DCT
1:18-cv-03209
Coding Tech LLC v. Elmer's Products Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Coding Technolgies, LLC (Texas)
- Defendant: Elmer's Products Inc. (Delaware / Georgia)
- Plaintiff’s Counsel: Watson LLP
- Case Identification: Coding Technolgies, LLC v. Elmer's Products Inc., 1:18-cv-03209, N.D. Ga., 07/03/2018
- Venue Allegations: Venue is alleged to be proper because the Defendant resides in the judicial district.
- Core Dispute: Plaintiff alleges that Defendant’s use of QR codes on its products to direct mobile users to online content infringes a patent related to methods and systems for providing mobile services by scanning a code pattern.
- Technical Context: The technology involves using a camera-equipped mobile device to scan a machine-readable code, thereby bridging physical marketing materials with digital information without requiring manual data entry.
- Key Procedural History: The patent-in-suit is a continuation of a chain of applications originating from a PCT application, which may be relevant for determining the effective filing date and analyzing the prosecution history for potential disclaimers.
Case Timeline
| Date | Event |
|---|---|
| 2003-03-07 | Earliest Priority Date for U.S. Patent 8,540,159 |
| 2013-09-24 | U.S. Patent 8,540,159 Issues |
| 2018-07-03 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,540,159 - "Method for Providing Mobile Service Using Code-Pattern," Issued September 24, 2013
The Invention Explained
- Problem Addressed: The patent's background describes the inconvenience for users who see an advertisement with a website URL and must memorize or write it down to later type it into a mobile terminal, a process which is described as not user-friendly and an ineffective way to drive product sales from advertising (’159 Patent, col. 1:44-50). It also notes a demand for more convenient ways for travelers to access detailed information or call for transportation services (’159 Patent, col. 1:51-col. 2:4).
- The Patented Solution: The invention provides a method and system where a user employs a mobile terminal with a camera to take a photograph of a "code pattern" (e.g., a barcode or QR code). The terminal then decodes the pattern to extract information, such as a URL, and uses that information to automatically request and receive content from a server, displaying it to the user (’159 Patent, Abstract; Fig. 5). This automates the process of linking a physical object to online content.
- Technical Importance: The technology provided a streamlined bridge between physical media and interactive online content at a time when mobile internet access was becoming ubiquitous but manual URL entry remained a point of friction for users.
Key Claims at a Glance
- The complaint asserts independent claims 1, 8, 15, and 16, and dependent claims 2, 3, 9, and 10 (Compl. ¶16).
- Independent Claim 1 (Method):
- obtaining a photographic image of a code pattern by a camera of the user terminal;
- processing, by a processor of the user terminal, the photographic image of the code pattern to extract the code pattern from the photographic image;
- decoding the extracted code pattern by the processor of the user terminal into code information;
- transmitting a content information request message to a server based on the code information; and
- receiving content information from the server in response to the content information request message.
- Independent Claim 8 (Apparatus):
- a camera configured to obtain a photographic image of a code pattern;
- a processor comprising: an image processor configured to process the photographic image of the code pattern to extract the code pattern from the photographic image; and a decoder configured to decode the extracted code pattern into code information; and
- a transceiver configured to (i) transmit a content information request message to a server based on the code information; and (ii) receive content information from the server in response to the content information request message.
III. The Accused Instrumentality
Product Identification
The complaint accuses the method employed by Defendant Elmer's Products Inc. involving the use of QR codes to provide content to users of mobile devices like smartphones (Compl. ¶15, ¶19). The infringement allegations are primarily directed at Elmer's "internal use and testing" of this method (Compl. ¶19, ¶20).
Functionality and Market Context
The complaint alleges that Defendant provides a QR code that, when scanned by a user terminal such as a smartphone, directs the user to an Elmer's-associated webpage, "presentationready.elmers.com" (Compl. ¶19). This webpage provides content including "Most Watched Videos" (Compl. p. 6). The complaint includes a visual aid depicting the accused process as a four-step flow: "QR-Code -> Scan -> Decode -> Action," culminating in the display of the website (Compl. ¶22, p. 8). This suggests the accused functionality is a standard marketing implementation of QR code technology to drive customer engagement with online brand content.
