DCT

1:24-cv-00245

Cerebrum Sensor Tech Inc v. Revvo Tech Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:24-cv-00245, D. Del., 02/23/2024
  • Venue Allegations: Venue is asserted based on Defendant’s incorporation in Delaware, establishing residence in the district.
  • Core Dispute: Plaintiffs allege that Defendant’s tire-mounted sensor products infringe three U.S. patents related to display assemblies for rubber articles and sensor systems for monitoring dynamic objects.
  • Technical Context: The technologies at issue relate to the aftermarket customization of vehicle tires and advanced tire performance monitoring, a field critical for vehicle safety, performance, and the development of autonomous vehicles.
  • Key Procedural History: The complaint alleges that on April 15, 2022, a USPTO Examiner cited a patent application by inventor Keith Ferry (which ultimately led to the ’421 Patent) during the prosecution of a Revvo patent application. Plaintiffs also sent two pre-suit letters to Defendant’s CEO, one on December 1, 2023, regarding intellectual property, and a second on January 17, 2024, including claim charts for the ’741 and ’027 patents. These events may be central to Plaintiffs’ allegations of willful infringement.

Case Timeline

Date Event
2015-04-27 Earliest Priority Date for ’741 Patent and ’027 Patent
2018-11-27 ’741 Patent Issued
2019-10-31 Earliest Priority Date for ’421 Patent
2020-07-22 Revvo's alleged first use of its mark
2021-09-21 ’027 Patent Issued
2022-04-15 USPTO cites Ferry application during Revvo patent prosecution
2022-10-10 Revvo's alleged first use in commerce of its mark
2023-12-01 Plaintiffs' counsel sends first letter to Revvo's CEO
2023-12-05 ’421 Patent Issued
2024-01-17 Plaintiffs send second letter with claim charts to Revvo's CEO
2024-02-23 Complaint Filed

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

U.S. Patent No. 10,137,741 - “Display assemblies and methods for applying the same to vulcanized rubber articles,” Issued November 27, 2018

The Invention Explained

  • Problem Addressed: The patent’s background section describes the limitations of traditional methods for applying graphics to tire sidewalls. These methods are typically part of the original, costly tire manufacturing process and offer little opportunity for post-sale customization. Existing aftermarket decals are often not durable enough for long-term use (ʼ741 Patent, col. 1:21-43).
  • The Patented Solution: The invention is a multi-layer assembly designed to be durably applied to an already-manufactured (vulcanized) rubber article like a tire. The assembly comprises at least one visible "display layer" made of elastomeric material, an "intermediate layer" that acts as a barrier, and an "adhesive layer" formulated to create a permanent chemical bond at ambient temperatures (ʼ741 Patent, col. 2:1-7, Fig. 2). This structure allows for robust, long-term aesthetic customization after the tire has been produced.
  • Technical Importance: The technology provides a viable method for the durable, post-manufacturing application of custom graphics and branding to tires, a capability that was previously limited by cost and technical challenges (ʼ741 Patent, col. 1:44-57).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶42).
  • Essential elements of claim 1 include:
    • A display assembly for attachment with a vulcanized rubber article.
    • One or more elastomeric display layers providing a display indicia.
    • An intermediate layer of a different elastomeric material, vulcanized to the display layer(s) before attachment to the rubber article.
    • An adhesive layer in direct contact with the intermediate layer, capable of forming a chemical bond with the rubber article at ambient temperatures.
  • The complaint reserves the right to assert dependent claims 7-9, 11, and 19 (Compl. ¶42).

