Kaldren LLC v. Embraer Executive Jet Services LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Kaldren LLC (Texas)
  • Defendant: Embraer Executive Jet Services, LLC. (Delaware)
  • Plaintiff’s Counsel: Stamoulis & Weinblatt LLC; Toler Law Group, PC
• Case Identification: 1:17-cv-01356, D. Del., 09/26/2017
• Venue Allegations: Venue is alleged to be proper as Defendant is a Delaware corporation.
• Core Dispute: Plaintiff alleges that Defendant’s use of a webpage displaying a bar code infringes patents related to methods for variably formatting digital data into a two-dimensional pattern and retrieving information therefrom.
• Technical Context: The technology concerns encoding digital data into dense, two-dimensional visual patterns, akin to modern QR codes, to bridge the gap between physical media and digital information using common consumer-grade hardware.
• Key Procedural History: The complaint does not reference any prior litigation, inter partes review proceedings, or licensing history concerning the patents-in-suit. The asserted patents share a specification and claim priority to an application filed in 1996, suggesting a long prosecution history and an early priority date relative to the widespread adoption of similar technologies.

Case Timeline

Date	Event
1996-03-01	Earliest Priority Date for ’807 and ’999 Patents
2004-11-23	’807 Patent Issue Date
2012-10-09	’999 Patent Issue Date
2017-09-26	Complaint Filing Date

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

U.S. Patent No. 6,820,807 - Variable Formatting of Digital Data into a Pattern

• Issued: November 23, 2004 (Compl. ¶7).

The Invention Explained

• Problem Addressed: The patent’s background section describes prior art methods for placing machine-readable data on paper, such as one- and two-dimensional bar codes, as being limited in data density and inflexible, failing to adequately accommodate for imperfections in common, off-the-shelf printers and scanners ('807 Patent, col. 2:34-58).
• The Patented Solution: The invention discloses a method to format digital data into a pattern with user-selectable parameters to optimize data density and reliability for a specific combination of printer and scanner ('807 Patent, Abstract). The system allows for varying the size and shape of data "spots" and the "cells" that contain them, and can use a separate header section, or "metasector," which contains instructions on how to decode the main body of data ('807 Patent, col. 5:31-45).
• Technical Importance: This technology aimed to integrate the separate environments of paper and computers by enabling the storage and conveyance of significant amounts of digital data on physical media with greater efficiency and reliability than previously available methods ('807 Patent, col. 2:13-20).

Key Claims at a Glance

• The complaint asserts independent Claim 20 (Compl. ¶14).
• The essential elements of Claim 20 are:
  • A method for retrieving an information resource, the method comprising:
  • scanning a machine readable indicia comprising digital data values formatted into a two dimensional pattern;
  • extracting an address of the information resource from the machine readable indicia; and
  • retrieving the information resource for presentation to a user.

U.S. Patent No. 8,281,999 - Variable Formatting of Digital Data into a Pattern

• Issued: October 9, 2012 (Compl. ¶8).

The Invention Explained

• Problem Addressed: The patent, which shares a specification with the ’807 Patent, addresses the same technical problem: the practical limitations of prior art machine-readable codes, which lacked the data density and formatting flexibility needed for widespread use with consumer-grade hardware ('999 Patent, col. 2:30-54).
• The Patented Solution: The invention describes a communication system for decoding a two-dimensional pattern to derive information, such as contact information ('999 Patent, Abstract). The system is defined using means-plus-function language, reciting "means for" performing functions such as decoding, imaging, and communicating. The specification describes a corresponding structure that includes locating a "landmark" to orient the scanner, decoding a "metasector" to understand the data format, and then decoding the main data body ('999 Patent, Fig. 17; Abstract).
• Technical Importance: The technology described in the patent enables paper or other physical media to act as an interface for initiating digital communications, thereby linking a static physical object to dynamic digital actions ('999 Patent, col. 2:10-17).

Key Claims at a Glance

• The complaint asserts independent Claims 1 and 8 (Compl. ¶21).
• The essential elements of Claim 1 are:
  • A communication system comprising:
  • processing means for decoding a machine-readable code formatted into a two dimensional pattern where that machine-readable code contains contact information, whereby the contact information is derived; and
  • communicating means for communicating where said communicating means communicates using the contact information derived from the processing means.
• The essential elements of Claim 8 include all elements of Claim 1 and adds:
  • imaging means for imaging a machine-readable code whereby the processing means decodes the image of the machine-readable code produced by the imaging means.

III. The Accused Instrumentality

• Product Identification: The complaint identifies the accused instrumentality as "a webpage that displayed a bar code product" and "the Embraer Executive Jet Accused Product" (Compl. ¶14, ¶21).
• Functionality and Market Context: The complaint alleges the accused product is used to retrieve an information resource by scanning a machine-readable indicia and extracting an address from it (Compl. ¶18). It is also characterized as a communication system that decodes a two-dimensional code containing contact information and uses that information to communicate (Compl. ¶25). The complaint provides a visual of the accused webpage in an exhibit, which it alleges shows the infringing product (Compl. ¶14, referring to Exhibit 3). The complaint does not provide sufficient detail for analysis of the product's market context.

