ASSA ABLOY Global Solutions Inc v. Liberty Access Tech Licensing LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: ASSA ABLOY Global Solutions, Inc. (Texas)
  • Defendant: Liberty Access Technologies Licensing LLC (Texas)
  • Plaintiff’s Counsel: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
• Case Identification: 1:23-cv-00756, N.D. Ill., 04/03/2023
• Venue Allegations: Plaintiff asserts venue is proper because Defendant previously engaged in patent enforcement activities in the district by filing a lawsuit against another party on one of the patents-in-suit.
• Core Dispute: Plaintiff seeks a declaratory judgment that its mobile hotel room access products do not infringe three of Defendant’s patents related to using a mobile device for time-based access control.
• Technical Context: The technology at issue involves mobile key systems that allow users to securely access controlled spaces, such as hotel rooms, using an application on a smartphone, an increasingly common amenity in the hospitality industry.
• Key Procedural History: This declaratory judgment action follows Defendant’s assertion of the same patents against Plaintiff’s corporate affiliates and a key customer, Marriott, in separate lawsuits filed in the Eastern District of Texas. The complaint notes that the claims of the lead patent, U.S. Patent No. 9,373,205, were previously amended during an ex parte reexamination, which will be central to determining the scope of its claims.

Case Timeline

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

U.S. Patent No. 9,373,205 (as amended by Reexamination Certificate US 9,373,205 C1)

• Title: ACCESS CONTROL SYSTEM AND METHOD FOR USE BY AN ACCESS DEVICE
• Issue Date: June 21, 2016

The Invention Explained

• Problem Addressed: The patent addresses the challenge of providing reliable, secure access to resources like electric vehicle chargers or hotel rooms, where the access point itself may have intermittent or no internet connectivity ('205 Patent, col. 2:54-61). A driver or guest needs a convenient way to reserve and use such a resource without depending on a live network connection at the moment of access (Compl. ¶24).
• The Patented Solution: The invention proposes a system where a user makes a reservation via an internet-connected server, which then issues a digital "reservation certificate" to the user's portable device (e.g., a smartphone) ('205 Patent, Abstract). This certificate contains data for the reservation, including a specific time interval. The user then presents this certificate to the local access device (the door lock), which contains a processor that independently compares the reservation interval to its own clock to verify that access is permitted at the current time ('205 Patent, Reexamined Claim 1; FIG. 6).
• Technical Importance: This architecture decouples the access decision from the need for a persistent network connection at the lock, enabling a robust mobile access system that remains functional even in environments with poor connectivity ('205 Patent, col. 2:54-61).

Key Claims at a Glance

• The complaint focuses on independent claims 1 and 13, which were amended during reexamination (Compl. ¶¶ 23, 25).
• Reexamined Independent Claim 1 recites an access device with the following essential elements:
  • A processor having control of a door lock and a communication module connected to the processor.
  • The processor is configured to receive a reservation certificate presented by a portable terminal.
  • When a current reservation certificate comprising an interval of a reservation is presented, the processor is configured to compare the interval to a current time accessible to the processor.
  • The processor determines the current time is within the interval of the reservation.
  • The processor activates the door lock.
• The complaint notes that Plaintiff's products do not infringe any dependent claims of the '205 Patent (Compl. ¶78).

U.S. Patent No. 10,657,747

• Title: ACCESS CONTROL SYSTEM AND METHOD FOR USE BY AN ACCESS DEVICE
• Issue Date: May 19, 2020

The Invention Explained

• Problem Addressed: The patent addresses the need for a flexible system to manage reservations and grant access to controlled locations, building upon the concepts of its parent patents (Compl. ¶30). The patent family relationship is depicted in a flowchart provided in the complaint (Compl. p. 8, FIG at ¶19).
• The Patented Solution: The invention describes a multi-device system. A user can make a reservation on a first device (e.g., a laptop), which prompts a server to transmit a "reservation certificate" and corresponding communication settings to a second device (e.g., the user's smartphone). An application on the second device then uses this information to communicate with and activate the door lock. (’747 Patent, Abstract; col. 9:4-33).
• Technical Importance: This system architecture provides enhanced flexibility by separating the device used for booking from the mobile credential used for physical access, accommodating various user workflows (’747 Patent, FIG. 7).

