DCT
1:17-cv-01452
Coding Tech LLC v. Blackboard Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Coding Technologies, LLC (Texas)
- Defendant: Blackboard, Inc. (Delaware)
- Plaintiff’s Counsel: STAMOULIS & WEINBLATT LLC
- Case Identification: 1:17-cv-01452, D. Del., 10/16/2017
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendant is a citizen of Delaware and resides in the district.
- Core Dispute: Plaintiff alleges that Defendant’s use of QR codes to direct users to its web content infringes a patent related to methods and systems for providing mobile services using a code pattern.
- Technical Context: The technology enables a mobile device to scan a visual code, such as a QR code, to automatically retrieve associated digital content from a server, bridging physical media with online resources.
- Key Procedural History: The complaint does not mention any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history related to the patent-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2003-03-07 | ’159 Patent Priority Date |
| 2013-09-24 | ’159 Patent Issue Date |
| 2017-06-27 | Date of alleged infringing scan shown in complaint evidence |
| 2017-10-16 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,540,159 - "Method for Providing Mobile Service Using Code-Pattern," issued September 24, 2013
The Invention Explained
- Problem Addressed: The patent describes the inconvenience for mobile users of manually remembering and typing URL information from physical advertisements into a device to access a website ('159 Patent, col. 1:44-50). It notes that this inconvenience creates a need for a more effective method to induce users to visit an advertised website (Compl. ¶10).
- The Patented Solution: The invention provides a method where a user terminal with a camera captures a "photograph of a code pattern image" (e.g., a barcode). The terminal then decodes this pattern to obtain information, such as a URL, transmits a request to a corresponding server, and receives content in response ('159 Patent, Abstract; col. 8:30-41). This process automates the linking of a physical code to online content.
- Technical Importance: The described technology simplifies the process of bridging the physical and digital worlds, allowing users to access online content or services conveniently from a physical prompt using their mobile devices (Compl. ¶10, ¶12).
Key Claims at a Glance
- The complaint asserts independent claims 1, 8, 15, and 16.
- Independent Claim 1 recites a method for providing content, comprising the steps of:
- obtaining a photographic image of a code pattern by a camera of the user terminal;
- processing... the photographic image... to extract the code pattern;
- decoding the extracted code pattern... into code information;
- transmitting a content information request message to a server based on the code information; and
- receiving content information from the server.
- Independent Claim 8 recites a user terminal for providing content, comprising:
- a camera configured to obtain a photographic image of a code pattern;
- a processor comprising an image processor and a decoder; and
- a transceiver configured to transmit a request message to a server and receive content information.
- Independent Claim 15 recites a non-transitory machine-readable storage medium with program code that, when executed, implements the method steps of Claim 1.
- Independent Claim 16 recites a method similar to Claim 1 but requires processing the image to extract "characteristic information" rather than a "code pattern."
- The complaint also asserts dependent claims 2, 3, 9, and 10.
III. The Accused Instrumentality
Product Identification
The "Accused Products" are identified as a system and method involving a user terminal (e.g., a smartphone) that captures QR code information provided by Blackboard to access its web content (Compl. ¶15, ¶19). The primary example involves scanning a QR code to access a webpage for Blackboard's "BbWorld" event (Compl. p. 5).
Functionality and Market Context
The complaint alleges that Blackboard provides QR codes that, when scanned by a user's smartphone, are decoded into a URL (Compl. ¶22). The smartphone then transmits an HTTP request to a server associated with the URL and receives content, such as a webpage for a Blackboard event or app download (Compl. ¶23, ¶24). A visual provided in the complaint shows a QR code for "Download the app now" and the resulting "BbWORLD 17" webpage loaded on a smartphone (Compl. p. 5). The complaint alleges that Defendant practices this method at least through internal use and testing (Compl. ¶19).
