DCT
1:18-cv-01093
Crane Merchandising Systems Inc v. Swyft Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Crane Merchandising Systems, Inc. (Delaware / PPoB Missouri)
- Defendant: Swyft, Inc. (Delaware / PPoB California)
- Plaintiff’s Counsel: Young Conaway Stargatt & Taylor, LLP
- Case Identification: 1:18-cv-01093, D. Del., 07/25/2018
- Venue Allegations: Venue is asserted based on Defendant's incorporation in Delaware.
- Core Dispute: Plaintiff alleges that Defendant’s "SwyftStores" automated retail machines infringe a patent related to an apparatus and method for vending products using a robotic retrieval system that avoids dropping them.
- Technical Context: The technology addresses limitations in conventional vending machines, which are often unsuitable for dispensing fragile items like glass bottles or products of non-standard sizes and shapes.
- Key Procedural History: The patent-in-suit, U.S. Patent No. 6,328,180, underwent an ex parte reexamination, resulting in an amended version of the asserted claim. The complaint also alleges that Defendant's CEO had notice of the patent as early as 2008 through a predecessor company and that Defendant acquired another entity previously sued by Plaintiff for infringing the same patent, which may form the basis for the willfulness allegation.
Case Timeline
| Date | Event |
|---|---|
| 1997-10-14 | ’180 Patent Priority Date |
| 2001-12-11 | ’180 Patent Issue Date |
| 2008-09-04 | Alleged notice of infringement to CEO of Zoom Systems (now Swyft) |
| 2013-07-01 | ’180 Patent Reexamination Certificate (C1) Issue Date |
| 2016-08-30 | Alleged start date of Defendant's infringing operations |
| 2017-07-21 | Prior lawsuit filed by Plaintiff against NewZoom, LLC |
| 2017-11-09 | Defendant announced acquisition of NewZoom, LLC |
| 2018-07-25 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,328,180 (as amended by Reexamination Certificate C1) - “Apparatus and Method for Vending Products”
- Patent Identification: U.S. Patent No. 6,328,180, “Apparatus and Method for Vending Products,” issued December 11, 2001.
The Invention Explained
- Problem Addressed: The patent's background describes the problem that conventional vending machines, which typically drop products into a delivery bin, are not suitable for fragile items like glass bottles or for products with varied shapes and sizes that are not easily dispensed by standard coil mechanisms (U.S. Patent No. 6,328,180, col. 2:10-34). This can lead to product damage, machine malfunctions, and marketing disadvantages for products that must be placed on lower shelves to minimize drop distances (U.S. Patent No. 6,328,180, col. 2:34-44).
- The Patented Solution: The invention proposes a vending machine that uses a robotic carriage assembly moving on an X-Y plane to retrieve a selected item from its storage queue and transport it to a delivery port (U.S. Patent No. 6,328,180, Abstract; Fig. 4). This system is designed to "smoothly, gently, and quickly" carry the product, avoiding the dropping and impact forces common in prior art machines, thereby enabling the safe vending of a wider variety of products (U.S. Patent No. 6,328,180, col. 3:15-24).
- Technical Importance: The described technology enabled the expansion of automated retail to include fragile, high-value, or irregularly shaped products that were previously incompatible with automated drop-style vending. (U.S. Patent No. 6,328,180, col. 2:51-57).
Key Claims at a Glance
- The complaint asserts independent claim 10, as amended by the C1 Reexamination Certificate (Compl. ¶14).
- The essential elements of amended Claim 10 include:
- A method of vending discrete products from a vending machine with a transparent viewing panel.
- Ordering products in selectable queues on a support, with each queue standing on a different surface and kept standing by sidewalls.
- Moving a capture assembly into alignment with the dispensing end of a selected queue.
- Transferring the foremost product from the queue into the capture assembly.
- Moving the capture assembly with the retained product to a delivery port.
- Enabling customer removal of the product from the capture assembly.
- Performing the transfer and moving steps without dropping or subjecting the product to sharp impact forces.
- The complaint alleges infringement of "one or more claims" but only provides a theory for Claim 10 (Compl. ¶13).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are automated retail stores called "SwyftStores," and specifically the "X2 SwyftStore machine" (Compl. ¶¶ 9, 15).
Functionality and Market Context
- The accused SwyftStore is described as an automated retail system that vends discrete products such as food, beauty, and pharmaceuticals (Compl. ¶¶ 9, 15).
- The system includes a transparent front panel for customer viewing, with products ordered in "front-to-rear selectable queues on divided shelves" (Compl. ¶16). A promotional image depicts the 'X2 SwyftStore' machine, highlighting its transparent front panel and the arrangement of products on internal shelves (Compl. p. 5).
- The complaint alleges the machine uses an "X-Y retrieval assembly" that functions as a capture assembly. This assembly is said to move into alignment with a selected queue, transfer the product from the shelf into the assembly, and then move the product to a delivery port for customer retrieval (Compl. ¶¶ 17-20). A photograph of a red, CVS-branded SwyftStore shows a close-up of the interior, illustrating products arranged in queues on shelves and an X-Y retrieval assembly positioned near a delivery port (Compl. p. 6).
- A central allegation is that the entire retrieval process is performed "without dropping or subjected to sharp impact forces" (Compl. ¶21).
