DCT
1:19-cv-00795
1a Smart Start LLC v. Consumer Safety Technology LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: 1A Smart Start, LLC (Delaware); Low Cost Interlock, Inc. (Nevada); Lifeloc Technologies, Inc. (Colorado)
- Defendant: Consumer Safety Technology, LLC d/b/a Intoxalock (Delaware)
- Plaintiff’s Counsel: Shaw Keller LLP
- Case Identification: 1:19-cv-00795, D. Del., 04/30/2019
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because the Defendant is a Delaware limited liability company and therefore resides in the district.
- Core Dispute: Plaintiffs allege that Defendant’s automated ignition interlock calibration system infringes patents related to automated breathalyzer calibration technology, which was allegedly developed after Defendant misappropriated Plaintiffs’ trade secrets under the guise of a potential business partnership.
- Technical Context: The technology concerns automated calibration stations for ignition interlock devices (IIDs), which are court-mandated breathalyzers connected to a vehicle's ignition, aiming to improve the accuracy, efficiency, and cost-effectiveness over traditional manual or mail-in calibration methods.
- Key Procedural History: The complaint details a history wherein Defendant allegedly feigned interest in a partnership to gain access to Plaintiff LCI's proprietary calibration technology under a confidentiality agreement. The complaint also notes that Plaintiff LCI elected not to have its patent application published by the USPTO to maintain the technology as a trade secret while the application was pending. Following a cease and desist letter, Plaintiffs initiated this suit alleging patent infringement alongside claims for breach of contract, trade secret misappropriation, and fraud.
Case Timeline
| Date | Event |
|---|---|
| 2012-08-07 | Earliest Priority Date for ’883 Patent |
| 2013-07-31 | Priority Date for ’318 Patent |
| 2015-05-18 | LCI displays device with "Patent Pending" notice, allegedly notifying CST |
| 2015-06-04 | CST personnel visit LCI headquarters under a Confidentiality Agreement |
| 2016-05-15 | CST debuts the accused Intoxalock Remote Calibration Station |
| 2017-02-07 | ’883 Patent Issued |
| 2017-04-13 | CST allegedly put on notice of ’883 Patent via its own published application |
| 2017-09-26 | ’318 Patent Issued |
| 2019-04-30 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,772,318: "Interlock Data Collection and Calibration System" (Issued Sep. 26, 2017)
- The Invention Explained:
- Problem Addressed: The patent background describes the widespread use of ignition interlock devices (IIDs) to combat drunk driving and notes the existence of prior art for IID data collection. (Compl. ¶24; ’318 Patent, col. 1:7-27). The complaint elaborates that prior to the invention, calibration was a manual, expensive, and time-consuming mail-in process. (Compl. ¶24).
- The Patented Solution: The invention is an integrated system that automates both the collection of data from an IID and its calibration. It comprises a device computer, a gas delivery system for providing a calibration reference, and a data port. A calibration program on the computer orchestrates the process: it receives data from the IID, controls the gas delivery to perform the calibration, generates confirmation data, and stores it in a local database. (’318 Patent, Abstract; col. 2:17-32).
- Technical Importance: The system is designed to provide a reliable, automated method for calibrating an IID and to gather, encrypt, and store related data for potential evidentiary use. (’318 Patent, col. 2:40-48).
- Key Claims at a Glance:
- The complaint asserts infringement of at least independent claim 1. (Compl. ¶68).
- Essential elements of claim 1 include:
- An interlock data collection and calibration system for use with an IID.
- A device computer with a processor and memory.
- A gas delivery system with a compressed alcohol gas cylinder and a microcontroller-controlled valve.
- A data port connecting the device computer to the IID.
- A calibration program on the device computer for receiving data, calibrating the IID, and generating confirmation data.
- A local database on the device computer for storing the confirmation data.
- The device computer is "separate from and detachably connectable" to the IID.
- The device computer "operatively controls the microcontroller of the gas delivery system."
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 9,562,883: "Breath Alcohol Tester Calibration Station" (Issued Feb. 7, 2017)
- The Invention Explained:
- Problem Addressed: The patent background states that breath alcohol testers require regular calibration checks and recalibration to ensure accuracy. This process often requires specially trained users, and if not performed correctly or regularly, can lead to errors or render the device's results invalid. (’883 Patent, col. 1:36-67, col. 2:1-6).
- The Patented Solution: The invention is a calibration station that automates and directs the calibration process to reduce human error. The station establishes both a fluid connection (for a calibration standard) and a data connection to the breath tester. The station's circuitry then executes the calibration process on the tester in response to a command, effectively taking control of the procedure away from the operator. (’883 Patent, Abstract; col. 2:7-18).
