DCT
1:19-cv-00993
Smart Locking Tech LLC v. Lockstate Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Smart Locking Technologies LLC (Delaware)
- Defendant: LockState, Inc. (Delaware)
- Plaintiff’s Counsel: Stamoulis & Weinblatt LLC
- Case Identification: 1:19-cv-00993, D. Del., 05/29/2019
- Venue Allegations: Venue is alleged to be proper based on Defendant being a Delaware corporation.
- Core Dispute: Plaintiff alleges that Defendant’s OpenEdge line of smart locks and associated systems infringe patents related to the generation, use, and monitoring of non-permanent or one-time access codes for locking mechanisms.
- Technical Context: The technology relates to network-connected smart locks that can be managed remotely, a key component of the modern property management, short-term rental, and smart home markets.
- Key Procedural History: The U.S. Patent No. 6,696,918 is a continuation-in-part of the application that resulted in U.S. Patent No. 6,300,873, indicating a shared specification and a close technological relationship between the asserted patents. The '918 patent is subject to a terminal disclaimer.
Case Timeline
| Date | Event |
|---|---|
| 1999-09-16 | Priority Date for U.S. Patent Nos. 6,300,873 and 6,696,918 |
| 2001-10-09 | U.S. Patent No. 6,300,873 Issued |
| 2004-02-24 | U.S. Patent No. 6,696,918 Issued |
| 2019-05-29 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,696,918 - Locking Mechanism for Use with Non-Permanent Access Code, Issued Feb. 24, 2004
The Invention Explained
- Problem Addressed: The patent addresses the security risks and management burdens associated with static, reusable vendor codes for accessing secure storage containers or locations. Such static codes, once compromised, provide indefinite access until manually reprogrammed, and require device owners to manage and track multiple codes for different users (e.g., delivery services, cleaners) (’918 Patent, col. 1:47-64).
- The Patented Solution: The invention describes a system where a locking mechanism uses "non-permanent" access codes that expire after a predetermined time interval or usage allocation. A central server can issue these codes to vendors or users upon request, freeing the device owner from direct key management and allowing for precise tracking of each access event (’918 Patent, Abstract; col. 2:8-21). The system is designed to provide secure, traceable, and temporary access for applications like unattended package delivery.
- Technical Importance: This approach provided a framework for centralized, dynamic access control, shifting the security model from static, device-centric codes to temporary, server-managed credentials, which is foundational for modern, large-scale remote access management.
Key Claims at a Glance
- The complaint asserts at least independent claim 32 (Compl. ¶11).
- Independent Claim 32 Elements:
- An actuator configured to unlock in response to entry of an authorized access code;
- An access code entry unit configured to accept a non-permanent use access code; and
- A locking mechanism controller programmed to transmit a message to a server and/or user indicating a non-permanent use access code has been accepted.
- The complaint does not explicitly reserve the right to assert other claims, but requests an adjudication that Defendant has infringed the patent generally (Compl. ¶19, Prayer for Relief ¶A).
U.S. Patent No. 6,300,873 - Locking Mechanism for Use with One-Time Access Code, Issued Oct. 9, 2001
The Invention Explained
- Problem Addressed: As the parent invention to the '918 patent, the '873 patent addresses the same fundamental problem: the inefficiency and security flaws of using static, reusable codes for third-party access to secure locations, particularly for home delivery and pickup services (’873 Patent, col. 1:45-68).
- The Patented Solution: The invention proposes a locking mechanism that uses a "one-time use access code" issued by a remote server. The server manages a list of available codes, which are preferably generated by a "cryptographically strong random number generator," and issues them upon request from a merchant or delivery service. Once used or expired, the code is removed from the list of valid codes, ensuring it cannot be reused (’873 Patent, Abstract; col. 2:21-39). The interaction between the locking device and a central server for code validation and tracking is a key aspect of the solution (’873 Patent, Fig. 3).
- Technical Importance: This patent established an early model for a third-party, service-based architecture for secure access control, decoupling the code generation and management from the end-user.
