Encoditech LLC v. Tile Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Encoditech LLC (Texas)
  • Defendant: Tile, Inc. (Delaware)
  • Plaintiff’s Counsel: Stamatios Stamoulis; Rabicoff Law LLC
• Case Identification: 1:19-cv-01582, D. Del., 08/26/2019
• Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendant is incorporated in Delaware and has allegedly committed acts of patent infringement in the District.
• Core Dispute: Plaintiff alleges that Defendant’s line of personal tracking devices infringes a patent related to establishing direct, secure wireless communication links between mobile devices.
• Technical Context: The technology concerns peer-to-peer wireless communication protocols that enable devices to connect directly without relying on fixed infrastructure like cellular towers, a field relevant to technologies like Bluetooth, Wi-Fi Direct, and ad-hoc mesh networks.
• Key Procedural History: The asserted patent was the subject of a Certificate of Correction, filed on May 23, 2017, which substantively amended the language of the asserted claim.

Case Timeline

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

U.S. Patent No. 6,321,095 - "Wireless communications approach," issued Nov. 20, 2001

The Invention Explained

• Problem Addressed: The patent identifies drawbacks in prior art wireless systems. Conventional two-way radios (e.g., "walkie talkies") are mobile but typically unencrypted and lack advanced features, while digital cellular systems offer more services but require expensive, geographically limited network infrastructure and paid "air time" (Compl. ¶12; ’095 Patent, col. 1:24-51, col. 2:1-6).
• The Patented Solution: The invention describes a method and system for establishing a direct, digital communication link between two or more "mobile stations" without an intermediary base station ('095 Patent, col. 4:52-56). The system uses a multiple-access protocol, such as a combination of Frequency Division Multiple Access (FDMA) and Time Division Multiple Access (TDMA), to create logical "circuits" for communication ('095 Patent, col. 2:30-34). One mobile station can act as a "pseudo base station" (PBS) to manage the session, including synchronizing communications and assigning transmission slots to other participating "terminating mobile stations" (TMSs) ('095 Patent, col. 6:60-65).
• Technical Importance: The approach sought to combine the infrastructure-free mobility of two-way radios with the security and advanced call services of digital cellular phones, enabling private, direct communications in areas without cellular coverage ('095 Patent, col. 4:56-61).

Key Claims at a Glance

• The complaint asserts exemplary claim 7 of the patent (Compl. ¶17).
• A Certificate of Correction, referenced in the complaint, substantively amended claim 7, making it function as an independent claim (Compl. ¶9).
• Essential elements of the corrected independent Claim 7 include:
  • A wireless communication system with a first and second mobile station.
  • The first mobile station transmits a request signal directly to the second mobile station.
  • The system establishes a direct communication link in response to an acknowledge signal from the second mobile station.
  • The first station receives a public encryption key from the second station.
  • The first station generates a "common encryption key (Ckey)," encrypts it using the public key, and sends it to the second station.
  • The second station decrypts the message to extract the Ckey.
  • Subsequent messages between the stations are encrypted using the Ckey.
• The complaint does not explicitly reserve the right to assert other claims.

III. The Accused Instrumentality

Product Identification

The complaint identifies "at least Tile's Mate" and collectively refers to the accused products as the "Exemplary Tile Products" (Compl. ¶17).

Functionality and Market Context

The complaint alleges that the "Exemplary Tile Products practice the technology claimed by the '95 Patent" (Compl. ¶18). The complaint does not provide specific technical details about the operation of the accused products. Based on the product identification, the accused instrumentalities are understood to be small, battery-powered tracking tags that use short-range wireless technology (such as Bluetooth Low Energy) to communicate their location to a user's smartphone. The functionality relies on establishing a direct wireless link to a phone and can leverage a crowd-sourced network of other users' phones to locate items out of the primary user's range.

IV. Analysis of Infringement Allegations

The complaint references, but does not include, claim charts in an "Exhibit 2" that purportedly compare the asserted claims to the accused products (Compl. ¶18-19). The infringement allegations in the body of the complaint are general. The following table summarizes the infringement theory for the lead asserted claim based on the claim language and the broad allegations in the complaint.

’095 Patent Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: The complaint alleges that the Tile Mate tracker is part of a system that infringes. A potential dispute is whether a small, inanimate tracking tag and its associated smartphone app collectively meet the definition of a "mobile station" as described in the patent, which provides a "handset" as an example and focuses on communication between human users ('095 Patent, col. 4:3-4).
  • Technical Questions: The complaint lacks specific factual allegations mapping the operation of the Tile products to the claim elements. A central question for discovery will be whether the Tile system's Bluetooth-based communication and security protocols perform the specific sequence of transmitting a "request signal," establishing a "direct communication link," and exchanging a "common encryption key (Ckey)" in the manner required by claim 7.

No probative visual evidence provided in complaint.

V. Key Claim Terms for Construction

• The Term: "mobile station"

• Context and Importance: This term's construction is critical because the accused product, a small tracking tag, is technologically distinct from the "handset" example given in the patent ('095 Patent, col. 4:3-4). The infringement case may depend on whether a simple tag can be considered a "mobile station," or if the term is limited to devices used for active, two-way communication between human participants.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification provides a general definition as a "mobile communication device" without further express limitations ('095 Patent, col. 4:3-4).
  • Evidence for a Narrower Interpretation: The specification repeatedly describes the system in the context of human users communicating, for example: "a first user communicates with other users through mobile station 102" and discusses features like call waiting and caller ID ('095 Patent, col. 4:4-6; col. 21:3-4).

• The Term: "direct communication session"

• Context and Importance: The patent distinguishes its invention from cellular systems that require fixed, intermediary base stations ('095 Patent, col. 1:52-58). The Tile system involves a direct link between a tag and a phone, but its broader functionality relies on a crowd-sourced network of other users' phones acting as intermediaries. The definition of "direct" will be crucial to determining whether the Tile system, which has both direct and networked components, falls within the claim scope.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The patent's core concept is avoiding the fixed infrastructure of a public cellular network. A party could argue any communication not routed through a conventional cell tower is "direct."
  • Evidence for a Narrower Interpretation: The specification describes a self-contained system where two or more mobile stations communicate with each other, with one acting as a "pseudo base station," suggesting a closed, peer-to-peer link rather than a system that leverages a wider, cloud-based network ('095 Patent, col. 6:60-65).

VI. Other Allegations

• Indirect Infringement: The prayer for relief seeks a judgment for contributory and induced infringement (Compl., Prayer B). However, the body of the complaint contains no factual allegations to support the knowledge or intent elements required for such claims. The sole infringement count is titled "Direct Infringement" (Compl. p. 4).
• Willful Infringement: The complaint does not allege willful infringement or seek enhanced damages under 35 U.S.C. § 284. It does request that the case be declared "exceptional" for the purpose of recovering attorneys' fees under 35 U.S.C. § 285 (Compl., Prayer D(i)).

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

1. Definitional Scope: A core issue will be whether the term "mobile station", which the patent illustrates with a "handset" used for voice communication, can be construed to read on the accused system, which includes a small, passive tracking tag that communicates with a smartphone.

2. Technical Equivalence: The case will likely turn on an evidentiary question of whether the accused Tile system's Bluetooth-based protocol performs the specific, multi-step process of establishing a "direct communication session" and exchanging a "common encryption key" as explicitly recited in the patent's asserted claim.

3. Sufficiency of Allegations: Given the notice-pleading style of the complaint, which lacks detailed infringement contentions, a threshold question will be whether discovery uncovers sufficient evidence to map the technical operation of the accused Tile products to the patent's claims, which describe a communication architecture from a different technological era.