DCT
1:20-cv-00520
Sentrilock LLC v. Carrier Fire & Security Americas Corp
I. Executive Summary and Procedural Information
- Case Name: SentriLock, LLC v. Carrier Global Corporation
- Parties & Counsel:
- Plaintiff: SentriLock, LLC (Delaware)
- Defendant: Carrier Global Corporation (Delaware)
- Plaintiff’s Counsel: Saul Ewing Arnstein & Lehr LLP
- Case Identification: 1:20-cv-00520, D. Del., 04/17/2020
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because the Defendant is a Delaware corporation and therefore resides in the judicial district.
- Core Dispute: Plaintiff alleges that Defendant’s Supra KeyAdvantage System for vehicle key management infringes patents related to vehicle activity monitoring and secure lock boxes.
- Technical Context: The technology concerns secure, electronically-managed lock boxes for vehicles, primarily used at car dealerships to control key access while gathering usage data and protecting against the unauthorized use of modern "smart keys."
- Key Procedural History: The complaint alleges Defendant had knowledge of the patent family as early as 2011 through negotiations with a prior owner. Plaintiff also provided Defendant with notice of the asserted patents and infringement in July 2019 and February 2020. Post-filing, Inter Partes Review (IPR) proceedings were initiated against both patents. U.S. Patent No. 7,949,541 survived with asserted claim 1 confirmed as patentable. U.S. Patent No. 8,606,589 was significantly impacted, with asserted claim 14 being cancelled.
Case Timeline
| Date | Event |
|---|---|
| 2002-12-12 | Earliest Priority Date for ’541 and ’589 Patents |
| 2011-05-24 | U.S. Patent No. 7,949,541 Issued |
| 2013-12-10 | U.S. Patent No. 8,606,589 Issued |
| 2019-07-16 | Plaintiff sent first notice letter to Defendant |
| 2020-02-03 | Plaintiff sent second notice letter to Defendant |
| 2020-04-17 | Complaint Filed |
| 2021-03-15 | IPRs filed against both asserted patents |
| 2023-01-25 | IPR Certificates Issued |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,949,541 - "Vehicle Activity Module," Issued May 24, 2011
The Invention Explained
- Problem Addressed: The patent describes the challenge car dealerships face in managing vehicle keys. Centralized storage is inconvenient for sales staff, while leaving keys with the car creates security risks (’541 Patent, col. 1:29-38). This problem is compounded by the advent of "smart keys," which can unlock and start a vehicle merely by being in close proximity, potentially interfering with traditional lockbox security (’541 Patent, col. 2:31-38).
- The Patented Solution: The invention is a "Vehicle Activity Module" (VAM), a device mounted on a vehicle window to store its key. The VAM includes a releasable key compartment and, critically, a signal-attenuating device, such as a conductive container, designed to block the wireless signal from a "smart key" stored inside, preventing unauthorized access to the vehicle (’541 Patent, Abstract; col. 4:35-49). The device also includes an identification tag to track vehicle-specific information and communicate it to a central computer system (’541 Patent, Abstract).
- Technical Importance: The solution addresses the specific technical challenge posed by proximity-based smart keys, allowing secure on-vehicle key storage to continue in a modern automotive environment.
Key Claims at a Glance
- The complaint asserts independent claim 1 and reserves the right to assert other claims (’541 Patent, ¶18).
- Claim 1 requires:
- A device for storing a key proximate a vehicle, maintaining security, and gathering data.
- A housing with a mounting device and a releasable key compartment.
- A conductive container within the compartment to receive a vehicle key.
- The conductive container must be capable of attenuating a wireless signal from the key.
- An identification tag, associated with the key or container, configured to transmit vehicle information electronically to a central computer.
U.S. Patent No. 8,606,589 - "Vehicle Activity Module," Issued December 10, 2013
The Invention Explained
- Problem Addressed: As with the parent ’541 patent, the '589 patent addresses the need for a comprehensive system for vehicle security, tracking, and management analysis at locations like car dealerships (’589 Patent, col. 1:15-28).
- The Patented Solution: The ’589 Patent claims a method for managing security and data across multiple remote locations (e.g., vehicles). The method involves a system of activity modules (the lock boxes), a central computer with a database, and identification devices. The core of the method includes steps for receiving event information at the module's processor, transmitting data to the computer, and then using the processor to access, analyze, and compare that event data to reference information to initiate an "event action" within the module itself (’589 Patent, col. 7:16-8:18).