IV. Analysis of Infringement Allegations
’180 Patent Infringement Allegations
| Claim Element (from Independent Claim 10, as amended) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a. ordering said products in a plurality of selectable queues of said products on said support...each queue of products kept standing on said one of said surfaces as said products advance toward a front of said queue by sidewalls spaced according to dimensions of said products in said queue; | Products are ordered in selectable queues on divided shelves. The queues are kept standing and advance toward the front via sidewall dividers that are adjustable. | ¶16 | col. 4:25-34 |
| b. moving a capture assembly into alignment with the dispensing end of a customer selected one of said queues; | A capture assembly, referred to as an "X-Y retrieval assembly," is moved into alignment with the dispensing end of the selected product queue. | ¶17 | col. 4:34-36 |
| c. transferring the foremost one of said products from said customer selected one of said queues into retainment by said capture assembly by transferring said foremost product off said surface on which said products rest and into said capture assembly; | The foremost product is transferred from its shelf into retainment by the "X-Y retrieval assembly." | ¶18 | col. 4:36-39 |
| d. moving said capture assembly with its retained product in view of said viewing panel to a delivery port; | The "X-Y retrieval assembly" moves the retained product, in view of the transparent panel, to a delivery port. | ¶19 | col. 4:39-41 |
| e. enabling customer removal of said retained product from said capture assembly at said delivery port; | A delivery port door slides open, enabling the customer to reach into the capture assembly and remove the product. | ¶20 | col. 4:40-42 |
| f. wherein the steps of transferring and moving said foremost product...are performed without dropping or subjecting said foremost product to sharp impact forces. | During a vend, the product is not dropped or subjected to sharp impact forces during its transfer into the retrieval assembly or its movement to the delivery port. | ¶21 | col. 4:42-45 |
- Identified Points of Contention:
- Technical Questions: The allegation that the product is transferred "without... sharp impact forces" (Claim 10f) is a negative limitation that is highly fact-dependent. A central evidentiary question will be what objective data supports this assertion and what the parties will argue constitutes a "sharp impact force" in this context.
- Scope Questions: The complaint equates the accused "X-Y retrieval assembly" with the patent's claimed "capture assembly". The defense may seek to distinguish its mechanism from the specific embodiments disclosed in the patent, such as the pivotal capture cage and escapement mechanism (U.S. Patent No. 6,328,180, Figs. 10-12), raising a question of claim scope.
V. Key Claim Terms for Construction
The Term: "capture assembly"
- Context and Importance: This term defines the core robotic component of the invention. Its construction will be critical to determining infringement, as the Defendant will likely argue its "X-Y retrieval assembly" falls outside the scope of the claims. Practitioners may focus on this term because its interpretation will dictate whether the specific mechanical details shown in the patent's embodiments limit the broader functional language of the claims.
- Intrinsic Evidence for a Broader Interpretation: The claims define the term functionally as an "assembly" that can be moved into alignment, have a product transferred into it, and then move that product to a delivery port (U.S. Patent No. 6,328,180, col. 28:12-20). This suggests a broad, function-oriented definition.
- Intrinsic Evidence for a Narrower Interpretation: The specification discloses a specific embodiment of the capture assembly as a pivotal cage (102) that cooperates with an escapement mechanism to release a product from a queue (U.S. Patent No. 6,328,180, col. 6:35-56; Fig. 10). The defense may argue that these disclosed details should inform and potentially limit the scope of the term.
The Term: "without... subjecting said foremost product to sharp impact forces"
- Context and Importance: This limitation distinguishes the invention from prior art drop-style vendors and is central to the patent's value proposition. The definition of this term of degree will be a key battleground.
- Intrinsic Evidence for a Broader Interpretation (Plaintiff-favored): The patent's background repeatedly contrasts the invention with systems that "drop" products (U.S. Patent No. 6,328,180, col. 2:22-26). This context suggests that any system avoiding a free-fall drop could meet this limitation.
- Intrinsic Evidence for a Narrower Interpretation (Defendant-favored): The patent abstract emphasizes a "smoothly" transported product and a "positive non-vibratory manner" of movement. A defendant could argue this language supports a construction requiring more than just the absence of a drop, but an exceptionally gentle handling that their system may not provide. The term could also be challenged as indefinite.
VI. Other Allegations
Willful Infringement
The complaint alleges that infringement has been willful and deliberate (Compl. ¶23). This allegation is based on alleged pre-suit and post-suit knowledge of the ’180 Patent. The complaint alleges that Swyft's current CEO was informed in writing in 2008 that a predecessor company's products (ZoomShops) infringed the ’180 Patent, and that Swyft later acquired another company (NewZoom) that Plaintiff had sued for infringement in 2017 (Compl. ¶¶ 23-24).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction and scope: can the term "capture assembly", as described in the context of the patent's specific escapement mechanism embodiments, be construed to read on the defendant's "X-Y retrieval assembly"? The outcome may depend on whether the court adopts a broader functional definition or a narrower one tied more closely to the disclosed structures.
- A second central issue will be evidentiary and factual: what evidence will be required to prove the negative limitation that the accused method operates "without dropping or subjecting said foremost product to sharp impact forces"? The resolution of this question will likely depend on expert testimony and a technical comparison of the forces involved in the accused system versus those in the prior art.
- Finally, the willfulness claim raises a question of imputed knowledge: can the Plaintiff establish that notice provided to the CEO of a different company in 2008, combined with the acquisition of a separately-sued entity years later, is sufficient to prove Swyft acted with deliberate or reckless disregard for Plaintiff's patent rights?