DCT

6:23-cv-00489

Bauldree v. First Response Locator Systems Of America LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 6:23-cv-00489, M.D. Fla., 03/16/2023
  • Venue Allegations: Venue is alleged to be proper in the Middle District of Florida because a substantial part of the events giving rise to the claims occurred in the district.
  • Core Dispute: Plaintiff seeks correction of inventorship for a utility patent and a design patent, alleging that individual and corporate defendants misappropriated his invention and filed for the patents naming themselves as the inventors.
  • Technical Context: The technology concerns hazardous condition detectors, such as smoke and gas alarms, that incorporate a wireless interface to send alerts to external devices like smartphones and to third-party services.
  • Key Procedural History: The complaint alleges that Plaintiff Bauldree conceived of the "Locator" technology in 2015, was a named co-inventor on an earlier U.S. Patent No. 9,928,702, and that Defendants later filed for the patents-in-suit based on his work without naming him as an inventor.

Case Timeline

Date Event
2015 Plaintiff allegedly conceives of technology and creates prototypes.
2017-02-27 Plaintiff and Thomson Response, LLC form Defendant First Response.
2017-05-02 Application filed for the '702 Patent, naming Plaintiff as co-inventor.
2018-03-27 U.S. Patent No. 9,928,702 issues.
2018-04-06 Earliest priority date for '269 Patent.
2019-04-05 Application filed for what became the '269 Patent.
2019-11-22 Application filed for what became the '365 Design Patent.
2020-04-28 U.S. Patent No. 10,636,269 issues.
2022-04-12 U.S. Design Patent No. D948,365 issues.
2023-03-16 Complaint filed.

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

U.S. Patent No. 10,636,269 - Hazardous condition detector with wireless communication interface

  • Issued: April 28, 2020.

The Invention Explained

  • Problem Addressed: The patent's background section notes that conventional standalone smoke detectors only provide a local alarm, requiring an occupant to manually contact first responders, while professionally monitored systems are "extremely costly" and inaccessible for the "average household" (’269 Patent, col. 1:35-49).
  • The Patented Solution: The invention is a self-contained hazardous condition detector with an integrated wireless interface, such as a cellular transceiver, that can automatically send notifications about the nature and location of a hazard to a user's mobile application and directly to a "user-specified contact list" or third parties like first responders (’269 Patent, Abstract; col. 2:1-7). The system architecture is depicted in the block diagrams of Figures 2 and 3 (’269 Patent, col. 2:21-28).
  • Technical Importance: The technology aims to provide the advanced, remote-notification capabilities of expensive, integrated safety systems in a more affordable, standalone device by leveraging cellular and smartphone technology (’269 Patent, col. 1:47-52).

Key Claims at a Glance

  • The complaint asserts that Plaintiff is a co-inventor of the "subject matter claimed in the '269 Patent" without specifying claims (Compl. ¶44). Independent claim 1 is representative and recites the following essential elements:
    • A main body for securing to a wall or ceiling
    • An alarm unit for audible or visual notification
    • A detection unit for sensing a hazardous condition
    • A battery power source
    • A controller with a wireless interface to activate the alarm and communicate externally
    • A mobile application for communication with the controller
    • Controller functionality to monitor battery level and provide low-power alerts
    • Controller functionality to communicate the type of hazard to the mobile app and simultaneously transmit a notification to a "third party device"
  • The complaint does not explicitly reserve the right to assert dependent claims, but the allegation covers all claimed subject matter.

U.S. Design Patent No. D948,365 - First response locator system

  • Issued: April 12, 2022.

The Invention Explained

  • Problem Addressed: Design patents protect ornamental appearance, not function, and do not articulate a technical problem.
  • The Patented Design: The patent claims the ornamental design for a locator system, which appears to be the housing for a device like that described in the ’269 Patent. The design features a circular, low-profile body with a series of concentric rings on the top surface and a textured or vented circumferential band (’365 Patent, Figs. 1, 2, 4). The overall aesthetic is that of a modern consumer electronic device, such as a smoke alarm.
  • Technical Importance: The design provides a distinct visual appearance for a consumer product intended for use in a home or office environment.

Key Claims at a Glance

  • Design patents contain a single claim. The claim is for "The ornamental design for a first response locator system, as shown and described" (’365 Patent, "CLAIM").

III. Analysis of Inventorship Allegations

This action is for correction of inventorship, not patent infringement. The central dispute is over who conceived of the claimed inventions. The complaint alleges that Plaintiff Bauldree is a true co-inventor of the subject matter in the '269 and '365 patents and was improperly omitted from the applications filed by Defendants Lacy and Thomson (Compl. ¶¶44-46).

The complaint's theory of inventorship rests on the following factual allegations:

  • Plaintiff is the "inventor of the 'First Response Locator System'" (Compl. ¶20).
  • Plaintiff "first conceived of the ideas and technology for the Locator in 2015" (Compl. ¶21).
  • Plaintiff "created the first prototypes for the Locator in 2015" (Compl. ¶22).
  • Plaintiff "contributed to the conception and reduction to practice of emergency alert detection including the technology and design for the Incorrect Inventor Patents" (Compl. ¶49).
  • Defendants were allegedly "taught technical details about the functionality and features" of the invention by Plaintiff and were aware of his inventive contributions (Compl. ¶50).

