Inventergy LBS LLC v. Sierra Wireless America Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Inventergy LBS, LLC (Delaware)
  • Defendant: Sierra Wireless America, Inc. (Delaware)
  • Plaintiff’s Counsel: Kent & Risley LLC; Rabicoff Law LLC
• Case Identification: 1:19-cv-02666, N.D. Ga., 06/12/2019
• Venue Allegations: Venue is alleged to be proper because Defendant has an established place of business in the Northern District of Georgia, has allegedly committed acts of infringement in the district, and Plaintiff has suffered harm there.
• Core Dispute: Plaintiff alleges that Defendant’s GPS asset tracking products infringe a patent related to systems and methods for remotely communicating with and reconfiguring a tracking device.
• Technical Context: The technology addresses the need for flexible, remote management of tracking devices to balance performance requirements like location accuracy with operational constraints like battery life and network data costs.
• Key Procedural History: The asserted patent claims priority to a 2008 provisional application. The complaint does not mention any prior litigation, inter partes review proceedings, or licensing history related to the patent-in-suit.

Case Timeline

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

U.S. Patent No. 8,760,286 - "System and method for communication with a tracking device"

• Patent Identification: U.S. Patent No. 8,760,286, “System and method for communication with a tracking device,” issued June 24, 2014 (’286 Patent).

The Invention Explained

• Problem Addressed: The patent’s background section states that prior art tracking systems were “very limited with respect to the communication capabilities between the tracking device and the central station,” noting that power consumption and network access costs were serious concerns that constrained device functionality (ʼ286 Patent, col. 1:27-41).
• The Patented Solution: The invention is a tracking device whose operational behavior is not fixed but is determined by “configuration data” stored in its memory. A remote system can send communications to the device to modify this configuration data, thereby changing the device’s functionality—for example, by altering the interval for reporting its location or buffering data when out of communication range. This provides remote “functional access” to the device, allowing for dynamic management of its operations (ʼ286 Patent, col. 2:5-25; Fig. 5).
• Technical Importance: This approach allows for enhanced flexibility in managing a fleet of tracking devices, enabling users to adjust device behavior in response to changing needs or environmental factors to conserve power and minimize data transmission costs (ʼ286 Patent, col. 1:56-61).

Key Claims at a Glance

• The complaint asserts at least independent claim 1 (Compl. ¶11).
• The essential elements of independent claim 1 include:
  • A location detector for determining the device's location.
  • A communication device for communicating with a plurality of remote systems, including a tracking service system and a user's device.
  • Memory for storing location data and "configuration data".
  • A processor that executes code to provide functionality that depends on the "configuration data".
  • A "configuration routine" that modifies the "configuration data" in response to communication from a remote system.
  • Wherein the modifiable "configuration data" determines an "interval for buffering" location data when the device cannot communicate with the remote system.
  • Wherein the buffering interval controls how frequently new location data is stored in memory.
• The complaint’s use of “one or more claims” suggests it may reserve the right to assert other claims, including dependent claims (Compl. ¶11).

III. The Accused Instrumentality

Product Identification

• The complaint names “at least Sierra Wireless’s Uplink GPS Asset Tracker” as an exemplary accused product (Compl. ¶11).

Functionality and Market Context

• The complaint does not describe the specific technical functionality of the accused tracker. It makes a broad allegation that the products “practice the technology claimed by the ’286 Patent” (Compl. ¶16). The complaint references, but does not include, “Exhibit 2,” which it states contains claim charts comparing the patent claims to the accused products (Compl. ¶16-17). Without this exhibit, the complaint itself offers no specific details on how the accused product is alleged to operate.

IV. Analysis of Infringement Allegations

The complaint references claim charts in an attached “Exhibit 2” to support its infringement allegations; however, this exhibit was not included with the public-facing court filing (Compl. ¶16). As such, a detailed, element-by-element breakdown of the infringement allegations is not possible based on the provided document. The complaint’s narrative theory is that the accused products “satisfy all elements of the Exemplary ’286 Patent Claims” (Compl. ¶16).

No probative visual evidence provided in complaint.

Identified Points of Contention

• Technical Question: A central technical question will be whether the accused Uplink GPS Asset Tracker performs the specific functions recited in the claims. For example, the court will need to determine if the accused device modifies an "interval for buffering said location data when said communication device is unable to communicate" with a remote system, as explicitly required by Claim 1.
• Evidentiary Question: Because the complaint lacks specific factual allegations detailing the operation of the accused product, a primary issue will be what evidence Plaintiff can produce to demonstrate that the accused tracker contains a "configuration routine" and "configuration data" that function in the manner claimed by the ’286 Patent.

V. Key Claim Terms for Construction

• The Term: "configuration routine"

• Context and Importance: This term appears to be at the core of the invention. Its definition will be critical for determining the scope of infringement. Practitioners may focus on this term because its construction will determine whether any remote update capability infringes, or only a specific type of modification system as described in the patent.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The claim describes the routine’s function broadly as being “operative to modify said configuration data responsive to a communication from the remote system” (ʼ286 Patent, col. 44:10-13). This general language could support an interpretation that covers a wide range of software or firmware update mechanisms.
  • Evidence for a Narrower Interpretation: The specification provides specific examples of what is configured, such as reporting intervals, geofences, and power states (ʼ286 Patent, col. 2:16-51). The detailed communication protocol tables list specific commands like "SET_REPORTING_INTERVAL" and "SET_BUFFERING_INTERVAL", which suggests the "configuration routine" is intended to act on discrete, predefined operational parameters rather than executing general-purpose code updates (ʼ286 Patent, col. 18:31-32, col. 20:4-5).

• The Term: "configuration data"

• Context and Importance: This term is inextricably linked to "configuration routine". The dispute will likely center on whether this term encompasses any modifiable data that affects device operation (e.g., an entire firmware image) or is limited to specific operational parameters stored and modified separately from the device’s core programming.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The claim language states that the device's functionality "depending at least in part on said configuration data," which could be argued to apply to any part of the device's software (ʼ286 Patent, col. 44:7-9).
  • Evidence for a Narrower Interpretation: The specification repeatedly refers to the modification of specific parameters, such as a "time interval," "distance interval," or "geofence definition" (ʼ286 Patent, col. 2:23-40). This suggests "configuration data" refers to these specific values or settings, not the underlying application code itself. The flowchart in Figure 5, which shows a step of providing "New Configuration Data" to the device, may also support a reading that this data is a discrete set of parameters (ʼ286 Patent, Fig. 5, step 510).

VI. Other Allegations

• Indirect Infringement: The complaint alleges induced infringement, asserting that Defendant sells its products to customers and provides "product literature and website materials" that instruct end-users on how to use the products in a manner that allegedly infringes the ’286 Patent (Compl. ¶13-14). Contributory infringement is also alleged (Compl. ¶15).
• Willful Infringement: Willfulness is alleged based on Defendant’s continued infringement after the filing of the complaint, which Plaintiff asserts provides Defendant with "notice and actual knowledge" of the ’286 Patent (Compl. ¶12-13).

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

• A core issue will be one of definitional scope: can the terms "configuration routine" and "configuration data", which are central to the patent, be construed broadly to cover any system for remotely updating device settings, or are they limited by the specification to a specific architecture for modifying discrete operational parameters like reporting and buffering intervals?
• A key challenge for the plaintiff will be one of evidentiary proof: given the complaint's lack of specific technical allegations, what evidence will it present to demonstrate that the accused Sierra Wireless tracker actually implements the specific functionality of modifying a data buffering interval based on remote commands, as required to meet a key limitation of the asserted independent claim?