CalAmp Corp v. Sunset Licensing LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: CalAmp Corp. (Delaware corporation, principal place of business in California)
  • Defendant: Sunset Licensing LLC (Texas LLC)
  • Plaintiff’s Counsel: Stradling Yocca Carlson & Rauth
• Case Identification: 8:20-cv-01012, C.D. Cal., 06/03/2020
• Venue Allegations: Plaintiff CalAmp alleges that venue is proper in the Central District of California because its corporate headquarters are located there and it is where a substantial part of the events giving rise to the non-infringement claim, such as the offer for sale of the accused devices, occurred. CalAmp also alleges that a prior lawsuit filed by Defendant Sunset in the Eastern District of Texas was improper under TC Heartland.
• Core Dispute: Plaintiff seeks a declaratory judgment that its telematics products do not infringe Defendant’s U.S. Patent No. 8,483,941 and that the patent’s asserted claims are invalid.
• Technical Context: The technology relates to vehicle telematics, specifically systems for monitoring vehicle speed over a continuous distance using on-board accelerometer data.
• Key Procedural History: This action for declaratory judgment was filed in response to a patent infringement complaint previously filed by Defendant Sunset Licensing against Plaintiff CalAmp in the Eastern District of Texas. CalAmp asserts that the Texas action was improperly filed and is moving to dismiss it for improper venue. The complaint also alleges that prior art references not considered during the patent's prosecution anticipate or render obvious the asserted claims.

Case Timeline

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

U.S. Patent No. 8,483,941 - "Vehicle Speed Monitor", issued July 9, 2013

The Invention Explained

• Problem Addressed: The patent identifies speeding as a primary cause of traffic accidents and notes the limitations of conventional enforcement methods, such as police radar, which only measure speed at a single point in time (’941 Patent, col. 1:4-15).
• The Patented Solution: The invention proposes a system for continuous speed monitoring over a stretch of road. A portable device, described as an "integrated circuit (IC) card," is given to a driver at a road entrance (e.g., a toll plaza) (’941 Patent, Fig. 1). This card contains an accelerometer that measures and records the vehicle's instantaneous accelerations along three axes over time. At the road's exit, the card is returned, the data is downloaded, and the vehicle's speed profile is calculated from the acceleration data to determine if any speed limits were violated (’941 Patent, Abstract; col. 2:36-55).
• Technical Importance: The technology provides a method to monitor a vehicle’s speed throughout a journey between two points, rather than just at a single location, using a self-contained, vehicle-mounted sensor package (’941 Patent, col. 2:40-44).

Key Claims at a Glance

• The complaint focuses on invalidity and non-infringement of independent claim 1 (Compl. ¶¶16, 17, 23).
• Essential elements of independent claim 1 include:
  • A vehicle speed monitor for monitoring speed of a moving vehicle, comprising:
  • an integrated circuit (IC) card, the IC card comprising:
  • an accelerometer being configured to measure instantaneous accelerations of the vehicle along three axes;
  • a nonvolatile memory;
  • a contact or contactless interface; and
  • a processor being programmed to record the instantaneous accelerations measured by the accelerometer over time in the nonvolatile memory and to transmit, via the contact or contactless interface, at least one of (1) the recorded instantaneous accelerations and (2) scalar instantaneous speeds over time determined from the recorded instantaneous accelerations.
• The complaint does not explicitly reserve the right to assert dependent claims but seeks a declaration that CalAmp has not infringed "any claim" of the patent (Compl. ¶18).

III. The Accused Instrumentality

Product Identification

• The complaint refers generally to CalAmp’s "telematics devices" and "solutions for global supply chain and logistics management" (Compl. ¶6). Specific accused products are not named in the complaint.

Functionality and Market Context

• The complaint describes CalAmp as a technology company that "pioneered the field of telematics" (Compl. ¶6). The functionality of the accused devices is not detailed beyond the assertion that they do not have an "integrated circuit (IC) card" or record data on such a card as required by the patent's claims (Compl. ¶23).

IV. Analysis of Infringement Allegations

This is a complaint for declaratory judgment of non-infringement. The "allegations" below are CalAmp's assertions as to why its products do not meet the claim limitations recited in the patent.
No probative visual evidence provided in complaint.

’941 Patent Infringement Allegations

Identified Points of Contention

• Scope Questions: The central dispute appears to be definitional: do CalAmp’s integrated telematics units constitute an "integrated circuit (IC) card" as that term is used in the patent? The complaint’s primary non-infringement argument rests on this distinction (Compl. ¶23).
• Technical Questions: A key question for the court will be whether the architecture of CalAmp's devices—specifically how and where they store accelerometer data—is functionally and structurally different from the claimed monitor, which requires recording data "in the nonvolatile memory" that is part of the "IC card."

V. Key Claim Terms for Construction

• The Term: "integrated circuit (IC) card"
• Context and Importance: This term is critical, as CalAmp’s entire non-infringement theory, as articulated in the complaint, is that its products are not and do not contain an "IC card" (Compl. ¶23). The outcome of the case may depend on whether this term is construed broadly to cover any self-contained telematics device or narrowly to mean a specific, card-like physical object.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent specification describes implementing the invention with generic hardware and software components, stating that the functions can be implemented by a "wide range of hardware, Software, firmware, or virtually any combination thereof" (’941 Patent, col. 9:39-44). This language could be used to argue that the form factor is not limiting.
  • Evidence for a Narrower Interpretation: The patent's abstract and detailed description consistently frame the invention as a portable card provided to a vehicle at an entrance and returned at an exit (’941 Patent, Abstract; col. 3:5-19). Figure 1 depicts a system where a physical monitor is exchanged at toll booths. This context suggests a removable, transactional object, which may support a narrower construction that excludes permanently installed telematics units.

VI. Other Allegations

• Invalidity: The complaint includes a count for declaratory judgment of invalidity, alleging failure to meet the conditions of 35 U.S.C. §§ 101, 102, 103, and/or 112 (Compl. ¶15).
  • The §101 (patent eligibility) argument is detailed, asserting that claim 1 is directed to the "abstract concept of a vehicle speed monitor" implemented with generic, conventional hardware elements like a processor, memory, and accelerometer, which perform only their expected functions (Compl. ¶¶17-18).
  • The §102/103 (novelty/obviousness) argument identifies two prior art patent applications, Willemin and Quercia, that were allegedly not considered by the patent office and which are alleged to anticipate or render obvious at least claim 1 (Compl. ¶16).
• Indirect Infringement: CalAmp seeks a declaration that it does not indirectly or contributorily infringe and has not induced others to infringe any valid claim of the patent (Compl. ¶22, ¶25). No specific facts regarding inducement are discussed beyond denying the allegations made in the separate Texas lawsuit.
• Willful Infringement: Willful infringement is not alleged in this declaratory judgment action.

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

This case appears poised to revolve around two fundamental patent law questions, in addition to the threshold procedural question of proper venue.

1. A core issue will be one of definitional scope: Can the term "integrated circuit (IC) card", which the patent repeatedly describes in the context of a removable device exchanged at toll booths, be construed to cover the modern, integrated telematics units that are the subject of the suit?

2. A second central issue will be patent eligibility: Does claim 1 recite merely the abstract idea of monitoring speed with sensors and generic computer components, as CalAmp alleges, or does it claim a specific, patent-eligible technological improvement to vehicle monitoring systems?

3. An evidentiary question will be one of novelty and obviousness: Do the Willemin and Quercia prior art references, which were not before the examiner, disclose the elements of the asserted claims, thereby rendering them invalid?