DCT

4:23-cv-04613

Safety Direct LLC v. Tesla Motors, Inc.

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 4:23-cv-04613, N.D. Cal., 09/08/2023
  • Venue Allegations: Venue is alleged to be proper based on Defendant’s residence, principal place of business, and commission of infringing acts within the Northern District of California.
  • Core Dispute: Plaintiff alleges that Defendant’s vehicle systems, which use a keyfob to trigger proximity-based alerts, infringe a patent related to preventing the loss of mobile devices.
  • Technical Context: The technology involves a paired system of a primary device and a trigger device that alerts a user when the two are separated by a short, predefined distance.
  • Key Procedural History: The patent-in-suit was assigned from the inventor to the Plaintiff on June 20, 2023. The complaint alleges that Defendant was notified of the patent-in-suit on August 14, 2023, less than a month before the suit was filed. The complaint also quotes the U.S. Patent and Trademark Office examiner’s reasons for allowance to assert the novelty of a "sync-to-activate" feature.

Case Timeline

Date Event
2016-05-19 '292 Patent Priority Date (Provisional App. 62/338,575)
2018-07-18 '292 Patent Notice of Allowance Issued
2018-10-30 '292 Patent Issued
2023-06-20 '292 Patent Assigned to Plaintiff Safety Direct LLC
2023-08-14 Plaintiff Alleges Notifying Tesla of '292 Patent
2023-09-08 Complaint Filed

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

U.S. Patent No. 10,115,292 - "System and Method for automatic loss prevention of mobile communication devices"

  • Issued: October 30, 2018.

The Invention Explained

  • Problem Addressed: The patent addresses the problem of mobile device theft or loss, noting that by the time a user realizes a device is missing, thieves may have disabled tracking features, and conventional long-range Bluetooth alerts are ineffective because the device is already out of sight. (’292 Patent, col. 1:5-24).
  • The Patented Solution: The invention proposes a two-part system: software ("ALPAS") on a "mobile communication device" and a separate, portable trigger device ("ALPAT"). When the ALPAT moves beyond a short, user-defined range (e.g., 2 meters) from the mobile device, the system immediately activates a high-volume audio alarm and flashing visual alert on the mobile device, providing an instantaneous warning of potential loss or theft. (’292 Patent, Abstract; col. 2:29-34). A key feature described is a "sync-to-activate" option, which can automatically re-arm the system when the two devices are brought back into proximity after a separation. (’292 Patent, col. 3:25-34).
  • Technical Importance: The system’s stated innovation is its focus on immediate, short-range loss prevention rather than post-loss recovery, aiming to alert the owner before the device is irretrievably lost. (’292 Patent, col. 1:5-9, 22-24).

Key Claims at a Glance

  • The complaint asserts independent system claim 1 and independent method claim 6 (Compl. ¶¶ 25, 27).
  • Independent Claim 1 (System) requires, in part:
    • A "mobile device" with "Automatic Loss Prevention Alert Software" (ALPAS).
    • A separate "Automatic Loss Prevention Alert Trigger" (ALPAT).
    • An "owner-defined distance" that triggers an alarm if the ALPAT moves away from the mobile device.
    • The ALPAS has the ability to activate an alarm that will "flash the screen of the mobile device brightly on and off and play a pre-recorded audio message repeatedly."
    • The ALPAS is configured with an option to turn on a ""sync to activate" option," which reactivates the system if the ALPAT is taken beyond the defined distance and then returns.
    • The ALPAS is also configured with an option for an ""at home safe zone"" mode to deactivate alerts.
  • Independent Claim 6 (Method) requires, in part:
    • Installing ALPAS on a mobile device.
    • The ALPAS communicating with an ALPAT and "constantly analyzing" the distance between them.
    • The ALPAS activating an alarm (flashing screen and repeated audio) if the ALPAT moves beyond an owner-defined distance.
    • The method includes providing options for a ""sync to activate"" feature and an ""at home safe zone"" mode, with functionality corresponding to Claim 1.
  • The complaint alleges infringement of these specific claims and does not explicitly reserve the right to assert others (Compl. ¶29).

III. The Accused Instrumentality

Product Identification

The complaint identifies the accused products as "the Tesla keyfob, Tesla cars and other products depicted on Defendant's websites" (Compl. ¶29). The infringement theory appears to treat the Tesla vehicle as the "mobile device" and the keyfob as the "ALPAT" (Compl. ¶¶ 25-28).

Functionality and Market Context

The complaint does not provide specific technical details on the operation of the accused Tesla features. It references an "Exhibit 10" claim chart which is not included in the provided court filing, precluding a detailed summary of the accused functionality (Compl. ¶35). Based on the infringement allegations, the accused feature is presumably a proximity-based alert or locking system where the vehicle detects when the keyfob is no longer nearby. The complaint does not contain allegations regarding the specific commercial importance of this feature.

