DCT
1:23-cv-00844
HID Global Corp v. Datamars Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: HID Global Corporation (Delaware)
- Defendant: Datamars, Inc. (Delaware) and Datamars SA (Switzerland)
- Plaintiff’s Counsel: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP; Smith, Katzenstein & Jenkins LLP
- Case Identification: 1:23-cv-00844, D. Del., 08/04/2023
- Venue Allegations: Venue is alleged to be proper based on Defendant Datamars, Inc. being a Delaware corporation residing in the district, and Defendant Datamars SA being a foreign corporation.
- Core Dispute: Plaintiff seeks a declaratory judgment that its RFID tag products do not infringe Defendant’s patent related to RFID tags for harsh environments.
- Technical Context: The technology concerns durable Radio Frequency Identification (RFID) tags designed to withstand industrial processes, such as commercial laundering, by using textile-based components.
- Key Procedural History: The complaint arises from a demand letter sent by Defendant Datamars SA to Plaintiff HID on October 20, 2022, alleging infringement. This was followed by related litigation in France initiated by Datamars against an HID affiliate, asserting the European counterpart to the patent-in-suit. HID asserts these actions create a reasonable apprehension of being sued for infringement in the U.S., justifying this declaratory judgment action.
Case Timeline
| Date | Event |
|---|---|
| 2017-06-16 | ’027 Patent Priority Date |
| 2017-12-19 | ’027 Patent PCT Filed Date |
| 2021-09-21 | ’027 Patent Issue Date |
| 2022-10-07 | ’027 Patent assigned to Datamars SA |
| 2022-10-20 | Datamars sends demand letter to HID |
| 2023-02-27 | Datamars files Infringement Seizure Action in France |
| 2023-04-14 | Datamars files Preliminary Injunction and Infringement Actions in France |
| 2023-08-04 | Complaint for Declaratory Judgment filed |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 11,128,027, “RFID tag for harsh environment inductively coupled in double loop,” issued September 21, 2021 (’027 Patent).
The Invention Explained
- Problem Addressed: The patent describes issues with prior art RFID tags used in harsh industrial environments like commercial laundries. Tags using metallic wire antennas were prone to oxidation, staining fabrics, and had poor flexibility, leading to breakage or perforation of the textiles to which they were attached (’027 Patent, col. 4:11-23).
- The Patented Solution: The invention proposes an RFID tag where the antenna is made from a flexible, electroconductive textile thread embroidered onto a textile substrate. This construction aims to provide durability and flexibility similar to the fabric it is attached to (’027 Patent, col. 4:60-65). The design features a "double loop" antenna geometry to facilitate efficient inductive coupling with the RFID transponder, and the entire assembly is sealed by "hot-dipping" it into a second textile substrate to protect it from the environment (’027 Patent, col. 5:13-18, 59-65).
- Technical Importance: This approach sought to create a more robust and discreet RFID tag that could be seamlessly integrated into textile items and survive repeated, harsh industrial cleaning cycles without damaging the host item or failing (’027 Patent, col. 3:1-4).
Key Claims at a Glance
- The complaint focuses on Independent Claim 1, and dependent claims 2-6 which are also alleged not to be infringed (Compl. ¶23, 25).
- Independent Claim 1 recites:
- An RFID tag for use in harsh environments comprising:
- an UHF-SHF antenna made from a continuous electroconductive textile thread, electrically insulated, embroidered on textile substrate;
- an RFID transponder;
- a substrate of textile material on which the RFID transponder and the UHF-SHF antenna are placed;
- the whole assembly being sealed by hot-dipping of a second textile substrate;
- wherein the UHF-SHF antenna has a central zone formed by a double loop by which it inductively couples with the encapsulated RFID transponder.
III. The Accused Instrumentality
Product Identification
The complaint identifies Plaintiff’s LinTRAK® C-10 MRI, C15-MRI, C-15-MRI/R, and XS RFID tags as the "Accused Products" (Compl. ¶18).
Functionality and Market Context
The Accused Products are RFID tags marketed for tracking textiles and other items in commercial laundry and healthcare environments (Compl. ¶14). The complaint states these products have been sold or offered for sale in the United States (Compl. ¶19). While the complaint does not detail the specific manufacturing process or internal structure of the Accused Products, it asserts key structural differences from the patented invention, including the alleged use of a single substrate and "closed loops" instead of "open loops" in the antenna design (Compl. ¶24, 27). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint seeks a declaratory judgment of non-infringement. The following table summarizes the plaintiff’s primary stated reasons for why its products do not meet the limitations of the asserted independent claim.
