Gabrielle Russon
A pair of former Disney employees say they created software nearly 25 years ago to help theme park visitors plan their trips. They are suing Disney and accusing the theme park giant of stealing their invention for Disney Genie on its app.
It’s a battle over what could be millions of dollars.
Agile Journeys’ federal patent infringement lawsuit has survived Disney’s attempts to quash it so far since a federal Judge denied Disney’s motion to dismiss the suit last year in the U.S. District Court’s Orlando division. That doesn’t surprise a patent litigation expert who said Judges are usually unmoved by motions to dismiss and allow the lawsuits to continue through the court proceedings since the issues are so complex to untangle.
“There’s all sorts of cases where a single word or even a variant of a word has made the difference between winning and losing,” said University of Florida Levin College of Law professor Derek Bambauer who teaches about patent litigation.
What’s next for the long legal fight that’s gone largely under the media radar is a Jan. 14 trial in front of the U.S. Patent and Trademark Office’s (USPTO) Patent Trial and Appeal Board.
The upcoming patent trial has paused the federal civil proceedings, which could be a good strategy for Disney, Bambauer said, since it drags out litigation expenses for Agile Journeys while going up against a multibillion-dollar company.
In their December 2022 federal lawsuit, Michael Eaton and William Redmann said they developed a revolutionary idea in the early 2000s. Theme parks can be a confusing, overwhelming place, especially if you are a first-time visitor. It gets more complicated if you have a baby, use a wheelchair or despise roller coasters.
“Deciding what to do first, where to go next, and how to plan a busy day in a crowded venue could be a very challenging task,” their lawsuit said. “Computerized itinerary generator tools existed at the time, but they were generally crude and lacked the functionality to be particularly useful for visitors.”
Eaton and Redmann developed a computer program that asked about a group’s needs and preferences to churn out a personalized itinerary. What made their software unique was it took into account long lines, meal times, the time to walk to attractions or unexpected ride closures to update the plans in real time.
In 2001, they filed for a patent that was eventually issued in 2007 and called the “‘983 Patent,” which would eventually lead to its lawsuit against Disney in 2022.
They prototyped their application in 2001 on a hand-held Palm device — which looks foreign today’s technology of iPhones and smartphones.
The ‘983 Patent could also help theme parks spread demand for their less popular attractions too, a plus side for the park operators.
None of this was a secret to Disney, which knew about their invention, the inventors said in court documents.
In 2002, Redmann spoke on the phone with the Director of Walt Disney World IT’s New Technology Group about the trip planning software, according to the lawsuit that included their email correspondence back and forth.
Disney sought to get its own patent in 2008, but failed to get one approved because of the existing ‘983 Patent, according to the lawsuit.
Fast forward years later when then-Disney Parks Chair Bob Chapek announced Genie was coming.
“Disney Genie has capabilities that can help make the most out of your visit, whether you’re a first-time guest or a seasoned pro. It will put customized itineraries geared towards your interests at your fingertips, cutting down on the need to plan and research,” Chapek told the Mouse’s biggest fans at the D23 Expo in 2019, the lawsuit said. “And, best of all, it’s all flexible. If you change your wish for any reason during the day, Disney Genie will help re-optimize your day.”
Eaton and Redmann, under Agile Journeys, are now suing over an undetermined amount of money for ongoing royalties, damages and legal expenses.
“Disney has knowingly or with reckless disregard willfully infringed the ’983 Patent,” their lawsuit said.
Disney countersued them in federal court last year.
Disney denied it infringed on the ’983 Patent and also said the two men deceptively didn’t acknowledge a Disney employee who helped them with their invention in their patent paperwork.
Disney attorney Celine Jimenez Crowson argued at a court hearing that several companies offered personalized itineraries in the early 2000s, so the idea wasn’t novel.
Meanwhile, Bambauer said Disney appears to be accusing the inventors of being “patent trolls,” a holding company that doesn’t make anything but just amasses patents to then sue companies with deep pockets.
“It might be true. It might not be true,” Bambauer said. “They usually do that to try to influence the optics of the case.”
In federal court, Disney’s attempt to invalidate the ‘983 Patent faces a higher burden of proof than in January, when Disney challenged the ‘983 Patent during the USPTO trial.
“It’s easier, in some ways, at the patent office stage to get a patent declared invalid because the burden of proof is lower,” Bambauer said. “There’s also a more limited set of things that you’re allowed to argue over in terms of why the patent should not have been granted.”
Even if Disney wins the patent trial, “that’s not the end of the story here,” Bambauer said. “The federal district court proceedings will presumably march on, although sometimes parties settle after seeing what the patent office has to say.”
The outcome of the USPTO trial is a “signal” and “definitely changes the kind of calculations among the parties, and so that makes it very important,” Bambauer said. But he added, “It also is not something that will stop the district court litigation or necessarily even really heavily influence its outcome.”
Millions of dollars could potentially be at stake in federal court.
“Patent lawsuits tend to generate some of the largest verdicts in terms of damages of any civil litigation,” Bambauer said. “The stakes are high for both sides.”
Described as a “prolific inventor” with more than 80 patents under his name — including at least dozen assigned to Disney — Redmann was once a show designer at Epcot in 1982, the year the park opened, according to his lawsuit. He later worked at Walt Disney Imagineering in research and development from 1988 to 1993 where he said he developed new ride technologies.
He worked his way up to a director of technology for the famous Imagineers from 1995 to 2000. Redmann helped design DisneyQuest, a now defunct indoor facility with interactive games at what’s now called Disney Springs, and 18 other high-tech attractions “from inception through commercial deployment and operation,” according to his lawsuit.
Eaton’s background was in travel marketing and sales for Disneyland and Disney World where he worked for the company from 1990-1997.
The two men met each other after they both left Disney and worked at a health care company.
Disney World and attorneys for Agile Journeys did not respond to requests for comment for this story.
At theme parks, lawsuits occasionally surface the complex legal challenges behind the scenes, such as Disney World and Disneyland’s Star Wars Rise of the Resistance ride or Universal Orlando’s Jimmy Fallon ride.
Bambauer said the patent lawsuits come as theme park rides become more high-tech and add more digital technology.
“That kind of technological space is littered with patents,” he said. “If you’re a small company, you can get one of those patents through, and someone like, Disney or Universal is using that in the theme park, it can be really lucrative.”
