Inventergy LBS LLC v. Tracking World Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Inventergy LBS, LLC (Delaware)
  • Defendant: Tracking the World, Inc. (California)
  • Plaintiff’s Counsel: Wagner, Anderson & Bright P.C.; RABICOFF LAW LLC
• Case Identification: 2:19-cv-03664, C.D. Cal., 04/30/2019
• Venue Allegations: Venue is alleged to be proper because the Defendant is a California corporation and has allegedly committed acts of patent infringement within the Central District of California.
• Core Dispute: Plaintiff alleges that Defendant’s personal tracking device infringes a patent related to systems and methods for remotely configuring and communicating with a tracking device.
• Technical Context: The technology relates to personal GPS tracking devices, a field where device functionality must be balanced against critical constraints like power consumption and network data usage.
• Key Procedural History: The patent-in-suit claims priority from a 2008 provisional application and is a divisional of a chain of prior applications. The complaint does not mention any prior litigation, licensing history, or post-grant proceedings involving the patent family.

Case Timeline

II. Technology and Patent(s)-in-Suit Analysis

• Patent Identification: U.S. Patent No. 9,781,558, titled “System and Method for Communication with a Tracking Device,” issued on October 3, 2017 (’558 Patent). (Compl. ¶¶7-8).

The Invention Explained

• Problem Addressed: The patent’s background section identifies a need for tracking systems with enhanced communication capabilities that could overcome the limitations of prior art devices, specifically regarding power consumption and the cost of network airtime (Compl. ¶9; ’558 Patent, col. 1:41-54).
• The Patented Solution: The invention discloses a tracking device that can be remotely configured and reconfigured by a remote system. The patent describes sending "configuration data" to the device to modify its operational parameters, such as the interval for reporting location data, the conditions for buffering data, or the power state of the location detector (’558 Patent, col. 2:21-40). This is achieved through a "configuration routine" on the device that modifies its behavior in response to communications from the remote system, thereby giving the remote system functional control over the device's operation (’558 Patent, Abstract).
• Technical Importance: This approach allows for the dynamic optimization of a tracking device's performance in the field, enabling a user or system to balance the need for frequent location updates against the conservation of battery life and network resources (’558 Patent, col. 1:55-62).

Key Claims at a Glance

• The complaint asserts independent claim 31 (Compl. ¶12).
• The essential elements of independent claim 31 are:
  • A tracking device comprising: a location detector, a communication device, memory (storing location and configuration data), and a processor.
  • The processor executes code to impart functionality that depends on the configuration data.
  • A "configuration routine" is operative to modify the configuration data responsive to communication from a remote system.
  • A "reporting routine" is operative to communicate operational data to the remote system.
  • The operational data is indicative of a battery status.
• The complaint does not explicitly reserve the right to assert other claims.

III. The Accused Instrumentality

Product Identification

• The accused instrumentality is Defendant’s PT-301, identified as a "Personal Tracking Device and Safety Phone" (Compl. ¶12). A user manual cover for the PT-301 is provided as Figure 1 in the complaint (Compl. p. 4).

Functionality and Market Context

• The complaint alleges the PT-301 is a tracking device that uses a built-in GPS receiver to determine its location (Compl. ¶13). The complaint includes Figure 2, a "GPS Specification" table for the PT-301, which details the capabilities of its 56-channel GPS chipset (Compl. p. 5).
• The device uses a built-in transceiver for cellular or satellite communication to connect with a remote system (Compl. ¶14). Figure 3 in the complaint depicts the installation of a SIM card, which supports the allegation of cellular communication capability (Compl. p. 5).
• A key alleged feature is that the PT-301 can be configured "over-the-air" to follow various "reporting plans," which determine how frequently its location is reported to a remote system (Compl. ¶17). The complaint's Figure 4 shows a "Scheduled Report" feature, described as letting a user set "preset time inervals" for reporting (Compl. p. 6).
• The PT-301 is also alleged to be capable of reading its own battery voltage and sending a report of that status (Compl. ¶19).

IV. Analysis of Infringement Allegations

’558 Patent Infringement Allegations

Identified Points of Contention

• Scope Questions: The complaint's allegations equate the PT-301's ability to be configured for different "reporting plans" with the patent's "configuration routine." This raises the question of whether merely changing a setting, such as a time interval for reporting, meets the claim limitation of a "routine operative to modify... configuration data." A defendant may argue that a "routine" implies a more complex software process than what is alleged.
• Technical Questions: Infringement of the "processor" limitation requires that the "functionality" of the tracking device "depend[s] at least in part on said configuration data." The complaint alleges that changing reporting plans alters functionality. This raises the technical question of whether changing the timing or trigger for a report constitutes a change in the device's core "functionality," or if the underlying functions remain fixed and the configuration data serves only as a simple input.

V. Key Claim Terms for Construction

• The Term: "configuration routine"

  • Context and Importance: This term appears central to the patent's novelty of providing remote functional access to the device. The construction of this term will likely determine whether a wide range of modern connected devices fall within the scope of the claim, as the ability to remotely update settings is common. Practitioners may focus on this term because its definition could distinguish between a simple settings update and a more substantive software modification process.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes "configuration data" as governing parameters such as an "interval for communicating" or an "interval for buffering," which could support a view that any remote command that changes an operational parameter is part of a "configuration routine" (’558 Patent, col. 2:23-34).
    • Evidence for a Narrower Interpretation: The word "routine" itself suggests a software procedure. The patent also provides a detailed communication protocol specification with specific command structures (e.g., SET_REPORTING_INTERVAL, SET_BUFFERING_INTERVAL) that a defendant could argue define the specific, structured software process required to meet the "routine" limitation (’558 Patent, col. 25:33, col. 26:60).

• The Term: "functionality of said tracking device depending at least in part on said configuration data"

  • Context and Importance: This term links the processor's operation to the configurable data. The infringement analysis hinges on whether the accused device's "functionality" is substantively altered by the configuration data, or if only the timing of a fixed function is changed.
  • Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent abstract states the processor is "operative to execute the code to impart functionality to the tracking device" and this functionality "depends at least in part on the configuration data" (’558 Patent, Abstract). A plaintiff may argue that changing how and when the device operates (e.g., reporting based on time vs. a geofence breach) is a fundamental change to its tracking "functionality."
    • Evidence for a Narrower Interpretation: A defendant may argue that "functionality" refers to the device's inherent capabilities (e.g., the ability to get a GPS fix, the ability to transmit data), which are not themselves changed by the configuration data. Under this view, the configuration data would be mere input to a fixed set of functions, rather than data that alters the functions themselves.

VI. Other Allegations

• Willful Infringement: The complaint makes a prayer for enhanced damages for willful infringement (Compl., Prayer for Relief ¶C). However, the factual allegations do not assert that the Defendant had pre-suit knowledge of the ’558 Patent. Therefore, any claim for willfulness would likely be based on the Defendant’s continued infringement after receiving notice of the lawsuit.

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

• A core issue will be one of claim scope: Can the term "configuration routine", as claimed in the patent, be broadly construed to cover the common feature of remotely updating a device’s operational settings (like reporting frequency), or does the patent’s specification and detailed communication protocol limit the term to a more specific and structured software modification process?
• A key evidentiary question will be one of technical operation: Does changing the accused device's "reporting plans" constitute a change to its underlying "functionality" as required by the claim, or is it merely a change to the input parameters for a set of fixed functions? The resolution will likely depend on expert analysis of the accused device's software and hardware architecture.