DCT
2:18-cv-01234
SkyHawke Tech LLC v. Deca Intl Corp
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: SkyHawke Technologies, LLC (Mississippi)
- Defendant: GolfzonDECA Corp. (California) and DECA System, Inc. (Korea)
- Plaintiff’s Counsel: Jain Law Offices, P.C.
- Case Identification: 2:18-cv-01234, C.D. Cal., 02/19/2019
- Venue Allegations: Plaintiff alleges venue is proper in the Central District of California because Defendant GolfzonDECA Corp. is a California corporation with its principal place of business within the district.
- Core Dispute: Plaintiff alleges that Defendants’ GPS-based golf rangefinder devices and associated systems infringe two patents related to creating and sharing autonomous golf course maps and graphically displaying distance information based on a golfer's line of sight.
- Technical Context: The technology relates to personal GPS devices for golf, a market segment focused on providing golfers with accurate, real-time distance data to various points on a course, independent of course-owned equipment.
- Key Procedural History: The complaint details extensive prosecution histories for both patents. The ’938 Patent underwent an ex parte re-examination requested by one of the Defendants, which confirmed the patentability of the asserted claims. During its original prosecution, the claims were amended to add the limitation of operating with “autonomy” from on-course equipment to overcome prior art. The ’498 Patent’s prosecution history, both in the U.S. and Europe, involved arguments distinguishing the claimed "rotation" of a target object based on line of sight from prior art systems that "pan" or rotate an entire map based on direction of travel.
Case Timeline
| Date | Event |
|---|---|
| 1999-07-23 | ’938 Patent Priority Date |
| 2001-06-15 | ’498 Patent Priority Date |
| 2002-09-24 | ’938 Patent Issue Date |
| 2005-03-21 | ’498 Patent Prosecution: Patentee's Response to Office Action |
| 2005-11-02 | ’498 Patent Prosecution: Patentee's Response to Office Action |
| 2006-06-27 | ’498 Patent Prosecution: Examiner Interview |
| 2006-10-10 | ’498 Patent Issue Date |
| 2010-07-28 | ’498 Patent European Prosecution: EPO Communication |
| 2011-05-26 | ’498 Patent European Prosecution: Patentee's Response |
| 2011-08-08 | ’498 Patent European Prosecution: EPO Communication |
| 2012-02-21 | ’498 Patent European Prosecution: Patentee's Amendment |
| 2012-05-07 | ’498 Patent European Prosecution: EPO Intent to Grant Patent |
| 2019-02-19 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,456,938 - “PERSONAL DGPS GOLF COURSE CARTOGRAPHER, NAVIGATOR AND INTERNET WEB SITE WITH MAP EXCHANGE AND TUTOR,” issued September 24, 2002
The Invention Explained
- Problem Addressed: The patent addresses the limitations of prior art GPS systems for golf, which required positional equipment (e.g., transmitters, base stations) to be installed and managed by individual golf courses (Compl. ¶¶ 25, 30). These systems were not personal, could not be used across different courses, and created proprietary data formats that prevented golfers from archiving their own performance data (Compl. ¶¶ 32-35).
- The Patented Solution: The invention is a personal, player-owned system that allows a user to map a golf course using a GPS-enabled device with "course-mapper software," transmit that map over a network like the Internet, and then allow another user to access and use that map on a separate device with "course-player software" (Compl. ¶¶ 48-51, 60). A core feature is that the system operates with "autonomy from any positional equipment at the golf course," freeing the user from dependence on course infrastructure (’938 Patent, col. 5:20-34; Compl. ¶40).
- Technical Importance: The technology enabled the creation of the first personal, portable, and multi-course GPS rangefinder systems, fostering a user-driven ecosystem for creating and sharing golf course maps (Compl. ¶¶ 41, 46).
Key Claims at a Glance
- The complaint asserts independent claims 1 (a method) and 13 (a system) (Compl. ¶¶ 48, 52).
- Independent Claim 1 (Method) Elements:
- A method for storing and communicating sets of topographic information specific to individual golf courses over an accessible electronic network.
- Inputting a first set of information (golf course topography) to a first device executing "course-mapper software."
- Transmitting this first set of information from the first device to the network.
- Accessing the information through the network with a second device that operates with "autonomy from any positional equipment at the golf course" and executes "course-player software."
- Independent Claim 13 (System) Elements:
- A system for storing and communicating sets of topographic information specific to individual golf courses over an accessible electronic network.
