Rdpa, LLC v. Geopath, Inc.

543 F.Supp.3d 4

RDPA, LLC, Plaintiff,

v.GEOPATH, INC., Defendant.

20-cv-3573 (LJL)

United States District Court, S.D. New York.

Signed June 15, 2021

Anthony Joseph Wenn, William Cory Spence, Chicago, IL, Marc Joseph Rachman, Davis & Gilbert LLP, New York, NY, for Plaintiff.

Jeffrey Louis Snow, Joseph Vincent Micali, Smith S. Piyanan, Pryor Cashman LLP, New York, NY, for Defendant.

OPINION AND ORDER

LEWIS J. LIMAN, United States District Judge:

Defendant Geopath, Inc. ("Geopath") moves, pursuant to Federal Rule of Civil Procedure 12(b)(6), to dismiss the complaint of Plaintiff RDPA, LLC ("RDPA") for failure to state a claim. For the following reasons, the motion is granted.

BACKGROUND

RDPA is a Seattle, Washington based limited liability corporation. Dkt. No. 1 (the "Complaint") ¶ 2. Geopath is a corporation headquartered and incorporated in the state of New York. Id. ¶ 3.

I. The Patents

RDPA is the sole owner of all rights, title, and interest in and to five patents relevant to this case (collectively the "Asserted Patents").¹ All five Asserted Patents were addressed to solving a challenge faced by businesses that advertise their goods or services through public media displays: how to measure the public's exposure to public media displays, such as billboards, in order better to understand the reach of such displays. Id. ¶ 35. The population that is exposed to such displays—whether on billboards on the sides of highways or on kiosks in bus depots or other internal locations—is inherently transient and may have limited recall. Indeed, "[a]s many media providers are well aware, some media displays can convey a message, and change a respondent's behavior, without the respondent actively recalling that they were exposed to the media display." Dkt. No. 1, Ex. A at 26. It may be difficult to reconstruct the demographics of every person who passes by a public media display. Id.

The absence of readily-available data tracking exposure and reaction to public media displays presents challenges both to those who offer such displays and to those who employ them. "[P]ublicly viewable media display providers could not take advantage of media-buying changes and thereby increase market share against other measured media ... In fact, many media display providers did not even consider publicly displayed media as there was no reliable measurement system to gauge exposure." Id. Thus, "it would be an advantage to provide accurate measurements of exposure to public media displays in order to obtain exposure, reach and frequency statistics that can justify the value of such media displays." Id.

Previous methods for tracking exposure to media displays had limitations. One method involved installing radio devices in vehicles that respond to radios on media displays. Id. This method required that radios be installed on every media display to be surveyed. Id. "Leaving a radio off a particular media display would mean that media display has no chance of being assessed." Id. Another method was the use of consumer surveys, which are limited by the fact that respondents rarely remember all the media displays they have been exposed to. Id. Finally, other methods had employed vehicle tracking, which, though "marginally effective," were of limited value because "[o]ver an extended period of time many vehicles will have different occupants having different demographics," and because "under ordinary circumstances, vehicles are not allowed in" areas designated for pedestrians. Id.

The Asserted Patents, individually and as a group, disclosed a system and method for using monitoring devices in order to assess the exposure of media displays. Dkt. No. 1 ¶ 37. Concepts disclosed in the Asserted Patents included "allowing satellite positioning system (e.g., GPS) enabled monitoring devices to track the movement of multiple respondents and a post processing server to rate the effectiveness of the media display using the geo location data from the monitoring devices." Id. ¶ 38.

A. The ’131 Patent

On November 29, 2005, the United States Patent and Trademark Office ("USPTO") issued U.S. Patent Number 6,970,131 (the "’131 Patent"), entitled "Satellite Positioning System Enabled Media Measurement System and Method." Id. ¶ 9. The ’131 Patent issued from U.S. patent application Serial Number 10/686,872 filed on October 16, 2003. The ’131 Patent was directed toward "utilizing monitoring devices for determining the effectiveness of various locations" for public media displays. Dkt. No. 1, Ex. A at 26. The ’131 Patent proposed the use of satellite and radio frequency location tracking systems, such as GPS, to determine to which media displays respondents were exposed. Id. This information could then be used to determine the effectiveness of the media display based upon reach and frequency. Id.

