DCT
1:18-cv-00657
Coding Tech LLC v. 21st Century Insurance Financial Services Inc
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Coding Technologies LLC (Texas)
- Defendant: 21ST CENTURY INSURANCE AND FINANCIAL SERVICES, INC. (Delaware)
- Plaintiff’s Counsel: Stamoulis & Weinblatt, LLC
- Case Identification: 1:18-cv-00657, D. Del., 07/06/2018
- Venue Allegations: Plaintiff alleges venue is proper in the District of Delaware because Defendant resides in the district, has committed acts of infringement there, and maintains a regular and established place of business in the district.
- Core Dispute: Plaintiff alleges that Defendant’s mobile application, which utilizes QR code scanning, infringes two patents related to methods of using a code pattern on a mobile device to retrieve online content and process payments.
- Technical Context: The technology concerns using a mobile device's camera to scan a code (such as a QR code) to bridge the gap between a physical object and online digital information, thereby avoiding manual data entry.
- Key Procedural History: The complaint does not reference any prior litigation, inter partes review proceedings, or significant prosecution history events related to the patents-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2003-03-07 | Earliest Priority Date for ’159 Patent and ’008 Patent |
| 2013-09-24 | U.S. Patent No. 8,540,159 Issues |
| 2016-01-19 | U.S. Patent No. 9,240,008 Issues |
| 2018-07-06 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,540,159 - "Method for Providing Mobile Service Using Code-Pattern"
- Patent Identification: 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 addresses the inconvenience and potential for error when a person sees a URL in a physical advertisement (e.g., magazine, catalog) and must manually remember or write it down to type it into a mobile device later (Compl. ¶12; ’159 Patent, col. 1:43-49).
- The Patented Solution: The invention provides a system where a user can simply photograph a code pattern (e.g., a barcode) with a mobile terminal. The terminal then automatically decodes the pattern to extract information, such as a URL, and uses that information to request and receive corresponding content from a server, streamlining access to online information from physical media (’159 Patent, Abstract; Fig. 5).
- Technical Importance: The technology aimed to make mobile services more convenient by allowing users to easily access various online content and services linked to physical objects (’159 Patent, col. 2:32-35).
- Key Claims at a Glance:
- The complaint asserts independent claims 1, 8, 15, and 16.
- Claim 1 (Method):
- 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.
- Claim 8 (User Terminal):
- 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 and receive content information.
- Claim 15 (Non-Transitory Medium): Claims a storage medium with code that, when executed, implements the method steps of claim 1.
- Claim 16 (Method):
- obtaining a photographic image by a camera of the user terminal;
- processing...the photographic image to extract characteristic information;
- transmitting a content information request message with the extracted characteristic information to a server; and
- receiving content information from the server.
- The complaint also asserts dependent claims 2, 3, 9, and 10 (Compl. ¶19).
U.S. Patent No. 9,240,008 - "Method for Providing Mobile Service Using Code Pattern"
- Patent Identification: U.S. Patent No. 9,240,008, "Method for Providing Mobile Service Using Code Pattern," issued January 19, 2016.
- The Invention Explained:
- Problem Addressed: The patent identifies the inconvenience of traditional bill payment methods, such as using paper bills ("giro"), and the need for a more convenient electronic payment method using mobile devices (’008 Patent, col. 2:39-42).
- The Patented Solution: The invention describes a terminal and method for processing a bill payment by capturing a code pattern that contains billing information. A processor in the terminal analyzes the captured image to obtain both billing information and user information, references a billing database, and processes the payment based on this combined information (’008 Patent, Abstract; col. 6:5-15).
- Technical Importance: The technology sought to leverage mobile code scanning for financial transactions, specifically to streamline bill payment for consumers (’008 Patent, col. 2:36-42).
- Key Claims at a Glance:
- The complaint asserts independent claim 9.
- Claim 9 (Terminal):
- a camera configured to capture a code pattern image having billing information; and
- a processor configured to analyze the image to obtain code information, user information, and billing information, wherein payment of a bill is processed based on the billing information and user information in reference of a billing database.
- The complaint also asserts dependent claim 15 (Compl. ¶62).
III. The Accused Instrumentality
- Product Identification: The accused products are Defendant's mobile application (the "21st iPhone app") and associated services that utilize code patterns (Compl. ¶18, p. 7).
- Functionality and Market Context: The complaint alleges the accused instrumentality allows a user with a smartphone to scan a QR code, which then directs the user's device to a specific webpage associated with the Defendant (Compl. ¶22, ¶25, ¶26). The complaint includes a diagram illustrating a "QR-Code -> Scan -> Decode -> Action" process, which it alleges describes the operation of the accused system (Compl. ¶25, p. 9). The complaint further alleges the instrumentality provides for bill payment (Compl. p. 20). It is presented as a tool for customers of 21st Century Insurance to manage their policies and interact with the company's services (Compl. p. 10).
