DCT
6:22-cv-02371
Omega Patents LLC v. Verizon Connect Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Omega Patents, LLC (Georgia)
- Defendant: Verizon Connect, Inc. and Verizon Communications, Inc. (Delaware)
- Plaintiff’s Counsel: Allen, Dyer, Doppelt + Gilchrist, P.A.
- Case Identification: 6:22-cv-02371, M.D. Fla., 12/20/2022
- Venue Allegations: Plaintiff alleges venue is proper in the Middle District of Florida because Defendants are registered to do business in the state, are subject to personal jurisdiction, and have transacted business in the district, including offering the accused products for sale.
- Core Dispute: Plaintiff alleges that Defendants’ Hum+ and HumX vehicle telematics products infringe a patent related to multi-vehicle compatible tracking units that can be configured for specific vehicles by downloading enabling data.
- Technical Context: The technology concerns aftermarket vehicle tracking devices that connect to a vehicle's onboard diagnostics (OBD) port to provide location tracking and other telematics services by communicating over the vehicle's internal data bus.
- Key Procedural History: The patent-in-suit is a continuation-in-part of a lengthy chain of applications dating back to 2000. Significantly, the patent has survived multiple ex parte reexamination proceedings, with the United States Patent and Trademark Office most recently issuing a reexamination certificate in February 2024 confirming the patentability of all original claims. This extensive post-grant review history may be a focal point in arguments regarding the patent's validity.
Case Timeline
| Date | Event |
|---|---|
| 2000-05-17 | ’278 Patent - Earliest Priority Date |
| 2011-10-04 | ’278 Patent - Issue Date |
| 2016-12-28 | ’278 Patent - Ex Parte Reexamination Certificate (C1) Issued |
| 2019-02-06 | ’278 Patent - Ex Parte Reexamination Certificate (C2) Issued |
| 2020-01-08 | ’278 Patent - Ex Parte Reexamination Certificate (C3) Issued |
| 2022-12-20 | Complaint Filing Date |
| 2023-05-17 | ’278 Patent - Ex Parte Reexamination Certificate (C4) Issued |
| 2024-02-07 | ’278 Patent - Ex Parte Reexamination Certificate (C5) Issued |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,032,278 - "Vehicle Tracking Unit With Downloadable Codes and Associated Methods," issued October 4, 2011
The Invention Explained
- Problem Addressed: The patent identifies the technical challenge of creating a universal, aftermarket vehicle tracking unit, noting that the complexity and cost of installation are high because different vehicle manufacturers use proprietary communication codes on their internal data buses (’278 Patent, col. 2:10-17). The patent states that "advanced techniques for dealing with multiple device codes... have not yet been developed for vehicle tracking units" (’278 Patent, col. 2:37-41).
- The Patented Solution: The invention is a "multi-vehicle compatible tracking unit" designed to solve this problem. Its core innovation is a "downloading interface" that allows a single hardware device to be configured for a specific vehicle by downloading "enabling data," such as the necessary vehicle device codes (’278 Patent, Abstract; col. 2:64-68). This allows one tracking unit to be adapted for a plurality of different vehicles, simplifying manufacturing and installation. The overall architecture is depicted in Figure 10, which shows a controller (111) connected to both a downloading interface (116) and the vehicle data bus (122).
- Technical Importance: This approach allows a single, mass-produced tracking device to be customized for a wide variety of vehicles post-manufacturing, reducing the need for installers to stock numerous vehicle-specific models (’278 Patent, col. 2:45-50).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 and alleges infringement of one or more claims (’278 Patent, col. 25:61-26:14; Compl. ¶¶14, 18).
- The essential elements of independent claim 1 include:
- A multi-vehicle compatible tracking unit for a vehicle with a data bus.
- A vehicle position determining device (e.g., GPS).
- A wireless communications device (e.g., cellular).
- A multi-vehicle compatible controller that uses the position and wireless devices to send position information.
- The controller is coupled to the vehicle data bus and communicates with vehicle devices using a corresponding vehicle device code.
- A downloading interface for permitting the download of "enabling data" related to the vehicle device code for use by the controller.
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are the Verizon Hum+ and HumX products, also identified as "Hum+ Gen 2" and "HumX Gen 2" (Compl. ¶¶12, 13).
Functionality and Market Context
- The Hum+ and HumX are described as multi-vehicle compatible aftermarket devices that plug into a vehicle's OBD-II port (Compl. ¶13; p. 11). They contain a GPS receiver for location tracking and a cellular transceiver for wireless communication, providing features like vehicle location, driving history, and crash response (Compl. ¶13; p. 8). The complaint alleges these devices are designed to be compatible with most vehicles manufactured since 1996 (Compl. p. 7). A screenshot from Hum.com shows the HumX advertised with premium features like an in-car Wi-Fi Hotspot and Bluetooth speaker (Compl. p. 4).
