Sunset Licensing, LLC v Skypatrol, LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Sunset Licensing LLC (Texas)
  • Defendant: Skypatrol, LLC (Delaware)
  • Plaintiff’s Counsel: Chong Law Firm; Budo Law P.C.
• Case Identification: 1:20-cv-00450, D. Del., 03/30/2020
• Venue Allegations: Plaintiff alleges venue is proper in the District of Delaware because Defendant is a Delaware corporation and has transacted business and committed alleged acts of infringement in the district.
• Core Dispute: Plaintiff alleges that Defendant’s vehicle tracking and telematics devices infringe a patent related to a system for monitoring vehicle speed using an accelerometer.
• Technical Context: The technology concerns systems for vehicle monitoring, specifically using on-board sensors to record acceleration data which can then be used to calculate speed and determine compliance with traffic laws or other rules.
• Key Procedural History: The complaint is the initiating document for this litigation. No prior litigation, licensing history, or post-grant proceedings are mentioned.

Case Timeline

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

U.S. Patent No. 8,483,941 - "Vehicle Speed Monitor," issued July 9, 2013

The Invention Explained

• Problem Addressed: The patent background identifies speeding as a leading cause of traffic accidents and notes the limitations of conventional enforcement methods, such as police using radar or LIDAR, which typically measure speed only at a single point in time (U.S. Patent No. 8,483,941, col. 1:4-14).
• The Patented Solution: The invention proposes a system where a portable device, described as an integrated circuit (IC) card, is provided to a vehicle at a specific point, such as the entrance to a toll road. This card contains a three-axis accelerometer that measures and records the vehicle's instantaneous accelerations over time. At an exit point, the card is returned, and the data is downloaded to a computer system. This system can then calculate the vehicle's speed throughout its journey on the road segment to determine if any speed limits were violated (col. 2:40-54; Abstract). The system is illustrated in Figure 1 as operating between an entrance booth (104) and an exit booth (108) on a road (102).
• Technical Importance: This approach provides a method for continuous speed monitoring over a defined segment of a roadway, rather than at a discrete point, potentially offering a more comprehensive way to assess driving behavior (col. 2:49-54).

Key Claims at a Glance

• The complaint asserts at least independent claim 1 (Compl. ¶24).
• The essential elements of independent claim 1, a system claim for a "vehicle speed monitor," include:
  • An integrated circuit (IC) card, which itself comprises:
    • An accelerometer configured to measure instantaneous accelerations of the vehicle along three axes;
    • A nonvolatile memory;
    • A contact or contactless interface; and
    • A processor programmed to record the measured accelerations in the memory and to transmit at least the recorded accelerations or scalar instantaneous speeds derived from them.
• The complaint does not explicitly reserve the right to assert dependent claims.

III. The Accused Instrumentality

Product Identification

The complaint identifies Defendant’s "OBD II, Remora2, SP2603, SP3603, SP8824, SP4600, SP7600, SP4700, SP8603, SP9603, and TT8950 devices" as the Accused Instrumentality (Compl. ¶17).

Functionality and Market Context

The complaint alleges that these products are systems and services that infringe the ’941 Patent (Compl. ¶17). It describes the patented technology as inventive and "not well-understood, routine, or conventional" at the time of filing, asserting it solved problems in monitoring a vehicle's speed by using an integrated circuit with a three-axis accelerometer (Compl. ¶14). The complaint does not provide specific technical details about the operation of the accused products beyond the general allegation that they embody the patented invention.

IV. Analysis of Infringement Allegations

The complaint alleges that Defendant directly infringes one or more claims of the ’941 Patent, including at least Claim 1 (Compl. ¶24). It states that an exemplary claim chart is attached as Exhibit B; however, that exhibit was not included with the filed complaint provided for analysis (Compl. ¶24). The narrative infringement theory is that Defendant makes, uses, sells, or offers for sale products and systems that "embody the patented invention" (Compl. ¶21-22).

No probative visual evidence provided in complaint.

• Identified Points of Contention:
  • Scope Questions: A primary question will be whether the term "vehicle speed monitor," as claimed, can be read to cover the accused general-purpose telematics devices. The patent’s specification, including the abstract and detailed description, consistently describes the invention in the context of a temporary IC card provided at a road entrance and returned at an exit (e.g., ’941 Patent, Abstract; col. 3:4-16). The court may need to determine if the claims are limited to this "toll road" embodiment or if they have a broader scope that covers permanently or semi-permanently installed vehicle tracking devices.
  • Technical Questions: A key evidentiary issue will be whether the accused products, as they actually operate, meet all limitations of the asserted claims. For example, a question may arise as to whether the accused devices are programmed to perform the specific claimed function of transmitting "scalar instantaneous speeds over time determined from the recorded instantaneous accelerations" ('941 Patent, col. 12:5-7) in the manner contemplated by the patent.

V. Key Claim Terms for Construction

"vehicle speed monitor" (from the preamble of claim 1)

• Context and Importance: The definition of this term is foundational. The dispute may turn on whether a "vehicle speed monitor" is limited to the specific temporary IC card system described in the patent's embodiments or if it can encompass a broader category of modern, permanently installed telematics devices like those accused of infringement. Practitioners may focus on this term because its scope could be case-dispositive.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The body of claim 1 recites the structural components of the monitor (IC card, accelerometer, memory, processor) without explicitly limiting its use to a toll-road context ('941 Patent, col. 11:50-62). Plaintiff may argue this structural definition controls.
  • Evidence for a Narrower Interpretation: The patent’s abstract, summary, and detailed description consistently and exclusively frame the invention as a system involving an IC card provided at a road entrance and returned at an exit ('941 Patent, Abstract; col. 2:40-54). Defendant may argue that this consistent description limits the scope of the claims to that specific embodiment.

"a processor being programmed to record the instantaneous accelerations... and to transmit... at least one of (1) the recorded instantaneous accelerations and (2) scalar instantaneous speeds over time determined from the recorded instantaneous accelerations" (from claim 1)

• Context and Importance: This limitation defines the specific software functionality of the claimed device. The infringement analysis will require a detailed examination of the accused products' software to determine if their processors are programmed to perform these exact recording and transmission functions.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: Plaintiff may argue that any system that records acceleration and makes that data (or speed data derived from it) available for download or transmission meets this limitation, regardless of the precise data format or transmission protocol.
  • Evidence for a Narrower Interpretation: Defendant may point to the detailed flowcharts (e.g., Fig. 5) that describe specific methods of integrating accelerations and adjusting for low-speed periods, arguing that the term implies these more specific calculations ('941 Patent, col. 6:50-65, col. 7:5-14).

VI. Other Allegations

The complaint does not contain allegations of indirect or willful infringement.

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

• A core issue will be one of definitional scope: Can the claims, rooted in the patent's disclosure of a temporary IC card for toll-road monitoring, be construed to cover modern, general-purpose vehicle telematics devices that are typically installed for long-term use? The outcome of the claim construction for "vehicle speed monitor" will be pivotal.
• The case will also present a key evidentiary question: Assuming the claim scope is found to be broad enough, what factual evidence will Plaintiff present to demonstrate that the accused devices' processors are specifically programmed to perform the data recording, calculation, and transmission steps as recited in the claims, rather than just generally tracking vehicle location and speed for other purposes?