Jackson v. Marklyn Group Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: John Jackson (Pennsylvania)
  • Defendant: Marklyn Group Inc. (Ontario, Canada)
  • Plaintiff’s Counsel: The Iwashko Law Firm, PLLC
• Case Identification: 1:23-cv-00509, D.D.C., 02/24/2023
• Venue Allegations: Plaintiff alleges venue is proper because Defendant offers the accused product for sale on the internet, establishing a route of trade into the District of Columbia.
• Core Dispute: Plaintiff alleges that Defendant’s "Alpena BriteWhip LED Whip" product infringes a patent related to a system for locating a parked vehicle.
• Technical Context: The technology relates to vehicle accessories that use a light-up, rod-like device and a remote control to help a user visually identify their vehicle in a crowded area.
• Key Procedural History: The complaint does not mention any prior litigation, licensing history, or post-grant proceedings related to the patent-in-suit.

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 being unable to remember where they parked, particularly in large, highly populated, or poorly lit lots, which "complicates their search efforts and extends the time wasted" (ʼ719 Patent, col. 1:15-28).
• The Patented Solution: The invention is a system comprising two main components: an “elongated member” with lights that is mounted on the vehicle, and a separate “portable control device” (ʼ719 Patent, col. 3:39-45). A user carries the portable device and can activate it to wirelessly control the lights on the elongated member, thereby making the vehicle easier to spot from a distance (ʼ719 Patent, col. 3:46-50; Fig. 1).
• Technical Importance: The system provides a dedicated, convenient visual aid to help users quickly locate their vehicles, addressing a common frustration for drivers (ʼ719 Patent, col. 1:26-28).

Key Claims at a Glance

• The complaint asserts infringement of at least independent claim 1 (Compl. ¶29).
• The essential elements of independent claim 1 are:
  • An elongated member that is removably mountable on a parked 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 other claims and modify its infringement description based on discovery (Compl. ¶33).

III. The Accused Instrumentality

Product Identification

• The "Alpena BriteWhip LED Whip" (Compl. ¶4).

Functionality and Market Context

• The accused product is described as a light-up, multi-color pole or "whip" that can be mounted on a vehicle and is sold with a remote control (Compl. ¶33, p. 6). The complaint alleges that the remote control wirelessly communicates with and controls the LED lights on the whip (Compl. ¶33, p. 7). The product is offered for sale in the United States via the internet and is marketed as an "Automotive Whip or Pole Light" for "Universal Fit for Vehicles" (Compl. ¶¶5, 12; p. 6). A product screenshot provided in the complaint shows an illuminated whip, a remote control, and labels identifying the "elongated member removably mountable on a vehicle" and the "portable control device" (Compl. p. 6).

IV. Analysis of Infringement Allegations

’719 Patent Infringement Allegations

• Identified Points of Contention:
  • Functional Question: The final clause of Claim 1 requires that the portable control device "locates the elongated member in response to the elongated member being removed." The complaint alleges infringement because a user can still manually activate the lights after the whip is removed (Compl. ¶33, p. 7). This raises the question of whether a user's ability to operate the device after removal satisfies the claim's specific requirement of an action occurring "in response to" the removal event itself.
  • Scope Question: The claim uses the term "locates." The complaint's theory appears to equate "locating" with a user activating lights to see the device (Compl. ¶33). The patent specification, however, also states that the "elongated member 12 is trackable by the portable control device 11" (ʼ719 Patent, col. 4:24-25). This raises the question of whether "locates" requires a tracking capability (e.g., GPS, signal triangulation) or if merely enabling visual identification is sufficient to meet the limitation.

V. Key Claim Terms for Construction

• The Term: "locates the elongated member"

• Context and Importance: The definition of "locates" is central to the infringement analysis. If construed to require active tracking technology, the infringement case may face significant challenges, as the accused product is presented as a remote-controlled light. If construed more broadly to mean "enables a user to find by sight," the Plaintiff's theory may be more tenable. Practitioners may focus on this term because the specification uses the potentially limiting word "trackable" (ʼ719 Patent, col. 4:24-25).

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The patent’s overall purpose is to solve the problem of visually finding a car in a lot, suggesting "locates" could mean enabling visual identification. The summary states the system is for "locating a parked vehicle," and the primary mechanism described is activating lights (ʼ719 Patent, col. 1:40-45).
  • Evidence for a Narrower Interpretation: The detailed description states, "...if the elongated member 12 were to be removed from the vehicle, the wireless communication capabilities... would allow the elongated member 12 to be located... In other words... the elongated member 12 is trackable by the portable control device 11" (ʼ719 Patent, col. 4:16-25). This explicit use of "trackable" could be argued to narrow the meaning of "locates" to require more than simple illumination.

• The Term: "in response to the elongated member being removed"

• Context and Importance: This phrase introduces a specific causal and temporal condition for the "locating" function. The validity of the infringement allegation for this limitation depends on whether the accused product performs an action automatically or inherently because of the removal, or if it simply remains operable by a user after being removed.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The patent does not explicitly define a mechanism for how the "response" is triggered. An argument could be made that the system's inherent capability to be located after being removed is sufficient, without requiring an automatic trigger.
  • Evidence for a Narrower Interpretation: The phrase "in response to" typically implies a triggering event. A court may interpret this to require that the removal event itself causes the control device to initiate a locating function (e.g., an alert, a tracking mode activation), a feature not alleged in the complaint. The specification does not appear to describe such an automatic trigger, creating ambiguity.

VI. Other Allegations

• Indirect Infringement: The complaint alleges that Defendant induces infringement by its retail partners and end users, with knowledge of the infringing activity (Compl. ¶36).
• Willful Infringement: Willfulness is alleged based on Defendant’s knowledge of the patent and its infringement obtained "at least [from] the filing and service of this Complaint" (Compl. ¶35). This appears to be a claim for post-filing willfulness.

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

The resolution of this dispute will likely depend on the court's interpretation of specific claim language. The central questions for the case appear to be:

• A core issue will be one of definitional scope: does the term "locates" require active tracking technology as suggested by the patent's use of "trackable," or can it be construed more broadly to cover the function of enabling visual identification via a remote-controlled light?
• A key question of functional operation will be whether the accused product meets the "in response to... being removed" limitation. The court will have to decide if a user's ability to manually operate the device after its removal satisfies this claim element, or if the claim requires an automatic function that is triggered by the removal event itself.