DeCurtis LLC v. Carnival Corp

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Carnival Corporation (Panama)
  • Defendant: DeCurtis Corporation and DeCurtis LLC (Florida/Delaware)
  • Plaintiff’s Counsel: Grayrobinson, PA.; Orrick, Herrington & Sutcliffe LLP
• Case Identification: 1:20-cv-22945, S.D. Fla., 10/21/2020
• Venue Allegations: Venue is alleged to be proper based on Defendant’s residency and principal place of business in Florida, the location where a substantial part of the alleged infringing acts occurred, and a forum selection clause in a Master Services Agreement between the parties designating Miami-Dade County, Florida, as the exclusive jurisdiction for disputes.
• Core Dispute: Plaintiff alleges that Defendant, a former contractor, misappropriated trade secrets related to Plaintiff's guest experience platform and subsequently developed and sold cruise ship technology systems that infringe three of Plaintiff's patents covering wireless guest engagement, door locks, and portable devices.
• Technical Context: The technology involves an Internet of Things (IoT) ecosystem for the cruise industry, utilizing wearable devices as mobile beacons that interact with a network of stationary sensors to provide automated and personalized guest services.
• Key Procedural History: The parties previously operated under a Master Services Agreement (MSA) related to the development of Plaintiff's technology. The complaint states that Defendant filed a separate civil action in the Middle District of Florida, which was subsequently transferred to the Southern District of Florida and consolidated with this case. Plaintiff also alleges it sent correspondence to Defendant in January 2020, providing notice of its patent portfolio.

Case Timeline

Date	Event
2014-06-01	Plaintiff began "Project Trident" technology development
2014-07-24	Master Services Agreement (MSA) executed between parties
2016-11-11	Earliest Priority Date for all Patents-in-Suit
2017-03-15	Application filed for U.S. Patent No. 10,045,184
2017-03-16	Application filed for U.S. Patent No. 10,049,516
2017-03-16	Application filed for U.S. Patent No. 10,157,514
2017-11-01	Plaintiff's OCEAN® Platform system debuted
2018-06-01	Defendant allegedly began marketing accused BLE reader project
2018-08-07	U.S. Patent No. 10,045,184 Issued
2018-08-14	U.S. Patent No. 10,049,516 Issued
2018-12-18	U.S. Patent No. 10,157,514 Issued
2020-10-21	Complaint Filed

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

U.S. Patent No. 10,045,184: Wireless Guest Engagement System

• Patent Identification: U.S. Patent No. 10,045,184 ("the '184 Patent"), titled "Wireless Guest Engagement System," issued on August 7, 2018. (Compl. ¶131).

The Invention Explained

• Problem Addressed: The patent's background section describes prior art guest engagement systems as "impersonal and disjointed," requiring guests to take affirmative actions like providing a name, swiping an access card, or having information manually retrieved by a host. ('184 Patent, col. 1:31-43). Further, it notes that traditional location systems like GPS are ineffective on a moving cruise ship due to signal interference from the ship's metal structure. ('184 Patent, col. 33:43-60).
• The Patented Solution: The invention is a "novel guest engagement system" that uses portable guest devices (e.g., "medallions") that act as mobile beacons, periodically broadcasting a unique identifier using Bluetooth Low Energy (BLE). ('184 Patent, col. 1:44-52). A distributed network of stationary sensors detects these beacon signals, allowing a central server to track guest locations and provide seamless services, such as automatic door unlocking, without requiring the guest to take any action. ('184 Patent, col. 2:2-25; Fig. 1A). The complaint characterizes this as "flipping the entire frame of reference" from stationary beacons and mobile sensors to mobile beacons and stationary sensors. (Compl. ¶57).
• Technical Importance: This "inverted model" architecture was designed to enable automated, large-scale, personalized guest services in a complex and challenging wireless environment like a cruise ship. (Compl. ¶56-57).