’027 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an UHF-SHF antenna (2) made from a continuous electroconductive textile thread, electrically insulated, embroidered on textile substrate | The complaint does not contest this element but focuses on other limitations. | ¶23 | col. 5:51-54 |
| an RFID transponder (3), and a substrate of textile material (4) on which the RFID transponder (3) and the UHF-SHF antenna (2) are placed | The complaint does not contest this element but focuses on other limitations. | ¶23 | col. 5:55-59 |
| the whole assembly being sealed by hot-dipping of a second textile substrate | Plaintiff alleges its Accused Products do not practice this element because they "do not include multiple textile substrates" and do not practice "'dipping' of any kind." | ¶24, 25 | col. 5:59-61 |
| wherein the UHF-SHF antenna (2) has a central zone formed by a double loop (5) by which it inductively couples with the encapsulated RFID transponder (3) | Plaintiff alleges non-infringement of dependent claims related to the loop structure, asserting its products use "closed loops" instead of the "open loops" required by claim 4 and that the transponder is "not fixed and not centered on the loop" as required by claim 5. | ¶26, 27, 28 | col. 5:62-65 |
Identified Points of Contention
- Structural Questions: A central dispute concerns the construction of the tag. The complaint raises the question of whether the Accused Products, which allegedly do not use a "second textile substrate," can infringe a claim that explicitly requires one (Compl. ¶24).
- Manufacturing Process Questions: The complaint's denial of practicing "'dipping' of any kind" suggests a dispute over the definition and scope of the term "hot-dipping" and whether the manufacturing process of the Accused Products falls within that scope (Compl. ¶25).
- Antenna Geometry Questions: The complaint alleges a mismatch between the antenna geometry of the Accused Products and that required by dependent claims 4 and 5, raising the question of whether the "closed loops" in HID's products are structurally and functionally distinct from the "open loops" recited in claim 4 (Compl. ¶27).
V. Key Claim Terms for Construction
"sealed by hot-dipping of a second textile substrate"
- Context and Importance: This limitation is central to the non-infringement argument. Plaintiff HID explicitly alleges its products lack both a "second textile substrate" and any "dipping" process (Compl. ¶24, 25). The construction of this entire phrase—what constitutes "hot-dipping" and whether a "second" substrate is essential—may be dispositive of infringement.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The parties may dispute the ordinary meaning of "hot-dipping." The specification does not provide an explicit definition, potentially leaving it open to a broader interpretation covering various sealing or lamination processes.
- Evidence for a Narrower Interpretation: The claim language explicitly requires "a second textile substrate," which suggests a multi-layered structure is a required feature, not merely an optional embodiment. The patent abstract also describes "the whole assembly being sealed by hot-dipping a second textile substrate," reinforcing its centrality to the invention (’027 Patent, Abstract).
"open loops" (from dependent claim 4)
- Context and Importance: Practitioners may focus on this term because HID directly contrasts it with the alleged "closed loops" in its products (Compl. ¶27). The viability of Datamars asserting claim 4 (and dependent claim 5) will depend on whether the antenna configuration in the Accused Products can be characterized as having "open loops."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not explicitly define "open loops." Datamars might argue the term refers to any loop configuration that is not a complete, unbroken circle, a definition that could potentially encompass the design of the Accused Products.
- Evidence for a Narrower Interpretation: Figure 3 of the patent depicts a specific embodiment where the antenna thread is embroidered in a path that forms loops (P and Q) that are not closed before the tag is folded along a "Folding line" (’027 Patent, Fig. 3). This figure and its accompanying description could be used to argue that "open loops" refers specifically to this pre-folded configuration.
VI. Other Allegations
The complaint does not contain allegations of indirect or willful infringement. It is a declaratory judgment action seeking a finding of non-infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
This declaratory judgment action appears to hinge on fundamental questions of claim scope and technical construction. The key issues for the court will likely be:
A central question of structural requirements: Does the claim limitation "sealed by hot-dipping of a second textile substrate" require a distinct, second layer of material applied via a specific thermal dipping process? Or can the term be construed more broadly to cover other sealing methods used on a single-substrate tag, which HID alleges its products to be?
A key issue of definitional scope: Can the term "open loops," as described in dependent claim 4 and depicted in the patent's Figure 3, be interpreted to read on the "closed loops" that HID alleges are used in its Accused Products? The outcome will depend on whether this is a material technical distinction or a semantic one.