U.S. Patent No. 11,124,027 - “Display assemblies and methods for applying the same to vulcanized rubber articles,” Issued September 21, 2021

The Invention Explained

  • Problem Addressed: As with its parent patent, the '027 Patent addresses the need for a durable, aftermarket solution for applying graphics to vulcanized rubber (ʼ027 Patent, col. 1:21-44).
  • The Patented Solution: This patent, a continuation of the work in the ’741 Patent, claims an assembly where a portion of the "outer layer" comprises a "barrier material composition." This composition is specifically designed to mitigate the migration of chemicals (e.g., oils, antiozonants) from the tire rubber that could otherwise discolor or degrade the visual layer over time (ʼ027 Patent, col. 16:10-12, Claim 15). The focus is on the protective chemical function of the barrier.
  • Technical Importance: By explicitly claiming a "barrier material composition," the invention emphasizes a chemical engineering solution to ensure the long-term visual integrity of the applied graphic, protecting it from degradation by constituents leaching from the tire itself (ʼ027 Patent, col. 6:32-37).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶51).
  • Essential elements of claim 1 include:
    • An assembly for attachment with a vulcanized rubber article.
    • An outer layer of elastomeric material with a visual feature.
    • An adhesive layer adhered to an interface surface of the outer layer.
    • At least a portion of the outer layer adjacent to the interface surface comprises a "barrier material composition."
    • The adhesive layer is capable of chemically bonding with the surface of the vulcanized rubber article.
  • The complaint reserves the right to assert dependent claims 7-9, 11, and 15-20 (Compl. ¶51).

U.S. Patent No. 11,835,421 - “Sensor assemblies and systems for monitoring a dynamic object,” Issued December 5, 2023

Technology Synopsis

This patent addresses shortcomings in conventional Tire Pressure Monitoring Systems (TPMS). The invention is a sensor assembly comprising an electrical sensor device housed within a protective casing that is removably attached to a retaining member, which in turn is affixed to a dynamic object like a tire. The system is designed to monitor a broad of parameters beyond pressure—such as tread depth, load, and alignment—and wirelessly transmit the data to an external receiver for analysis (’421 Patent, Abstract).

Asserted Claims

The complaint asserts independent claims 1 and 28 (Compl. ¶60).

Accused Features

The complaint alleges that Defendant's tire-mounted sensor products, which gather and transmit tire data, constitute infringing sensor assemblies and systems as claimed in the patent (Compl. ¶¶25, 29, 60).

III. The Accused Instrumentality

Product Identification

The Revvo Pro Tire Mounted Sensor and the Revvo Wheel (collectively, "the Accused Revvo Sensor Products") (Compl. ¶25).

Functionality and Market Context

The complaint identifies the accused products as sensor products offered for sale on Defendant’s website (Compl. ¶¶25, 30). According to a trademark filing referenced in the complaint, the associated mark was first used in commerce as early as October 10, 2022 (Compl. ¶32). The complaint includes a reference to Exhibit K, which shows a picture of the noted Revvo hardware with its mark affixed (Compl. ¶35). The functionality appears to involve mounting a sensor to a tire to collect and transmit data. The complaint also references Defendant's installation guides as evidence of the products' intended use (Compl. ¶31).

IV. Analysis of Infringement Allegations

The complaint references infringement claim charts in Exhibits D, E, and F, which were not publicly filed with the initial pleading. The infringement theory must therefore be reconstructed from the complaint’s narrative allegations.

For the ’741 and ’027 Patents, the complaint alleges that the "Accused Revvo Tire Sensor Products" are infringing instrumentalities (Compl. ¶¶27, 28, 42, 51). This creates a potential mismatch, as the patents claim "display assemblies" for applying visual indicia, while the accused products are functional electronic sensors. The infringement theory appears to be that the housing of the sensor, which bears a logo or other markings, constitutes the claimed "display assembly." A screenshot from Defendant's website, referenced as part of Exhibit K, shows pictures of the accused products featuring a mark (Compl. ¶34).

For the ’421 Patent, the infringement theory is more direct. The patent claims a "sensor assembly," and the complaint accuses Defendant’s "sensor products" of infringement, alleging they embody the claimed system for monitoring a dynamic object (Compl. ¶¶29, 60).

