DCT
5:18-cv-02546
Inventergy LBS LLC v. Usglobalsat Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Inventergy LBS, LLC (Delaware)
- Defendant: USGlobalSat, Inc. (California)
- Plaintiff’s Counsel: Watson LLP
- Case Identification: 5:18-cv-02546, C.D. Cal., 12/04/2018
- Venue Allegations: Venue is asserted based on Defendant’s incorporation in California and its alleged commission of infringing acts within the Central District of California.
- Core Dispute: Plaintiff alleges that Defendant’s GPS tracking devices infringe patents related to the remote configuration and data management of such devices.
- Technical Context: The technology addresses the need for efficient management of remote tracking devices by enabling a central system to modify their functionality, such as power consumption and data reporting behavior.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant with pre-suit notice of infringement via a letter dated May 25, 2018, which identified the patents-in-suit and included a preliminary infringement analysis.
Case Timeline
| Date | Event |
|---|---|
| 2008-02-08 | Priority Date ('558 & '978 Patents) |
| 2015-12-22 | U.S. Patent No. 9,219,978 Issued |
| 2017-10-03 | U.S. Patent No. 9,781,558 Issued |
| 2018-05-25 | Plaintiff sends pre-suit notice letter to Defendant |
| 2018-06-05 | Defendant confirms receipt of notice letter |
| 2018-12-04 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,781,558 - System and Method for Communication with a Tracking Device
- Patent Identification: U.S. Patent No. 9,781,558, "System and Method for Communication with a Tracking Device," issued October 3, 2017.
The Invention Explained
- Problem Addressed: The patent describes prior art tracking systems as having significant disadvantages, including high power consumption and costly network airtime, stemming from limited and inflexible communication capabilities with a central station (ʼ558 Patent, col. 1:39-47).
- The Patented Solution: The invention is a tracking device that can be remotely reconfigured by a central system. This is achieved through a "configuration routine" that modifies the device's stored configuration data in response to commands, thereby altering its functionality. This provides the remote system with "functional access" to control device behavior, such as its power state, to conserve resources (ʼ558 Patent, col. 2:12-16, Abstract).
- Technical Importance: This approach allows for enhanced efficiency and flexibility in managing potentially large numbers of tracking devices, particularly in minimizing power use and network costs (ʼ558 Patent, col. 1:48-54).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶21).
- The essential elements of independent claim 1 are:
- A tracking device comprising a location detector, a communication device, memory, and a processor.
- The processor executes code to impart functionality that depends on configuration data stored in memory.
- A "configuration routine" is operative to modify the configuration data in response to a communication from a remote system.
- A "reporting routine" is operative to communicate operational data to the remote system.
- The modifiable configuration data at least partially "determines a power state" of the location detector, affecting its power usage.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 9,219,978 - System and Method for Communication with a Tracking Device
- Patent Identification: 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: Like its family member, the '978 Patent addresses the limitations of prior art tracking systems, including their inefficient use of power and network resources (ʼ978 Patent, col. 1:45-51).
- The Patented Solution: The invention solves the problem of data loss from intermittent network connectivity. It describes a tracking device with a "buffering routine" that stores location data when the device is unable to communicate with the remote system (e.g., when out of range). When communication is re-established, a "reporting routine" transmits the accumulated data, ensuring a complete location history is delivered to the server (ʼ978 Patent, Abstract; col. 3:5-11).
- Technical Importance: This solution provides data integrity for mobile assets that travel through areas with poor or non-existent wireless network coverage (ʼ978 Patent, col. 2:23-27).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶33).
- The essential elements of independent claim 1 are:
- A tracking device comprising a location detector, a communication device, memory, and a processor.
- The processor executes code to impart functionality that depends on configuration data stored in memory.
- A "configuration routine" is operative to modify the configuration data in response to a communication from a remote system.
- A "buffering routine" is operative to buffer location data when the communication device is "unable to communicate" with the remote system.
- A "reporting routine" is operative to transmit the location data when the communication device is "able to communicate" with the remote system.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- The complaint accuses the "G-sat GPS Tracker" ('G-sat') of infringing the '558 Patent and the "USGlobalSat AVL Tracker" of infringing the '978 Patent (Compl. ¶¶ 21, 33).
