DCT
3:23-cv-06673
U Tec Group Inc v. Pine Locks
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: U-Tec Group Inc. (California)
- Defendant: Pine Locks (Isle of Man)
- Plaintiff’s Counsel: RIMON, P.C.
- Case Identification: 3:23-cv-06673, N.D. Cal., 12/28/2023
- Venue Allegations: Venue is asserted based on the Defendant being a non-U.S. resident, which allows for suit in any judicial district.
- Core Dispute: Plaintiff seeks a declaratory judgment that its Ultraloq smart locks do not infringe Defendant's patent and that the patent is invalid, arising from Defendant's use of Amazon's patent enforcement program to de-list Plaintiff's products.
- Technical Context: The technology relates to smart locks that can be operated electronically, often in conjunction with a mobile device, a market segment focused on replacing traditional key-based home security.
- Key Procedural History: The dispute was precipitated by Defendant Pine Locks utilizing the Amazon Patent Evaluation Express (APEX) program. This led to the de-listing of Plaintiff U-tec's products after U-tec allegedly missed the APEX notification email, which was delivered to a junk mail folder. U-tec also alleges that Pine Locks was on notice of invalidating prior art from separate litigation.
Case Timeline
| Date | Event |
|---|---|
| 2011-08-05 | Public demonstration of Lockitron prior art video (alleged) |
| 2012-11-08 | Publication of alleged Lockitron prior art ('789 publication) |
| 2013-05-03 | ’239 Patent Priority Date |
| 2019-08-13 | '239 Patent Issue Date |
| 2023-03-28 | Pine Locks allegedly receives notice of prior art in separate suit |
| 2023-11-18 | Pine Locks applies for Amazon APEX evaluation (approx.) |
| 2023-11-21 | Amazon sends APEX notification email to U-tec (allegedly unseen) |
| 2023-12-12 | First set of U-tec's products de-listed from Amazon (approx.) |
| 2023-12-15 | Second set of U-tec's products de-listed from Amazon (approx.) |
| 2023-12-28 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,378,239 - SMART LOCK, Issued August 13, 2019
The Invention Explained
- Problem Addressed: The patent background identifies the inconvenience of carrying many different physical keys or memorizing various combination codes, which can be forgotten or compromised ('239 Patent, col. 1:17-23). The invention also addresses the challenge of creating locking mechanisms for modern thin electronic devices like laptops and tablets ('239 Patent, col. 1:24-33).
- The Patented Solution: The invention is a locking system that can be electronically controlled by a separate mobile device, such as a smartphone or a small, wearable device ('239 Patent, Abstract; col. 2:41-44). The mobile device sends electrical commands, either via a physical cable or wirelessly, to a controller within the lock body, which in turn operates a mechanism (e.g., a motor or solenoid) to move a locking element into an open or closed position ('239 Patent, col. 2:46-60). One embodiment describes a mechanical "thumb slider" that a user can physically move to lock the device ('239 Patent, col. 5:51-55).
- Technical Importance: The invention provides a method for operating locks via ubiquitous mobile devices, aiming to eliminate the need for physical keys and provide a solution for securing increasingly compact electronics.
Key Claims at a Glance
- The complaint identifies independent claims 1, 2, and 5 as not being infringed (Compl. ¶37).
- Independent Claim 1 requires, among other elements:
- A lock body with a locking element.
- A moving mechanism to operate the locking element.
- An electrical controller.
- A separate mobile electronic device for providing commands.
- A "user operable slider" that is moved to mechanically operate the locking system.
- Independent Claim 2 is similar to claim 1 but specifically recites:
- A "thumb slider" mechanically positioned to push an actuator.
- The actuator is coupled to a lock head and a latch.
- Independent Claim 5 requires, among other elements:
- A lock body physically attached to a device or structure.
- A moving mechanism and electrical controller.
- A separate mobile cell phone device to provide commands.
- A "short term electrical power storage device" that stores power "temporarily for a duration sufficient to operate the moving mechanism," receives power "solely from said mobile cell phone device," and has no connection to an external DC/AC source.
- The complaint does not explicitly reserve the right to assert dependent claims but seeks a declaration of non-infringement for "any claim" of the patent ('239 Patent, Compl. ¶46).
III. The Accused Instrumentality
Product Identification
- The complaint identifies U-tec’s smart lock systems sold under the "Ultraloq" brand (Compl. ¶11). Twenty-four specific Amazon Standard Identification Numbers (ASINs) for these products are listed as having been de-listed (Compl. ¶¶18-19).
Functionality and Market Context
- The Ultraloq smart locks are alleged to use a "knob rotation method to manually lock a door" rather than a linear slider (Compl. ¶¶40, 19). An image in the complaint depicts the interior assembly of an Ultraloq lock, showing a prominent rotatable knob (Compl. p. 10).
- The locks are alleged to be powered by four standard AA batteries, which are housed in a battery compartment within the interior housing (Compl. ¶43). An image in the complaint shows this battery compartment (Compl. p. 11).
- The complaint alleges that over 80% of U-tec's total sales are made via the Amazon marketplace and that the de-listing of over 90% of its Ultraloq smart locks has caused significant financial losses (Compl. ¶¶27-28).
IV. Analysis of Infringement Allegations
The complaint seeks a declaratory judgment of non-infringement. The analysis below summarizes U-tec’s arguments for why its products do not meet the limitations of the asserted claims.
