Jackson v. Wal Mart Stores Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: John Jackson (Pennsylvania)
  • Defendant: Wal-Mart Stores Inc. (Delaware)
  • Plaintiff’s Counsel: The Iwashko Law Firm, PLLC
• Case Identification: 1:23-cv-00504, D.D.C., 02/24/2023
• Venue Allegations: Plaintiff alleges venue is proper in the District of Columbia because Defendant offers the accused products for sale on its website and in stores within the district, thereby establishing a route of trade.
• Core Dispute: Plaintiff alleges that Defendant’s sale of various remote-controlled LED light whips for vehicles infringes a patent related to a system for locating a parked vehicle.
• Technical Context: The technology concerns aftermarket automotive accessories designed to enhance vehicle visibility and aid in location, primarily in crowded or low-light environments like parking lots.
• Key Procedural History: The complaint notes the inventor’s conception of the invention occurred around 2015 after difficulty locating his vehicle in a large parking lot. The patent application was filed in 2017 and issued in 2019. Plaintiff alleges discovering the accused infringing products in February 2022.

Case Timeline

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

U.S. Patent No. 10,176,719 - "System for Locating a Parked Vehicle"

• Patent Identification: U.S. Patent No. 10,176,719, "System for Locating a Parked Vehicle," issued January 8, 2019.

The Invention Explained

• Problem Addressed: The patent identifies the "recurring problem" of drivers forgetting where they parked their vehicles in large, highly populated lots or garages, a problem complicated by nighttime or poor lighting conditions ('719 Patent, col. 1:15-24).
• The Patented Solution: The invention is a system comprising two main components: an elongated, light-up rod that can be mounted on a vehicle and a separate, portable remote control. A user can activate the remote to wirelessly command the rod's lights to turn on or flicker, thereby making the vehicle visible from a distance ('719 Patent, Abstract; col. 3:37-45). The system is designed to be distinct from a standard vehicle antenna ('719 Patent, col. 4:47-50).
• Technical Importance: The system offers a convenient, dedicated solution to help users visually identify their specific vehicle among many others, reducing search time and frustration ('719 Patent, col. 1:25-28).

Key Claims at a Glance

• The complaint asserts infringement of "one or more claims" and provides infringement allegations for independent claim 1 (Compl. ¶30).
• The essential elements of independent claim 1 are:
  • An elongated member that is removably mountable on a parked vehicle.
  • The elongated member supports a plurality of lights and is "different and separate from an antenna of the parked vehicle."
  • A portable control device that can be carried away from the vehicle.
  • The device is activated to wirelessly communicate with and control the lights.
  • The portable control device "locates the elongated member in response to the elongated member being removed from the parked vehicle."
• The complaint reserves the right to modify its description and presumably assert other claims during discovery (Compl. ¶31).

III. The Accused Instrumentality

Product Identification

• The complaint identifies a "myriad" of "remote-controlled LED light whips" sold by Defendant, collectively referred to as the "Infringing Items" (Compl. ¶3). The "Alpena BriteWhip LED Whip" is used as a representative example for the infringement analysis (Compl. ¶30).

Functionality and Market Context

• The accused products are described as aftermarket accessories, often used on off-road vehicles, trucks, and Jeeps, that consist of a light-up pole or "whip" which can be mounted on a vehicle (Compl. ¶3, ¶31(b)). These products are controlled by a wireless remote, allowing the user to activate and change the lights (Compl. ¶31(c)). A screenshot from Defendant's website shows various LED whip products for sale, indicating their availability to the general public (Compl. p. 5).

IV. Analysis of Infringement Allegations

'719 Patent Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: A central dispute may arise over the meaning of the final clause of claim 1: "such that the portable control device locates the elongated member in response to the elongated member being removed from the parked vehicle." The patent language suggests an anti-theft or tracking function that is triggered by removal of the whip from the vehicle. The complaint's allegation—that the remote simply continues to work if the whip is removed but still powered—raises the question of whether this functionality meets the claim's specific requirement for "locating" the member in response to its removal.
  • Technical Questions: What evidence does the complaint provide that the accused product's remote control performs the specific function of "locating" the whip after it has been detached? The complaint does not allege a GPS, proximity, or other specific tracking technology in the accused product. The analysis will likely focus on whether merely being able to turn on the lights of a removed-but-still-powered device constitutes "locating" it in the manner claimed by the patent, which uses the term "trackable" in its specification ('719 Patent, col. 4:24-25).

V. Key Claim Terms for Construction

• The Term: "locates the elongated member"
• Context and Importance: This term is critical because the infringement case may depend on whether the accused product's simple remote-activation feature satisfies this limitation, particularly when read with the subsequent clause "in response to the elongated member being removed." Practitioners may focus on this term because the complaint's factual allegations appear to describe a function (remote light activation) that may not align with the claim's language, which suggests a more sophisticated tracking or location-finding capability.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: Plaintiff may argue that the term "locates" should be given its plain and ordinary meaning of "to find the place or position of." In the context of the patent's overall purpose—"System for Locating a Parked Vehicle"- one could argue that activating the lights allows a user to visually find the whip, thereby "locating" it.
  • Evidence for a Narrower Interpretation: Defendant may argue that the term, read in the context of the full claim, requires a more active function. The specification states that the system allows the elongated member "to be located using either the portable control device 11, or alternatively, a mobile device" and that the member is "trackable by the portable control device 11" ('719 Patent, col. 4:20-25). This language, combined with the trigger "in response to the elongated member being removed," could support an interpretation requiring an electronic tracking technology rather than simple visual identification via remote-controlled lights.

VI. Other Allegations

• Indirect Infringement: The complaint alleges that Defendant, with knowledge or willful blindness, induces infringement by its "retail partners and end users" who use and sell the accused products (Compl. ¶34). The specific acts of inducement are not detailed beyond the general sale and marketing of the products.
• Willful Infringement: Willfulness is alleged based on Defendant having "actual knowledge of Plaintiff's rights in the '719 patent... based on at least the filing and service of this Complaint" (Compl. ¶33). This allegation appears to support a claim for post-suit, rather than pre-suit, willful infringement.

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

The resolution of this dispute will likely depend on the answers to two central questions:

1. A core issue will be one of definitional scope: can the claim limitation "locates the elongated member in response to the elongated member being removed from the parked vehicle" be construed to mean simply activating the lights of a detached but powered device? Or does it require a specific anti-theft or electronic tracking functionality that the patent specification alludes to with the term "trackable"?

2. A key evidentiary question will be one of functional mismatch: assuming the claim requires a specific "locating" function triggered by removal, does the accused Alpena BriteWhip (or any of the other accused products) actually possess this capability? The case may turn on whether Plaintiff can produce evidence that the accused products do more than just allow a user to turn lights on and off with a remote control.