IV. Analysis of Infringement Allegations

The complaint references a claim chart exhibit that was not provided. The infringement theory is therefore summarized in prose.

The complaint alleges that Tesla’s system, comprising a vehicle and a keyfob, infringes the ’292 patent (Compl. ¶29). The narrative suggests that the Tesla vehicle embodies the claimed "mobile device" running the "ALPAS" software, while the Tesla keyfob functions as the claimed "ALPAT" (Compl. ¶¶ 25, 27). The core of the infringement allegation is that when a user carries the keyfob away from the vehicle beyond a certain distance, the vehicle system performs the steps of detecting this separation and activating an alert, thereby practicing the methods of the asserted claims (Compl. ¶¶ 27, 34).

No probative visual evidence provided in complaint.

  • Identified Points of Contention:
    • Scope Questions: The primary dispute may center on whether a "Tesla car" can be construed as a "mobile communication device" as that term is used in the patent. The patent's specification consistently provides examples such as smartphones, tablets, and wearable electronics, raising the question of whether a vehicle falls within the scope of the claims (’292 Patent, col. 2:11-16; Claim 1).
    • Technical Questions: A key factual question is whether the accused Tesla system includes the specific functionalities required by the claims. For example, what evidence demonstrates that the accused system has a user-selectable ""sync to activate" option" as distinct from a default, automatic reconnection behavior? (Compl. ¶18; ’292 Patent, Claim 1). Further, does the accused alert actually "flash the screen ... brightly on and off and play a pre-recorded audio message repeatedly" as claimed? The complaint does not provide specific factual allegations to substantiate these technical requirements.

V. Key Claim Terms for Construction

  • The Term: "mobile communication device"

    • Context and Importance: The viability of the infringement case hinges on this term being construed to read on a Tesla vehicle. Practitioners may focus on this term because the patent’s text, title, and background appear to ground the invention in the context of personal, portable electronics, which differs significantly from a vehicle.
    • Intrinsic Evidence for a Broader Interpretation: The claim language states the mobile device "can potentially be any computing device, including a smartphone, a tablet or a wearable electronic device," where the word "including" is typically interpreted as non-exhaustive (Compl. ¶6:27-28; ’292 Patent, col. 8:46-49).
    • Intrinsic Evidence for a Narrower Interpretation: The patent's title, "System and Method for automatic loss prevention of mobile communication devices," and background section, which discusses the theft of "smartphones, tablets or other mobile devices," frame the problem and solution around hand-held personal items (’292 Patent, Title; col. 1:5-6). A court may consider this context to limit the claim scope to devices of that class.

  • The Term: ""sync to activate" option"

    • Context and Importance: The complaint highlights this feature by quoting the patent examiner's reasons for allowance, suggesting Plaintiff views it as a core inventive concept that overcomes prior art (Compl. ¶18). Practitioners may focus on this term because infringement will depend on whether the accused Tesla system has a corresponding feature that is both functionally equivalent and an "option" for the user.
    • Intrinsic Evidence for a Broader Interpretation: A party could argue that any system logic that automatically re-arms the alert functionality upon the trigger device's return to proximity meets the general purpose of this limitation, regardless of how it is implemented or presented to the user.
    • Intrinsic Evidence for a Narrower Interpretation: The claim recites an "option to turn on a "sync to activate" option," and the specification states the ""sync-to-activate" system may be turned on or off by the user" (’292 Patent, col. 3:30-32; col. 8:59-60). This language suggests a specific, user-configurable setting, not merely the inherent and automatic behavior of a wireless pairing protocol.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement of infringement, stating that Defendant provides customers with instructions and manuals (e.g., via its website) that instruct them on how to use the accused features (Compl. ¶39). It also makes a conclusory allegation of contributory infringement (Compl. ¶40).
  • Willful Infringement: Willfulness is alleged based on Defendant’s purported actual knowledge of the ’292 patent as of August 14, 2023, from emails sent to Tesla legal personnel (Compl. ¶21). The complaint further alleges that infringement continuing after service of the complaint is willful and deliberate (Compl. ¶37).

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

  1. A core issue will be one of definitional scope: can the term "mobile communication device," which the patent describes in the context of preventing the theft of smartphones and tablets, be construed to cover a multi-ton vehicle like a Tesla car? The outcome of this claim construction dispute may be dispositive.

  2. A second key issue will be one of evidentiary proof: does the accused Tesla system actually contain the highly specific features recited in the claims? In particular, the case may turn on whether Plaintiff can demonstrate that the accused products provide a user-selectable ""sync-to-activate" option," a feature the patent examiner highlighted as novel, or if the system's behavior is technically distinguishable from what is claimed.