IV. Analysis of Infringement Allegations
’278 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A multi-vehicle compatible tracking unit for a vehicle comprising a vehicle data bus extending throughout the vehicle... | The Hum+/HumX is a multi-vehicle compatible tracking unit. A screenshot of the "Hum Compatibility Finder" from Hum.com is provided as evidence of its multi-vehicle nature (p. 7). | ¶14 | col. 2:50-53 |
| a vehicle position determining device; | The Hum+/HumX devices each include a vehicle position determining device, which the complaint identifies as using GPS for features like vehicle location. | ¶14 | col. 5:14-16 |
| a wireless communications device; | The devices include a wireless communication device with cellular circuitry for LTE connectivity. A table from an FCC filing is included to support this allegation (p. 9). | ¶14 | col. 5:31-34 |
| a multi-vehicle compatible controller for cooperating with said vehicle position determining device and said wireless communications device to send vehicle position information; | The devices contain a controller that sends vehicle position information via the wireless device. A screenshot from the Hum mobile app depicts a vehicle's location on a map (p. 8). | ¶14 | col. 2:57-59 |
| said multi-vehicle compatible controller to be coupled to the vehicle data bus for communication thereover with at least one vehicle device using at least one corresponding vehicle device code from among a plurality thereof for different vehicles; | The controller communicates over the vehicle data bus via the OBD-II port with devices like the ECM/BCM. The complaint alleges this is done using "11bit and 29bit ID diagnostic messages" as the vehicle device codes. | ¶14 | col. 2:59-64 |
| and a downloading interface for permitting downloading of enabling data related to the at least one corresponding vehicle device code for use by said multi-vehicle compatible controller. | The Hum+/HumX devices are alleged to have a downloading interface, comprising a physical USB connection and a wireless interface, for downloading enabling data. | ¶14 | col. 2:64-68 |
- Identified Points of Contention:
- Scope Questions: A central dispute may arise over the meaning of "downloading of enabling data." The patent's specification and figures appear to describe a discrete process of loading vehicle-specific codes onto the device to make it compatible ('278 Patent, FIGs. 14, 15). The question for the court will be whether the routine communications of the Hum devices after installation, such as for initial setup or firmware updates, fall within this claim language.
- Technical Questions: The complaint alleges the Hum devices have a USB port and wireless interface that function as the claimed "downloading interface," but it does not provide direct evidence of "enabling data" being downloaded to achieve initial compatibility (Compl. p. 12). A key factual question will be whether the accused devices are made compatible by downloading codes, or if they come pre-loaded with a comprehensive library of codes and automatically select the correct one after querying the vehicle's bus.
V. Key Claim Terms for Construction
- The Term: "downloading interface for permitting downloading of enabling data"
- Context and Importance: This limitation appears to be the primary point of novelty. Its construction will be critical, as the infringement analysis will turn on whether the accused products perform an operation that meets this definition. Practitioners may focus on this term because it distinguishes the invention from a device with a pre-loaded, a static library of vehicle codes.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification discloses that the interface may be wired or wireless, and could even be implemented through the primary "wireless communications device" used for sending position data (’278 Patent, col. 3:9-13). This could support an argument that any reception of configuration data, including over-the-air updates, meets the limitation.
- Evidence for a Narrower Interpretation: The patent’s flowcharts (FIGs. 14, 15) depict a distinct method step of "DOWNLOAD ENABLING DATA" from a "DOWNLOADING DEVICE" ('278 Patent, col. 4:10-18). This language may support a narrower construction requiring a specific, discrete programming step to make the device compatible with a particular vehicle, rather than general operational communications.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement (Compl. ¶¶21-30). Inducement is based on allegations that Verizon provides instructions and support videos that "specifically instruct customers to install the Hum+/HumX device," thereby encouraging the infringing use (Compl. ¶23). Contributory infringement is based on the allegation that the Hum device is "especially made and especially adapted for use to infringe the '278 patent" and lacks substantial non-infringing uses (Compl. ¶28).
- Willful Infringement: The complaint alleges willful infringement, asserting that Defendants were "aware of the Patent-in-Suit" or were "willfully blind to the infringing nature of the acts" (Compl. ¶¶15, 20, 27). The pleading does not specify whether this alleged knowledge is pre- or post-suit, but it forms a basis for seeking enhanced damages.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the claim term "downloading interface for permitting downloading of enabling data," which the patent illustrates as a distinct configuration step, be construed to read on the initial setup and communication protocols of the accused Hum devices once connected to a vehicle?
- A key evidentiary question will be one of technical operation: does the accused Hum product function by using a pre-loaded, universal library of vehicle codes, or can the Plaintiff provide evidence that it performs a "download" of vehicle-specific "enabling data" to achieve compatibility, as required by the patent's claims?
- A third question will relate to the patent's procedural strength: how will the extensive and successful ex parte reexamination history of the '278 patent, which repeatedly confirmed the patentability of the asserted claims, influence arguments regarding claim construction and validity?