1:20-cv-00304
Coding Tech LLC v. Qualtrics LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Coding Technologies, LLC (Texas)
- Defendant: Qualtrics, LLC (Delaware)
- Plaintiff’s Counsel: Chong Law Firm
- Case Identification: 1:20-cv-00304, D. Del., 03/01/2020
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because the Defendant, a Delaware LLC, is deemed to be a resident of the district.
- Core Dispute: Plaintiff alleges that Defendant’s platform, which uses QR codes to link users to online content, infringes a patent related to methods for providing mobile services using a code-pattern.
- Technical Context: The technology involves using a camera-equipped mobile device to scan a code-pattern, such as a QR code, to automatically access online information, a ubiquitous feature in modern digital marketing and information retrieval.
- Key Procedural History: The patent-in-suit has an extensive prosecution history, originating from a PCT application and being a continuation of a divisional of a continuation application. This lengthy history may provide a basis for arguments related to claim scope and prosecution history estoppel, though no specific disclaimers are identified in the complaint.
Case Timeline
| Date | Event |
|---|---|
| 2003-03-07 | '159 Patent Priority Date |
| 2013-09-24 | '159 Patent Issue Date |
| 2020-01-02 | Date of alleged product usage shown in complaint visual |
| 2020-03-01 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 8,540,159, Method for Providing Mobile Service Using Code-pattern, issued September 24, 2013 (the "'159 Patent").
The Invention Explained
The patent's background describes the inconvenience for mobile users of manually entering website URLs found in physical advertisements and the difficulty for travelers in accessing location-specific information or services (e.g., calling a taxi) without prior knowledge of local contact details ('159 Patent, col. 1:36-col. 2:4).
The invention provides a method where a user employs a mobile terminal with a camera to photograph a "code-pattern." The terminal then automatically processes the image, decodes the pattern to extract information such as a URL, transmits a request to a server using that information, and receives content back from the server, thereby seamlessly connecting a physical object to a digital service ('159 Patent, Abstract; Fig. 5).
The technology aimed to create a more convenient and efficient bridge between the physical world (e.g., print media, signage) and online content or services for the growing population of mobile device users ('159 Patent, col. 1:20-27).
Key Claims at a Glance
- The complaint asserts "one or more claims, including at least Claim 1" of the '159 Patent (Compl. ¶13).
- Independent Claim 1, a method claim, requires:
- obtaining a photographic image of a code pattern by a camera of the user terminal;
- processing, by a processor of the user terminal, the photographic image of the code pattern to extract the code pattern from the photographic image;
- decoding the extracted code pattern by the processor of the user terminal into code information;
- transmitting a content information request message to a server based on the code information; and
- receiving content information from the server in response to the content information request message.
III. The Accused Instrumentality
Product Identification
The accused instrumentality is the Qualtrics platform, particularly its functionality that allows for the creation and use of QR codes to direct end-users to online content, such as promotional websites and surveys (Compl. ¶14).
Functionality and Market Context
The complaint alleges that Defendant provides a platform where content, such as a survey for "UT Health," is hosted on a webpage accessible via a QR code (Compl. ¶14, 19). The complaint provides screenshots depicting a user's smartphone scanning a QR code, which is then decoded into a URL for a Qualtrics-hosted webpage. Upon user interaction, the phone sends a request to Defendant's server and receives the webpage content (Compl. p. 3). This functionality is presented as an example of the "Actual usage of product" (Compl. p. 3).
