Inventergy LBS LLC v. One Step GPS LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Inventergy LBS, LLC (Delaware)
  • Defendant: One Step GPS, LLC (California)
  • Plaintiff’s Counsel: Law Office of Ryan E. Hatch, PC; RABICOFF LAW LLC
• Case Identification: 2:19-cv-07971, C.D. Cal., 09/13/2019
• Venue Allegations: Venue is alleged to be proper as Defendant is incorporated in California, maintains an established place of business in the district, and has allegedly committed acts of infringement in the district.
• Core Dispute: Plaintiff alleges that Defendant’s vehicle GPS tracking systems infringe patents related to remotely reconfigurable tracking devices that manage power and data transmission.
• Technical Context: The technology concerns GPS tracking devices, a field where device battery life and the cost of cellular data transmission are significant operational constraints.
• Key Procedural History: The two asserted patents stem from the same 2008 provisional application and share a common specification. U.S. Patent No. 10,129,695 is a continuation of a divisional application that led to U.S. Patent No. 9,219,978. The '695 patent is subject to a terminal disclaimer, which may tie its expiration date to that of the '978 patent.

Case Timeline

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

U.S. Patent No. 10,129,695, "System and method for communication with a tracking device," issued November 13, 2018

The Invention Explained

• Problem Addressed: The patent describes prior art tracking systems as having "very limited" communication capabilities with a central station, with power consumption and network access costs being "a serious concern" (’695 Patent, col. 1:38-53). This limited the functionality and endurance of personal tracking devices.
• The Patented Solution: The invention is a tracking device whose functionality can be dynamically controlled by a remote system. The patent describes a system where "configuration data" can be sent to the device to modify its behavior, such as changing location reporting intervals, setting geofences, or altering power states (’695 Patent, col. 2:26-50). This remote "functional access" allows the device's operation to be optimized for power consumption and network usage in response to changing needs, as illustrated in the logic of the flowchart in Figure 5 (’695 Patent, col. 2:23-25; Fig. 5).
• Technical Importance: This approach allows a tracking device's behavior to be adapted in the field, enabling a more efficient use of its limited battery and data resources, which was a key challenge for mobile tracking technologies (’695 Patent, col. 2:1-3).

Key Claims at a Glance

• The complaint asserts independent claim 1 (Compl. ¶13).
• Essential Elements of Claim 1:
  • A tracking device with a location detector, communication device, memory, and processor.
  • The device is configured to receive updates to "configuration data" from a remote system.
  • The device uses this "configuration data" to control its functionality.
  • The device determines if it is in communication with the remote system.
  • It transmits locations while able to communicate.
  • It buffers location data when communication is lost.
  • It transmits the buffered location data after communication is restored.

U.S. Patent No. 9,219,978, "System and method for communication with a tracking device," issued December 22, 2015

The Invention Explained

• Problem Addressed: As this patent shares a specification with the ’695 Patent, it identifies the same problems of limited communication, high power consumption, and network costs in prior tracking systems (’978 Patent, col. 1:30-49).
• The Patented Solution: The invention solves these problems through a tracking device with distinct software routines that can be controlled by a remote system. The patent describes a "configuration routine" to modify the device's settings, a "buffering routine" to store location data when out of communication range, and a "reporting routine" to transmit that data (’978 Patent, Abstract; col. 2:1-16). This architecture provides "functional access" to the device, allowing for dynamic management of its resources.
• Technical Importance: By enabling a remote system to modify the core operational parameters of the tracking device, the invention provided enhanced flexibility and efficiency in location monitoring, conserving battery power and minimizing network airtime (’978 Patent, col. 1:59-62).

Key Claims at a Glance

• The complaint asserts independent claim 1 (Compl. ¶23).
• Essential Elements of Claim 1:
  • A tracking device with a location detector, communication device, memory, and processor.
  • A "configuration routine" to modify the device's "configuration data" in response to communications from a remote system.
  • A "buffering routine" to buffer location data when the device is unable to communicate with the remote system.
  • A "reporting routine" to transmit location data when the device is able to communicate with the remote system.

III. The Accused Instrumentality

Product Identification

The "Exemplary One Step Products" are identified as "One Step's Personal Vehicle GPS Tracking system" (Compl. ¶13). The complaint also refers to "numerous other devices" made or sold by the Defendant (Compl. ¶16).

Functionality and Market Context

The complaint alleges that the accused products are GPS tracking systems used in vehicles (Compl. ¶13). It asserts that these products "practice the technology claimed" by the patents-in-suit but provides no specific, non-conclusory details regarding their technical operation or software architecture (Compl. ¶¶ 19, 29). The complaint does not provide sufficient detail for analysis of the product's commercial importance or market positioning.

