DCT
3:22-cv-01349
Vision Works IP Corp v. Mercedes Benz
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Vision Works IP Corp. (Washington)
- Defendant: Mercedes-Benz USA, LLC (Delaware); Mercedes-Benz Group AG (Germany)
- Plaintiff’s Counsel: Insigne PC
- Case Identification: 3:22-cv-01349, S.D. Cal., 10/31/2022
- Venue Allegations: Venue is alleged to be proper based on Defendant Mercedes-Benz committing acts of infringement in the district and maintaining a regular and established place of business, including a full-service design location in Carlsbad, California.
- Core Dispute: Plaintiff alleges that Defendant’s vehicles equipped with Adaptive Damping System, AIRMATIC, SmartKey Starter, mbrace Remote Start, and DRIVE PILOT systems infringe a portfolio of seven U.S. patents related to adaptive suspension, automatic engine shut-off, and collision avoidance technologies.
- Technical Context: The technologies at issue are central to modern automotive advancements in vehicle stability, fuel efficiency, and advanced driver-assistance systems (ADAS).
- Key Procedural History: The complaint alleges that Defendant has been aware of the asserted patents since at least February 2021, when Plaintiff offered to license its portfolio. The complaint further alleges that on April 13, 2021, Plaintiff’s counsel sent a letter to Defendant with exemplary claim charts detailing infringement of four of the asserted patents, and that Defendant’s response included conclusory allegations of non-infringement and invalidity.
Case Timeline
| Date | Event |
|---|---|
| 2004-10-05 | Earliest Priority Date for all Asserted Patents |
| 2005-01-01 | Accused ADS and AIRMATIC systems allegedly available (approximate) |
| 2008-01-01 | Accused Active Lane Assist system first released (approximate) |
| 2012-11-20 | U.S. Patent No. 8,315,769 Issues |
| 2013-05-07 | U.S. Patent No. 8,437,935 Issues |
| 2014-03-25 | U.S. Patent No. 8,682,558 Issues |
| 2015-02-10 | U.S. Patent No. 8,954,251 Issues |
| 2015-12-22 | U.S. Patent No. 9,217,380 Issues |
| 2016-01-01 | Accused mbrace Remote Start system available (approximate) |
| 2017-11-28 | U.S. Patent No. 9,830,821 Issues |
| 2019-01-01 | Accused DRIVE PILOT system debuted (approximate) |
| 2019-10-08 | U.S. Patent No. 10,436,125 Issues |
| 2021-02-01 | Plaintiff allegedly first contacted Defendant with license offer (approximate) |
| 2021-04-13 | Plaintiff’s counsel allegedly sent Defendant a letter with infringement charts |
| 2022-10-31 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,315,769 - “Absolute Acceleration Sensor for Use Within Moving Vehicles”
- Issued: November 20, 2012
The Invention Explained
- Problem Addressed: The patent’s background section describes the technical challenge of using accelerometers in early-warning anti-collision systems, as gravitational forces on sloped or cambered roads can introduce artifacts, making it difficult to distinguish true deceleration from the effects of gravity (US8315769B2, col. 1:56-2:9).
- The Patented Solution: The patent proposes systems that use sensors, including accelerometers and gyroscopes, to measure a vehicle's motion and adjust its performance characteristics. As relevant to the complaint's allegations, the patent describes an "Anti-Rollover System" that senses lateral acceleration to dynamically adjust the suspension at each wheel quadrant, thereby stiffening the outside suspension and/or loosening the inside suspension during a turn to improve traction and stability (US 8,315,769 B2, col. 13:16-40; Fig. 8).
- Technical Importance: This approach allows for what the industry now refers to as active or adaptive suspension, which can significantly improve vehicle handling, reduce body roll, and enhance safety during maneuvers (Compl. ¶¶36, 38).
Key Claims at a Glance
- The complaint asserts at least independent claim 21 (Compl. ¶40).
- The essential elements of independent claim 21 are:
- A method of controlling the performance characteristics of a vehicle, comprising:
- sensing a lateral acceleration of the vehicle at the vehicle;
- sending a signal to a plurality of control devices based upon the lateral acceleration of the vehicle; and
- adjusting a suspension characteristic of the vehicle based upon the lateral acceleration of the vehicle.