Key Claims at a Glance
- The complaint asserts at least independent claim 36 (Compl. ¶21).
- Independent Claim 36 Elements:
- An actuator configured to unlock in response to entry of an authorized access code; and
- An access code entry unit configured to accept a one-time use access-code issued by a remote server, wherein the one-time use access code comprises a number generated by a cryptographically strong random number generator.
- The complaint does not explicitly reserve the right to assert other claims but makes a general prayer for relief regarding the patent (Compl. Prayer for Relief ¶A).
III. The Accused Instrumentality
Product Identification
- Defendant’s "OpenEdge Smart Locks" and the associated "EdgeState by RemoteLock" software platform and services (Compl. ¶¶11, 14, 18).
Functionality and Market Context
- The accused products are Wi-Fi enabled smart locks that connect directly to a user's router, allowing for remote management without additional gateways (Compl. ¶14, p. 3). The system is marketed for use in rental properties, office buildings, and other locations requiring remote monitoring and management of access (Compl. ¶14, p. 3).
- A core feature is the ability to create and manage temporary access codes for "Access Guests," which can be configured with specific start and end dates and times (Compl. ¶16, p. 6-7). A screenshot from the Defendant's support website shows a user interface for creating an "Access Guest" with a start date/time and an end date/time. (Compl. ¶16, p. 7).
- The system also provides notifications and event logging, allowing property owners to "know when people unlock doors" and "receive email or text alerts when codes are used" (Compl. ¶14, p. 3; ¶18, p. 14). Another screenshot shows an "Events" tab that logs when access was granted, by whom, and at what time (Compl. ¶18, p. 13).
IV. Analysis of Infringement Allegations
’918 Patent Infringement Allegations
| Claim Element (from Independent Claim 32) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An actuator configured to unlock in response to entry of an authorized access code | The OpenEdge Smart Locks contain an actuator that unlocks the lock when a valid access code is entered on the keypad (Compl. ¶15). | ¶15 | col. 12:58-62 |
| an access code entry unit configured to accept a non-permanent use access code | The locks include a keypad and associated electronics that accept temporary codes for "Access Guests" which are valid only for a specific, limited duration, such as a guest's stay (Compl. ¶16). A screenshot shows the user interface for setting start and end dates for a guest's PIN. (Compl. ¶16, p. 7). | ¶16 | col. 12:4-7 |
| a locking mechanism controller programmed to transmit a message to a server and/or user indicating a non-permanent use access code has been accepted | The system is programmed to transmit notifications and log events when access is granted. A promotional video shows a "LOCKSTATE CONNECT" notification stating "Jen unlocked Front Door at 1:32PM." (Compl. ¶18, p. 13). The system can also send email or text alerts when a code is used (Compl. ¶18, p. 14). | ¶18 | col. 14:45-55 |
- Identified Points of Contention:
- Technical Questions: A key question will be whether the general "Access Granted" or "Jen unlocked Front Door" notifications (Compl. ¶18, p. 13) perform the specific function of "indicating a non-permanent use access code has been accepted," as required by the claim, or if they are simply general event logs that do not distinguish between permanent and non-permanent users. The evidence in the complaint suggests the system does track user type (Compl. ¶17, p. 9).
’873 Patent Infringement Allegations
| Claim Element (from Independent Claim 36) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An actuator configured to unlock in response to entry of an authorized access code | The OpenEdge Smart Locks contain an actuator that unlocks the lock when a valid access code is entered on the keypad (Compl. ¶25). | ¶25 | col. 11:7-11 |
| an access code entry unit configured to accept a one-time use access-code issued by a remote server, wherein the one-time use access code comprises a number generated by a cryptographically strong random number generator | The system allows for the creation of temporary access codes for guests, issued via the remote EdgeState software platform (Compl. ¶26, p. 20). The complaint alleges, "upon information and belief," that these codes are generated by a cryptographically strong random number generator (Compl. ¶27). | ¶26, ¶27 | col. 14:24-27; 36-39 |
- Identified Points of Contention:
- Evidentiary Questions: The complaint alleges the use of a "cryptographically strong random number generator" on "information and belief" (Compl. ¶27), without providing direct evidence. Proving this element will likely require discovery into the defendant's source code and system architecture. The defendant may argue its code generation method does not meet the "cryptographically strong" standard as understood in the art.