Functionality and Market Context
- The G-sat is described as a portable, water-resistant GPS tracker with GSM/GPRS wireless networking, suitable for vehicle and asset tracking. Its features are allegedly configurable via SMS or application software (Compl. ¶22; Compl. Fig. 2).
- The AVL Tracker (identified as model TR-606) is described as a "multi-functional and cost-efficient communication platform" for vehicle applications like fleet management. It features a 3G modem, a microcontroller, and a "data buffer storage" capability of 3,000 points (Compl. ¶¶ 35, 39; Compl. Fig. 8, Fig. 11).
- The complaint presents these products as commercially important tools for vehicle and asset monitoring (Compl. Fig. 2, Fig. 8).
IV. Analysis of Infringement Allegations
’558 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a location detector operative to determine locations of said tracking device | The G-sat has a GPS and GSM/GPRS to determine its location. | ¶22 | col. 2:4-5 |
| a communication device operative to communicate with a remote system | The G-sat uses a SIM card and communicates with a cell phone. The complaint provides a visual demonstrating the installation of a SIM card (Compl. Fig. 3). | ¶23 | col. 2:5-7 |
| memory for storing data and code, said data including location data determined by said location detector and configuration data | The G-sat contains a specific memory chip for storing location and configuration data. The complaint provides a photo of the device's internal circuit board showing memory components (Compl. Fig. 4). | ¶24 | col. 2:7-10 |
| a processor operative to execute said code to impart functionality to said tracking device, said functionality...depending at least in part on said configuration data | The G-sat has a processor that executes code, allowing the tracker to function based on configuration data. | ¶25 | col. 2:10-13 |
| a configuration routine operative to modify said configuration data responsive to a communication from said remote system | The G-sat can change its report format based on messages received from a remote system. The complaint provides a settings table showing a user can configure the report format (Compl. Fig. 5). | ¶26 | col. 2:13-16 |
| a reporting routine operative to communicate operational data between said tracking device and said remote system | The G-sat reports operational data, such as whether the tracker is moving. A provided screenshot shows an "Event Detail" log with an "In Motion" status (Compl. Fig. 6). | ¶27 | col. 2:51-54 |
| said configuration data modifiable responsive to said communication from said remote system at least partially determines a power state of said location detector... | The G-sat responds to communications to determine the power and battery levels of the device, as shown in an event log reporting "Low Battery" status (Compl. Fig. 6). | ¶28 | col. 2:31-34 |
- Identified Points of Contention:
- Technical Question: A potential point of dispute concerns element 1(g). The complaint alleges that the G-sat's ability to report its power and battery levels satisfies the requirement that configuration data "determines a power state of said location detector" (Compl. ¶28). The defense may argue that this claim language requires the remote system to actively control or set the power state (e.g., command the GPS receiver to power down), as described in the patent's specification (ʼ558 Patent, col. 2:31-34, col. 7:30-34), rather than merely report on an existing condition.
’978 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a location detector operative to determine locations of said tracking device | The AVL Tracker tracks location using a real-time GPS monitor. A block diagram in the complaint illustrates the GPS antenna and CPU (Compl. Fig. 9). | ¶34 | col. 2:4-5 |
| a communication device operative to communicate with a remote system | The AVL Tracker uses a 3G modem and server to communicate with remote systems like cell phones. | ¶35 | col. 2:5-7 |
| memory for storing data and code, said data including location data... and configuration data | The AVL Tracker has 32 Mb of built-in memory for storing data. The complaint includes a hardware specification table listing this memory capacity (Compl. Fig. 10). | ¶36 | col. 2:7-10 |
| a processor operative to execute said code to impart functionality... | The AVL Tracker has a CPU that acts as the processor. | ¶37 | col. 2:10-13 |
| a configuration routine operative to modify said configuration data responsive to a communication from said remote system | The AVL Tracker modifies its configuration based on communications, as its "Interval report depends on customization" (Compl. Fig. 11). | ¶38 | col. 2:13-16 |
| a buffering routine operative to buffer location data...when said communication device is unable to communicate with said remote system | The AVL Tracker has a "data storage buffer of 3,000 points." | ¶39 | col. 2:23-27 |
| a reporting routine operative to transmit said location data...when said communication device is able to communicate with said remote system | The AVL Tracker has an internal reporting mechanism. | ¶40 | col. 2:42-45 |
- Identified Points of Contention:
- Technical Question: The infringement case for the ’978 Patent may turn on the specific operation of the accused "data storage buffer" (Compl. ¶39). The analysis will raise the question of whether this buffer is activated specifically "when said communication device is unable to communicate with said remote system," as required by claim 1(f). The complaint alleges the existence of a buffer but does not detail the specific logic that triggers its use, which is a key condition of the claimed invention (ʼ978 Patent, col. 2:23-27).