- A first device executing "course-mapper software" that receives an input of a first set of information (golf course topography).
- A central information processing site and database that receives the information set and provides access over the network.
- A second device that receives the information from the network and operates "with autonomy from any positional equipment at the golf course."
- The complaint reserves the right to assert additional claims (Compl. ¶107).
U.S. Patent No. 7,118,498 - “PERSONAL GOLFING ASSISTANT AND METHOD AND SYSTEM FOR GRAPHICALLY DISPLAYING GOLF RELATED INFORMATION...,” issued October 10, 2006
The Invention Explained
- Problem Addressed: Conventional navigation systems (e.g., for automobiles) typically rotate the entire map display to align with the user's direction of travel (Compl. ¶73). For a golfer, this is problematic; if the golfer turns away from the green to walk to their ball, the green could rotate off the screen, making distance information unavailable (Compl. ¶¶ 74-75). Static, north-up displays also provide irrelevant distance data if the golfer's approach is not from a standard angle (Compl. ¶74).
- The Patented Solution: The invention is a handheld apparatus where the graphical representation of a specific target object (such as a golf green) is rotated independently of the rest of the map to align with the golfer's current "line of sight" to that object (Compl. ¶¶ 75, 77). This ensures that the displayed distances to key points on the object (e.g., front, back, center) are always from the golfer's actual perspective, regardless of the direction the golfer is facing or traveling ('498 Patent, Abstract; Compl. ¶77).
- Technical Importance: This approach solved the technical problem of displaying consistently relevant distance information in golf by basing the orientation of the target's image on the positional relationship between the user and the target, not the user's direction of travel (Compl. ¶81).
Key Claims at a Glance
- The complaint asserts independent claim 5 (an apparatus) (Compl. ¶76).
- Independent Claim 5 (Apparatus) Elements:
- An integrated handheld apparatus for measuring and displaying distances between a golfer and an object on a golf course.
- Comprising a computing device, a connected GPS device, and a connected display.
- The GPS device produces measured location information independent of golf course infrastructure.
- Includes means for determining the distance between the GPS device and the object using the measured location and stored object location information.
- A representation of the object is displayed as viewed from above.
- The representation "automatically rotates to orient said representation to coincide with said golfer's line of sight to said object."
- The device is adapted to selectively display the calculated distance.
- The complaint reserves the right to assert additional claims (Compl. ¶112).
III. The Accused Instrumentality
Product Identification
The complaint specifically identifies the "Golffiuddy World Platinum Device" and generally accuses Defendants' "GPS devices for use on golf courses, and systems relating thereto" (Compl. ¶¶ 6, 107).
Functionality and Market Context
The complaint does not provide specific details about the technical operation of the accused products. It alleges they are devices that infringe the patents-in-suit by being used on golf courses (Compl. ¶¶ 107, 112). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint alleges infringement in narrative form without an accompanying claim chart. The following tables summarize the core allegations based on the complaint's text.
U.S. Patent No. 6,456,938 Infringement Allegations
| Claim Element (from Independent Claim 13) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A system of storing and communicating sets of topographic information...by means of an accessible electronic network, each of the sets being specific to an individual golf course... | Defendants’ system for GPS devices, which allegedly allows for the use of map data for individual golf courses. | ¶110 | col. 42:59-64 |
| a first information processing and viewing device executing course-mapper software and receiving input of a first set of information... | The complaint does not specify which part of Defendants' system performs mapping functions. | ¶110 | col. 43:4-12 |
| a central information processing site and database receiving said set of information from said first information processing and viewing device and providing access to said set over the network... | The complaint does not provide specific factual allegations regarding a central database operated by Defendants. | ¶110 | col. 43:13-18 |
| a second information processing and viewing device receiving transmission of said first set of information...with autonomy from any positional equipment at the golf course. | Defendants’ GPS devices for use on golf courses, such as the Golffiuddy World Platinum Device, which allegedly operate without reliance on course-installed positioning equipment. | ¶¶6, 110 | col. 43:19-24 |
U.S. Patent No. 7,118,498 Infringement Allegations
| Claim Element (from Independent Claim 5) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An integrated handheld apparatus for measuring and displaying distances between a golfer and an object on a golf course... | Defendants' GPS devices for use on golf courses. | ¶112 | col. 37:17-19 |
| a GPS device adapted to produce measured location information...independent of golf course infrastructure... | The internal GPS module of the accused devices, which operates without reliance on local transmitters at the golf course. | ¶112 | col. 37:23-26 |
| means...for determining a distance...between said GPS device and said object by using said measured location information and previously stored information concerning the location of said object... | The processing capabilities of the accused devices, which allegedly calculate distances from the user's current GPS location to pre-loaded target locations. | ¶112 | col. 37:28-38:4 |
| wherein a representation of said object is displayed on said apparatus display...and said representation automatically rotates to orient said representation to coincide with said golfer's line of sight to said object... | The accused devices allegedly include a display feature that rotates the on-screen representation of a target, such as a green, to match the golfer's perspective. | ¶112 | col. 38:5-9 |
Identified Points of Contention
- Factual Sufficiency ('938 Patent): The complaint makes general allegations of a "system" infringement but provides minimal specific facts about how Defendants' products and services constitute the claimed multi-part system (mapper device, central network, player device). A central question will be whether Plaintiff can produce evidence supporting the existence and operation of this complete system.
