WirelessWerx IP LLC v. Trimble Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: WirelessWerx IP LLC (Texas)
  • Defendant: Trimble, Inc. (Delaware, with headquarters in Colorado)
  • Plaintiff’s Counsel: Ramey LLP
• Case Identification: 1:24-cv-01035, D. Colo., 04/17/2024
• Venue Allegations: Plaintiff alleges venue is proper in the District of Colorado because Defendant has its headquarters in the state, maintains regular and established places of business in the district, and directs infringing activities to the district.
• Core Dispute: Plaintiff alleges that Defendant’s products and services infringe a patent related to methods and systems for monitoring and controlling devices within predefined geographical zones using wireless portable devices.
• Technical Context: The technology involves using geofencing to enable a portable device (e.g., a smartphone) to interact with or control other instruments when the device enters a specific, pre-configured geographic area.
• Key Procedural History: The asserted patent is subject to a terminal disclaimer. The complaint does not mention any prior litigation, inter partes review proceedings, or licensing history related to the patent-in-suit.

Case Timeline

Date	Event
2004-11-05	'515 Patent Priority Date (Provisional App.)
2012-10-16	'515 Patent Issue Date
2024-04-17	Complaint Filing Date

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

U.S. Patent No. 8,290,515 - "Methods and Systems to Monitor and Control Devices Utilizing Wireless Media"

• Patent Identification: U.S. Patent No. 8,290,515, "Methods and Systems to Monitor and Control Devices Utilizing Wireless Media", issued October 16, 2012.

The Invention Explained

• Problem Addressed: The patent describes a need for monitoring and control systems that do not rely on "heavy streaming of data to be analyzed by an ever-growing server based infrastructure." It notes that conventional wireless devices lacked the "computing power or the necessary configuration to attend every environment in which an individual operates." (’515 Patent, col. 1:32-39).
• The Patented Solution: The invention proposes an intelligent portable wireless device, such as a PDA or smartphone, that has significant onboard computing power. This device is loaded with data defining multiple "geographical zones" and configurations for each zone (’515 Patent, Abstract). Using its own GPS receiver, the device determines when it has entered one of these zones and then automatically enables communication with, and execution of pre-programmed operations on, other instruments associated exclusively with that zone. (’515 Patent, col. 1:40-65). This "event driven" approach aims to limit data transmission and preserve network bandwidth. (’515 Patent, col. 5:18-24).
• Technical Importance: The described solution decentralizes system intelligence to the edge device, reducing reliance on constant network connectivity and server-side processing, a key consideration for scaling machine-to-machine and asset tracking applications. (’515 Patent, col. 1:49-53).

Key Claims at a Glance

• The complaint asserts independent claim 1 and dependent claims 2-6, with a specific reference to "example claim 5." (Compl. ¶¶ 17, 22).
• Independent Claim 1 recites a method with the essential elements of:
  • Defining a plurality of geographical zones.
  • Associating at least one device with a specific geographical zone, with the "association being exclusive of other geographical zones."
  • Loading data representing these zones onto a "portable device" equipped with a GPS receiver.
  • The portable device determining its own location.
  • Enabling communication between the portable device and the associated device only when the portable device is within that device's specific zone.
  • Programming the portable device to determine the occurrence of certain conditions, with communication being "limited to communication about conditions in a single geographical zone."
• Plaintiff reserves the right to assert other claims. (Compl. ¶22).

III. The Accused Instrumentality

Product Identification

The complaint does not name any specific accused products or services. It refers to them generally as "Defendant's Accused Products" and "infringing products and services." (Compl. ¶¶ 4, 17).

Functionality and Market Context

The complaint does not provide sufficient detail for analysis of the functionality or market context of the accused instrumentalities. It alleges only that Defendant "develops, designs, manufactures, distributes, markets, offers to sell and/or sells infringing products and services in the United States." (Compl. ¶4).

IV. Analysis of Infringement Allegations

The complaint does not contain a claim chart or any substantive factual allegations detailing the basis for infringement. It states that an attached "Exhibit B describes how the elements of example claim 5 from the '515 Patent are infringed by the Accused Products." (Compl. ¶22). As this exhibit was not provided with the complaint, the specific infringement theory is not detailed in the public filing.