- Scope Questions: The claim requires a "one-time use access-code." The accused functionality provides for temporary codes valid for a specific duration (e.g., a weekend) (Compl. ¶24, p. 24), which may permit multiple uses within that window. The court may need to determine if "one-time use" can be construed to cover codes that are "time-limited" but not strictly single-use.
V. Key Claim Terms for Construction
For the ’918 Patent
- The Term: "non-permanent use access code"
- Context and Importance: This term is the central feature of the invention. Its scope will determine whether the accused system, which offers time-limited codes that may be used multiple times within their validity window, falls within the claims. Practitioners may focus on this term to dispute whether a code valid for a multi-day period (e.g., a weekend rental) is "non-permanent" in the manner contemplated by the patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification suggests non-permanence can be based on time or usage, stating an entry code may be valid for "a pre-determined usage allocation rather than time (e.g., 10 uses and then the entry code expires)" (’918 Patent, col. 2:57-59). This could support an interpretation where any code that is not indefinite is "non-permanent."
- Evidence for a Narrower Interpretation: The background criticizes static, "reusable codes" (’918 Patent, col. 1:49). A defendant might argue that a code used multiple times by the same guest over a weekend is "reusable" and therefore not the type of "non-permanent" code invented, which was aimed more at single-event access like a package delivery.
For the ’873 Patent
- The Term: "cryptographically strong random number generator"
- Context and Importance: This is a specific technical requirement for the access code itself. Infringement of claim 36 hinges on whether the accused system uses a generator meeting this standard. The complaint alleges this only on "information and belief," making it a likely focus of discovery and expert testimony.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not define the term or provide specific examples of qualifying algorithms. A plaintiff may argue it should be given its plain and ordinary meaning at the time of the invention, which could encompass a wide range of secure randomization methods.
- Evidence for a Narrower Interpretation: The term itself implies a high standard of security against prediction or reverse-engineering. A defendant could argue that a simple pseudo-random number generator, if used in their system, would not qualify as "cryptographically strong," which requires specific properties to resist cryptanalysis (’873 Patent, col. 2:34-35).
VI. Other Allegations
- Indirect Infringement: The complaint includes a prayer for relief for induced infringement of both patents (Compl. Prayer for Relief ¶B). The factual basis appears to be Defendant’s marketing materials, user guides, and software interfaces that allegedly instruct and encourage customers to use the OpenEdge Smart Locks in an infringing manner, for example, by creating temporary guest codes (Compl. ¶¶16, 18).
- Willful Infringement: The complaint does not use the word "willful" but does request a declaration that the case is "exceptional" under 35 U.S.C. § 285 and an award of attorneys' fees (Compl. Prayer for Relief ¶D). This is typically sought in cases of willful infringement. The complaint does not allege any facts to support pre-suit knowledge of the patents by the Defendant; any willfulness claim would likely be based on conduct occurring after the filing of this lawsuit.
VII. Analyst’s Conclusion: Key Questions for the Case
- A key question of claim scope will be whether the term "non-permanent" or "one-time use" can be construed to cover the accused system's "temporary" access codes, which are valid for a specific time window (e.g., a weekend) and may be used multiple times by a single guest within that window.
- A critical evidentiary question will be whether Plaintiff can prove, through discovery, that Defendant’s system generates its access codes using a "cryptographically strong random number generator" as required by claim 36 of the ’873 patent, an element alleged only on information and belief.
- A central question of technical function will be whether the accused system's general-purpose notifications (e.g., "Jen unlocked Front Door") meet the claim 32 limitation of transmitting a message specifically "indicating a non-permanent use access code has been accepted," or if there is a functional distinction between a general event log and a specific notification tied to the type of code used.