DCT
1:20-cv-00305
Coding Tech LLC v. CNH Industrial America LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Coding Technologies, LLC (Texas)
- Defendant: CNH Industrial America, LLC (Delaware)
- Plaintiff’s Counsel: Chong Law Firm PA
- Case Identification: 1:20-cv-00305, D. Del., 03/01/2020
- Venue Allegations: Venue is asserted in the District of Delaware on the basis that Defendant is a Delaware limited liability company and is therefore deemed a resident of the district.
- Core Dispute: Plaintiff alleges that Defendant's use of QR codes in promotional materials, which direct customers to its websites via their mobile devices, infringes a patent on a method for using a mobile terminal to scan a code pattern and retrieve online content.
- Technical Context: The technology relates to using optical machine-readable codes to link physical media with online digital content, a widely adopted technique for mobile marketing and information dissemination.
- Key Procedural History: The complaint does not mention any prior litigation, inter partes review proceedings, or licensing history related to the patent-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2003-03-07 | ’159 Patent Priority Date |
| 2013-09-24 | ’159 Patent Issue Date |
| 2017-01-01 | Approximate Date of Accused Product Catalog |
| 2019-09-26 | Date of Screenshot Evidence in Complaint |
| 2020-03-01 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,540,159 - "Method for Providing Mobile Service Using Code-pattern"
- Patent Identification: U.S. Patent No. 8,540,159, "Method for Providing Mobile Service Using Code-pattern," issued September 24, 2013.
The Invention Explained
- Problem Addressed: The patent identifies the inconvenience and low likelihood of a user manually typing a URL from a physical advertisement into a mobile device to access a website ('159 Patent, col. 1:43-49). This friction creates a barrier between physical marketing materials and online engagement.
- The Patented Solution: The invention provides a streamlined method performed by a user's mobile terminal. A user captures a 'photographic image' of a 'code pattern' (e.g., a QR code) with the terminal's camera. The terminal's processor then automatically extracts and decodes the pattern to obtain information, such as a URL, and uses it to request and receive content from a server, thus simplifying access to online information ('159 Patent, Abstract; col. 2:41-49).
- Technical Importance: The described method provides a more seamless bridge between the physical and digital worlds, which became increasingly important for marketing and information services with the proliferation of camera-equipped mobile terminals ('159 Patent, col. 1:28-35).
Key Claims at a Glance
- The complaint asserts infringement of at least independent Claim 1 ('159 Patent, col. 37:33-52).
- The essential elements of independent Claim 1, a method performed by a user terminal, are:
- Obtaining a photographic image of a code pattern by a camera of the user terminal.
- Processing the photographic image to extract the code pattern from it.
- Decoding the extracted code pattern into code information.
- Transmitting a content information request message to a server based on the code information.
- Receiving content information from the server in response to the request.
- The complaint does not explicitly reserve the right to assert dependent claims but alleges infringement of "one or more claims" (Compl. ¶13).
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is the system and method employed by CNH that uses QR codes on promotional materials for products like "New Holland concaves" (Compl. ¶14).
