Multimodal LLC v. Princeton Bofei Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Multimodal LLC (Delaware)
  • Defendant: Princeton Bofei Inc. (Delaware)
  • Plaintiff’s Counsel: Phillips, McLaughlin & Hall, P.A.; Rabicoff Law LLC
• Case Identification: 1:23-cv-00657, D. Del., 06/15/2023
• Venue Allegations: Plaintiff alleges venue is proper in the District of Delaware because Defendant is incorporated in Delaware, has an established place of business in the District, and has committed acts of patent infringement in the District.
• Core Dispute: Plaintiff alleges that unspecified products made, used, or sold by Defendant infringe a patent related to object-recognition locks that use an object's surface texture as a key.
• Technical Context: The technology involves biometric-style security systems that use optical scanning to identify the unique micro-texture of a physical object, rather than a traditional key or password, to grant access.
• Key Procedural History: The complaint does not allege any prior litigation, licensing history, or Inter Partes Review proceedings involving the patent-in-suit.

Case Timeline

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

U.S. Patent No. 7,045,763 - "Object-recognition lock"

• Patent Identification: U.S. Patent No. 7,045,763, "Object-recognition lock", issued May 16, 2006 (’763 Patent).

The Invention Explained

• Problem Addressed: The patent seeks to overcome the limitations of conventional security locks. These include physical keys that can be lost or copied, combination codes that can be forgotten or "picked," and expensive, pattern-specific recognition systems (e.g., retinal scanners) that lack flexibility (’763 Patent, col. 1:7-58).
• The Patented Solution: The invention is a lock system that uses any ordinary object with a unique surface texture (e.g., a rock, a key fob, or a body part) as its "key." A scanner generates an image signal of the object's microscopic surface features, and a controller compares this "surface texture" to a pre-saved reference texture (’763 Patent, col. 2:30-38). If the textures match, a lock assembly is actuated, for instance, to unlock a door (’763 Patent, Fig. 1; col. 2:50-58). The system is designed to identify variations in surface height and depth at a micro-level, typically between 5 and 500 microns (’763 Patent, col. 2:42-47).
• Technical Importance: The described technology proposes a security method that is potentially more convenient than carrying a specific key, more secure than simple combination locks, and less expensive and more versatile than high-end biometric systems, by enabling "nearly any object" to function as a key (’763 Patent, col. 7:31-36).

Key Claims at a Glance

• The complaint alleges infringement of "one or more claims" and references "Exemplary '763 Patent Claims" in an attached exhibit, but does not specify any claims in the body of the complaint (Compl. ¶11). Claim 13 is a representative independent apparatus claim.
• Independent Claim 13 (Apparatus):
  • a scanner, said scanner generating at least one image signal indicative of a surface texture of an object;
  • a controller communicatively coupled to said scanner, said controller determining said surface texture from said at least one image signal, said controller comparing said surface texture of said object with a reference texture; and
  • a lock assembly communicatively coupled to said controller, said lock assembly operable between a closed position and an open position by said controller when said surface texture of said object matches said reference texture,
  • wherein said controller combines said at least one image signal with another image signal to determine said surface texture of said object.
• The complaint does not explicitly reserve the right to assert dependent claims but refers generally to infringement of "one or more claims" (Compl. ¶11).

III. The Accused Instrumentality

Product Identification

• The complaint does not name any specific accused products. It refers to "Exemplary Defendant Products" that are identified only in "charts incorporated into this Count" via an attached Exhibit 2 (Compl. ¶¶11, 16). This exhibit was not provided.

Functionality and Market Context

• The complaint does not provide sufficient detail for analysis of the accused instrumentality's functionality or market context. All technical details are contained within the unprovided Exhibit 2 (Compl. ¶17).

IV. Analysis of Infringement Allegations

The complaint’s infringement allegations are presented entirely within claim charts in Exhibit 2, which was not provided with the complaint (Compl. ¶¶16-17). The complaint contains no narrative description of the infringement theory.