- Technical Importance: The invention describes a networked system architecture where remote modules can act with a degree of autonomy based on data comparisons, enabling intelligent, localized actions.
Key Claims at a Glance
- The complaint asserts independent claim 14 and reserves the right to assert other claims (’589 Patent, ¶31).
- Claim 14 requires a method comprising the steps of:
- Providing a plurality of activity modules, each assigned to a remote location.
- Providing a computer with a database in wireless communication with the modules.
- Providing at least one key identification device.
- Receiving event information at the module's processor.
- Transmitting data representative of the event information to the storage device and computer.
- Accessing and analyzing the data by the processor.
- Comparing, by the processor, the event data to reference information in the storage device to initiate an event action within the activity module.
III. The Accused Instrumentality
Product Identification
- The "Supra KeyAdvantage System," which includes "Electronic KeyPads," "Electronic KeyBoxes," "Electronic KeyTags," "KeyAdvantage software," and a "KeyAdvantage programming base" (Compl. ¶¶11, 30).
Functionality and Market Context
- The system is designed for auto dealerships to manage and control access to vehicle keys (Compl. ¶30). The "KeyBox" is a lock box that attaches to a vehicle. To access a key, a user enters a PIN into a "KeyPad" and touches it to the KeyBox (Compl. p. 3, visual evidence).
- The KeyBox contains what the defendant calls a "larger smart shield to block the signals from keyless-entry devices," which "enables you to store the key securely at the vehicle in your KeyAdvantage KeyBox without releasing an 'open' signal to unlock the vehicle" (Compl. ¶22).
- A "KeyTag" is attached to the car keys and fits into a slot in the KeyBox to transmit the car's ID to the KeyPad (Compl. ¶23). The "KeyPad" and "programming base" are used to communicate with the "KeyAdvantage software" on a computer to program the system and analyze usage data (Compl. ¶¶29, 35).
IV. Analysis of Infringement Allegations
’541 Patent Infringement Allegations
The complaint provides an annotated image from the defendant's specification sheet, mapping components of the accused KeyBox to the elements of claim 1 (Compl. ¶21).
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a housing having a mounting device to mount the device to the vehicle and a releasable key compartment | The complaint identifies the main body of the accused product as the housing, a hook as the mounting device, and a lower drawer as the releasable key compartment. | ¶21 | col. 4:39-41 |
| a conductive container configured to fit within the releasable key compartment and further configured to receive at least one vehicle key | The complaint identifies an internal component, which it labels "Conductive Container for Key," that sits inside the releasable compartment. | ¶21 | col. 4:42-44 |
| the conductive container being capable of attenuating a wireless signal emitted from the at least one key when disposed within the conductive container | The complaint quotes Defendant's marketing materials stating the product includes a "smart shield to block the signals from keyless-entry devices." | ¶22 | col. 4:47-49 |
| an identification tag containing vehicle information...configured to transmit information electronically to a central computer | The complaint identifies the accused "KeyTag" and quotes materials stating the "KeyTag fits into a slot in the keybox to transmit the car’s ID to a KeyPad." | ¶23 | col. 4:50-55 |
’589 Patent Infringement Allegations
The complaint alleges that the overall operation of the Supra KeyAdvantage System performs the steps of method claim 14 (Compl. ¶33). One supporting visual shows a brochure describing the software's reporting capabilities (Compl. p. 9).
| Claim Element (from Independent Claim 14) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| providing a plurality of activity modules, each of which are assigned to one of a plurality of remote locations... | Defendant sells and provides "Electronic KeyBoxes" which are assigned to specific vehicles at dealerships. | ¶¶28, 30 | col. 7:18-20 |
| providing a computer having a database for storage of data, said computer being in wireless communication with said at least one of said plurality of activity modules | Defendant provides "KeyAdvantage software" for a customer's computer that communicates with the KeyBoxes via a KeyPad and programming base. | ¶¶29-30, 35 | col. 8:1-4 |
| providing at least one key identification device for attachment to said at least one key... | Defendant provides "Electronic KeyTags" which are assigned to specific vehicles and attached to their keys. | ¶30 | col. 8:5-7 |
| receiving, at said processor, event information from said at least one sensor | The complaint does not specify which processor receives the information but implies the overall system performs this step when a KeyPad is used at a KeyBox. | ¶¶29-30 | col. 8:8-9 |
| accessing and analyzing said data representative of said event information, by said processor | The "KeyAdvantage software" on the computer is alleged to track activity and generate reports, such as "Vehicle Access" and "Demo Activity" reports. | ¶¶30, 34 | col. 8:12-13 |
| comparing, by said processor, said data...to reference information stored in said storage device, for initiation of an event action within said at least one activity module | The complaint does not provide specific factual allegations for this limitation beyond a conclusory statement. | ¶33 | col. 8:14-18 |
Identified Points of Contention
- Scope Questions: For the ’541 patent, a potential question is whether the accused "smart shield" meets the definition of a "conductive container," particularly whether it "contains" the key in the manner described in the patent. Another question is whether transmitting information from a KeyTag to a KeyPad, which then interfaces with a computer, satisfies the limitation of transmitting "to a central computer."
