DCT
3:24-cv-01179
Pemberton v. Jack In Box Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Kirk Pemberton (California)
- Defendant: Jack in the Box Inc. (California)
- Plaintiff’s Counsel: Fisherbroyles, LLP
- Case Identification: 3:24-cv-01179, S.D. Cal., 07/09/2024
- Venue Allegations: Venue is based on Defendant conducting continuous and systematic business in the Southern District of California, having a regular and established place of business there, with the alleged infringement arising from these activities.
- Core Dispute: Plaintiff alleges that Defendant’s "Re-Facing Magnetic System" menu boards infringe three patents related to modular, magnet-based signage systems.
- Technical Context: The technology concerns modifiable menu boards for fast-food restaurants, which require frequent, easy updates of menu items and prices by non-technical staff.
- Key Procedural History: The complaint alleges a long history between the parties, beginning with an April 29, 2008 meeting where Plaintiff presented his patented menu board system to Defendant's executives. The complaint asserts that Defendant disputed Plaintiff's inventorship at that time but began using the accused system shortly thereafter in May 2008. This pre-suit history is central to the complaint's allegations of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2007-01-12 | Earliest Priority Date for '447, '369, '687 Patents |
| 2008-04-29 | Meeting between Pemberton and Jack in the Box executives |
| 2008-05-02 | Pemberton's counsel follows up with Jack in the Box |
| 2008-05-01 | Jack in the Box allegedly begins using the accused RMS (approx. May 2008) |
| 2011-01-18 | U.S. Patent No. 7,870,687 Issues |
| 2012-06-26 | U.S. Patent No. 8,205,369 Issues |
| 2013-06-18 | U.S. Patent No. 8,464,447 Issues |
| 2024-07-09 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,464,447 - "Signage Apparatus Having Simple Magnet-Based Structure for Ease of Modification," Issued June 18, 2013
The Invention Explained
- Problem Addressed: The patent's background describes prior art modifiable menu signs as being structurally complex, requiring many steps to change, and often resulting in a non-professional appearance where individual sign elements could slide out of position ('447 Patent, col. 2:8-27).
- The Patented Solution: The invention proposes a simplified system where printed graphic sheets are attached to a mounting board using magnets. Specifically, the mounting board has precisely located holes, and the rear of the board has thin metal shims aligned with these holes. Magnets affixed to the back of the printed graphic sheets extend through the holes to magnetically attract the shims, securing the graphic sheet firmly and accurately in place ('447 Patent, Abstract; col. 3:5-16). The mounting board is preferably translucent to allow for backlighting ('447 Patent, col. 4:53-56).
- Technical Importance: This design aims to reduce the complexity and number of components (e.g., separate frames, locking elements) needed for a modular sign, facilitating quick modification by restaurant employees while maintaining a professional look.
Key Claims at a Glance
- The complaint asserts claims 1-7 (Compl. ¶16). Independent claim 1 is central.
- Independent Claim 1 Elements:
- A wall having a planar surface for receiving a printed sheet
- A plurality of printed sheets for being releasably affixed to the surface
- Corresponding magnetic attraction devices, which comprise:
- a respective metal device affixed to a rear surface of each printed sheet
- a magnet affixed to the planar surface of the wall
- Each metal device is affixed to the printed sheet through a "respective sponge-like member"
U.S. Patent No. 8,205,369 - "Signage Apparatus Having Simple Magnet-Based Structure for Ease of Modification," Issued June 26, 2012
The Invention Explained
- Problem Addressed: Like its parent patents, the '369 Patent addresses the need for a simple, easily modifiable, and professional-looking modular sign system, particularly for backlit menu boards in fast-food establishments ('369 Patent, col. 2:15-39).
