DCT

1:19-cv-00651

Tzu Tech LLC v. Milwaukee Electric Tool Corp

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:19-cv-00651, D. Del., 04/09/2019
  • Venue Allegations: Plaintiff alleges venue is proper in the District of Delaware because Defendant is a Delaware corporation that conducts business and allegedly commits acts of infringement in the district.
  • Core Dispute: Plaintiff alleges that Defendant’s M-Spector line of inspection scopes infringes a patent related to self-articulating, behind-wall camera systems.
  • Technical Context: The technology involves borescopes or inspection cameras designed to be inserted into small openings to view enclosed or otherwise inaccessible spaces, a common tool in construction, plumbing, and maintenance.
  • Key Procedural History: The patent-in-suit is a continuation of a prior application and claims priority to a 2008 provisional application. The complaint does not mention any prior litigation, licensing history, or post-grant proceedings involving the patent.

Case Timeline

Date Event
2008-03-14 Priority Date for U.S. Patent No. 8,953,032
2015-02-10 U.S. Patent No. 8,953,032 Issued
2019-04-09 Complaint Filed

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

U.S. Patent No. 8,953,032 - "Self Articulating Behind-Wall Camera," issued February 10, 2015 (’032 Patent)

The Invention Explained

  • Problem Addressed: The patent addresses the need to inspect the area behind a wall before piercing or demolishing it, in order to avoid damaging hidden infrastructure like electrical wiring, plumbing, and structural supports without removing large sections of the wall itself (’032 Patent, col. 1:21-36).
  • The Patented Solution: The invention is a camera system featuring a camera head on the end of an "elongated member" (e.g., a flexible or semi-rigid cable) that can be inserted through a small hole in a wall. A controller at the other end allows a user to manipulate the camera, view the image on a screen, and illuminate the area, enabling detailed inspection of the concealed space (’032 Patent, Abstract; col. 3:17-31; Fig. 1A). The key concept is providing a controllable, illuminated view through a minimal-sized opening.
  • Technical Importance: This approach provides a non-destructive or minimally invasive method for inspection, which is critical for renovations, diagnostics, and repairs in existing structures (’032 Patent, col. 1:30-36).

Key Claims at a Glance

  • The complaint asserts infringement of at least independent Claim 1 (Compl. ¶12).
  • The essential elements of Claim 1 are:
    • a camera coupled to a first end of an elongated member;
    • at least one interface for communicating with a viewing device;
    • a controller coupled to a second end of the elongated member for controlling at least one of the member, the camera, or the viewing device;
    • a light source coupled towards the first end of the elongated member for illuminating a view of the camera;
    • wherein the elongated member has a cross sectional area of less than about one square inch at a point toward the first end of the elongated member.

III. The Accused Instrumentality

Product Identification

The complaint identifies the accused products as Defendant's "inspection scopes," including, without limitation, the M-Spector 360™ 9ft Kit, M-Spector 360™ Console, M-Spector™ AV M12™ Cordless Lithium-Ion Multimedia, M-Spector™ Inspection Scope Kit (9mm), M12™ M-Spector Flex™ 9ft Inspection Camera Cable Kit, M12™ M-Spector Flex™ 3 Ft Inspection Camera Cable Kit, M12™ M-Spector Flex™ 3 ft Inspection Camera Cable, and M-Spector™ AV M12™ Cordless Lithium-Ion Multimedia Camera (Compl. ¶12-13).

Functionality and Market Context

The complaint alleges these are "inspection scopes" that infringe the ’032 Patent (Compl. ¶12). The complaint does not provide specific technical details about the operation of the accused products or their market position, beyond identifying them by their model names.

IV. Analysis of Infringement Allegations

The complaint makes a general allegation that the accused products infringe at least Claim 1 of the ’032 Patent (Compl. ¶12). It states that a claim chart comparing Claim 1 to the accused products is attached as Exhibit B (Compl. ¶14); however, that exhibit was not filed with the complaint. The body of the complaint itself does not contain narrative allegations that map specific features of the accused products to the individual limitations of Claim 1. The analysis of infringement is therefore premised entirely on the assertion that such a mapping exists in the un-provided exhibit.

