DCT
9:23-cv-80654
American Registry LLC v. Castle Connolly Medical Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: American Registry, LLC (Florida)
- Defendant: Castle Connolly Medical Ltd. (Delaware)
- Plaintiff’s Counsel: Law Offices of Adam J. Steinberg, P.A.; Malloy & Malloy, P.L.
- Case Identification: 9:23-cv-80654, S.D. Fla., 04/13/2023
- Venue Allegations: Plaintiff alleges venue is proper based on Defendant's business contacts within the district, the occurrence of infringing acts in the district, and a forum selection clause in a prior partnership agreement between the parties designating Palm Beach County, Florida, as the exclusive venue.
- Core Dispute: Plaintiff alleges that Defendant’s online system for producing personalized achievement recognition items infringes a patent related to methods and systems for customizing such items.
- Technical Context: The technology involves e-commerce platforms that allow individuals who have received an award or honor to order a customized physical memento, such as a plaque, by selecting from various personalization options online.
- Key Procedural History: The complaint alleges the parties entered a "Recognition Program Strategic Partnership Agreement" in 2017, under which Plaintiff disclosed confidential information, including its methods for utilizing the patent-in-suit. The complaint alleges this agreement provided Defendant with actual, pre-suit notice of the patent, which may be relevant to the claim of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2003-11-21 | ’800 Patent Priority Date |
| 2008-06-10 | ’800 Patent Issue Date |
| 2017-11-02 | Parties enter Recognition Program Strategic Partnership Agreement |
| 2023-04-13 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,386,800 - “PERSONALIZED, CUSTOMIZED ACHIEVEMENT RECOGNITION ITEMS,” issued June 10, 2008
The Invention Explained
- Problem Addressed: The patent's background section describes situations where a person recognized for an achievement does not receive a physical award (e.g., a plaque) or may wish to have a different type of award to commemorate the achievement (ʼ800 Patent, col. 1:26-32).
- The Patented Solution: The invention is an online, interactive system that allows a user to order a customized achievement award. The system provides a personalized webpage, which can include a pre-populated list of the user's achievements. The user can then select an achievement and customize the corresponding award's features, such as materials, colors, and engraved text, before ordering its production (ʼ800 Patent, Abstract; col. 2:5-18). The overall system architecture, linking a user device to a network server and production systems, is illustrated in the patent’s Figure 2 (ʼ800 Patent, FIG. 2).
- Technical Importance: The technology facilitates a direct-to-consumer model for achievement awards, allowing the individual honoree to control the design and purchase of their own recognition item, rather than relying on the awarding organization to provide a standard, non-customized item (ʼ800 Patent, col. 2:40-45).
Key Claims at a Glance
- The complaint asserts independent claims 1, 9, 17, and 25 (Compl. ¶30).
- Independent claim 1, a method claim, includes the following essential elements:
- Providing an on-line, interactive network site with a personalized network page for customizing a three-dimensional achievement recognition item.
- The personalized network page includes a pre-populated list of one or more achievements attained by the user.
- A user can select an achievement from this list for customization.
- Receiving information from the user that includes user-selected specifications for customizing the item for the selected achievement.
- Producing the achievement recognition item according to the user-selected specifications.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
The "CASTLE CONNOLLY Method and System" (Compl. ¶23).
Functionality and Market Context
The accused instrumentality is described as a method and system that uses an "on-line interactive network site including a personalized network page with a pre-populated list of one or more achievements" (Compl. ¶22). This system allows users, such as doctors who have received a "Top Doctor" award, to customize and order a personalized recognition item, like a plaque (Compl. ¶25). The complaint alleges that after a partnership between the parties ended, Defendant engaged a new contractor, Wright's Media, to produce and fulfill these awards using the accused system (Compl. ¶20).
