DCT
3:24-cv-01179
Pemberton v. Jack In Box Inc
Key Events
Amended Complaint
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., 09/08/2025
- Venue Allegations: Plaintiff alleges venue is proper in the Southern District of California because Defendant Jack in the Box Inc. (JITB) maintains a regular and established place of business in the district, and the alleged acts of infringement arise from its activities there.
- Core Dispute: Plaintiff alleges that Defendant’s "Re-Facing Magnetic System" (RMS) menu boards, used nationwide in its restaurants, infringe three patents related to modular, magnetically-attached signage apparatus.
- Technical Context: The technology at issue involves easily modifiable menu boards, a critical component for fast-food restaurants that frequently update product offerings and pricing.
- Key Procedural History: The complaint alleges that Plaintiff and his counsel met with Defendant’s executives on April 29, 2008, to discuss Plaintiff’s patent rights covering the menu board system. The complaint asserts that despite this pre-suit notice, Defendant proceeded to implement the accused system, forming the basis for the allegations of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2007-01-12 | Earliest Priority Date for ’447, ’369, and ’687 Patents |
| 2008-04-29 | Meeting between Pemberton and JITB executives |
| 2008-05-01 | JITB allegedly begins using the accused RMS (approx. date) |
| 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 |
| 2025-09-08 | Complaint Filing Date |
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"*
- Patent Identification: U.S. Patent No. 8,464,447, issued on June 18, 2013.
The Invention Explained
- Problem Addressed: The patent’s background section describes the need in retail environments like fast-food restaurants for signage that can be easily and frequently modified by non-technical staff, while avoiding the complexity and unprofessional appearance of prior art modular systems (’447 Patent, col. 1:15-22; col. 2:15-39).
- The Patented Solution: The invention proposes a magnet-based system where printed graphic sheets are releasably attached to a wall or mounting board. In one described embodiment, magnets are affixed to the back of the printed sheet (potentially via an intermediary sponge-like material), which then align with and attract to metal devices on the mounting board, allowing for simple, tool-free replacement (’447 Patent, Abstract; col. 4:8-18).
- Technical Importance: This design simplifies the process for updating menus, enabling rapid changes with precise alignment without requiring specialized personnel or complex hardware (’447 Patent, col. 3:8-14).
Key Claims at a Glance
- The complaint asserts independent claims 1, 7, and 8, along with dependent claims 2-6 and 9 (Compl. ¶32).
- The essential elements of independent claim 1 include:
- A readily modifiable signage apparatus comprising a wall with a planar surface.
- A plurality of printed sheets that are releasably affixed to the surface.
- Corresponding magnetic attraction devices on both the sheets and the planar surface for precise alignment and selective removal.
- The magnetic attraction devices comprise a metal device on the rear of the printed sheet and a magnet on the planar surface of the wall.
- The metal device is affixed to the printed sheet through a sponge-like member.
U.S. Patent No. 8,205,369 - *"Signage Apparatus Having Simple Magnet-Based Structure for Ease of Modification"*
- Patent Identification: U.S. Patent No. 8,205,369, issued on June 26, 2012.
The Invention Explained
- Problem Addressed: Like its related patents, the ’369 Patent addresses the need for simple, easily modifiable signage for retail and fast-food environments, noting the shortcomings of prior systems that were either too complex or lacked a professional finish (’369 Patent, col. 1:15-21; col. 2:35-43).
- The Patented Solution: This patent discloses an alternative magnetic attachment configuration. It describes a mounting board with an aperture containing a magnet, which is attached to a metal member on the board's rear surface. A printed sheet is equipped with a connection device containing a "magnetizable metal" that is inserted into the board's aperture to magnetically engage the board-side magnet, thereby securing the sheet (’369 Patent, Claim 1; col. 5:26-39).
- Technical Importance: This architecture places the more expensive magnet component on the permanent mounting board, while the disposable printed sheets carry a simpler, less costly metal component, potentially offering a more economical system for frequent updates (’369 Patent, col. 3:25-34).