IV. Analysis of Infringement Allegations
8,540,159 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| obtaining a photographic image of a code pattern by a camera of the user terminal | A user employs a smartphone's camera to obtain an image of a QR code provided by Defendant. The complaint provides a visual of a smartphone's camera capturing an image of the QR code (Compl. p. 5). | ¶20 | col. 3:12-14 |
| processing, by a processor of the user terminal, the photographic image of the code pattern to extract the code pattern from the photographic image | The smartphone's processor (e.g., an iPhone's A10 Fusion chip) processes the image from the camera to identify and extract the data from the QR code. A screenshot shows the result of a scan, displaying the decoded URL (Compl. p. 6). | ¶21 | col. 41:19-21 |
| decoding the extracted code pattern by the processor of the user terminal into code information | The processor decodes the extracted QR code into "code information," which is alleged to be the URL of a webpage associated with the defendant (e.g., http://esp.to/w1pWzs). |
¶22 | col. 41:21-23 |
| transmitting a content information request message to a server based on the code information | The smartphone transmits an HTTP request message to a server based on the decoded URL to access the associated webpage. | ¶23 | col. 38:5-12 |
| receiving content information from the server in response to the content information request message | The smartphone receives content information, such as the "BbWorld" webpage, from the server in response to the request. | ¶24 | col. 38:8-12 |
Identified Points of Contention
- Scope Questions: The complaint alleges direct infringement based on Blackboard's "internal use and testing" with what appear to be standard, third-party smartphones (e.g., an Apple iPhone) (Compl. ¶19, ¶21). This raises the question of whether such testing of a public-facing system using off-the-shelf hardware constitutes direct infringement of the claimed method and apparatus, or if the stronger claim would be for inducing infringement by end-users.
- Technical Questions: Claim 16 recites extracting "characteristic information," while Claim 1 recites extracting a "code pattern." The complaint appears to treat these terms as interchangeable (Compl. ¶17, ¶56). A potential point of contention is whether "characteristic information" has a distinct technical meaning from "code pattern" that is not met by the accused system.
V. Key Claim Terms for Construction
The Term: "user terminal" (Claim 8)
Context and Importance
Claim 8 is an apparatus claim directed to the "user terminal" itself, which comprises a camera, processor, and transceiver. The complaint identifies a smartphone, specifically an iPhone 7, as the infringing terminal (Compl. ¶33, ¶37). The construction of this term, and particularly its constituent parts like "processor," will be critical to determining if a general-purpose device like a smartphone infringes.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The specification states that a "wireless communication terminal, such as a mobile phone, a Personal Communications Service (PCS) and a Personal Digital Assistant (PDA), can be used as the user terminal 10" ('159 Patent, col. 8:47-51). This suggests the term is meant to cover a range of common mobile devices.
- Evidence for a Narrower Interpretation: Claim 8 requires the processor to comprise "an image processor... and a decoder." A defendant may argue this requires structurally distinct components, rather than software routines running on a general-purpose CPU. The patent's block diagram in FIG. 3 depicts the "Decoder" (13) as a separate block from the "Control Unit" (15), which could support an argument for a more limited, structural interpretation.
The Term: "code pattern" (Claim 1)
Context and Importance
The infringement allegations depend on this term encompassing standard, two-dimensional QR codes (Compl. ¶19). The term's scope will determine whether the patent applies to the ubiquitous technology used by the defendant or is limited to a more specific type of code.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The specification explicitly states that the "barcode 60 includes... a QR code and a data matrix, which are two-dimensional barcodes" ('159 Patent, col. 11:2-5). This provides strong intrinsic evidence that the term was intended to be broad enough to cover the accused QR codes.
- Evidence for a Narrower Interpretation: A party could argue that, in the context of the patent's overall system, the term implies a code generated for and specific to the patented service. However, the explicit inclusion of industry-standard codes like QR codes in the specification would present a significant challenge to this narrower interpretation.
VI. Other Allegations
Indirect Infringement
The complaint makes conclusory allegations of contributory and induced infringement (Compl. ¶15). The implicit factual basis for inducement is that Blackboard provides the QR codes and operates the associated web servers, thereby encouraging and instructing its end-users to perform the steps of the patented method using their mobile devices (Compl. ¶19, ¶23).
Willful Infringement
Willfulness is alleged "upon information and belief," based on the assertion that Defendant knew of the ’159 Patent and its infringement (Compl. ¶58). The complaint does not plead specific facts to support pre-suit knowledge, such as prior correspondence or citation of the patent.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of liability for system infringement: Given that the accused process involves an interaction between Defendant's server infrastructure (the QR code and web content) and a third-party device (the user's smartphone), a central question will be how infringement liability is established. The court will need to assess whether Defendant's alleged "internal use and testing" is sufficient for direct infringement or if the case primarily turns on a theory of indirect infringement by inducing end-users.
- A key claim construction question will be one of structural scope: Can the "user terminal" of Claim 8, which recites a processor comprising an "image processor" and a "decoder," be construed to read on a general-purpose smartphone CPU that performs these functions via software, or do the claims require distinct hardware modules?
- An evidentiary question will be one of commercial activity: The complaint's infringement allegations rely heavily on "internal use and testing" (Compl. ¶19). A key factual question will be what evidence Plaintiff can produce to demonstrate infringing acts beyond testing and show commercial use of the accused system in a manner that constitutes infringement within the United States.