SkyHawke Tech LLC v. Deca Intl Corp

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: SkyHawke Technologies, LLC (Mississippi)
  • Defendant: DECA International Corp. (California) and DECA System Inc. (Korea)
  • Plaintiff’s Counsel: Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P.
• Case Identification: 3:10-cv-00708, S.D. Miss., 11/10/2011
• Venue Allegations: Plaintiff alleges venue is proper based on general federal venue statutes, asserting that Defendants sell or offer to sell the accused products within the Southern District of Mississippi.
• Core Dispute: Plaintiff alleges that Defendant’s GPS golf rangefinder devices infringe patents related to systems for GPS-based golf course mapping and the graphical display of course information.
• Technical Context: The technology at issue involves the use of portable GPS devices to provide golfers with real-time distance and location information on a golf course.
• Key Procedural History: This filing is a Second Amended Complaint. Post-issuance, both patents-in-suit have undergone reexamination proceedings. U.S. Patent No. 6,456,938 survived both an inter partes reexamination (which cancelled two non-asserted claims) and an ex parte reexamination (which confirmed the patentability of numerous other claims). U.S. Patent No. 7,118,498 survived an inter partes reexamination that confirmed the patentability of several claims. These proceedings may suggest an enhanced presumption of validity for the surviving claims.

Case Timeline

Date	Event
1999-07-23	’938 Patent Priority Date
2000-06-16	’498 Patent Priority Date
2002-09-24	’938 Patent Issue Date
2006-10-10	’498 Patent Issue Date
2011-11-10	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 describes a market where golfers relied on either simple printed yardage guides or complex, course-owned GPS systems mounted on golf carts. These solutions lacked a portable, golfer-owned system that could be used on any course to create and share accurate, personalized maps (’938 Patent, col. 1:16-59).
• The Patented Solution: The invention is a system centered on a personal, palm-held device integrated with a differential GPS (dGPS) receiver. This allows an individual golfer to walk a course and map its features (e.g., greens, bunkers) to create a digital vector map. The system's key feature is its network component: these user-generated maps can be uploaded to an internet website, stored in a database, and then downloaded by other golfers, eliminating the need for each user to independently map the same course (’938 Patent, Abstract; col. 5:20-29).
• Technical Importance: The invention proposed to decentralize golf course mapping, creating a user-generated, shareable database of course information independent of golf course management (’938 Patent, col. 5:20-29).

Key Claims at a Glance

• The complaint asserts "one or more claims" of the patent without specification (Compl. ¶11). Independent claim 1 describes a method comprising the following essential elements:
  • Inputting a first set of golf course topographic information to a first information processing and viewing device.
  • Transmitting this first set of information from the first device to a network.
  • Accessing that first set of information through the network with a second information processing and viewing device, where the second device operates with autonomy from any positional equipment at the golf course.

U.S. Patent No. 7,118,498 - PERSONAL GOLFING ASSISTANT AND METHOD AND SYSTEM FOR GRAPHICALLY DISPLAYING GOLF RELATED INFORMATION AND FOR COLLECTION, PROCESSING AND DISTRIBUTION OF GOLF RELATED DATA

• Issued: October 10, 2006

The Invention Explained

• Problem Addressed: The patent notes that prior art GPS golfing devices were often limited to displaying static, text-based distance information (e.g., "150 yards to center of green"). These systems lacked a dynamic, graphical interface that could provide richer contextual data or adjust to the golfer's specific position and line of sight (’498 Patent, col. 2:50-64).
• The Patented Solution: The invention is a handheld apparatus that provides a graphical representation of a golf course object, such as the outline of a green. The system's innovation lies in its interactivity and perspective-based display. It not only calculates distances but also "automatically rotates" the graphical object to match the golfer's line of sight, providing an intuitive view from their actual position on the course (’498 Patent, Abstract; col. 4:57-65). A user can also interact with the display, for example by moving a crosshair, to get distances to various points on the displayed feature.
• Technical Importance: This technology represented a shift from simple digital readouts to interactive, graphical displays for golf rangefinders, aiming to provide more intuitive and comprehensive spatial information to the player (’498 Patent, col. 22:1-16).

Key Claims at a Glance

• The complaint asserts "one or more claims" of the patent without specification (Compl. ¶17). Independent claim 1 describes an apparatus comprising the following essential elements:
  • A computing device, a GPS device, and a display.
  • Means for modifying measured location information to account for environmental changes.
  • Means for determining the distance between the GPS device and an object.
  • A representation of the object is displayed on the apparatus display.
  • The representation "automatically rotates to orient said representation to coincide with said golfer's line of sight."

III. The Accused Instrumentality

• Product Identification: The complaint identifies the "GolfBuddy World Platinum Device" and makes broader allegations against Defendants' "GPS devices for use on golf courses" (Compl. ¶8, ¶11).
• Functionality and Market Context: The complaint does not provide specific details on the functionality of the accused products. It alleges in a conclusory manner that the devices are used on golf courses and possess features that infringe the patents-in-suit (Compl. ¶11, ¶17). The complaint does not contain allegations regarding the product's market position or commercial importance.