IV. Analysis of Infringement Allegations

The complaint references, but does not include, claim chart exhibits detailing its infringement theories (Compl. ¶17, ¶24). The narrative infringement theory is summarized below.

The complaint alleges that Embraer directly infringed at least Claim 20 of the ’807 Patent by "using (including testing) a webpage that displayed a bar code product" (Compl. ¶14, ¶18). This use allegedly constitutes the claimed method of scanning a two-dimensional machine-readable indicia, extracting an address, and retrieving an information resource for a user (Compl. ¶18). The complaint states that a visual depiction of this accused product is provided in Exhibit 3 (Compl. ¶14).

The complaint further alleges that Embraer directly infringed at least Claims 1 and 8 of the ’999 Patent by "using (including testing)" the accused product (Compl. ¶21, ¶25). This product is alleged to be a communication system comprising the elements recited in the claims, including processing means for decoding a two-dimensional code to derive contact information, imaging means, and communicating means that uses the derived information (Compl. ¶25). A visual of this accused product is referenced as Exhibit 5 (Compl. ¶21).

• Identified Points of Contention:
  • Scope Questions: A primary question for the ’807 Patent will be whether the accused "bar code product" (Compl. ¶14) constitutes a "machine readable indicia...formatted into a two dimensional pattern" as required by Claim 20. The resolution may depend on whether the term is construed broadly to cover any 2D barcode or narrowly to require specific features disclosed in the patent, such as a metasector.
  • Technical Questions: For the ’999 Patent, the use of means-plus-function limitations (e.g., "processing means for decoding") raises the question of what specific structure or algorithm disclosed in the patent corresponds to the claimed function. Infringement will require identifying an equivalent structure in the accused product. The complaint does not specify the structure of the accused product that allegedly performs these functions.
  • Factual Questions: For method Claim 20 of the ’807 Patent, a key factual question is who performs each step of the claimed method. The complaint’s allegation that Defendant "used" the product raises the question of whether it provides evidence that the Defendant itself performed the "scanning" step, as opposed to merely providing a system that enables a third-party user to do so.

V. Key Claim Terms for Construction

• The Term: "processing means for decoding a machine-readable code" (’999 Patent, Claims 1 and 8).

• Context and Importance: As a means-plus-function term, its scope is not its literal language but the corresponding structure disclosed in the specification and its equivalents. The viability of the infringement claim for the ’999 Patent will depend entirely on identifying the specific algorithm in the specification that performs the "decoding" function and proving the accused product uses an identical or equivalent algorithm.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: A party might argue the corresponding structure is a general-purpose computer programmed to perform any decoding of a 2D pattern, a broad functional description.
  • Evidence for a Narrower Interpretation: The specification discloses a specific, multi-step algorithm for decoding. This process includes "find[ing] landmark," "find[ing] metasector," "decod[ing] metasector," and then decoding the main data body by identifying spots in cells (’999 Patent, Fig. 17; col. 29:8–32:65). Practitioners may focus on whether this detailed algorithm, and not just any decoding algorithm, defines the structure of the "processing means."

• The Term: "machine readable indicia comprising digital data values formatted into a two dimensional pattern" (’807 Patent, Claim 20).

• Context and Importance: The definition of this term will determine the types of visual codes covered by the patent. The infringement allegation is directed at a "bar code product" (Compl. ¶14), making the construction of this term central to whether the accused product falls within the claim's scope.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification refers to "two-dimensional bar codes" in the background section, which could support an argument that the term should be given a broad meaning consistent with its usage in the field at the time (’807 Patent, col. 1:63-65).
  • Evidence for a Narrower Interpretation: The detailed description focuses almost exclusively on a proprietary format involving "spots," "cells," "markers," and a "metasector" ('807 Patent, col. 5:1-col. 6:51). A party may argue that these extensive descriptions limit the scope of the claimed "pattern" to one incorporating such features.

VI. Other Allegations

The complaint does not allege indirect or willful infringement.

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

• A core issue will be one of structural correspondence for means-plus-function claims: For the ’999 Patent, the case will likely turn on whether the complaint can ultimately show that the accused product contains software structures identical or equivalent to the specific, multi-step decoding algorithm (involving landmarks and metasectors) disclosed in the patent's specification.
• A second key issue will be one of claim scope and performance: For the ’807 Patent's method claim, the dispute may focus on two points: first, whether the accused "bar code" meets the definition of a "two dimensional pattern" as construed from the patent, and second, whether Plaintiff can produce evidence that the Defendant itself performed all steps of the claimed method, including the physical act of "scanning."
• A threshold question will be one of pleading sufficiency: Given the complaint’s general allegations against a "webpage that displayed a bar code product," the court may need to address whether the factual assertions are sufficient to make an infringement claim plausible under modern pleading standards, particularly for the highly specific requirements of means-plus-function infringement.