DCT

1:23-cv-00508

John Jackson v. 5150 Whips Inc

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Key Events
Complaint
complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:23-cv-00508, D.D.C., 02/24/2023
  • Venue Allegations: Plaintiff alleges venue is proper because Defendants offer the accused products for sale on the internet, thereby establishing a route of trade into and through the District of Columbia.
  • Core Dispute: Plaintiff alleges that Defendants’ LED whip products, which are light-up rods for vehicles, infringe a patent for a system designed to help users visually locate a parked vehicle.
  • Technical Context: The technology addresses the common problem of locating a vehicle in a large or crowded area by using a wirelessly-activated, externally mounted, illuminated beacon.
  • Key Procedural History: The complaint does not mention any prior litigation, licensing history, or administrative challenges (e.g., IPRs) related to the patent-in-suit. The allegations of willfulness are based on knowledge obtained from the filing of the instant complaint.

Case Timeline

Date Event
2017-09-23 Patent Application Filing Date ('719 Patent)
2019-01-08 U.S. Patent No. 10,176,719 Issues
2023-02-01 Plaintiff's Discovery of Alleged Infringement (approx.)
2023-02-24 Complaint Filed

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. (Compl. ¶2; ’719 Patent, cover).

The Invention Explained

  • Problem Addressed: The patent's background section describes the "recurring problem" of drivers being unable to remember where they parked their vehicle, particularly in large, highly populated, or poorly lit lots, which "complicates their search efforts and extends the time wasted." (’719 Patent, col. 1:15-24).
  • The Patented Solution: The invention is a system comprising two main components: an "elongated member" with lights that is removably mounted on a vehicle, and a "portable control device" that the user carries. (’719 Patent, Abstract). The user can activate the portable device to wirelessly communicate with and control the lights on the elongated member, making the vehicle easy to spot from a distance. (’719 Patent, col. 3:42-50; Fig. 1).
  • Technical Importance: The patented system provides a direct, visual, non-GPS-based solution for locating a vehicle, which the patent suggests is particularly advantageous at nighttime. (’719 Patent, col. 4:36-38).

Key Claims at a Glance

  • The complaint asserts independent claim 1. (Compl. ¶30, 42).
  • The essential elements of independent claim 1 are:
    • A system for locating a parked vehicle, comprising:
    • An elongated member that is removably mountable on the vehicle, supports a plurality of lights, and is distinct from the vehicle's antenna.
    • A portable control device that can be carried away from the vehicle.
    • The portable control device wirelessly communicates with and controls 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 assert additional claims during litigation. (Compl. ¶33, 41).

III. The Accused Instrumentality

Product Identification

  • The "Remote LED Whips" and the "187 LED Whips" sold by Defendants. (Compl. ¶4-5).

Functionality and Market Context

  • The accused instrumentalities are described as elongated, light-up "whips" that can be mounted on a vehicle. (Compl. p. 7, 9). The "Remote LED Whip" is controlled by a dedicated wireless remote. (Compl. ¶34(c)). The "187 LED Whip" is controlled via Bluetooth using a mobile application on a smart device. (Compl. p. 9; p. 10).
  • The complaint includes a product page screenshot for the "Remote LED Whip" showing the whip, a handheld remote, and noting a "magnetic quick release" mount. (Compl. p. 7).
  • A similar screenshot for the "187 LED Whip" shows the product and states it is "Bluetooth controlled via the Bledim app" and can "move to music/sound via the app." (Compl. p. 9).
  • The complaint alleges these products are sold and offered for sale on the Defendants' website. (Compl. ¶3).

IV. Analysis of Infringement Allegations

’719 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A system for locating a parked vehicle, comprising: The Remote LED Whip and 187 LED Whip are systems with multiple components that allow a parked vehicle to be located. ¶34(a), ¶42(a) col. 3:39-41
an elongated member removably mountable on the parked vehicle, such that the elongated member supports a plurality of lights and is different and separate from an antenna of the parked vehicle; The accused LED Whip is an elongated member with multiple lights, is removably mountable on a vehicle, and is separate from a vehicle's antenna. ¶34(b), ¶42(b) col. 4:48-53
a portable control device adapted to be carried away from the parked vehicle and activated to wirelessly communicate with and control the plurality of lights supported by the elongated member, The accused products include a remote control or are controllable by a mobile app on a portable device (e.g., a phone) that wirelessly communicates with and controls the LED lights. ¶34(c), ¶42(c) col. 4:17-25
such that the portable control device locates the elongated member in response to the elongated member being removed from the parked vehicle; The complaint alleges this is met because the remote control/app allows for activation of the lights even if the whip is removed from the vehicle, as long as its electrical connection remains intact. ¶34(c), p.10 col. 4:55-58

Identified Points of Contention

  • Scope Questions: A central question for the court will be the meaning of the claim phrase "the portable control device locates the elongated member." The patent specification uses the word "trackable" in reference to the elongated member. (’719 Patent, col. 4:24-25). This raises the question of whether the claim requires the control device to possess an independent electronic tracking capability (e.g., GPS or signal-strength triangulation) to "locate" the member. The complaint's infringement theory appears to be that this limitation is met when the control device activates the lights, which then allows a human user to visually locate the whip.
  • Technical Questions: What evidence will be presented to show that the accused system's function is to "locate[] the elongated member in response to the elongated member being removed"? The complaint's theory appears to be that the system can still operate after the whip is removed (if powered), but this may not be the same as locating the whip in response to the removal event itself, a distinction the court may need to resolve.

V. Key Claim Terms for Construction

  • The Term: "locates the elongated member"
  • Context and Importance: The construction of this term appears central to the dispute. Practitioners may focus on this term because its interpretation—whether it requires automated, device-centric tracking or permits user-centric visual identification—could determine the outcome of the infringement analysis. The complaint does not allege the accused device has any affirmative tracking function beyond activating lights.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent’s title is "System for Locating a Parked Vehicle," and the summary describes a system "for locating a parked vehicle." (’719 Patent, Title; col. 1:12-13). This purpose-driven language, which focuses on the overall result of finding the vehicle, may support a construction where "locates" is satisfied by the device enabling a user to visually find the illuminated whip.
    • Evidence for a Narrower Interpretation: The claim language states "the portable control device locates the elongated member," which grammatically assigns the action of locating to the device itself, not the user. (’719 Patent, col. 4:55-56). This is reinforced by specification language stating "the elongated member 12 is trackable by the portable control device 11." (’719 Patent, col. 4:24-25). The term "trackable" could suggest a more active, electronic locating function is required.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement of infringement, stating that Defendants' manufacture and sale of the LED Whips with knowledge or willful blindness will cause their partners and end-users to infringe the ’719 Patent. (Compl. ¶37, 45). The product pages, which include links to instructions, may be used as evidence of intent to induce. (Compl. p. 7, 9).
  • Willful Infringement: The complaint alleges that Defendants have actual knowledge of the ’719 patent "at least as early as the filing and service of this Complaint," forming the basis for a post-suit willfulness claim. (Compl. ¶36, 44). No pre-suit knowledge is alleged.

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

  • A core issue will be one of definitional scope: Can the claim term "locates the elongated member," which is used in a specification that also refers to the member as "trackable," be construed to cover a system where the control device merely activates lights for a human user to see? Or does it require an affirmative, device-based electronic locating technology?
  • A key evidentiary question will be one of functional causality: Does the accused system's ability to operate while the whip is detached from a vehicle satisfy the claim limitation of "locat[ing] the elongated member in response to the elongated member being removed from the parked vehicle"? The litigation will likely focus on whether there is a functional link between the act of removal and the act of location, as required by the claim.