IV. Analysis of Infringement Allegations

The complaint does not provide sufficient detail to construct a claim chart. The infringement allegations are pleaded generally, stating that Defendants' GPS devices and related systems infringe "one or more claims" of each patent without identifying specific claims or mapping accused functionalities to claim elements (Compl. ¶11, ¶17). No probative visual evidence provided in complaint.

The implied infringement theories are as follows:

• ’938 Patent: The complaint suggests that Defendants' system—comprising the GolfBuddy devices and an associated online platform for downloading course maps—practices the patented method. Under this theory, a user who first creates or provides course data constitutes the "first...device," the online service acts as the "network," and a subsequent user downloading that map constitutes the "second...device" (Compl. ¶12).

• ’498 Patent: The complaint suggests that the GolfBuddy device itself is an infringing apparatus. This implies the device has a graphical display that shows golf course features and that this display automatically rotates to align with the user's line of sight, among other claimed functions (Compl. ¶17).

• Identified Points of Contention:

  • Evidentiary Questions: The complaint's lack of specificity raises a primary factual question: what evidence will Plaintiff produce to demonstrate that the accused GolfBuddy system actually performs every step of the asserted method claims of the ’938 Patent and contains every element of the asserted apparatus claims of the ’498 Patent?
  • Scope Questions (’938 Patent): The structure of Defendants' system may raise questions of divided infringement. A central issue may be whether the actions of different actors (e.g., a map provider, the Defendants' server, and an end-user) can be combined to meet the limitations of a single method claim.
  • Technical Questions (’498 Patent): A key technical dispute may focus on the "automatically rotates" limitation. The analysis will require evidence of how the accused device's display operates in response to changes in the user's GPS location and whether this operation meets the specific functional requirements of the claim.

V. Key Claim Terms for Construction

• The Term: "a second information processing and viewing device" (’938 Patent, Claim 1)
• Context and Importance: The definition of this term is central to the infringement theory for the ’938 patent. Its construction will determine whether the claim requires two distinct end-users or if other system configurations (e.g., a server, or the original user's device at a later time) can satisfy the limitation.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The plain language of the claim does not specify that the "second device" must belong to a different user than the first. It merely requires that a second device access the information from the network.
  • Evidence for a Narrower Interpretation: The patent’s abstract states that the ability to upload and download maps "shall reduce the need for subsequent users to repeat the effort of mapping the same course," which may suggest the invention is directed to a system involving distinct first and second users (’938 Patent, Abstract).
• The Term: "automatically rotates" (’498 Patent, Claim 1)
• Context and Importance: This term is critical because it defines a key functional aspect of the claimed apparatus. The dispute will likely center on the degree of automation required and what level of user input, if any, is permissible for the rotation to be considered "automatic."
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification includes flowcharts depicting a step where the system will "Redraw & Orient Object to Coincide with User Line of Sight" after obtaining a GPS position fix (’498 Patent, Fig. 26B, Step D). This may support a construction where "automatically" means the device executes the reorientation in response to a new position fix without requiring the user to manually manipulate the map image itself.
  • Evidence for a Narrower Interpretation: A defendant may argue that "automatically" requires a continuous, seamless rotation with every change in position, without any user prompt or trigger (such as selecting a "refresh" or "re-orient" function).

VI. Other Allegations

• Indirect Infringement: The complaint makes conclusory allegations that Defendants have actively induced and contributed to the infringement of both the ’938 and ’498 patents (Compl. ¶13, ¶19). However, it does not plead specific facts to support the knowledge and intent elements of these claims, such as referencing user manuals, marketing materials, or other instructions provided by Defendants.
• Willful Infringement: The complaint alleges that Defendants' infringement of the ’498 patent is "willful and deliberate" (Compl. ¶21). It does not, however, allege a factual basis for this claim, such as pre-suit knowledge of the patent.

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

1. Evidentiary Sufficiency: Given the complaint’s general allegations, a central issue will be evidentiary. Can the Plaintiff, through discovery, produce the specific technical evidence required to demonstrate that the accused "GolfBuddy" products and systems practice every limitation of the asserted patent claims?
2. System Scope and Divided Infringement (’938 Patent): A key legal question will be one of system scope: how will the court construe the elements of the claimed method, particularly the roles of the "first" and "second" devices, and can infringement be found when the required actions are potentially performed by different, unrelated parties (e.g., the map creator and the map user)?
3. Functional Operation (’498 Patent): A dispositive technical question for the ’498 patent will be one of functional equivalence: does the accused device's display perform the specific "automatically rotates" function as required by the claim, or is there a fundamental mismatch in its technical operation that places it outside the claim's scope?