- Technical Importance: The invention provides a "user-friendly system and method for calibrating a breath alcohol tester with a much lower error rate than current systems and methods." (’883 Patent, Abstract).
- Key Claims at a Glance:
- The complaint asserts infringement of at least independent claim 23. (Compl. ¶76).
- Essential elements of claim 23 include:
- A calibration station.
- A user input interface to receive a command for a calibration process.
- Circuitry on the station configured to: establish a data connection, send the command to the breath tester, execute the calibration process on the tester in response to the command, and "control the breath alcohol tester."
- A calibration fluid interface to fluidly connect a calibration standard to the tester.
- A valve configured to open the fluid connection in response to the execution of the calibration process.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
- Product Identification: The "Intoxalock Remote Calibration Station" ("Accused Product"). (Compl. ¶36).
- Functionality and Market Context: The complaint alleges the Accused Product is an "automated calibration system" that "functioned in substantially the same way" as Plaintiff LCI's device. (Compl. ¶36). It is allegedly used by Defendant's third-party partners to perform "quick, accurate calibration" of handheld interlock devices, allowing customers to wait on-site rather than mailing their devices in for service. (Compl. ¶39). The complaint alleges that this technology enabled Defendant to "revolutionize its business model" by dramatically increasing cost-effectiveness and rapidly expanding its network of third-party calibration service partners. (Compl. ¶¶38-39). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
’971,318 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an interlock data collection and calibration system for use with an ignition interlock device | The Accused Product is an interlock data collection and calibration system for use with an IID. | ¶68(a) | col. 2:17-20 |
| a device computer having a computer processor and a computer memory | The Accused Product includes a device computer with a processor and memory. | ¶68(b)(i) | col. 5:50-54 |
| a gas delivery system for delivering a gas sample to the ignition interlock device, wherein the gas delivery system includes a cylinder of compressed alcohol sample gas, and a gas control valve operably installed on the cylinder and controlled by a microcontroller... | The Accused Product includes a gas delivery system with a compressed alcohol sample gas cylinder and a gas control valve controlled by a microcontroller for releasing gas samples to the IID. | ¶68(b)(ii) | col. 7:59-67 |
| a data port operably connected with the device computer for enabling sample data from the ignition interlock device to be transmitted to the device computer | The Accused Product has a data port connected to its computer that enables data transmission from the IID. | ¶68(b)(iii) | col. 4:13-22 |
| a calibration program operably installed on the computer memory of the device computer for receiving the sample data, calibrating the ignition interlock device, and generating confirmation data that the ignition interlock device was calibrated | The Accused Product has a calibration program on its computer memory for receiving data, calibrating the IID, and generating confirmation data. | ¶68(b)(iv) | col. 5:60-67 |
| a local database operably installed on the computer memory of the device computer for storing the confirmation data | The Accused Product has a local database on its computer memory for storing confirmation data. | ¶68(b)(v) | col. 6:5-8 |
| the device computer is separate from and detachably connectable to the ignition interlock device via the data port | The Accused Product's device computer is separate from and detachably connectable to the IID via the data port. | ¶68(c) | col. 8:58-63 |
| the device computer operatively controls the microcontroller of the gas delivery system responsive to the calibration program | The Accused Product's device computer operatively controls the gas delivery system's microcontroller in response to the calibration program. | ¶68(d) | col. 8:63-67 |
’9,562,883 Patent Infringement Allegations
| Claim Element (from Independent Claim 23) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a user input interface configured to receive an input command for a calibration process from a user | The Accused Product includes a user input interface configured to receive a command for a calibration process. | ¶76(b)(i) | col. 4:14-19 |
| circuitry on the calibration station configured to establish a data connection between a breath alcohol tester and the calibration station, send the input command from the calibration station to the breath alcohol tester, execute the calibration process on the breath alcohol tester in response to the input command, and control the breath alcohol tester | The Accused Product includes circuitry configured to establish a data connection with the tester, send the input command to the tester, execute the calibration process on the tester in response to the command, and control the tester. | ¶76(b)(ii) | col. 11:58-61 |
| a calibration fluid interface configured to fluidly connect a calibration standard to the breath alcohol tester | The Accused Product includes a calibration fluid interface configured to fluidly connect a calibration standard to the breath alcohol tester. | ¶76(b)(iii) | col. 7:11-20 |
| a valve configured to open the fluid connection between the calibration standard and the breath alcohol tester in response to execution of the calibration process on the breath alcohol tester | The Accused Product includes a valve configured to open the fluid connection between the standard and the tester in response to the execution of the calibration process. | ¶76(b)(iv) | col. 12:1-4 |
- Identified Points of Contention:
- Technical Question: The complaint provides only conclusory allegations tracking the claim language. A key factual question for both patents will be the nature of the "control" asserted by the Accused Product's computer/circuitry over the IID and its own components. For the ’318 Patent, this concerns whether the device computer "operatively controls the microcontroller." For the ’883 Patent, it concerns whether the station's circuitry truly does "control the breath alcohol tester." The dispute may turn on whether sending high-level commands (e.g., "initiate calibration") satisfies this limitation, or if a more granular, step-by-step command-and-control architecture is required by the claims.