IV. Analysis of Infringement Allegations
'159 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| obtaining a photographic image of a code pattern by a camera of the user terminal; | A photographic image of the QR code is obtained using the camera of a user terminal, such as a smartphone. The complaint includes a four-panel image that depicts the workflow, starting with an image of a QR code and a phone scanning it. (Compl. p. 3). | ¶15 | col. 38:35-39 |
| processing, by a processor of the user terminal, the photographic image of the code pattern to extract the code pattern from the photographic image; | The user terminal's processor processes the captured photographic image to extract the QR code pattern from it. | ¶16 | col. 38:39-42 |
| decoding the extracted code pattern by the processor of the user terminal into code information; | The extracted QR code is decoded by the processor into code information, which the complaint identifies as the URL of a webpage associated with the Defendant (e.g., a Qualtrics survey link). A screenshot labeled "DECODE" shows the decoded URL. (Compl. p. 5). | ¶17 | col. 38:43-45 |
| transmitting a content information request message to a server based on the code information; and | A content information request message, alleged to be an HTTP request, is sent to a server (e.g., Defendant's server) based on the decoded URL. | ¶18 | col. 38:45-48 |
| receiving content information from the server in response to the content information request message. | The user terminal receives content information, such as the Defendant's webpage, from the server in response to the request. A screenshot labeled "ACTION" shows the received webpage loaded in a browser. (Compl. p. 3). | ¶19 | col. 38:49-52 |
Identified Points of Contention
- Technical Question: Claim 1 recites two distinct, sequential steps: "processing...to extract the code pattern" and then "decoding the extracted code pattern." The complaint alleges these as separate operations (Compl. ¶¶16-17). However, modern QR code reader software may perform image capture, pattern recognition, and decoding in a single, highly integrated function. A central question will be whether the accused product's operation can be mapped to these two distinct claimed steps or if there is a technical mismatch.
- Scope Question: The claim requires transmitting a request "to a server." The patent specification discloses a system with a "service provider server" and separate "Web servers" ('159 Patent, Fig. 1). The infringement analysis may turn on the specific architecture of the accused system and whether the entity receiving the "content information request message" from the user's terminal qualifies as "a server" as contemplated by the patent.
V. Key Claim Terms for Construction
The Term: "code pattern"
- Context and Importance: This term defines the scope of scannable images covered by the patent. Its construction is critical to determining whether the accused QR codes fall within the claims. Practitioners may focus on this term to ascertain if the patent is limited to the "barcode" examples prevalent in the specification or if it broadly covers modern 2D codes.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification explicitly states that the term "barcode 60" (used interchangeably with "code pattern") includes not only one-dimensional barcodes but also "a QR code and a data matrix, which are two-dimensional barcodes" ('159 Patent, col. 11:2-5). This provides strong evidence that the term was intended to cover the accused QR codes.
- Evidence for a Narrower Interpretation: A party could argue that the numerous embodiments detailing specific information structures (e.g., service identifiers, location information) imply that "code pattern" should be limited to codes containing such specific, structured data, rather than any generic code containing a simple URL ('159 Patent, Fig. 15).
The Term: "processing...to extract the code pattern from the photographic image"
- Context and Importance: This term describes the first of two data manipulation steps performed by the processor. Its definition is crucial because if it is construed to be functionally indistinct from the subsequent "decoding" step, the infringement allegation could fail.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent uses general language, suggesting "processing to extract" could be read broadly to mean any operation that isolates the machine-readable pattern from the rest of the photographic image background, a necessary precursor to any decoding.
- Evidence for a Narrower Interpretation: The claim structure itself, by separating this step from "decoding," suggests they are distinct operations. A defendant might argue that this term requires a specific type of image processing or algorithm taught in the specification, beyond the generic function inherent in any code reader, and that the accused product does not perform such a specific "extraction" before it "decodes."
VI. Other Allegations
Indirect Infringement
The complaint does not include counts for indirect or divided infringement. The single infringement count is asserted directly against Qualtrics, with the factual basis being, "at least through internal use and testing" (Compl. ¶14).
Willful Infringement
The complaint does not contain allegations of pre-suit or post-suit knowledge of the patent or any conduct that would typically support a claim for willful infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction and technical mapping: Can the plaintiff prove that the accused QR-reading functionality performs the two separate and sequential claim steps of "processing...to extract" and "decoding," or will the court find that the accused products perform a single, integrated operation that does not meet the claim's limitations?
- A key evidentiary question will concern the infringement theory: Given that the asserted claim is a method claim with steps performed on a "user terminal," the case will likely focus on whether the plaintiff's allegations of Qualtrics’s own "internal use and testing" are sufficient to establish direct infringement by the defendant, without needing to resort to more complex theories of liability.