  • Identified Points of Contention:
    • Scope Questions: A primary question for the ’741 and ’027 Patents is whether the housing of a functional electronic sensor falls within the definition of a "display assembly." The patents describe multi-layer elastomeric structures for applying aesthetic designs to tire sidewalls. The court may need to decide if a rigid or semi-rigid sensor housing with a brand logo constitutes the claimed "display indicia" on an "elastomeric" material.
    • Technical Questions: For the ’027 Patent, a key technical question is whether the accused sensor's housing contains a "barrier material composition" designed to prevent chemical migration from tire rubber, as required by the claims. For the ’421 Patent, a dispute may arise over whether the internal construction of the accused sensor meets the specific structural limitations of the claims, such as the requirement in claim 1 for an "unfilled open space" around the sensor device.

V. Key Claim Terms for Construction

  • Term: "display indicia" (’741 Patent, Claim 1)

    • Context and Importance: The construction of this term is critical to the scope of the '741 Patent. Plaintiffs' case appears to depend on this term being broad enough to cover the branding or model number on the accused sensor housing. Practitioners may focus on this term because of the apparent mismatch between the patent's focus on aesthetic decals and the accused product's nature as a functional electronic device.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification describes the indicia as potentially being a "logo, insignia, or the like" and a "combination of characters, designs, emblems" (’741 Patent, col. 4:39-40, col. 1:47-48). This language could support an interpretation that includes any form of visual marking.
      • Evidence for a Narrower Interpretation: The patent repeatedly frames the invention in the context of "aesthetic appearance" and provides detailed embodiments of large, decorative brand lettering (e.g., "DUNLOP") applied to a tire sidewall, suggesting the term is directed at primarily aesthetic, rather than purely identifying, markings (’741 Patent, col. 1:24, Fig. 8D).

  • Term: "barrier material composition" (’027 Patent, Claim 1)

    • Context and Importance: This term is a key limitation distinguishing the '027 Patent. Infringement will likely hinge on whether the material of the accused sensor's housing can be shown to have the claimed property of mitigating chemical migration from a vulcanized rubber tire.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The claim language itself does not recite specific chemicals, only the function of mitigating migration, which could arguably be read on any material that has this effect, whether intended or not (’027 Patent, col. 16:10-12).
      • Evidence for a Narrower Interpretation: The specification explains this feature is intended to prevent "unwanted constituents" from the tire from damaging the display layer (’027 Patent, col. 6:32-37). A defendant could argue that its sensor housing is made of a general-purpose plastic not specifically formulated or selected for this barrier function in the context of tire attachment.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges both induced and contributory infringement for all three patents. These allegations are supported by references to Defendant’s instructional materials, such as the "Dock Installation Guide," which allegedly instruct customers to use the products in an infringing manner and demonstrate that the products have no substantial non-infringing use (Compl. ¶¶ 31, 43-44, 53).
  • Willful Infringement: Willfulness allegations are made for all asserted patents. For the ’741 and ’027 Patents, the claim is based on knowledge since at least January 17, 2024, the date of a letter containing infringement contentions (Compl. ¶¶ 43, 52). For the ’421 Patent, knowledge is alleged since its issue date of December 5, 2023 (Compl. ¶61). The complaint further alleges that Revvo was aware of, or willfully blind to, the inventor’s related technology because a parent application to the ’421 Patent was cited by the USPTO against a Revvo patent application in 2022 (Compl. ¶¶37, 64).

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

  • A core issue for the ’741 and ’027 Patents will be one of definitional mismatch: can the claims for an elastomeric "display assembly," rooted in the context of aesthetic tire decals, be construed to read on a functional, plastic-housed electronic sensor whose only "indicia" may be a brand logo?
  • A key evidentiary question for the ’421 Patent will be one of structural proof: does the complaint provide sufficient factual detail to make it plausible that the internal configuration of the Accused Revvo Sensor Products meets the specific structural limitations of the claims, such as the requirement for an "unfilled open space" or a specific method of retaining the sensor?
  • A central question for damages will be willfulness: did Defendant have pre-suit knowledge of the asserted patent families based on a USPTO citation during its own patent prosecution, and does this, combined with Plaintiffs' pre-suit notice letters, create a basis for finding willful infringement and potential enhanced damages?