Exhibit B to the complaint, which is the '269 Patent, includes Figure 1, a diagram illustrating the hazardous condition detector communicating wirelessly with a smartphone running a dedicated application (Compl. Ex. B, p. 2).

  • Identified Points of Contention:
    • Conception vs. Reduction to Practice: A core legal question in an inventorship dispute is who contributed to the conception—the "formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention"—of the subject matter defined by the patent claims. The court will need to examine whether Plaintiff's alleged contributions in 2015 (Compl. ¶¶21, 22) map to the specific limitations of the issued claims, such as the simultaneous notification to a "third party device" in claim 1 of the ’269 Patent.
    • Corroboration Requirement: An alleged inventor’s testimony regarding their contribution to conception must be supported by corroborating evidence. A central evidentiary question will be what independent evidence (e.g., dated documents, drawings, emails, witness testimony, or the alleged 2015 prototypes) Plaintiff can produce to corroborate his claim of prior conception.

IV. Key Claim Terms for Construction

While claim construction is central to infringement, it is also relevant to inventorship to define the metes and bounds of the invention to which a plaintiff claims to have contributed.

  • Term: "simultaneously transmitting a notification... to a third party device" (’269 Patent, Claim 1)

  • Context and Importance: This limitation distinguishes the invention from a simple detector-to-user-phone alert system. To be named an inventor, Plaintiff may need to prove he conceived of this specific feature. Practitioners may focus on this term because if Plaintiff’s concept only included alerts to the user's own device, while the named inventor conceived of the third-party notification, it could defeat Plaintiff's claim to be a joint inventor of claim 1.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification suggests the third party can be any pre-designated contact, such as "the building owner, first responders and/or a third-party safety system" (’269 Patent, col. 6:11-13), potentially supporting a broad definition.
    • Evidence for a Narrower Interpretation: An example in the specification describes automatically dialing "the fire department or 911" or a "gas provider" (’269 Patent, col. 6:15-19). This could support a narrower interpretation requiring communication with an official or commercial entity, not just another personal contact.

  • Term: "The ornamental design... as shown and described" (’365 Patent, Claim 1)

  • Context and Importance: For the design patent, the inventorship inquiry focuses on who conceived of the overall visual appearance. The complaint alleges Plaintiff contributed to the "design" (Compl. ¶49). The key question is whether the patented design is substantially the same as a design conceived by Plaintiff.

  • Intrinsic Evidence for Interpretation:

    • Evidence for Contribution (Plaintiff's View): Evidence that Plaintiff's 2015 prototypes (Compl. ¶22) or other design documents included the key visual features of the patented design—a circular body, concentric top rings, and a vented side band as shown in Figures 1-4—would support his claim.
    • Evidence for a Narrower Interpretation (Defendant's View): Defendants may argue that the specific aesthetic details shown in the drawings, such as the precise curvature, proportions, and surface textures, represent their own independent, creative contribution, distinct from any functional prototype conceived by Plaintiff.

V. Other Legal Claims

In addition to the federal claim for correction of inventorship (Count I), the complaint alleges several state law claims based on the same underlying facts.

  • Conversion (Count II): Plaintiff alleges that Defendants wrongfully exercised control over his intellectual property by filing patent applications in their own names, thereby depriving him of his rights to the invention (Compl. ¶¶61-62).
  • Tortious Interference with Contract (Count III): The complaint alleges that Plaintiff had a valid representation agreement with his former counsel and that Defendants intentionally interfered by causing the law firm to cease all communications with him (Compl. ¶¶65, 67).
  • Tortious Interference with Prospective Economic Advantage (Count IV): Plaintiff alleges an ongoing business relationship with Defendants for commercializing his inventions and that Defendants interfered by "falsely filing patent applications" that omitted him as an inventor (Compl. ¶¶75, 79).
  • Accounting (Count V): Plaintiff seeks an accounting of all profits Defendants made from the allegedly misappropriated patents (Compl. ¶82).

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

The resolution of this dispute will likely depend on the court's determination of the following central questions:

  1. A core issue will be one of evidentiary proof of conception: What corroborating evidence can Plaintiff produce to demonstrate that he conceived of the specific technical and ornamental features defined in the patent claims, rather than just a general concept for a locator device?
  2. A second key question will be one of contribution: Assuming Plaintiff can prove his early work, does his contribution form part of the "inventive whole" of the claimed subject matter, or does it represent a distinct or preliminary concept from which the patented inventions were independently developed by the named inventors?
  3. Finally, the case raises a question of preemption: To what extent are the state law claims for conversion and tortious interference, which are based on the alleged misappropriation of an invention, preempted by federal patent law's exclusive remedy for correcting inventorship?