Key Claims at a Glance

• The complaint asserts independent claims 1, 7, and 11, and reserves the right to assert others. (Compl. ¶136). Independent claim 11, quoted in the complaint, requires:
  • A plurality of portable guest devices with unique identifiers and both BLE and NFC antennas.
  • A sensor network with both BLE- and NFC-capable sensors mounted at different locations.
  • A communication network connecting the sensors.
  • A central server that logs unique identifiers received from the sensors.
  • Each guest device must be configured to selectively operate in a first "bi-directional" BLE mode and a second "beacon" BLE mode.
  • Each sensor must be operative to transmit a command that causes a guest device to change between these operating modes. (Compl. ¶135).

U.S. Patent No. 10,049,516: Door Locks and Assemblies for Use in Wireless Guest Engagement Systems

• Patent Identification: U.S. Patent No. 10,049,516 ("the '516 Patent"), titled "Door Locks and Assemblies for Use in Wireless Guest Engagement Systems," issued on August 14, 2018. (Compl. ¶158).

The Invention Explained

• Problem Addressed: Conventional door locks require a guest to perform an action like swiping a card. ('516 Patent, col. 1:31-43). Integrating fully automated, wireless access control into door hardware at scale presents challenges related to power consumption, security, and the coordination of communications between the guest's device, the lock, and a central server. (Compl. ¶81).
• The Patented Solution: The invention claims an electronic door lock assembly with a distinct architecture. It features an "access panel" that is physically "separate from" the main door lock communication module and latch assembly. ('516 Patent, col. 4:1-9). This external access panel contains multiple transceivers to communicate wirelessly with a guest's portable device and with a central reservation server. The access panel is configured to receive access information from the server, determine whether to unlock the door, and then transmit an instruction to the door lock module to perform the unlocking action. ('516 Patent, col. 4:10-16).
• Technical Importance: This architecture separates the complex communication and authorization logic into an external panel, distinct from the core electromechanical latch mechanism within the door, which may improve security, power management, and ease of installation. (Compl. ¶81).

Key Claims at a Glance

• The complaint asserts at least independent claim 13 and its dependents. (Compl. ¶163). Independent claim 13 requires:
  • An electronic door lock assembly comprising:
  • A latch assembly with an electronically controlled locking mechanism.
  • A door lock communication module connected to the locking mechanism, including a radio.
  • An access panel that is "separate from and fixedly mounted proximate to" the door lock module and latch assembly.
  • The access panel must include its own radio, a first transceiver for communicating with a portable user device, and a second transceiver for communicating with a reservation server.
  • The access panel must be configured to receive information from the server, determine whether the door should be unlocked, and transmit an unlock instruction to the door lock module. (Compl. ¶162).

Multi-Patent Capsule

• Patent Identification: U.S. Patent No. 10,157,514 ("the '514 Patent"), titled "Portable Wireless Devices for Use in Wireless Guest Engagement Systems," issued December 18, 2018. (Compl. ¶172).
• Technology Synopsis: The '514 Patent is directed to the specific physical and electronic construction of the portable wireless device itself. The claims recite specific dimensional limitations for the device's body and internal cavity, and require the presence of a processor, memory, battery, and both BLE and NFC antennas within that cavity. ('514 Patent, col. 3:26-44). The invention addresses the technical problem of securely and robustly packaging these distinct electronic components into a compact, wearable form factor while managing how public and private identifiers are transmitted for security. (Compl. ¶176, 180-181).
• Asserted Claims: The complaint asserts at least claim 11. (Compl. ¶177).
• Accused Features: The physical body of "The Band" wearable device, including its dimensions, fully enclosed cavity, and the internal arrangement of its processor, memory, battery, and BLE/NFC antennas. (Compl. ¶178-179).

III. The Accused Instrumentality

Product Identification

• The complaint identifies guest engagement systems developed by DeCurtis for its customers, Norwegian Cruise Lines ("NCL") and Virgin Voyages. (Compl. ¶86, 93). The primary accused instrumentality detailed in the complaint is the Virgin Voyages system, which includes a wearable device called "The Band." (Compl. ¶95, 138).

Functionality and Market Context

• The accused system is alleged to use "The Band" wearable as a mobile BLE beacon to provide guests with services such as cabin access, onboard payments, and location tracking for beverage delivery. (Compl. ¶141). The complaint alleges that DeCurtis "inverted the traditional model" of beacons and sensors after working with Carnival, and that the accused systems are marketed as competing solutions that "track closely" with Carnival's OCEAN® Platform. (Compl. ¶87, 89). Figure 1 in the complaint provides an annotated photograph of the internal components of "The Band," identifying separate NFC and BLE antennas and a system-on-a-chip. (Compl. ¶140, p. 44).