- Technical Questions: For the ’589 patent, a central question is whether the accused system performs the final "comparing" step for the purpose of initiating an action within the remote activity module. The complaint's evidence focuses on generating reports on a central computer (Compl. ¶34), which may not meet the specific claim requirement for a localized action initiated based on a comparison.
V. Key Claim Terms for Construction
"conductive container" (’541 Patent, Claim 1)
- Context and Importance: The infringement reading for the ’541 patent hinges on whether the accused "smart shield" is a "conductive container." The physical form and function of this component will be critical. Practitioners may focus on this term because the patent figures depict a sleeve-like object, and the scope of "container" will determine if other forms of shielding infringe.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent states that the signal attenuating device "may include a conductive container" and that in another embodiment, "the conductive container may be integral to the device," suggesting the form is not limited to a separate, removable box (’541 Patent, col. 4:42-46).
- Evidence for a Narrower Interpretation: Figure 4B shows a distinct, sleeve-like container (46) into which a key is placed. The detailed description refers to it as a "Faraday cage" that "is an enclosure formed by conducting material" which could be interpreted to require a more substantial structure than a simple shield (’541 Patent, col. 16:1-3).
"initiation of an event action within said at least one activity module" (’589 Patent, Claim 14)
- Context and Importance: This term is the functional core of the method claim. Infringement requires that the system's processor, after comparing data, causes something to happen at the lockbox itself. The complaint's allegations focus on data analysis at a central computer, raising the question of whether this limitation is met.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not narrowly define "event action." It could be argued that any change in the module's state, even logging the event internally for later transmission, qualifies. The patent specification lists "triggering an alarm, releasing the releasable key container" as examples of event actions, but this list may not be exhaustive (’541 Patent, col. 5:48-52, incorporated by reference).
- Evidence for a Narrower Interpretation: The patent's flow charts show the processor initiating distinct actions like "Alert Sent to Management" or "Sales Event Closed" directly from a decision point, suggesting an active, responsive function rather than passive data logging (’541 Patent, Fig. 8, elements 138, 142). The claim requires the action to be "within" the module, which may exclude actions taken solely on a central server.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced and contributory infringement for the ’589 patent. Inducement is based on Defendant's dissemination of "promotional and marketing materials, supporting materials, instructions, product manuals, and technical information" that allegedly instruct customers on how to use the system in an infringing manner (Compl. ¶38). Contributory infringement is based on the allegation that the system components are not staple articles of commerce and are especially adapted for infringing use (Compl. ¶39).
- Willful Infringement: The complaint alleges willful infringement based on both pre-suit and post-suit knowledge. It claims Defendant was aware of the patent family "no later than early 2011" from negotiations with a previous owner (Compl. ¶15) and received explicit notice of infringement from SentriLock on July 16, 2019, and February 3, 2020 (Compl. ¶¶12-13).
VII. Analyst’s Conclusion: Key Questions for the Case
- Impact of IPR: The central issue for the ’589 patent is the post-filing cancellation of asserted claim 14 in an IPR proceeding. This event is likely dispositive of the infringement allegations related to that patent, significantly narrowing the scope of the case to the ’541 patent.
- Definitional Scope: For the surviving ’541 patent, a key question will be one of claim scope: does the accused product's "smart shield" constitute a "conductive container" as that term is used and defined within the patent specification and figures? The outcome will likely depend on whether the term requires a full enclosure or can read on other forms of signal-blocking material.
- Evidentiary Sufficiency: A key evidentiary question, had the '589 patent claim survived, would have been one of functional operation: does the accused system's central software merely generate reports, or does it, as required by claim 14, use a comparison to "initiate... an event action within the... activity module" itself? The complaint's focus on centralized reporting raises a potential mismatch with the claimed localized action.