Visual Evidence

No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint alleges infringement of the patents-in-suit and states that claim charts are provided in Exhibits 3 and 4 (Compl. ¶¶ 19, 29). However, these exhibits were not filed with the public complaint. The infringement theory is therefore based on the general allegations in the body of the complaint.

'695 Patent Infringement Allegations

• The complaint alleges that Defendant’s products directly infringe at least claim 1 of the ’695 Patent, stating that the products "satisfy all elements of the Exemplary '695 Patent Claims" (Compl. ¶¶ 13, 25). Without the referenced claim charts, the specific factual basis for how each claim element is met by the accused products is not detailed in the complaint.
• Identified Points of Contention:
  • Evidentiary Question: A central issue will be what evidence Plaintiff can produce to demonstrate that the accused products perform the specific functions of receiving "updates to said configuration data" from a remote system and using that data to "control functionality," as required by the claim.
  • Technical Question: What proof will be offered to show that the accused products perform the claimed sequence of buffering location data specifically "when communication with said remote system is lost" and then transmitting that buffered data only "after communication with said remote system is restored"?

'978 Patent Infringement Allegations

• The complaint makes similar allegations for the ’978 Patent, asserting that the accused products infringe at least claim 1 and that the non-proffered claim charts in Exhibit 4 would show that they "satisfy all elements" of the claims (Compl. ¶¶ 23, 29).
• Identified Points of Contention:
  • Structural Question: Claim 1 of the ’978 Patent recites distinct functional modules: a "configuration routine," a "buffering routine," and a "reporting routine." A likely point of dispute will be whether the accused product’s software architecture contains corresponding structures that meet these limitations, or if its functionality is implemented in a way that does not literally map to these claimed "routines."
  • Scope Question: The analysis may focus on whether the accused product's data storage function constitutes a "buffering routine" that is specifically operative "to buffer location data... when said communication device is unable to communicate with said remote system," or if it performs a more general data-logging function that is not conditioned on communication status.

V. Key Claim Terms for Construction

The Term: "configuration data" (’695 Patent, Claim 1)

• Context and Importance: This term is fundamental to the invention's core concept of "functional access." Its construction will determine the scope of control a remote system must have over the device to infringe. Practitioners may focus on this term because its breadth is a primary driver of the infringement analysis.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claim language itself is broad, referring simply to "configuration data" used to "control functionality" without express limitations.
  • Evidence for a Narrower Interpretation: The specification provides a list of specific examples of what "configuration data" can determine, including "an interval for communicating the location data," "a power state of the location detector," and a "monitored condition with respect to the location of the tracking device (e.g., a 'geofence')" (’695 Patent, col. 2:28-46). A party could argue the term should be construed as limited to these or similar types of operational parameters, rather than any user-adjustable setting.

The Term: "buffering routine" (’978 Patent, Claim 1)

• Context and Importance: The existence of a "buffering routine" as a distinct element is a prerequisite for literal infringement of claim 1. The dispute will likely center on what structure or set of software instructions in the accused product corresponds to this claimed "routine."
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party might argue that any software code that performs the function of buffering location data when the device loses its connection to the remote system constitutes a "buffering routine."
  • Evidence for a Narrower Interpretation: The specification details a specific communication protocol with commands like "SET_BUFFERING_INTERVAL" and describes the buffer as a "circular queue" (’978 Patent, col. 19:57-67). A party could argue that a "routine" should be construed to require a dedicated software module implementing this or a similar specific structure, not merely any general-purpose data logging capability.

VI. Other Allegations

• Indirect Infringement: The complaint alleges that Defendant induces infringement by selling the accused products and distributing "product literature and website materials" that instruct customers on how to use them in an infringing manner (Compl. ¶¶ 17, 27). It also pleads contributory infringement, alleging Defendant sells the products knowing they are for use in an infringing system (Compl. ¶¶ 18, 28).
• Willful Infringement: The complaint asserts that its service constitutes actual knowledge of infringement and that Defendant's continued activities are willful (Compl. ¶¶ 15-16, 25-26). This forms a basis for post-suit willfulness allegations.

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

• A central issue will be one of evidentiary sufficiency: As the complaint's allegations are conclusory and the referenced exhibits are not public, a primary question is whether Plaintiff can produce sufficient technical evidence to show that the accused products actually perform the specific remote configuration and lost-connection buffering functions required by the patent claims.
• The case will likely involve a key question of claim construction: Can the term "configuration data" be broadly interpreted to cover any remote setting that alters device behavior, or will it be narrowed to the specific types of operational parameters—such as reporting intervals and power states—that are detailed as exemplary embodiments in the shared patent specification?
• A critical dispute for the ’978 Patent will be one of structural correspondence: Does the accused product’s software architecture contain distinct software modules that map to the claimed "configuration routine" and "buffering routine", or does its functionality arise from a more integrated design, raising a significant question of literal infringement?