- The Patented Solution: This patent, a continuation-in-part, describes an alternative embodiment. Here, the magnets are located within the apertures of the mounting board, attached to metal shims on the board's rear surface. The printed sheet is then affixed using "connection devices" (such as snap-caps) that have a magnetizable metal component. The connection device passes through the printed sheet and its metal part is magnetically attracted to the magnet already positioned in the mounting board ('369 Patent, Abstract; col. 5:27-54).
- Technical Importance: This inverted design—with the magnet in the board and a metal piece on the sign—provides another simplified mechanism for achieving precise and secure placement of graphic panels.
Key Claims at a Glance
- The complaint asserts claims 1-14 (Compl. ¶22). Independent claim 1 is central.
- Independent Claim 1 Elements:
- A mounting board having at least one aperture
- A metal member attached to the rear of the mounting board at the aperture, and a magnet attached to the metal member within the aperture
- A first printed sheet with observable indicia
- At least one "connection device" secured to the printed sheet, which has a "magnetizable metal" part for magnetic attraction to the magnet in the mounting board
Multi-Patent Capsule
- Patent Identification: U.S. Patent No. 7,870,687, "Signage Apparatus Having Simple Magnet-Based Structure for Ease of Modification," Issued January 18, 2011
- Technology Synopsis: The '687 Patent, which is part of the same family as the '447 and '369 patents, discloses a modular signage apparatus for fast-food menu boards. It addresses the problem of complex and unprofessional-looking prior art signs by teaching a system where printed sheets with magnets on the back are affixed to a translucent mounting board that has apertures and corresponding metal shims, allowing for easy and precise replacement ('687 Patent, Abstract).
- Asserted Claims: Claims 1-13 (Compl. ¶28).
- Accused Features: The complaint alleges that the "Re-Facing Magnetic System" or "RMS," comprising components such as mounting boards, acrylic prints, and magnets, infringes the '687 Patent (Compl. ¶¶11, 28).
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is Defendant's menu board system, identified as the "Re-Facing Magnetic System" or "RMS" (Compl. ¶10).
Functionality and Market Context
- The complaint describes the RMS as a menu board system comprising: "(a) mounting boards; (b) acrylic prints; (c) polycarbonate panels; (d) magnets; (e) price carriers; (f) seam covers; and (g) pre-press-print production" (Compl. ¶11). The complaint alleges that Jack in the Box was "strongly considering installing the menu board system in substantially all its drive throughs and restaurants" and began using the RMS in May 2008 (Compl. ¶¶6, 16).
IV. Analysis of Infringement Allegations
The complaint provides a high-level list of the accused system's components but does not map them to specific claim limitations. The following charts are based on the complaint's description of the RMS. No probative visual evidence provided in complaint.
'447 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a wall having a planar surface for receiving a printed sheet thereon | The RMS's "mounting boards" | ¶11(a) | col. 6:21-22 |
| a plurality of printed sheets for being releasably affixed to said planar surface | The RMS's "acrylic prints" | ¶11(b) | col. 6:23-25 |
| said planar surface having corresponding magnetic attraction devices affixed at selected locations | The RMS's "magnets" and "mounting boards" | ¶11(a), (d) | col. 6:26-34 |
| wherein said magnetic attraction devices comprise a respective metal device affixed to a rear surface of each said printed sheet | The complaint does not provide sufficient detail for analysis of this element. | col. 6:35-37 | |
| and a magnet affixed to said planar surface of said wall | The RMS's "magnets" | ¶11(d) | col. 6:38-39 |
| wherein each said respective metal device is affixed to said rear surface of a printed sheet through a respective sponge-like member | The complaint does not provide sufficient detail for analysis of this element. | col. 6:40-43 |
'369 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a mounting board having at least one aperture | The RMS's "mounting boards" | ¶11(a) | col.6:2-3 |
| a metal member attached to a rear surface of said mounting board at said aperture and a magnet attached to said metal member within said aperture | The RMS's "magnets" and "mounting boards" | ¶11(a), (d) | col. 6:4-7 |
| a first printed sheet having observable indicia thereon | The RMS's "acrylic prints" | ¶11(b) | col. 6:8-9 |
| at least one connection device secured to a surface of said first printed sheet...having a magnetizable metal for magnetic attraction to said magnet | The complaint does not provide sufficient detail for analysis of this element. | col. 6:10-16 |
- Identified Points of Contention:
- Technical Questions: The complaint's description of the RMS is general. A central question will be whether the actual RMS product contains structures corresponding to the specific claim limitations that are not explicitly mentioned in the complaint, such as the '447 Patent's "sponge-like member" or the '369 Patent's "connection device."
