specific combination of only geographic location data without other related experience information. Judge Albright deduced that the claimed combination of sharing location data without other information cannot be found anywhere in the ‘139 Patent. Therefore, according to the Court, the ‘139 Patent did not put the public on notice that the claims should have been corrected to cover a satellite-based, geographic location tracking invention.

Judge Alan D. Albright held that the asserted reissued patent claims had changed the fundamental nature of the invention from that which was claimed in the ‘139 Patent. For this reason, the ‘139 Patent failed to disclose the reissue claims clearly and unequivocally as part of the original invention. The district court invalidated Ikorongo Technology LLC’s asserted patent claims 57, 63, 64, 66, 68, and 70 of the ‘543 Reissue and 33, 34, 38, 45, and 46 of the ‘704 Reissue as a result.

On September 8, 2023, Judges Timothy B. Dye, Kara F. Stoll, and Sharon Prost issued a judgment affirming Judge Albright’s decision. This decision was nonprecedential but has implications for this suit as well as other suits awaiting the Federal Circuit’s decision against Bumble, Samsung Electronics Co., LG Electronics Inc., Uber Technologies Inc., and Lyft Inc. in the U.S. District Court for the Northern District of California. The Plaintiff will be unable to assert these invalidated claims against these Defendants or other defendants in the future for geographic location tracking technology covered in the Reissue Patents.

Thus, the reissue claims in the ‘543 Reissue and the ‘704 Reissue, directed towards collecting and recording visited geographic location data using a satellite-based location-fixing protocol without requiring the sharing of other experience information related to the visit, are invalidated, and Defendant Bumble Trading LLC’s Motion for Summary Judgment of Invalidity under 35 U.S.C. § 251 is granted.