Claim 1 of the ’131 patent, recites as follows:

A computer-implemented method of determining the effectiveness of media displays, the method comprising:

(a) Storing geo data in a plurality of respondent monitoring devices as said plurality of respondent monitoring devices move along respective path of travel, at least a portion of said geo data derives from a satellite positioning system ("SPS"), said stored geo data representing the movement of said plurality of respondent monitoring devices along said respective paths of travel; and

(b) downloading said geo data stored in said plurality of respondent monitoring devices to a post processing server for:

(i) matching the locations of a plurality of media displays to positions on said respective paths of travel of said plurality of respondent monitoring devices represented by said geo data; and

(ii) rating the effectiveness of said plurality of media displays based on said matches between said plurality of media display locations and said positions on said respective paths of travel of said plurality of respondent monitoring devices represented by said geo data.

Dkt. No. 1, Ex. A at 38. In essence, it claims as a method the use of GPS technology generally to capture location data from devices as they travel along a designated path and pass public media displays and then to use the data captured by the GPS technology to rate the effectiveness of the media displays.

Claim 3 of the ’131 Patent recites as follows: "The method of claim 1, wherein rating the effectiveness of said media displays comprises determining the reach and frequency of said media displays." Id.

Claim 7 of the ’131 Patent recites as follows: "The method of claim 1 wherein said geo data is grouped in accordance with the demographics of said respondents." Id.

B. The ’619 Patent

On May 2, 2006, the USPTO issued U.S. Patent Number 7,038,619 (the "’619 Patent") entitled "Satellite Positioning System Enabled Media Measurement System and Method." Id. ¶ 13. The ’619 Patent issued from U.S. patent application Serial Number 10/318,422 filed on December 11, 2002 and discloses and relates to assessing the effectiveness of media displays. Id. ¶ 14. Like the ’131 Patent, the ’619 Patent was directed toward a method for tracking individuals and their exposure to media displays by using a satellite positioning system. Dkt. No. 1, Ex. B at 26.

Claim 1 of the ’619 Patent states:

A method for determining the effectiveness of media displays, comprising:

employing a plurality of monitoring devices for determining the paths of travel followed by a plurality of respondents, each of said respondents associated with a respective one of said plurality of monitoring devices each of said plurality of monitoring devices utilizing a satellite positioning system ("SPS") to independently track the movement of the related respondent along the path of travel followed by the respondent, each of said plurality of monitoring devices generating geo data that represents the path of travel followed by the respondent;

storing said tracking as geo data;

collecting the geo data from each of the monitoring devices; and

analyzing said collected geo data to determine if said plurality of respondents have been exposed to media displays by matching said geo data that represents the paths of travel followed by said plurality of respondents with media display locations to determine the effectiveness of the media displays at the media display locations.

Id. at 38.

Claim 9 of the ’619 Patent recites: "The method of claim 1, wherein said plurality of respondents are categorized according to demographic characteristics." Id.

Claim 13 of the ’619 Patent recites: "The method of claim 1, where in the geo data that represents that path of travel followed by a respondent is stored in the monitoring device associated with the respondent." Id.

Claim 14 of the ’619 Patent recites: "The method of claim 13, wherein the geo data stored in the monitoring devices is collected by downloading the geo data to a computing device." Id.

Claim 15 of the ’619 Patent recites: "The method of claim 14, where in the computing device analyzes the geo data to determine if said plurality of respondents have been exposed to media displays by matching said geo data that represents the paths of travel followed by said plurality of respondents with geo data that represents the locations of the media displays to thereby determine the effectiveness of said media displays." Id.

C. The ’834 Patent

On February 13, 2007, the USPTO issued U.S. Patent Number 7,176,834 (the "’834 Patent"), entitled "Satellite Positioning System Enabled Media Measurement System and Method." Id. ¶ 17. The ’834 Patent issued from U.S. patent application Serial Number 11/366,349 filed on March 2, 2006 and discloses and relates to assessing the effectiveness of media displays. Id. ¶ 18. The ’834 Patent, like the ’131 Patent and the ’619 Patent before it, was directed toward the use of locations tracking technology to assess exposure to public media displays. Dkt. No. 1, Ex. C at 26.

Claim 1 of the ’834 Patent states:

A method for determining the effectiveness of media displays, comprising:

employing a

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