Functionality and Market Context
- The complaint alleges that CNH provides promotional media containing a QR code. A user with a smartphone or similar "user terminal" can scan the code (Compl. ¶14, ¶15). The user's device then decodes the QR code to obtain a URL, sends an HTTP request to a CNH server at that URL, and receives a CNH webpage containing promotional information (Compl. ¶17-19). This system is used in connection with marketing and product support materials, such as a product support catalog (Compl. p. 4, Source link). A screenshot in the complaint shows the QR code printed in an advertisement with the text "Be sure to view our video on www.nhsmartsolutions.com..." (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 user obtains a photographic image of the QR code using the camera of a smartphone. A visual in the complaint shows a smartphone camera pointed at the accused QR code. | ¶15; p. 5 | col. 37:35-38 |
| processing, by a processor of the user terminal, the photographic image of the code pattern to extract the code pattern from the photographic image; | A processor of the user's terminal processes the photographic image to extract the image of the QR code from it. | ¶16 | col. 37:39-42 |
| decoding the extracted code pattern by the processor of the user terminal into code information; | The smartphone processor decodes the QR code to obtain a hyperlink URL. A screenshot shows the decoded URL "http://nhsmartsolutions.com/..." labeled as a "Weblink." | ¶17; p. 4 | col. 37:43-45 |
| transmitting a content information request message to a server based on the code information; | The smartphone transmits a request for the webpage to a server associated with the decoded URL. | ¶18 | col. 37:46-48 |
| receiving content information from the server in response to the content information request message. | The smartphone receives and displays the CNH webpage from the server. A screenshot shows the resulting CNH webpage with the title "let's get it done." | ¶19; p. 4 | col. 37:49-52 |
- Identified Points of Contention:
- Legal Question: Claim 1 recites a method performed "by a user terminal." The complaint alleges that Defendant CNH has "infringed" (Compl. ¶13). This raises the question of whether the complaint sufficiently alleges that CNH itself performs all steps of the claimed method. As the end-user operates the terminal, the unstated theory may be indirect infringement, where CNH is alleged to encourage or provide the means for its customers to perform the patented method.
- Technical Question: Claim 1 recites distinct steps of "processing... to extract the code pattern" and then "decoding the extracted code pattern." The court may need to consider whether the accused scanning applications perform these as two distinct technical operations or as a single, integrated function, and whether such a distinction is material to the infringement analysis.
V. Key Claim Terms for Construction
The Term: "by a user terminal"
- Context and Importance: This term is critical because it defines the actor performing the patented method. The identity of the direct infringer under 35 U.S.C. § 271(a) hinges on who operates the "user terminal" to perform the claimed steps.
- Intrinsic Evidence for a Broader Interpretation: The specification notes that while the context is often a mobile phone, "a Personal Computer (PC) or a notebook computer, as well as a mobile terminal, can be used as the user terminal 10" ('159 Patent, col. 8:62-64). This could support a construction covering any general-purpose computing device operated by a user.
- Intrinsic Evidence for a Narrower Interpretation: The patent’s summary, title, and figures (e.g., FIG. 3, FIG. 29) consistently describe and depict a portable, camera-equipped "mobile terminal" ('159 Patent, col. 1:28, col. 8:41-50). A party could argue the term should be limited to such handheld mobile devices, which are operated by end-users, not by the Defendant.
The Term: "extract the code pattern from the photographic image"
- Context and Importance: Practitioners may focus on this term because it is recited as a separate step that occurs before the "decoding" step. For infringement, evidence must show that this specific extraction step is performed.
- Intrinsic Evidence for a Broader Interpretation: A party might argue this term covers any process of computationally isolating the data representing the code pattern from data representing the rest of the photographic image, even if performed within a single, fast software function.
- Intrinsic Evidence for a Narrower Interpretation: An opposing party could argue the claim requires a discrete technical step where the image is first processed to find and isolate the code pattern (e.g., by creating a new, cropped data object) before that isolated pattern is passed to a separate decoding algorithm. The specification does not provide an explicit definition that clearly distinguishes this step from the subsequent decoding step ('159 Patent, col. 37:39-45).
VI. Other Allegations
- Indirect Infringement: The complaint does not contain an explicit count for indirect infringement. However, the factual allegations state that CNH provides promotional media containing QR codes and includes an invitation to "Be sure to view our video" (Compl. ¶14), which could form the basis for a later argument of inducement under 35 U.S.C. § 271(b).
- Willful Infringement: The complaint does not allege any facts regarding Defendant's pre-suit or post-suit knowledge of the ’159 Patent, which are typically foundational to a claim for willful infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be the theory of liability: As Claim 1 is a method performed "by a user terminal," the case will likely turn on whether Plaintiff can establish that Defendant CNH is a direct infringer or must prove indirect infringement by arguing that CNH induced its customers to perform the claimed method.
- A key evidentiary question will be one of technical operation: The infringement analysis will require a determination of whether the accused smartphone software performs the discrete, sequential steps of "extract[ing] the code pattern" and then "decoding" it as required by Claim 1, or if there is a fundamental mismatch in the technical sequence of operations.