No probative visual evidence provided in complaint.

Identified Points of Contention

Based on the asserted claims and the lack of detail in the complaint, initial disputes may focus on basic discovery regarding the identity and operation of the accused products. Substantively, the analysis may raise several questions:

• Architectural Questions: Does the accused system's architecture map onto the patent's model, which centers on an intelligent "portable device" executing pre-loaded configurations? Or does it use a different architecture, such as one where field devices are simple sensors reporting to a central, cloud-based server that contains all the processing logic?
• Technical Questions: What evidence demonstrates that the accused products create an "association being exclusive" between a controlled device and a single geographical zone, as required by claim 1? Further, for claim 5, which is specifically referenced, what evidence shows the accused system performs a method of displaying a map "for a transponder"?

V. Key Claim Terms for Construction

The Term: "portable device"

• Context and Importance: This term appears central to the claims. The patent's specification repeatedly describes the "portable device" as a "PDA as provided herein" with "high computing power" capable of storing multiple configurations and executing logic locally. (’515 Patent, col. 1:40-42). The definition of this term will be critical to determining if Trimble's accused system, which may use a different client-server architecture, falls within the scope of the claims.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification states the device "can be anyone of a cell mobile phone, a smart phone, or a personal data assistant." (’515 Patent, col. 2:4-6). This could support a broad interpretation covering any modern mobile device.
  • Evidence for a Narrower Interpretation: The Summary of the Disclosure emphasizes that the "PDA is an intelligent device that is only required to send data when an exception is met" and has the "capability to store multiple configurations to control and monitor multiple environments." (’515 Patent, col. 1:43-48). This language may support a narrower construction requiring significant onboard, autonomous processing capabilities, as distinct from a simple client device that relies on a server.

The Term: "association being exclusive of other geographical zones"

• Context and Importance: This limitation in claim 1 requires that a device under control is associated with one zone to the exclusion of others. Practitioners may focus on this term because modern asset management systems may allow a single asset (e.g., a vehicle) to be subject to rules from multiple, overlapping geographical zones simultaneously (e.g., a "city" zone and a "state" zone).
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claim language itself does not specify a temporal or permanent nature of the exclusion, which might allow for an interpretation where the association is exclusive at any given instant but can change as the device moves.
  • Evidence for a Narrower Interpretation: The patent's solution is framed around the portable device adapting to "the new zone such that the PDA 105 interacts only with the peripheral devices within the entered zone." (’515 Patent, col. 12:42-44). This focus on interacting with devices "within" a single entered zone could support a narrower reading that a device cannot be associated with multiple zones at once.

VI. Other Allegations

• Indirect Infringement: The complaint alleges inducement, stating that Defendant "actively encouraged or instructed others (e.g., its customers...)" on how to use its products in an infringing manner. (Compl. ¶23). It also alleges contributory infringement, claiming there are "no substantial non-infringing uses for Defendant's products and services." (Compl. ¶24).
• Willful Infringement: Willfulness is alleged based on knowledge of the patent from "at least the filing date of the lawsuit." (Compl. ¶¶ 23-24). The prayer for relief requests a declaration of willful infringement and treble damages should discovery reveal pre-suit knowledge of the patent. (Compl. ¶B, p. 6). Plaintiff expressly reserves the right to amend and add allegations of pre-suit inducement based on discovery. (Compl. ¶23, n.1).

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

• An Evidentiary Question: The primary threshold issue is factual: what specific Trimble products or services are accused of infringement, and how do they technically operate? The complaint's complete reliance on an unprovided exhibit for its infringement theory makes this the first and most critical question to be resolved.
• A Question of Architectural Scope: A core legal issue will be one of claim scope: can the patent’s architectural model—which describes an intelligent, semi-autonomous "portable device" operating on pre-loaded configurations for "exclusive" zones—be construed to cover a modern, potentially cloud-centric system where field devices may be simpler clients and subject to rules from multiple overlapping zones?
• A Definitional Question for Claim 5: As the complaint specifically highlights "example claim 5," a key point of contention will be the interpretation of the term "transponder". The infringement analysis for this claim will likely turn on whether any component of the accused system meets the definition of a "transponder" and whether the system performs the specific mapping and display method recited in that claim.