- The complaint also references dependent claims 22-26 as being infringed (Compl. ¶¶39, 41).
U.S. Patent No. 8,437,935 - “Absolute Acceleration Sensor for Use Within Moving Vehicles”
- Issued: May 7, 2013
The Invention Explained
- Problem Addressed: The patent’s background section identifies environmental pollution and fuel waste caused by motor vehicles left in an "idling" state, noting that numerous municipalities have adopted laws restricting idling time (US8437935B2, col. 3:3-24).
- The Patented Solution: The patent describes a vehicle monitoring system designed to automatically turn off an idling engine. The system comprises sensors to detect a "stationary status" and a transmission status (e.g., "Park"), an idling timer that activates when the vehicle is stationary, and a control device that shuts down the engine after the timer expires and the transmission status is confirmed (US 8,437,935 B2, col. 4:46-5:21; Fig. 11).
- Technical Importance: This technology provides an automated solution for enforcing anti-idling policies, thereby reducing fuel consumption and emissions, a key feature in modern vehicles (Compl. ¶19).
Key Claims at a Glance
- The complaint asserts at least independent claim 12 (Compl. ¶¶50-51).
- The essential elements of independent claim 12 are:
- A method of automatically turning off an idling engine of a vehicle, comprising:
- sensing a stationary status of the vehicle;
- activating an idling timer, with a deactivation time window; and
- detecting a transmission park-status of the vehicle.
Multi-Patent Capsule: U.S. Patent No. 8,682,558 - “Absolute Acceleration Sensor for Use Within Moving Vehicles”
- Issued: March 25, 2014 (Compl. ¶12).
- Technology Synopsis: This patent describes an anti-rollover system that uses "absolute lateral acceleration," which is distinguished from simple lateral acceleration by accounting for forces applied by terrain, such as a cambered road or hill, through the use of more complex sensors like gyroscopes (Compl. ¶¶60-62).
- Asserted Claims: Claims 21 and 22 are asserted (Compl. ¶63).
- Accused Features: The Mercedes-Benz ADS and AIRMATIC active suspension systems are accused of infringement (Compl. ¶¶63-64).
Multi-Patent Capsule: U.S. Patent No. 8,954,251 - “Absolute Acceleration Sensor for Use Within Moving Vehicles”
- Issued: February 10, 2015 (Compl. ¶13).
- Technology Synopsis: This patent relates to a vehicle communication system that uses a laser range finder to calculate the distance to an object and a speed sensor to calculate the vehicle’s speed, generating an internal alert to the driver based on these inputs (Compl. ¶¶20, 73).
- Asserted Claims: Claim 12 is asserted (Compl. ¶73).
- Accused Features: The Mercedes-Benz DRIVE PILOT system is accused of infringement (Compl. ¶¶73-74).
Multi-Patent Capsule: U.S. Patent No. 9,217,380 - “Absolute Acceleration Sensor for Use Within Moving Vehicles”
- Issued: December 22, 2015 (Compl. ¶14).
- Technology Synopsis: This patent covers a system for turning off an idling engine that detects a stopped vehicle and a non-drive transmission status, activates an idling timer, and sends a de-activation signal to turn off the engine upon timer expiration (Compl. ¶¶19, 82).
- Asserted Claims: Claims 1 and 2 are asserted (Compl. ¶¶82-83).
- Accused Features: The Mercedes-Benz SmartKey Starter Remote Start and mbrace Remote Start systems are accused of infringement (Compl. ¶¶82-83).
Multi-Patent Capsule: U.S. Patent No. 9,830,821 - “Absolute Acceleration Sensor for Use Within Moving Vehicles”
- Issued: November 28, 2017 (Compl. ¶15).
- Technology Synopsis: The patent describes a method for recording an event if a vehicle enters a "safe-zone threshold" with respect to an object, where the threshold is dependent on the vehicle's traveling speed and increases as the speed increases (Compl. ¶¶21, 92). Event data is recorded for later analysis.
- Asserted Claims: Claim 12 is asserted (Compl. ¶92).
- Accused Features: The Mercedes-Benz DRIVE PILOT system is accused of infringement (Compl. ¶¶92-93).