Key Claims at a Glance
- The complaint asserts independent claims 1, 4, 5, 11, 12, and 15, along with multiple dependent claims (Compl. ¶¶41-63).
- The essential elements of independent claim 1 include:
- A signage apparatus comprising a mounting board with at least one aperture.
- A metal member on the rear of the board at the aperture, with a magnet attached to that metal member within the aperture.
- A printed sheet with observable indicia.
- A connection device on the printed sheet, configured to be received in the aperture and having a magnetizable metal for attraction to the magnet.
- The magnet and aperture are both circular cylindrical, and the aperture is at least partially beveled.
U.S. Patent No. 7,870,687 - *"Signage Apparatus Having Simple Magnet-Based Structure for Ease of Modification"*
- Patent Identification: U.S. Patent No. 7,870,687, issued on January 18, 2011.
- Technology Synopsis: This patent addresses the need for easily modifiable menu boards by disclosing a system with a translucent mounting board that has at least one aperture. The invention claims a printed sheet with a magnet affixed to its back surface; this magnet is configured to be received in the board's aperture to magnetically attract a metal member located on the rear surface of the board, thereby holding the sheet in place (’687 Patent, Abstract; col. 3:56-65).
- Asserted Claims: The complaint asserts independent claims 1 and 5, along with dependent claims 2-4 and 6-13 (Compl. ¶¶65-85).
- Accused Features: The complaint alleges that JITB's RMS infringes by using a translucent mounting board with holes, polycarbonate sheets with magnets on their back surfaces, and metal components on the board that are attracted to the sheet's magnets through the holes (Compl. ¶¶65-67).
III. The Accused Instrumentality
Product Identification
The accused instrumentality is Defendant's "Re-Facing Magnetic System" or "RMS" menu board system (Compl. ¶10).
Functionality and Market Context
The RMS is a modular menu board system deployed in JITB restaurants for displaying food items and prices (Compl. ¶¶12, 14). It allegedly comprises acrylic mounting boards and interchangeable polycarbonate printed sheets (Compl. ¶¶11, 50). According to the complaint, the printed sheets are attached to the boards via a magnetic mechanism, described as magnets that "snap in and hold the polycarbonate sheets in place" (Compl. ¶24). The system is designed for easy updates, with allegations that employees can pull existing sheets away and snap new ones into place (Compl. ¶39). An exhibit referenced in the complaint shows the workflow for swapping these interchangeable graphics (Compl. ¶50; Doc. 22-1 at 5-8). The complaint states that the RMS is used nationwide in multiple locations within each restaurant, including drive-throughs and interior counters (Compl. ¶¶14, 15).
IV. Analysis of Infringement Allegations
U.S. Patent No. 8,464,447 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a readily modifiable signage apparatus comprising a wall having a planar surface for receiving a printed sheet thereon | The RMS includes a "wall," or mounting board, made of acrylic, which has a planar surface. | ¶23 | col. 3:46-51 |
| a plurality of printed sheets for being releasably affixed to said planar surface...for selective removal...and for replacement | The RMS uses multiple polycarbonate sheets that are held in place by magnets and can be removed and replaced for menu changes. | ¶24 | col. 3:8-14 |
| wherein said magnetic attraction devices comprise a respective metal device affixed to a rear surface of each said printed sheet and a magnet affixed to said planar surface of said wall | The RMS allegedly includes "metal slugs" on the backside of the mounting board and a "metal bracket" affixed to the rear surface of the printed sheets. | ¶25 | col. 4:22-26 |
| wherein each said respective metal device is affixed to said rear surface of a printed sheet through a respective sponge-like member interposed... | The metal bracket is allegedly affixed to the rear of the printed sheets through a sponge-like member. | ¶¶25, 27 | col. 4:10-11 |
U.S. Patent No. 8,205,369 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a signage apparatus comprising: a mounting board having at least one aperture | The RMS uses an acrylic mounting board that has holes along its vertical edges. | ¶41 | col. 5:26-27 |
| 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 allegedly includes a metal bracket and magnets that "snap into the metal bracket through the aperature or hole in the mounting board." | ¶42 | col. 5:27-34 |
| a first printed sheet having observable indicia thereon | The RMS uses printed polycarbonate sheets with menu information. | ¶42 | col. 5:30 |
| 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 RMS sheets allegedly have a connection device in the form of a metal bracket affixed to their rear surface. | ¶43 | col. 5:31-35 |
| wherein said magnet and said at least one aperture are both circular cylindrical in shape and where said circular cylindrical aperture is at least partially beveled | The RMS allegedly uses magnets that snap into place and slugs that are "countersunk for easy positioning," which suggests a beveled geometry. | ¶43 | col. 5:36-39 |
Identified Points of Contention
- Scope Questions: A central dispute may arise over whether the "wall" recited in claim 1 of the ’447 Patent can be construed to read on the "mounting board" of the accused RMS, an equivalence the complaint alleges (Compl. ¶23).