’239 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a user operable slider which is configured to be moved to mechanically operate the locking system to move the locking element into the locked position | The Ultraloq smart locks are alleged to use a rotatable knob, not a linear "slider," for manual operation. The complaint includes a photograph showing this knob. | ¶¶38, 40, p. 10 | col. 5:3-17 |
| Claim Element (from Independent Claim 5) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a short term electrical power storage device, the storage device being configured to store said electrical power temporarily for a duration sufficient to operate the moving mechanism | The Ultraloq smart locks are alleged to be powered by four AA batteries, which provide long-term, not "short term" or "temporary," power. | ¶¶41, 43, p. 11 | col. 3:9-14 |
- Identified Points of Contention:
- Scope Questions: A primary dispute will concern the definition of "slider." Does the term, as described in the patent with reference to linear movement (e.g., FIG. 5b), encompass the rotational motion of the accused product's knob? The complaint illustrates the patent's "thumb slider" with an annotated version of Figure 5b from the '239 patent (Compl. p. 9).
- Technical Questions: A second major dispute will focus on the power source. Does the use of standard, replaceable AA batteries constitute a "short term electrical power storage device" that is powered "temporarily," as required by claim 5? The patent specification contrasts this with power from a mobile device or a capacitor charged for a short period, raising the question of whether common batteries fall within the claim's scope ('239 Patent, col. 3:7-14).
V. Key Claim Terms for Construction
The Term: "user operable slider" / "thumb slider" (claims 1 and 2)
- Context and Importance: The plaintiff's core non-infringement argument for claims 1 and 2 is that its product uses a rotating knob, not a slider. The construction of "slider" will therefore be dispositive for these claims. Practitioners may focus on this term because the complaint draws a sharp, visual distinction between the linear motion depicted in the patent and the rotational motion of the accused product.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not appear to contain an explicit definition of "slider." A party might argue that any user-manipulated component that translates user input into mechanical motion for the lock could be considered a slider in a functional sense.
- Evidence for a Narrower Interpretation: The specification consistently describes the element (530) as a "thumb slider" that "slides in a slide channel" back and forth, and figures like 5a and 5b depict a component that moves linearly, not rotationally ('239 Patent, col. 5:46-51). This provides strong evidence for a narrower construction limited to linear motion.
The Term: "short term electrical power storage device" (claim 5)
- Context and Importance: This term is central to the non-infringement argument for claim 5. The plaintiff alleges its use of standard AA batteries is not "short term." The viability of this argument depends entirely on the construction of this phrase.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that any battery is technically a "short term" storage device relative to grid power and that the term is not strictly limited.
- Evidence for a Narrower Interpretation: The patent specification provides specific examples that suggest a much more limited meaning, such as "a short term storage capacitor" or an internal battery temporarily charged by an external device "to enable changing the state (open or closed) of the locking element" ('239 Patent, col. 3:9-14). Claim 5 itself further limits the scope by requiring the device to be powered "temporarily" and "solely from said mobile cell phone device." This language may support an interpretation that excludes conventional, long-lasting, user-replaceable batteries.
VI. Other Allegations
Invalidity
- The complaint includes a second claim for relief, seeking a declaratory judgment that the '239 patent is invalid under 35 U.S.C. §§ 101, 102, 103, and 112 (Compl. ¶¶49, 51). The invalidity argument is based on alleged prior art, including the "Lockitron" smart lock system, which was allegedly disclosed as early as 2011 (Compl. ¶52). The complaint asserts that this prior art teaches remote operation via smartphone and the use of a rotatable knob to operate a deadbolt, and that Pine Locks was aware of this art (Compl. ¶¶52-54, 57).
State Law and Exceptional Case Claims
- The complaint asserts several claims based on Pine Locks' alleged conduct, including Unfair Competition, Intentional Interference with Contractual Relations, and Intentional Interference with Prospective Economic Advantage (Compl. ¶¶61, 70, 82). These claims are based on the allegation that Pine Locks knowingly used the Amazon APEX program to de-list U-tec's products based on "objectively baseless" infringement allegations, thereby gaining an "injunctive relief that is otherwise unavailable in any district court" (Compl. ¶¶62, 65). U-tec also seeks a declaration that this is an exceptional case under 35 U.S.C. § 285, entitling it to attorneys' fees (Compl. ¶47).
VII. Analyst’s Conclusion: Key Questions for the Case
This declaratory judgment action appears to center on a few critical questions for the court:
A core issue will be one of definitional scope: Can the term "slider", described and depicted in the patent as a linearly moving component, be construed to cover the rotating knob used in the accused Ultraloq products? The outcome of this claim construction will likely determine the non-infringement question for claims 1 and 2.
A second key issue is one of technical scope: Does a lock powered by standard AA batteries meet the claim 5 limitation of a "short term electrical power storage device" that is powered "temporarily", especially in light of specification language pointing toward capacitors or power drawn from a mobile device?
Beyond the patent claims, a central question will be one of improper conduct: Did the defendant, Pine Locks, engage in unfair competition or tortious interference by using Amazon's APEX program to de-list U-tec's products, as U-tec alleges, based on claims that were "objectively baseless"? The facts surrounding the APEX process and Pine Locks' knowledge of both the accused products and the prior art will be central to resolving these state law claims.