Multi-Patent Capsule: U.S. Patent No. 10,436,125 - “Absolute Acceleration Sensor for Use Within Moving Vehicles”
- Issued: October 8, 2019 (Compl. ¶16).
- Technology Synopsis: This patent covers a method for shutting down an idling engine that involves detecting a stopped vehicle and non-drive status, activating a shutdown timer, and then, upon expiration of the timer, re-confirming that the vehicle is stopped and in a non-drive status before shutting down the engine (Compl. ¶101).
- Asserted Claims: Claims 1 and 4 are asserted (Compl. ¶¶101-102).
- Accused Features: The Mercedes-Benz SmartKey Starter Remote Start and mbrace Remote Start systems are accused of infringement (Compl. ¶¶101-102).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are Mercedes-Benz vehicles equipped with one or more of the following systems: Adaptive Damping System (ADS, ADS+, ADS II), AIRMATIC, SmartKey Starter, mbrace Remote Start, and DRIVE PILOT (Compl. ¶¶28, 42, 52).
Functionality and Market Context
- The complaint alleges that the ADS and AIRMATIC systems are adaptive suspension technologies that monitor vehicle states, including lateral acceleration, to continually adjust shock absorbers in real-time to optimize vehicle performance, handling, and safety (Compl. ¶¶22-23, 40-41).
- The SmartKey Starter and mbrace Remote Start systems are alleged to allow a user to remotely start a vehicle's engine, which then activates a timer that automatically shuts off the engine after ten minutes of idling (Compl. ¶¶24-25, 50). The complaint cites an infringement chart in Exhibit 9 for its understanding of these systems (Compl. ¶53).
- The DRIVE PILOT system is described as an autonomous driving system that uses a laser to measure a vehicle's speed and its distance from an object to automatically maintain a safe distance and issue warnings to the driver (Compl. ¶26).
IV. Analysis of Infringement Allegations
U.S. Patent No. 8,315,769 Infringement Allegations
| Claim Element (from Independent Claim 21) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| sensing a lateral acceleration of the vehicle at the vehicle | The accused ADS and AIRMATIC systems allegedly monitor vehicle sensors in real-time to gather data, with absolute lateral acceleration being one sensed component of the vehicle state. | ¶40-41 | col. 13:16-20 |
| sending a signal to a plurality of control devices based upon the lateral acceleration of the vehicle | The accused AIRMATIC system is alleged to comprise “sending a signal to a plurality of control devices based upon the lateral acceleration of the vehicle.” | ¶41 | col. 13:20-24 |
| adjusting a suspension characteristic of the vehicle based upon the lateral acceleration of the vehicle | The accused ADS and AIRMATIC systems are alleged to continually adjust the vehicle's shock absorbers in real-time to achieve optimum vehicle performance based on the sensed data. | ¶40-41 | col. 13:20-27 |
- Identified Points of Contention:
- Scope Questions: The complaint's allegations for the '769 patent focus on "lateral acceleration" but also reference "absolute lateral acceleration" (Compl. ¶¶34, 40). The related '558 patent draws a distinction, teaching that "absolute" acceleration requires correction for terrain tilt using sensors like gyroscopes (Compl. ¶¶60, 62). A central issue may be whether the term "lateral acceleration" in claim 21 of the ’769 Patent should be construed to require the "absolute" measurement described elsewhere in the patent family, and whether the accused ADS and AIRMATIC systems perform such a measurement. The infringement allegations are based on an infringement chart in Exhibit 8, which contains only publicly available information (Compl. ¶43).
U.S. Patent No. 8,437,935 Infringement Allegations
| Claim Element (from Independent Claim 12) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| sensing a stationary status of the vehicle | The accused SmartKey Starter and mbrace Remote Start systems are initiated when the vehicle is stationary. | ¶50-51 | col. 4:46-51 |
| activating an idling timer, with a deactivation time window | The Remote Start systems are alleged to automatically turn off the idling engine after 10 minutes unless otherwise interrupted, which suggests the activation of a 10-minute timer. | ¶50 | col. 5:7-12 |
| detecting a transmission park-status of the vehicle | The complaint quotes this claim language but does not specify how the accused systems perform this step, though remote start systems typically require the transmission to be in park to operate. | ¶50-51 | col. 5:12-21 |
- Identified Points of Contention:
- Technical Questions: A key question may be whether the sequence of operations in the accused remote start systems matches that required by the claim. The patent's specification appears to describe an anti-idling system that detects when a running vehicle becomes stationary (e.g., at a stoplight) before activating a timer (US 8,437,935 B2, Fig. 11). The accused systems, by contrast, appear to start an already stationary vehicle and then run a timer. Whether "sensing a stationary status" covers confirming a pre-existing state for remote start, rather than detecting a transition from motion to rest, may be a central point of dispute.