IV. Analysis of Infringement Allegations
’159 Patent 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 obtains a photographic image of a QR code using a smartphone camera. | ¶23 | col. 10:1-5 |
| 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 "A10 Fusion chip") processes the captured image to view and extract the QR code. | ¶24 | col. 5:60-64 |
| decoding the extracted code pattern by the processor of the user terminal into code information | The processor decodes the QR code into code information, alleged to be the URL of a webpage associated with the Defendant. | ¶25 | col. 10:6-9 |
| transmitting a content information request message to a server based on the code information | The smartphone transmits an HTTP request message to the Defendant's server to access the webpage at the decoded URL. The complaint provides a screenshot of iPhone technical specifications to show the device includes a transceiver. | ¶26, ¶40, p. 15 | col. 10:10-14 |
| receiving content information from the server in response to the content information request message | The smartphone receives the webpage from the Defendant's server in response to the request. | ¶27 | col. 10:15-18 |
’008 Patent Infringement Allegations
| Claim Element (from Independent Claim 9) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a camera configured to capture a code pattern image having billing information | A smartphone camera is utilized to capture a QR code that allegedly contains "billing information (e.g., information related to payment of total amount of purchase)." | ¶65, ¶66 | col. 33:57-60 |
| a processor configured to analyze the code pattern image to obtain code information...obtaining user information and billing information...wherein payment of a bill is processed based on the billing information and user information | A smartphone processor analyzes the QR code to obtain decoded information, user information (e.g., charge card information), and billing information (e.g., total purchase amount), and processes payment in reference to a billing database. | ¶67 | col. 33:61-67 |
- Identified Points of Contention:
- Technical Questions (’008 Patent): The complaint's theory for the ’008 Patent raises a significant evidentiary question. It alleges that the accused system infringes by capturing a QR code "having billing information" (Compl. ¶65). However, the complaint's visual evidence consists of a marketing flyer where the QR code likely links to an app store download page (Compl. p. 20) and a "Pay Bill" screen that appears to require manual entry of payment details (Compl. ¶68, p. 23). This raises the question of what evidence the complaint provides that Defendant’s system actually processes payments initiated by scanning a code containing embedded billing data, as required by the claim, versus a system where a code scan merely directs a user to a portal for subsequent manual payment entry.
- Scope Questions (’159 Patent): The infringement allegations for the ’159 Patent are based on a sequence of actions (photographing, transmitting) largely performed by an end-user on their personal device. The complaint alleges infringement by Defendant based on "internal use and testing" (Compl. ¶22). A potential point of contention may be whether Defendant's alleged internal testing constitutes direct infringement of the claimed method, or whether Plaintiff's theory relies on the actions of Defendant's customers, which could raise questions of divided infringement.
V. Key Claim Terms for Construction
The Term: "code information" (’159 Patent, Claim 1)
Context and Importance: This term is central to the infringement analysis for the ’159 Patent, as it defines the data that is decoded from the code pattern and used to request content. The complaint alleges this is a URL (Compl. ¶25). Its construction will determine if the patent's scope is limited to URLs or covers other types of data that can be used to retrieve content.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent specification describes "code information" as what is extracted from a barcode image, which can then be used to extract "Web page information" or "URL information" (’159 Patent, col. 11:37-43; Abstract), suggesting "code information" may be a precursor to or a broader category than just a URL.
- Evidence for a Narrower Interpretation: The abstract states a key step is "extracting uniform resource locator (URL) information corresponding to the code information," which could be argued to imply that the functional purpose and primary embodiment of the "code information" is to yield a URL.
The Term: "billing information" (’008 Patent, Claim 9)
Context and Importance: The viability of the infringement claim against the ’008 Patent depends entirely on this term. Practitioners may focus on this term because the core dispute will be whether a QR code that simply links to a payment website contains "billing information" as required by the claim. The complaint alleges it includes the "total amount of purchase" (Compl. ¶66).
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not appear to provide an explicit definition. A party could argue that any data that leads to a bill being paid, even a simple URL to a payment portal, could be construed as "having billing information."
- Evidence for a Narrower Interpretation: Claim 9 requires the processor to obtain both "user information and billing information" from analyzing the code pattern image. This suggests the "billing information" is specific data (like an amount, account number, or invoice ID) embedded directly in the code, distinct from user data, and not just a generic link. The patent describes using the system to pay for a "paper bill (giro)," implying the code would contain specifics from that bill (’008 Patent, col. 2:39-42).
VI. Other Allegations
- Willful Infringement: The complaint alleges willful infringement based on the assertion that, "Upon information and belief, Defendant has known of the existence of the ’159 Patent and the ’008 Patent" (Compl. ¶71). The complaint does not plead specific facts to support pre-suit knowledge, such as prior correspondence or citation of the patents.
VII. Analyst’s Conclusion: Key Questions for the Case
- A key evidentiary question will be one of technical operation: Does the Defendant's accused payment system function by scanning a QR code that contains specific, embedded "billing information" (e.g., an invoice amount) as required by Claim 9 of the ’008 Patent, or does the code merely function as a hyperlink to a payment portal where users must manually enter such information? The complaint's own visual evidence may suggest the latter.
- A central issue will be one of direct infringement: As the claimed methods involve steps performed by an end-user on a personal device (e.g., a smartphone), the case may turn on what factual basis exists for the allegation that the Defendant itself "practices" the claimed methods or "utilizes" the claimed terminal in a manner that constitutes direct infringement under 35 U.S.C. § 271, beyond the general assertion of "internal use and testing."