- Scope Question: For the ’883 Patent, a question may arise as to whether the Accused Product's system architecture meets the definition of a "calibration station" with "circuitry... configured to... control the breath alcohol tester." The allocation of processing tasks between the station and the IID itself will be central to resolving this question.
V. Key Claim Terms for Construction
Term 1: "operatively controls the microcontroller" (’318 Patent, Claim 1)
- Context and Importance: This term is critical for defining the relationship between the main "device computer" and the "microcontroller" in the gas delivery system. The infringement analysis will depend on whether the Accused Product's architecture exhibits the required level of control. Practitioners may focus on this term to dispute whether a high-level command from the computer to the microcontroller is sufficient, or if a more integrated, step-by-step control is required.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent states that the "operation of the gas control valve 76 is controlled by the microcontroller 52... which receives commands from the device computer 110." (’318 Patent, col. 5:30-34). This could suggest that merely sending commands, which the microcontroller then executes, constitutes "operative control."
- Evidence for a Narrower Interpretation: The claim requires the control to be "responsive to the calibration program." (’318 Patent, col. 9:1-3). The flowcharts (FIGS. 3-4) depict a sequence of discrete actions, which could imply that the device computer is making decisions throughout the process (e.g., checking pressure, then adjusting values, then opening a solenoid), suggesting a more active, ongoing control relationship rather than a single "start" command.
Term 2: "circuitry on the calibration station configured to ... control the breath alcohol tester" (’883 Patent, Claim 23)
- Context and Importance: This term defines the functional relationship between the calibration station and the separate breath tester device. The viability of the infringement claim hinges on the degree of "control" the Accused Product (the station) exerts over the IID (the tester).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The summary describes a method of "controlling the breath alcohol tester via circuitry on the calibration station." (’883 Patent, col. 11:58-61). The claim itself lists "control" as one of several functions of the circuitry, distinct from sending a command or executing the process, which may support a broad reading of the term.
- Evidence for a Narrower Interpretation: The claim states the circuitry is configured to "execute the calibration process on the breath alcohol tester in response to the input command." (’883 Patent, col. 12:12-14). This language could suggest that the station sends a command, and the tester itself performs the execution, placing the locus of operational control within the tester. The specification notes that in some implementations, "the calibration station may include none or very little computing circuitry with the majority of the operations 400 performed by the connected breath alcohol tester." (’883 Patent, col. 11:10-14). This embodiment could be used to argue that "control" does not require the station to perform the primary processing.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendant actively induces infringement by providing the Accused Product to third-party calibration service vendors and that it contributorily infringes by selling the product knowing it is especially made for infringement and is not a staple article of commerce. (Compl. ¶¶69-70, 77-78).
- Willful Infringement: Willfulness is alleged for both patents. For the ’318 Patent, the complaint alleges pre-suit knowledge based on a "patent pending" marking on Plaintiff's device at a May 2015 trade show and direct communication from Plaintiff's CEO in May 2016. (Compl. ¶72). For the ’883 Patent, willfulness is based on alleged knowledge as of April 13, 2017, when a patent application filed by Defendant was published that cited the ’883 Patent as a reference. (Compl. ¶80).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of evidentiary proof versus claim scope: The complaint is heavily framed by a narrative of trade secret misappropriation. While legally distinct from patent infringement, this backstory will loom over the case. A core question for the court will be whether the Accused Product, allegedly derived from Plaintiffs' own technology, actually practices the specific limitations of the patent claims as they were ultimately granted by the USPTO.
- A key technical question will be the locus and nature of control: For both asserted patents, the infringement analysis will likely turn on construing the term "control." The court will need to determine whether the claims require the calibration station's computer to exert a fine-grained, step-by-step command over the breathalyzer and its own subsystems, or if merely sending a high-level "initiate calibration" command is sufficient to meet the "operatively controls" and "control the breath alcohol tester" limitations.
- A major legal and financial question will concern willfulness and damages: The complaint makes specific, fact-based allegations of pre-suit knowledge for both patents, including interactions between the parties and citation of the patent-in-suit in Defendant's own filings. This elevates the willfulness claims beyond a boilerplate allegation and positions enhanced damages as a critical component of the potential financial exposure in the case.