IV. Analysis of Infringement Allegations
Infringement Allegations for Claim 1
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| obtaining a photographic image of a code pattern by a camera of the user terminal; | Defendant, in internal testing, allegedly obtains a photographic image of a QR code using a smartphone's camera (Compl. ¶20). The complaint provides a stock photo of an iPhone and a screenshot of a scanning interface as evidence (Compl. p. 7). | ¶20 | col. 10:9-17 |
| processing, by a processor of the user terminal, the photographic image of the code pattern to extract the code pattern from the photographic image; | Defendant allegedly uses a smartphone processor to process the photographic image of the QR code to view and extract the code pattern (Compl. ¶21). | ¶21 | col. 10:18-20 |
| decoding the extracted code pattern by the processor of the user terminal into code information; | Defendant allegedly uses the smartphone processor to decode the QR code into code information, identified as the URL of a webpage associated with the Defendant (Compl. ¶22). A graphic shows this step as "Decode" (Compl. p. 8). | ¶22 | col. 10:20-24 |
| transmitting a content information request message to a server based on the code information; | Defendant allegedly transmits an http request to its server for the webpage associated with the decoded URL (Compl. ¶23). | ¶23 | col. 10:52-58 |
| and receiving content information from the server in response to the content information request message. | Defendant allegedly receives content, such as the associated webpage, from its server in response to the http request (Compl. ¶24). A screenshot shows the resulting webpage with video content (Compl. p. 6). | ¶24 | col. 10:52-58 |
Infringement Allegations for Claim 8
| Claim Element (from Independent Claim 8) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a camera configured to obtain a photographic image of a code pattern; | Defendant allegedly uses a user terminal (e.g., smartphone) that comprises a camera to obtain a photographic image of a QR code (Compl. ¶34). | ¶34 | col. 10:9-12 |
| a processor comprising: an image processor configured to process the photographic image of the code pattern to extract the code pattern...; and a decoder configured to decode the extracted code pattern into code information; | Defendant allegedly uses a user terminal with a processor and decoder. The complaint alleges the processor is used to extract the QR code pattern from the image, and a decoder is used to convert that pattern into a URL (Compl. ¶35, ¶36). | ¶35, ¶36 | col. 10:18-24 |
| and a transceiver configured to (i) transmit a content information request message... and (ii) receive content information from the server... | Defendant allegedly uses a smartphone with a transceiver to send an http request and receive webpage content (Compl. ¶37). The complaint includes a screenshot of iPhone 7 cellular radio specifications to support the presence of a transceiver (Compl. p. 12). | ¶37 | col. 10:52-58 |
Identified Points of Contention
- Evidentiary Questions: The complaint's infringement theory rests heavily on Defendant's alleged "internal use and testing" (Compl. ¶19, ¶33). A primary question will be what evidence Plaintiff can produce to demonstrate that Elmer's, the corporate entity, performed the user-side actions of the claimed method (e.g., operating a smartphone camera, processing an image on the device), rather than merely providing QR codes for customers to scan.
- Scope Questions: The complaint accuses Elmer's of directly infringing apparatus claim 8, which is directed to a "user terminal" (Compl. ¶32). This raises the question of how Elmer's, which does not manufacture or sell smartphones, can be liable for "making, using, [or] selling" the claimed apparatus beyond the narrow allegation of "using" a smartphone for internal testing.
V. Key Claim Terms for Construction
Term: "processing... to extract the code pattern from the photographic image"
Context and Importance: This term appears in Claim 1 immediately before the "decoding" step. The claim structure suggests these are two distinct actions. The defense may argue that accused QR code scanning apps perform a single, integrated "scan-and-decode" function, not the discrete two-step process recited in the claim. The viability of the infringement allegation may depend on whether "extracting the code pattern" is a separate and identifiable step from "decoding" it into information.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation (potentially merging the steps): The patent's abstract describes the process more holistically as "decoding the photographed code pattern image so as to obtain code information," which could be argued to encompass both claim steps as part of a single "decoding" concept (’159 Patent, Abstract).
- Evidence for a Narrower Interpretation (requiring two steps): The claim language itself, by using two different verbs ("processing... to extract" and "decoding"), strongly implies two sequential and distinct operations, a principle of claim differentiation. The specification describes the "photographing unit" (11) capturing an image and the "decoder" (13) analyzing it, which could support a reading that separating the pattern from the image background is a distinct precursor to decoding the pattern's content (’159 Patent, Fig. 3, col. 10:9-24).
Term: "code pattern"
Context and Importance: This term defines the object that is scanned. Its scope is central to infringement. The complaint alleges that a QR code is a "code pattern" (Compl. ¶19). Practitioners may focus on this term to see if any limitations arise from the specification that would exclude common commercial codes like QR codes.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification explicitly states the term includes both one-dimensional barcodes and two-dimensional barcodes like a "PDF-417 code, a QR code and a data matrix" (’159 Patent, col. 11:1-6). This provides strong evidence that the term should be given a broad meaning that explicitly covers the accused QR codes.
- Evidence for a Narrower Interpretation: A party seeking a narrower construction might argue that the term should be limited by the context of the various disclosed embodiments, such as providing geographical information or a taxi call service, though this argument may be weakened by the explicit definition provided in the specification.
VI. Other Allegations
- Indirect Infringement: The complaint includes a general allegation of contributory and induced infringement (Compl. ¶15). However, it does not plead specific facts demonstrating intent, such as alleging that Defendant's user manuals, advertisements, or product packaging explicitly instruct users on how to scan the QR codes in an infringing manner.
- Willful Infringement: Willfulness is alleged "upon information and belief," asserting that Defendant knew of the '159 Patent and disregarded Plaintiff's rights (Compl. ¶58). The complaint does not allege pre-suit notice or other facts to substantiate that the alleged infringement was undertaken with knowledge of the patent.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of evidentiary proof: Can the Plaintiff substantiate its claim that the Defendant, Elmer's Products Inc., directly infringed by performing the user-side steps of the claimed method and using the claimed apparatus during "internal use and testing," or will the case shift to a theory of indirect infringement based on the actions of end-users?
- A key question of claim construction will be whether the accused functionality performs the two distinct steps of "processing... to extract the code pattern" and "decoding the extracted code pattern," as required by the claim language, or if it performs a single, inseparable function that may not meet all claim limitations.
- A central question of infringement liability for the apparatus claims will be whether the allegation of "using" a third-party smartphone for internal testing is sufficient to hold the Defendant liable for infringement of the claimed "user terminal" itself.