No probative visual evidence provided in complaint.

  • Identified Points of Contention:
    • Evidentiary Questions: As the complaint lacks specific factual allegations tying product features to claim limitations, a primary point of contention will be whether Plaintiff can produce evidence in discovery demonstrating that the accused M-Spector products practice every element of Claim 1.
    • Technical Questions: A key question will be whether the accused products meet the dimensional limitation of the claim, specifically whether their "elongated member has a cross sectional area of less than about one square inch" (’032 Patent, col. 12:2-5). Another technical question will concern the functionality of the accused device’s "controller" and whether it performs the control functions described in the patent specification for the claimed "controller".

V. Key Claim Terms for Construction

  • The Term: "controller ... for controlling at least one of the member, the camera, or the viewing device"

    • Context and Importance: The scope of this term is critical to determining what level of functionality is required to infringe. The dispute will likely center on whether a simple power switch or display unit on an accused device qualifies as the claimed "controller", or if more advanced functions are required. Practitioners may focus on this term because the patent specification describes a range of control capabilities, from simple to complex.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification states a "controller" "may be any device, circuit, processor, etc. which alters, changes, receives, transmits, manipulates or otherwise affects a signal, action, feature, and/or parameter of any component of the system" (’032 Patent, col. 4:12-16).
      • Evidence for a Narrower Interpretation: The specification also provides a list of more specific functions that may be controlled, including "toggling power to the camera," "rotating the elongated member," "zooming the camera," and "positioning the elongated member" (’032 Patent, col. 4:21-29). A party could argue these examples limit the scope of "controlling."

  • The Term: "less than about one square inch"

    • Context and Importance: This term sets a specific physical constraint on the device. The use of the word "about" introduces indefiniteness that will likely be a focus of claim construction. The outcome will determine whether accused products near, but not strictly under, the one-square-inch threshold are covered by the claim.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: "About" is typically construed to afford some tolerance. A party arguing for broader scope would contend it encompasses normal manufacturing tolerances or minor variations that do not change the fundamental character of the invention.
      • Evidence for a Narrower Interpretation: The patent repeatedly links the size of the elongated member to the ability to insert it into a hole drilled in a wall, suggesting a functional limit to the scope of "about" (’032 Patent, col. 6:37-43, 9:6-19). A defendant could argue that "about one square inch" should be interpreted in light of standard drill bit sizes and that any size that requires a significantly larger or non-standard opening falls outside the scope.

VI. Other Allegations

  • Indirect Infringement: The complaint does not include specific allegations of fact that would support a claim for either induced or contributory infringement, such as allegations of instructing users or providing a component with knowledge of its infringing use.
  • Willful Infringement: The complaint does not allege that Defendant had pre-suit knowledge of the ’032 Patent, nor does it plead any facts that would support a claim of willful or egregious infringement. The prayer for relief requests damages under 35 U.S.C. § 284, which allows for enhanced damages, but the complaint body lacks the factual predicate for such a claim (Compl., p. 4).

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

  1. Pleading Sufficiency: A threshold issue may be whether the complaint’s conclusory allegation of infringement, which defers all factual support to an un-provided exhibit, meets the plausibility standard for pleading patent infringement established by federal court precedent.
  2. Factual Congruence: The central question of fact will be whether discovery reveals that the accused M-Spector products contain every element recited in Claim 1. This will turn on a direct comparison of the products' features against the claim limitations, particularly the dimensional requirement ("less than about one square inch") and the functional requirements of the "controller".
  3. Definitional Scope: The case will likely depend on the court's construction of key claim terms. A core issue will be whether the term "controller" is interpreted broadly to cover any basic electronic control circuit, or more narrowly to require the specific manipulation and positioning capabilities described in the ’032 Patent’s preferred embodiments.