ASSA ABLOY Americas Residential Inc v. Multimodal LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Assa Abloy Americas Residential, Inc. (Delaware)
  • Defendant: Multimodal LLC (Delaware)
  • Plaintiff’s Counsel: Fish & Richardson P.C.
• Case Identification: 1:23-cv-00918, D. Del., 08/23/2023
• Venue Allegations: Plaintiff Assa Abloy asserts venue is proper in Delaware because Defendant Multimodal is a Delaware corporation subject to personal jurisdiction in the district and has directed business, licensing, and enforcement activities there.
• Core Dispute: Plaintiff seeks a declaratory judgment that its smart lock products do not infringe Defendant's patent related to object-recognition lock technology.
• Technical Context: The dispute centers on biometric and object-based security systems that use scanners to identify unique surface characteristics to grant access, a technology commonly used in modern smart locks.
• Key Procedural History: This action follows two prior lawsuits filed by Multimodal in the Western District of Texas and the Western District of Wisconsin, where Multimodal accused affiliates of Assa Abloy of infringing the same patent. The Texas action was voluntarily dismissed by Multimodal without prejudice, prompting Assa Abloy to file this declaratory judgment action, seeking to resolve the infringement dispute in a different forum.

Case Timeline

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

• Patent Identification: U.S. Patent No. 7,045,763, Object-Recognition Lock, issued May 16, 2006.

The Invention Explained

• Problem Addressed: The patent's background describes the limitations of conventional security locks, noting that physical keys can be lost, combination codes must be memorized, and existing pattern-recognition systems (like iris scanners) are expensive and restricted to specific biometric types (e.g., "to only eyes") (’763 Patent, col. 1:8-58).
• The Patented Solution: The invention proposes a lock system that uses a scanner to generate an image signal indicative of an object's "surface texture" at a "micro-level" (’763 Patent, col. 2:37-41). A controller compares this scanned texture to a pre-stored reference texture. If they match, a lock assembly is actuated (’763 Patent, Abstract). This allows common, everyday objects with a unique texture, such as a specific rock or a user's palm, to function as a key (’763 Patent, col. 5:18-23).
• Technical Importance: The technology aimed to provide a more flexible and potentially less expensive security method than existing biometric systems by expanding the range of potential "keys" to nearly any object with a sufficiently unique surface micro-texture (’763 Patent, col. 7:31-51).

Key Claims at a Glance

The complaint seeks a judgment of non-infringement of "any valid and enforceable claims of the '763 Patent" but does not specify which claims Multimodal previously asserted (Compl. ¶30). Claim 1 is the first independent claim of the patent.

• Independent Claim 1:
  • scanning an object for at least one surface texture of the object;
  • generating at least one image signal indicative of the at least one surface texture;
  • comparing the at least one surface texture of the object indicated by the at least one image signal with a reference texture;
  • actuating the lock if the at least one surface texture of the object matches the reference texture;
  • wherein the comparison is performed at a micro-level where "depths of features of the surface texture... are in a range of 5 microns to 500 microns."

III. The Accused Instrumentality

Product Identification

• The complaint identifies the "Yale door lock YDM4115A" and the "Kwikset Halo door lock" as "exemplary accused product[s]" from Multimodal's prior infringement lawsuits (Compl. ¶16, ¶22). The complaint also broadly refers to "any of the accused Kwikset and Yale brand door lock products" (Compl. ¶27).

Functionality and Market Context

• The complaint does not provide specific technical details about the operation of the accused locks. It alleges that these products are the subject of an "actual controversy" regarding infringement of the ’763 Patent, based on Multimodal's allegations in prior litigation (Compl. ¶15, ¶27). The complaint notes that the Kwikset brand is part of the Hardware & Home Improvement segment that Assa Abloy acquired from Spectrum Brands (Compl. ¶23).

IV. Analysis of Infringement Allegations

The complaint, being a declaratory judgment action for non-infringement, does not contain a claim chart or detailed infringement allegations. Instead, it references claim charts provided by Multimodal in prior, related lawsuits which are not attached as exhibits (Compl. ¶16, ¶22). The infringement theory that created the controversy appears to be that the accused smart locks, which may use fingerprint scanners, practice the method of the ’763 patent.

No probative visual evidence provided in complaint.

• Identified Points of Contention:
  • Scope Questions: A central dispute may concern the definition of "surface texture" and whether the data captured by a modern fingerprint scanner constitutes a "surface texture" as contemplated by the patent. The patent describes analyzing "variations in the height and/or depth of various features on the surface at a micro-level" (’763 Patent, col. 2:37-41), raising the question of whether this is distinct from the pattern-matching of ridges and valleys (minutiae) typical of fingerprint recognition.
  • Technical Questions: A key evidentiary question will be whether the accused products' sensors operate within the specific dimensional constraints of the claims. For example, Claim 1 requires comparing features at a "micro-level in which depths of features... are in a range of 5 microns to 500 microns" (’763 Patent, col. 8:1-3). The complaint provides no information on whether the accused locks perform such a measurement, making this a likely point of factual dispute.

V. Key Claim Terms for Construction

• The Term: "surface texture"
• Context and Importance: This term is the core of the claimed invention and its construction will likely determine whether the patent reads on modern biometric smart locks. Practitioners may focus on this term because its scope dictates whether the patent is limited to the random micro-textures of objects like rocks or is broad enough to cover the structured patterns of a fingerprint.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification gives broad examples of suitable objects, including "a body part (e.g., an elbow, palm, or finger)" (’763 Patent, col. 5:21-22), suggesting the term is not limited to inanimate objects. The description defines the texture by "variations in the height and/or depth of various features on the surface," which could be argued to generally describe a fingerprint's ridges and valleys (’763 Patent, col. 2:37-39).
  • Evidence for a Narrower Interpretation: The patent repeatedly emphasizes "micro-textured surface" and explicitly quantifies the "micro-level" features as being between 5 and 500 microns in depth (’763 Patent, col. 4:5; col. 8:1-3). This could support a narrower construction that requires a specific type of topographical depth-mapping, as opposed to the two-dimensional pattern recognition (minutiae analysis) commonly used in fingerprint scanners. The background also distinguishes the invention from existing "pattern-recognition systems" (’763 Patent, col. 1:47-48).

VI. Other Allegations

• Indirect Infringement: This complaint for declaratory judgment does not contain allegations of indirect infringement by the Plaintiff.
• Willful Infringement: This complaint for declaratory judgment does not contain allegations of willful infringement by the Plaintiff. Instead, the Plaintiff alleges that the Defendant's conduct in prior litigation was improper and requests that the court declare the case "exceptional" and award attorneys' fees to the Plaintiff pursuant to 35 U.S.C. § 285 (Compl. ¶28; Prayer ¶4). The complaint alleges Multimodal knowingly filed suit in an improper venue against a holding company with no business activities in that district (Compl. ¶17-20).

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

1. A core issue will be one of definitional scope: can the claim term "surface texture", which the patent defines by micro-level depth variations in a 5-to-500 micron range, be construed to cover the data captured and analyzed by the fingerprint scanners in the accused smart locks? The resolution will depend on whether the patent is limited to a specific method of topographical analysis or broadly covers any system that uses an object's surface features for identification.
2. A secondary but significant issue is procedural and tactical: to what extent is this case about resolving a substantive infringement dispute versus securing a preferred forum? The complaint's heavy focus on Multimodal's prior litigation conduct suggests Assa Abloy is not only defending against infringement claims but also proactively building a case for exceptional case status and attorneys' fees, potentially shifting focus from a purely technical analysis.