IV. Analysis of Infringement Allegations

'184 Patent Infringement Allegations

Claim Element (from Independent Claim 11)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
a plurality of portable guest devices... each guest device having a unique identifier and including first and second wireless communication antennas respectively configured for Bluetooth low energy (BLE) and near field communication (NFC) communications	"The Band" is a portable device provided to users, has unique BLE and NFC identifiers, and includes separate BLE and NFC antennas.	¶138-140	col. 2:35-44
a sensor network comprising a plurality of sensors each mounted at a different location... wherein at least one sensor... is operative to detect... based on BLE communication... and at least another sensor... is operative to detect... based on NFC communication	Virgin's cruise ship includes a network of sensors at different locations (e.g., cabin doors, casinos) that detect BLE and NFC signals from "The Band."	¶141, 142, 145-146	col. 2:45-56
a communication network connecting each of the plurality of sensors of the sensor network	The Virgin Voyages ships include a communication network, such as a Wi-Fi network, that connects the plurality of sensors.	¶147	col. 2:57-59
a central server... storing a log associating each unique identifier of a portable guest device received using BLE or NFC communications by a sensor	The system uses a central server that logs information associating unique device identifiers with other data, such as device location, to provide services.	¶148	col. 2:60-65
each guest device is configured to selectively operate according to first and second operating modes, each guest device engaging in bi-directional communication... in the first operating mode and engaging in a beacon mode periodically broadcasting a beacon signal... in the second operating mode	"The Band" allegedly operates in two different modes: a beacon mode ("ADV_NONCONN_INFO") and a mode that requests connection to establish bi-directional communication ("ADV_IND"). Figure 3 of the complaint shows a packet capture alleged to be from the beacon mode.	¶143, 144, 149	col. 3:1-12
each sensor of the sensor network is operative to transmit a command to a guest device... to cause the guest device to change operating mode between the first and second operating modes	When "The Band" receives a bi-directional communication from a sensor, it allegedly changes to a second operating mode to engage in that communication.	¶149	col. 3:13-17

• Identified Points of Contention:
  • Scope Question: Does an accused device changing its behavior in response to receiving a communication from a sensor meet the claim limitation that the sensor is "operative to transmit a command... to cause the guest device to change operating mode"? The analysis may turn on whether a generic connection request from a sensor qualifies as the specific "command" required by the claim.
  • Technical Question: What evidence does the complaint provide that the accused sensors actively transmit a command, rather than the accused wearable device autonomously changing its state upon detecting a sensor capable of bi-directional communication? The complaint alleges the change happens "When the Band receives a bi-directional communication from a sensor," which suggests a responsive rather than commanded change. (Compl. ¶149).

'516 Patent Infringement Allegations

Claim Element (from Independent Claim 13)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
an electronic door lock assembly comprising: a latch assembly including a latch and an electronically controlled locking mechanism	The Virgin cruise ship includes a latch assembly with an electronically controlled locking mechanism.	¶164	col. 3:61-64
a door lock communication module electrically connected to the... locking mechanism... and including a radio	The accused system includes a door lock communication module with a radio for wireless communication.	¶164	col. 3:65-67
an access panel separate from and fixedly mounted proximate to the door lock communication module and latch assembly... including a radio... a first transceiver... with a portable user device, and a second transceiver for... a reservation server	The accused system has an access panel, shown in Figure 5, separate from the main latch assembly. This panel includes a first transceiver (BLE sensor) to communicate with "The Band" and is alleged to have a second transceiver for communication with a reservation server.	¶164, 165, 166	col. 4:1-9
wherein the access panel... is configured to receive door access information from the reservation server via the second transceiver, determine whether the door should be unlocked... and transmit an instruction to unlock the door to the door lock communication module	The accused access panel allegedly receives door access information from a server, determines whether to unlock the door, and then transmits an unlock instruction to the in-door module.	¶166	col. 4:10-16

• Identified Points of Contention:
  • Scope Question: The claim requires the access panel to include a "first transceiver" for the user device and a "second transceiver" for the server. The analysis will likely focus on whether the accused access panel's hardware and software architecture contains two functionally distinct transceivers as claimed, or a single transceiver that communicates with both.
  • Technical Question: Where does the "determin[ation] whether the door should be unlocked" actually occur? The claim requires this determination to happen at the access panel. A potential point of contention is whether the accused access panel performs this logic itself or merely acts as a pass-through for an authorization decision made by the central server.