V. Key Claim Terms for Construction
The Term: “absolute lateral acceleration” (’558 Patent, Claim 21) vs. “lateral acceleration” (’769 Patent, Claim 21)
- Context and Importance: The complaint accuses the same products (ADS/AIRMATIC) of infringing claims covering both "lateral acceleration" and "absolute lateral acceleration." The specification of the related ’558 patent, as described in the complaint, teaches that "absolute lateral acceleration" is distinct because it accounts for terrain tilt (e.g., via gyroscopes), whereas simple lateral acceleration does not (Compl. ¶¶60-62). The construction of these terms, and whether they are distinct in scope, will be critical to determining infringement for the suspension-related patents.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The plain language of "lateral acceleration" in the ’769 Patent could be argued to cover any measurement of side-to-side force relative to the vehicle, without requiring complex gravitational correction.
- Evidence for a Narrower Interpretation: The specification's detailed description of using gyroscopes to correct for gravitational artifacts to achieve "absolute" measurements could be used to argue that even the term "lateral acceleration" should be interpreted in this more limited, technically specific context to maintain consistency across the patent family (US 8,315,769 B2, col. 7:1-17; Compl. ¶62).
The Term: “sensing a stationary status of the vehicle” (’935 Patent, Claim 12)
- Context and Importance: Practitioners may focus on this term because its meaning is central to the operational mismatch between the patent's apparent disclosure and the accused products. The patent appears to disclose an anti-idling system for a running vehicle that stops, while the accused products are remote start systems for an already-stopped vehicle. The infringement analysis may turn on whether "sensing a stationary status" requires detecting a change of state from moving to stationary.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The plain language could support any check that confirms the vehicle is not moving, which would cover the precondition for activating a remote start system. The patent abstract describes a system for turning off an "idling engine," which could apply to both remote start and traffic-stop scenarios (US 8,437,935 B2, Abstract).
- Evidence for a Narrower Interpretation: The patent specification includes a flow chart where the system first checks "Is the Vehicle Stationary?" before activating an idling timer, suggesting a process that begins when a running car comes to a stop (US 8,437,935 B2, Fig. 11). This may support an interpretation that requires detecting a transition from a moving state.
VI. Other Allegations
Indirect Infringement
- The complaint does not provide sufficient detail for analysis of specific theories of indirect infringement, focusing its claims on direct infringement by making, using, selling, and offering for sale the accused products (e.g., Compl. ¶33).
Willful Infringement
- The complaint alleges willful infringement based on pre-suit knowledge. It states that Defendant was notified of its patent portfolio via an offer to license in February 2021 and was sent a letter with exemplary infringement charts for the ’769, ’935, ’558, and ’251 patents on April 13, 2021 (Compl. ¶¶29-30, 44, 54, 67, 76).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of technical scope: does the term "lateral acceleration," as used in the ’769 patent, require the "absolute" measurement corrected for gravitational forces that is explicitly described in the related ’558 patent, and does the evidence show that Mercedes's accused suspension systems actually perform this specific type of measurement?
- A key question will be one of operational sequence: can the claims of the engine shut-off patents, which appear to describe a method for stopping an engine after a vehicle transitions from moving to idle, be construed to read on the accused remote-start systems, which start an already-stationary vehicle and shut it off after a pre-set time?
- A central evidentiary question will be one of functional specificity: what evidence will demonstrate that the accused DRIVE PILOT system performs the specific functions required by the asserted claims, such as recording events based on a “safe-zone threshold” that dynamically “increases as the speed of the vehicle increases” as recited in the ’821 patent?