DCT

1:14-cv-01102

M2M Solutions LLC v. Sierra Wireless America Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:14-cv-01102, D. Del., 04/26/2019
  • Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendant Sierra Wireless America, Inc. is a Delaware corporation that resides in the district, and because a substantial part of the events giving rise to the claim allegedly occurred in the district, where Defendants have purportedly committed acts of patent infringement and maintain a regular presence.
  • Core Dispute: Plaintiffs allege that Defendant’s machine-to-machine (M2M) wireless modules and related products infringe a patent related to a programmable wireless communicator.
  • Technical Context: The technology at issue is in the field of machine-to-machine (M2M) communications, which enables devices to remotely monitor and manage other equipment autonomously via wireless modules.
  • Key Procedural History: The complaint alleges Defendant had knowledge of the patent-in-suit as early as December 2013. Defendant previously filed a declaratory judgment action regarding the patent in February 2014, which was voluntarily dismissed in June 2014. An inter partes review (IPR) proceeding resulted in a certificate issued on February 27, 2018, cancelling a significant number of the patent's claims, including all of its independent claims. This First Amended Complaint was filed after the issuance of the IPR certificate.

Case Timeline

Date Event
2000-05-23 ’717 Patent Priority Date
2013-12-19 Defendant allegedly notified of patent allowance
2014-02-11 ’717 Patent Issue Date
2014-02-11 Defendant files declaratory judgment action
2014-06-11 Defendant’s declaratory judgment action dismissed
2017-06-20 ’717 Patent assigned to Blackbird Tech LLC
2018-02-27 IPR Certificate issued cancelling claims of the ’717 Patent
2019-04-26 First Amended Complaint Filing Date

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

U.S. Patent No. 8,648,717 - Programmable Communicator

  • Issued: February 11, 2014

The Invention Explained

  • Problem Addressed: The patent describes a need for simple, secure, and remotely programmable communication devices for a variety of applications, ranging from personal safety devices for children to M2M data tags for monitoring remote equipment like vending machines or home appliances (’717 Patent, col. 2:3-11, 16-24). Existing solutions were seen as lacking versatility or having practical issues related to cost, security, and ease of programming (’717 Patent, col. 2:16-33).
  • The Patented Solution: The invention is a programmable communicator that can be remotely configured to link with a specific telephone number or IP address (’717 Patent, Abstract). The programming is performed via wireless transmissions (such as packet data) that contain a unique identifier or "coded number" to authenticate the request, ensuring only authorized users can change the linked contact (’717 Patent, col. 12:46-56). The device includes a processing module to authenticate these transmissions and a memory to store the authorized numbers, which it can then communicate with (’717 Patent, Abstract; Fig. 1).
  • Technical Importance: This approach aimed to provide a flexible and secure platform for remote M2M communication and monitoring without requiring complex on-device interfaces (’717 Patent, col. 2:3-11).

Key Claims at a Glance

  • The complaint does not specify which claims of the ’717 Patent are asserted, referring generally to "one or more claims" (Compl. ¶13).
  • An inter partes review certificate, issued February 27, 2018, indicates that independent claims 1, 24, and 29, along with dependent claims 2-23, have been cancelled (’717 Patent, IPR Certificate, p. 2). The remaining claims in the patent (claims 25-28 and 30) are all dependent on these cancelled independent claims. As a dependent claim cannot be infringed if the independent claim from which it depends is not infringed (or is invalid), the patent appears to lack any currently valid and assertable claims.

III. The Accused Instrumentality

Product Identification

The complaint accuses Sierra Wireless’s "wireless module, terminal, and/or and gateway products (and related services)" that are designed and promoted for M2M communications applications (Compl. ¶13). The complaint refers to an "Exhibit B" for a more specific list of accused products, but this exhibit was not included with the filed complaint document (Compl. ¶13).

Functionality and Market Context

The accused products are alleged to be used in fields such as "automated meter reading, asset tracking and fleet management, automotive telematics, commercial and residential security systems, wireless telemedicine... and industrial automation and controls" (Compl. ¶10). Their function is to enable a machine to "remotely monitor and/or manage a second machine... by communicating with or through a wireless module" (Compl. ¶10).

No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint does not provide specific infringement allegations that map features of the accused products to particular claim limitations. It makes only general allegations that the accused products "embody and/or practice the inventions of one or more claims of the ’717 patent-in-suit" (Compl. ¶13). Given the lack of specificity and the post-grant cancellation of all independent claims of the ’717 Patent, as described in Section II, a detailed claim-chart analysis is not possible based on the provided documents.

V. Key Claim Terms for Construction

As the complaint fails to identify any specific, valid claims being asserted, an analysis of key claim terms for construction is not feasible.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges both induced and contributory infringement.
    • Inducement is alleged based on Defendant designing its products for infringing uses and encouraging customers to configure and operate them in an infringing manner through "manuals and promotional literature" and "technical assistance" (Compl. ¶15).
    • Contributory infringement is alleged on the basis that Defendant sells products knowing they are "especially made or especially adapted for use in direct infringements" and are not staple articles of commerce with substantial noninfringing uses (Compl. ¶16).
  • Willful Infringement: Willfulness is alleged based on Defendant’s purported knowledge of the ’717 Patent. The complaint alleges pre-suit knowledge stemming from an e-mail notification to Defendant's counsel regarding the patent's allowance on December 19, 2013, and from Defendant’s own declaratory judgment action filed on the day the patent issued, February 11, 2014 (Compl. ¶11, 14). Post-suit knowledge is alleged from the service of the original complaint and subsequent preliminary infringement contentions (Compl. ¶14).

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

  • A central issue will be one of patent viability: can Plaintiffs maintain an infringement action on a patent where all independent claims, and by extension their dependent claims, were cancelled in an inter partes review proceeding? The fact that the First Amended Complaint was filed more than a year after the IPR certificate was issued raises a threshold question about the basis for the suit.
  • A related question will be one of pleading sufficiency: does the complaint, which does not identify any specific valid claim being asserted nor provide a factual basis for how any accused product meets the limitations of such a claim, satisfy the federal pleading standards for patent infringement?