- Technical Operation ('498 Patent): A key technical question is whether the accused devices' display function performs the specific rotation required by the claim—orienting a discrete object representation based on the line of sight vector between the user and object. This must be distinguished from prior art methods, such as rotating the entire map based on the user's direction of travel. The complaint does not provide direct evidence, such as screenshots, to substantiate this specific technical allegation.
V. Key Claim Terms for Construction
Term: "with autonomy from any positional equipment at the golf course" (’938 Patent, Claims 1 and 13)
- Context and Importance: This phrase was added during prosecution to distinguish the invention from prior art systems that relied on course-owned hardware (Compl. ¶¶ 62, 64). The definition of "autonomy" and "positional equipment" will be critical to the scope of the claims.
- Evidence for a Broader Interpretation: Plaintiff may argue that the term should be construed broadly to mean freedom from any active, course-managed positioning hardware like base stations or transmitters, as discussed throughout the patent's background (Compl. ¶¶ 18, 23). The prosecution history emphasizes distinguishing the invention from "course-controlled" systems (Compl. ¶64).
- Evidence for a Narrower Interpretation: Defendants may argue that "any positional equipment" should be interpreted to include the equipment used to create the original course map data. If the accused device downloads a map that was created using on-course survey equipment, they may argue it is not fully "autonomous."
Term: "automatically rotates to orient said representation to coincide with said golfer's line of sight to said object" (’498 Patent, Claim 5)
- Context and Importance: This limitation defines the core technical improvement over prior art navigation systems. The dispute will likely focus on the precise mechanism and trigger for the rotation (line of sight vs. direction of travel).
- Intrinsic Evidence for Interpretation: The complaint and patent emphasize that this rotation is "regardless of the direction of travel of the golfer" (Compl. ¶75). The prosecution history further distinguishes this specific type of object rotation from the prior art "pan" function, which merely moves a displayed object without reorienting it based on perspective (Compl. ¶90). This suggests the rotation is a specific geometric transformation based on the vector between the user's location and the object's location.
VI. Other Allegations
- Indirect Infringement: The complaint includes boilerplate allegations of induced and contributory infringement for both patents but offers no specific supporting facts, such as references to user manuals or marketing materials that would instruct or encourage infringing use (Compl. ¶¶ 109, 114).
- Willful Infringement: Willfulness is alleged for the ’498 patent, but the complaint does not specify whether this is based on pre- or post-suit knowledge, nor does it allege any specific facts to support a claim of egregious conduct beyond typical infringement (Compl. ¶116).
VII. Analyst’s Conclusion: Key Questions for the Case
This case appears to present three central questions for the court:
- A question of claim scope for the ’938 Patent: How broadly should the term "autonomy from any positional equipment at the golf course" be construed? The answer will determine whether using third-party map data, potentially created with on-course equipment, falls within the scope of the claims.
- A key evidentiary question for the ’938 Patent: Can the Plaintiff provide sufficient evidence to demonstrate that the Defendants operate a complete, infringing "system" that includes not only the handheld devices but also the claimed "course-mapper" functionality and a "central information processing site"?
- A key technical question for the ’498 Patent: Does the accused product's display technology perform the specific function required by Claim 5—automatically rotating a discrete object representation to align with the golfer's line of sight—or does it use a technically distinct, non-infringing method of display orientation?