V. Key Claim Terms for Construction

'184 Patent, Claim 11

• The Term: "each sensor of the sensor network is operative to transmit a command... to cause the guest device to change operating mode"
• Context and Importance: This term is critical because infringement hinges on whether the interaction between the accused sensor and wearable device constitutes the transmission of a "command." Defendant may argue its system operates differently, for instance, with the wearable device initiating a mode change autonomously upon detecting a certain type of sensor, rather than being commanded to do so.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification states that "sensors can transmit signals to cause the device to switch between the two modes of operation when the higher power mode is needed." ('184 Patent, col. 16:26-29). This language may support a construction where any signal from the sensor that results in the mode change constitutes a "command."
  • Evidence for a Narrower Interpretation: The specification provides an example where "A sensor at a wine bar detects that one device is being worn by a guest who is over 21 and therefore sends a command to that device that causes the device to switch from sleep mode to bi-directional communication mode." ('184 Patent, col. 27:3-12). This example suggests a level of intelligence and purposefulness in the command, which could support a narrower construction requiring more than a generic "hello" or connection-request signal.

'516 Patent, Claim 13

• The Term: "an access panel separate from and fixedly mounted proximate to the door lock communication module"
• Context and Importance: The architectural separation of the access panel from the internal door lock module is a central feature of the invention. The definition of "separate from" will be key to determining if the accused product, shown in the complaint's Figure 5 (Compl. p. 54), has the claimed structure.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent figures (e.g., Fig. 7H) and description depict the "access panel 705" and "door lock module 703" as two physically distinct boxes with a wireless link between them, supporting a plain-meaning physical separation. ('516 Patent, Fig. 7H).
  • Evidence for a Narrower Interpretation: A defendant might argue that "separate from" implies a degree of functional independence beyond mere physical housing. However, the claim itself describes a direct functional relationship where the panel "transmit[s] an instruction... to the door lock communication module," suggesting that "separate from" primarily refers to the physical and structural arrangement rather than complete functional isolation.

VI. Other Allegations

• Indirect Infringement: The complaint alleges both contributory infringement and active inducement. It claims DeCurtis provides material components of the infringing systems (wearables, sensors, server software) that are not suitable for substantial non-infringing use. (Compl. ¶152, 167, 183). It further alleges DeCurtis actively induces its customers, Virgin and NCL, to infringe by providing instructional materials, marketing, and ongoing technical support with the specific intent to cause infringement. (Compl. ¶153, 168, 184).
• Willful Infringement: Willfulness is alleged based on both pre-suit and post-suit knowledge. The complaint asserts DeCurtis had deep knowledge of Carnival's technology from its prior work as a contractor and was therefore willfully blind to the existence of Carnival's patents. (Compl. ¶154, 169, 186). It also alleges DeCurtis has had actual knowledge of the patents-in-suit since at least January 29, 2020, based on correspondence from Plaintiff's counsel. (Compl. ¶154, 169, 186).

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

• A core issue will be one of architectural equivalence: does the accused system, which allegedly uses an "inverted model" of mobile beacons and stationary sensors, map directly onto the specific system architecture recited in the claims of the '184 patent, particularly with respect to how operating modes are changed?
• A key evidentiary question will be one of functional causation: does the accused wearable device's change in operating mode result from a "command" transmitted by a sensor as claimed in the '184 patent, or does it occur autonomously in response to detecting a sensor, a distinction that could be dispositive for infringement?
• A central dispute for the '516 patent may be the locus of decision-making: does the accused access panel itself "determine whether the door should be unlocked" as required by the claim, or does it function merely as a conduit for an authorization decision made by a remote server, potentially avoiding infringement of that claim element?