V. Key Claim Terms for Construction
For the ’558 Patent
- The Term: "determines a power state of said location detector" (Claim 1(g))
- Context and Importance: The construction of this term is critical for infringement of the ’558 Patent. Practitioners may focus on this term because Plaintiff's allegation rests on the accused device reporting a power state, whereas the patent may require actively controlling it. The outcome of the case could depend on whether "determines" is construed to mean "sets/controls" or more broadly as "ascertains/reports."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The complaint does not cite specific intrinsic evidence for a broader reading. A party might argue that in the absence of an explicit definition, the plain and ordinary meaning could encompass ascertaining and reporting a state.
- Evidence for a Narrower Interpretation: The patent specification describes that "configuration data modifiable responsive to the communication from the remote system at least partially determines a power state of the location detector" (’558 Patent, col. 2:31-34). The detailed protocol description includes commands like "SET_GPS_POWERSTATE" with constants such as "GPS_POWERDOWN" and "GPS_POWERUP", which strongly supports an interpretation of active control by the remote system (ʼ558 Patent, col. 7:30-34; col. 11:30-38).
For the ’978 Patent
- The Term: "when said communication device is unable to communicate with said remote system" (Claim 1(f))
- Context and Importance: This phrase establishes the conditional trigger for the claimed "buffering routine." Infringement requires proving that the accused product's buffering functionality is specifically linked to the status of its communication link.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A plaintiff could argue that a general-purpose data buffer that operates continuously would necessarily operate "when" the device is unable to communicate, thereby meeting the limitation.
- Evidence for a Narrower Interpretation: The claim structure creates a direct logical link between the communication state and the buffering action. The specification reinforces this, stating the buffering interval applies when the device is "out of communication range" (’978 Patent, col. 2:25-27) and that accumulated data is transmitted "when the communication device is able to establish a connection with the remote server" (ʼ978 Patent, col. 3:7-10). This language suggests the buffering is a specific response to a loss of connectivity, not a general, continuous function.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendant induces infringement of both patents by providing its customers with access to support, training, and instructions that enable and encourage use of the accused systems in an infringing manner (Compl. ¶¶ 29, 41).
- Willful Infringement: The prayer for relief requests trebled damages for willful infringement (Compl. ¶ D, p. 14). The factual basis for this claim is the allegation that Defendant had actual knowledge of the patents and its infringement since at least May 25, 2018, due to a pre-suit notice letter, and continued to sell the accused products (Compl. ¶¶ 16-19).
VII. Analyst’s Conclusion: Key Questions for the Case
This case will likely focus on the precise technical operation of the accused devices as compared to specific, functional claim limitations. The central questions for the court appear to be:
- A core issue for the ’558 Patent will be one of functional interpretation: does the accused G-sat tracker’s capability to report its battery status satisfy the claim requirement that remotely sent configuration data must determine the power state of the location detector, a function the patent specification describes as actively commanding a change in state?
- A key evidentiary question for the ’978 Patent will be one of conditional operation: does the accused AVL Tracker’s "data storage buffer" function specifically in response to the communication device being "unable to communicate," as the claim requires, or is it a general-purpose buffer that lacks this explicit, conditional triggering logic?