- Scope Questions: The asserted patents claim two distinct magnetic attachment configurations (magnet on the sheet vs. magnet in the board). A key question is whether the single accused RMS can be found to infringe claims from both patents, or if its specific design aligns with one, the other, or neither.
V. Key Claim Terms for Construction
For the '447 Patent:
- The Term: "sponge-like member"
- Context and Importance: This term appears in independent claim 1, defining the interface between the magnet and the printed sheet. The complaint does not allege the presence of such a component in the RMS. Therefore, the construction of this term will be critical to determining literal infringement, and its absence in the accused product may be a central point of non-infringement for the defense.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term is not extensively defined, which may suggest it should be given its plain and ordinary meaning. The specification describes it as "sponge-like material 29" which is "glued to the back of the printed sheet" ('447 Patent, col. 3:9-12). An argument could be made that any compressible or soft intermediary material could meet this limitation.
- Evidence for a Narrower Interpretation: The specification and figures consistently show this as a distinct layer ('447 Patent, Fig. 4B, 4C, 5B, 5C). This may support a narrower construction requiring a separate, soft, porous material, not merely an adhesive layer or other component.
For the '369 Patent:
- The Term: "connection device"
- Context and Importance: This term is a key element of independent claim 1, describing the component on the printed sheet that engages with the magnet in the mounting board. As with the "sponge-like member," the complaint's list of RMS components does not include an obvious analogue. The construction will determine whether any part of the RMS's attachment mechanism can be read on by this term.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself is general. An argument could be made that any structure on the printed sheet that facilitates connection to the magnet could qualify.
- Evidence for a Narrower Interpretation: The specification describes this device in detail as a "snap-cap connection 58," which includes a "center protrusion 62," a "disk 60," and a "mating member 68" ('369 Patent, col. 5:40-46; Figs. 12-20). This detailed description of a specific multi-part assembly may support a much narrower construction that the accused RMS does not meet.
VI. Other Allegations
- Willful Infringement: The complaint places heavy emphasis on willful infringement. It alleges that Defendant had pre-suit knowledge of the patented technology from an April 29, 2008 meeting and subsequent correspondence (Compl. ¶¶5, 12, 18, 24). The complaint further alleges that Defendant not only knew of the technology but actively disputed Plaintiff's inventorship, claiming a Jack in the Box employee was a co-inventor, which Plaintiff alleges demonstrates specific knowledge and intent to infringe (Compl. ¶¶13-15, 19-21, 25-27).
VII. Analyst’s Conclusion: Key Questions for the Case
- Evidentiary Mismatch: Will discovery reveal that the accused RMS contains the specific "sponge-like member" required by the '447 patent and the multi-part "connection device" taught by the '369 patent? The complaint's current lack of detail on these technical elements suggests a primary battleground over the actual structure of the accused product versus the specific language of the claims.
- Willfulness and History: A central issue will be the legal import of the parties' pre-suit history. Will the 2008 meeting and inventorship dispute be sufficient to establish the "subjective willfulness" prong of the Halo test, potentially exposing Defendant to enhanced damages if infringement is found?
- Claim Scope and Duality: Can the Plaintiff successfully argue that the single accused RMS infringes two different patented embodiments (one with the magnet on the sheet, the other with the magnet in the board)? The case may turn on whether the RMS architecture is found to read on one of these configurations, or if it represents a third, non-infringing design.