• Identified Points of Contention: Based on the language of the ’763 Patent and the general nature of the dispute, the analysis may raise several questions:
  • Scope Questions: A central question will likely concern the definition of "surface texture." The prosecution history and specification will be examined to determine if this term is limited to the "micro-level" (e.g., 5 to 500 microns) described in certain embodiments and other claims, or if it can be read more broadly (’763 Patent, col. 8:1-3).
  • Technical Questions: A key factual dispute may involve how the accused products' controller or processor performs the claimed function of "comparing said surface texture of said object with a reference texture" and "combines said at least one image signal with another image signal" as required by Claim 13 (’763 Patent, col. 8:45-59). The evidence will need to show that the accused devices perform these specific operations, rather than a more generic pattern or image-matching process.

No probative visual evidence provided in complaint.

V. Key Claim Terms for Construction

• The Term: "surface texture"

• Context and Importance: This term is the core of the invention, defining what the scanner senses and the controller analyzes. Its construction will determine the scope of protection, as it dictates what kind of object features fall within the patent's claims. Practitioners may focus on this term because its interpretation—whether it is limited to microscopic physical variations or can encompass broader visual patterns—is fundamental to the infringement case.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The body of Claim 13 itself does not include a specific scale limitation for the "surface texture," potentially allowing for a broader definition based on any optically detectable surface characteristics.
  • Evidence for a Narrower Interpretation: The specification repeatedly describes the texture in microscopic terms, defining it as "variations in the height and/or depth of various features on the surface at a micro-level (e.g., generally in the size range of 5 microns (µm) to 500 µm)" (’763 Patent, col. 2:42-47). Other claims, such as independent claim 1, explicitly recite this micron-level range, which a defendant might argue should inform the meaning of "surface texture" throughout the patent (’763 Patent, col. 7:62-col. 8:3).

• The Term: "controller ... comparing said surface texture ... with a reference texture"

• Context and Importance: This functional language defines the logic of the patented system. The infringement analysis will depend on whether the accused device's comparison method is structurally or functionally equivalent to what is described in the patent.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The claim language is broad, not specifying a particular algorithm. This may support a construction covering any processing unit that performs a comparison to determine a match.
  • Evidence for a Narrower Interpretation: The specification provides specific examples of the comparison process, such as a user-established "desired sensitivity (e.g.,... at least 80% of the surface texture must match)" (’763 Patent, col. 7:14-17) and algorithms for assembling a "coherent image or 'map' of the surface" from multiple signals (’763 Patent, col. 6:21-25). A defendant may argue these details limit the scope of the "comparing" function.

VI. Other Allegations

• Indirect Infringement: The complaint alleges induced infringement, stating that Defendant distributes "product literature and website materials inducing end users and others to use its products in the customary and intended manner that infringes" (’763 Patent, Compl. ¶14).
• Willful Infringement: The willfulness allegation is based on post-suit knowledge. The complaint asserts that "service of this Complaint, in conjunction with the attached claim charts... constitutes actual knowledge of infringement" and that Defendant's infringing conduct has continued despite this knowledge (Compl. ¶¶13-14).

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

• A central issue will be one of evidentiary sufficiency: Given that the complaint's infringement allegations are wholly contained within an unprovided exhibit, a primary question is whether Plaintiff can produce sufficient factual evidence to plausibly demonstrate how the unnamed "Exemplary Defendant Products" practice each element of the asserted claims.
• The case will also turn on a question of definitional scope: The court will need to determine whether the term "surface texture," as used in the asserted claims, is limited to the specific "micro-level" range of 5-500 microns detailed in the specification, or if it can be construed more broadly to cover other types of optically scanned surface features.
• Finally, a key question will be one of functional operation: The infringement analysis will likely focus on whether the accused products' software and hardware perform the specific function of "comparing" a scanned texture to a reference and "combining" image signals in a manner consistent with the patent's teachings, or if there is a fundamental mismatch in the underlying technical operation.