IV. Analysis of Infringement Allegations
’800 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| providing an on-line, interactive network site including a personalized network page from which a user can customize and personalize specifications for a three-dimensional achievement recognition item | Defendant operates an online interactive website that allows users to customize and personalize specifications for an achievement recognition item. | ¶22 | col. 2:5-8 |
| wherein the personalized network page includes a pre-populated list of one or more achievements attained by the user, any of which the user can select for customizing and personalizing the achievement recognition item | The system allegedly includes a personalized network page with a "pre-populated list of one or more achievements," such as being named a "TOP DOCTOR for 5 Years." | ¶22, ¶25 | col. 2:9-12 |
| receiving information through the network site from the user, wherein the information includes user-selected specifications for customizing and personalizing features of the achievement recognition item for an achievement selected by the user from the pre-populated list | The user customizes and personalizes specifications for the achievement recognition item through the website. | ¶22 | col. 2:15-18 |
| producing the achievement recognition item in accordance with the user-selected specifications | The personalized, customized achievement recognition item is allegedly "produced via a method and system" operated by Defendant. | ¶22 | col. 2:46-48 |
Identified Points of Contention
- The complaint provides printouts from Defendant's website, one of which is for a "TOP DOCTOR for 5 Years" award, as evidence of the accused system (Compl. ¶25, Ex. C).
- Scope Questions: A primary question may be whether a personalized landing page dedicated to a single, specific achievement (e.g., "Top Doctor for 5 Years") constitutes a "pre-populated list of one or more achievements" from which a user "selects" an achievement, as required by the claim. The language could raise the question of whether a "list" requires the presentation of multiple, selectable options to the user.
- Technical Questions: The complaint alleges that the item is "produced" by the accused method and system (Compl. ¶22), but also states that a third-party contractor, Wright's Media, "produces and fulfills the award/recognition display" (Compl. ¶20). The relationship between Defendant's online system and the physical production of the item by a third party will be a key factual question in determining direct infringement of the full method claim by a single party.
V. Key Claim Terms for Construction
- The Term: "pre-populated list of one or more achievements"
- Context and Importance: This term is central to the infringement theory. The case may turn on whether the accused system, which allegedly presents a user with a specific honor they have received, meets this limitation. Practitioners may focus on this term because its construction will likely determine whether the accused system's core functionality falls within the scope of the claims.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language "list of one or more" on its face includes a list containing a single item. The specification states the personalized page may include "a list of one or more achievements attained by the user" (ʼ800 Patent, col. 4:31-32), which does not explicitly require a plurality.
- Evidence for a Narrower Interpretation: The specification describes an embodiment where a "drop-down menu 60 allows the prospective customer to select from among one or more achievements" (ʼ800 Patent, col. 4:36-38, FIG. 4). A party could argue that this context, coupled with the word "select," implies that the "list" must present a choice between multiple, distinct achievements, rather than just confirming a single pre-determined one.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendant, with specific intent and knowledge, actively induced its end users to infringe by using the accused online system to order personalized items (Compl. ¶37). The factual basis for inducement appears to be Defendant's operation of the website and marketing of the service to its award recipients (Compl. ¶21, ¶47).
- Willful Infringement: Willfulness is alleged based on both pre-suit and post-suit notice. The complaint asserts pre-suit knowledge stemming from a 2017 partnership agreement, which allegedly "specifically referenced the '800 Patent" (Compl. ¶24). Post-suit willfulness is alleged based on the notice provided by the filing of the complaint itself (Compl. ¶32).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this dispute may depend on the court's determination of several key questions:
- A core issue will be one of definitional scope: Can the claim term "pre-populated list of one or more achievements," which a user "selects" from, be construed to cover a personalized webpage that presents a single, pre-determined award for customization, or does the patent require a user be presented with a choice among multiple distinct achievements?
- A second issue will be one of divided infringement: For the asserted method claims, can Plaintiff establish that all steps are performed by or attributable to Defendant, particularly the final "producing" step, which the complaint suggests may be performed by a third-party contractor?
- A third question will center on willfulness: The allegation that Defendant had pre-suit knowledge of the '800 patent via a prior contract is a significant one. The factual evidence supporting this claim will be critical in determining whether any potential infringement was willful, which could expose Defendant to enhanced damages.