- Technical Questions: The infringement theory for the ’447 Patent raises a critical technical question regarding component mapping. Claim 1 requires a metal device on the sheet and a magnet on the wall. The complaint, however, alleges the RMS has a "metal bracket" on the sheet and "metal slugs" on the mounting board (Compl. ¶25). This raises the question of whether the complaint alleges a structural configuration that is an inversion of what is claimed. For the ’369 Patent, a key question will be whether the accused system's components meet the specific structural arrangement of a magnet located within the board's aperture that attracts a separate metal-bearing device from the sheet.
V. Key Claim Terms for Construction
- The Term: "affixed to" (in the ’447 Patent) and "secured to" (in the ’369 Patent).
- Context and Importance: The definition of these terms is critical, as the nature of the connection between the various components (sheets, magnets, metal parts, sponge-like members, and boards) lies at the heart of the infringement analysis. The complaint dedicates a section to arguing for a broad construction that includes "removable or indirect attachments" (Compl. ¶¶20-22). Practitioners may focus on this term because the accused RMS allegedly uses a "snap in" mechanism, and whether this constitutes being "affixed" or "secured" in the manner claimed will be a central issue.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The complaint notes that the patents use terms like "releasably affixed," which suggests that "affixed" is not limited to permanent bonding (Compl. ¶21). The specification also discloses embodiments where attachment is achieved via intermediate structures like snap-caps, not just direct adhesion, which may support a broader reading that covers non-direct fastening (’447 Patent, col. 4:27-31).
- Evidence for a Narrower Interpretation: The specification describes embodiments where a magnet is "adhesively affixed" to a sponge-like material which is, in turn, "glued to the back of the printed sheet" (’447 Patent, col. 4:10-13). A defendant may argue that such language implies a more direct and bonded form of attachment than the "snap-in" functionality alleged in the accused RMS.
VI. Other Allegations
Willful Infringement
The complaint alleges willful infringement based on Defendant's purported pre-suit knowledge of the patents-in-suit. The allegations state that on April 29, 2008, Plaintiff and his patent attorney met with Defendant's executives and counsel to discuss the patented menu board system (Compl. ¶¶5-6). Despite this meeting, Defendant allegedly proceeded to implement the accused RMS nationwide without a license (Compl. ¶15). The complaint further alleges that Defendant's subsequent claims of co-inventorship and attempts to design around the patents demonstrate a conscious disregard for Plaintiff's patent rights (Compl. ¶¶17, 27, 29).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of structural correspondence: Does the accused RMS, which allegedly has "metal slugs" on its mounting board and a "metal bracket" on its printed sheets, embody the specific arrangement claimed in U.S. Patent 8,464,447, which recites a "metal device" on the sheet and a "magnet" on the wall, or does the complaint describe a potentially non-infringing, inverted configuration?
- A central legal question will be the construction of attachment terms: Will the court adopt the Plaintiff’s proposed broad definition for "affixed to" and "secured to" to include removable, indirect, and "snap-in" connections, or will it construe these terms more narrowly based on specific embodiments describing adhesive bonding?
- A key factual dispute will center on evidence of intent: What specific information was conveyed during the April 29, 2008 meeting, and does the evidence from that meeting and Defendant’s subsequent conduct rise to the level of objective recklessness required to prove willful infringement?