Key Claims at a Glance

• The complaint focuses on independent claims 1 and 13 (Compl. ¶29).
• Independent Claim 1 recites an access control system with the following essential elements:
  • An access device (e.g., door lock) with a processor and communication module.
  • A secure reservation interface to receive a request from a first device.
  • A reservation server that issues a "reservation certificate" describing a reservation interval and transmits it to a second device.
  • An application on the second device that receives the certificate and wirelessly transmits it to the access device.
  • The access device receives the certificate, and its processor activates the door lock based on at least the receipt of the certificate.
• The complaint states Plaintiff's products do not infringe any other claims of the patent (Compl. ¶105).

Multi-Patent Capsule: U.S. Patent No. 11,373,474

• Patent Identification: U.S. Patent No. 11,373,474, "ACCESS CONTROL SYSTEM AND METHOD FOR USE BY AN ACCESS DEVICE," issued June 28, 2022.
• Technology Synopsis: This patent describes an access control system where a server provides both a "reservation certificate" (containing a reservation interval) and a "communication setting" to an application on a portable terminal ('474 Patent, Abstract). The application on the terminal is responsible for comparing the reservation interval to the current time to determine if the certificate is valid, and if so, it activates the door lock by communicating with the access device ('474 Patent, col. 9:10-23; Compl. ¶35). This shifts the time-comparison logic from the access device itself to the user's portable terminal.
• Asserted Claims: The complaint addresses independent claims 1, 8, 15, and 26 (Compl. ¶34).
• Accused Features: The complaint argues that Plaintiff’s system does not infringe because it does not provide a "reservation certificate" to an application and its application does not perform the claimed time comparison to activate the lock (Compl. ¶¶ 111, 113, 115).

III. The Accused Instrumentality

Product Identification

• The accused products and services include the ASSA ABLOY Global Solutions Mobile Access Software Development Kit (SDK), Mobile Access App, Mobile Services, SESON technology, VingCard Classic and Essence Electronic Locks, Visionline, and Vostio Access Management (Compl. ¶40). Collectively, this is referred to as Plaintiff's "Mobile Access" or "mobile key" system (Compl. ¶¶11-12).

Functionality and Market Context

• The system is designed to allow hotel guests to use their smartphone as a room key, bypassing the front desk (Compl. ¶11). According to the complaint, the system works by a server generating an "encrypted digital key" that is sent to a user's smartphone and stored in a "key vault" on a mobile application (Compl. ¶12). A marketing graphic included in the complaint describes this as a "Mobile Key" (Compl. p. 17). When the user presents their smartphone to the lock, the app transmits the "digital key information" via a secure channel to unlock the door (Compl. ¶12). A "How It Works" diagram illustrates this as a five-step process for the guest: download the app, make a reservation, check into the room, bypass the front desk, and open the door with the mobile key (Compl. p. 5).

IV. Analysis of Infringement Allegations

The complaint seeks a declaratory judgment of non-infringement. The following tables summarize the Plaintiff's primary arguments for why its products do not meet the limitations of the asserted claims.

'205 Patent Infringement Allegations (based on Reexamined Claim 1)

'747 Patent Infringement Allegations (based on Independent Claim 1)

• Identified Points of Contention:
  • Scope Questions: The primary dispute revolves around the meaning of "reservation certificate." The case raises the question of whether Plaintiff's "mobile key" falls within the scope of this term as used in the patents. Plaintiff consistently argues for a narrow interpretation that requires the certificate to contain specific time-interval data, which it alleges its mobile key lacks (Compl. ¶¶ 52, 87, 112).
  • Technical Questions: A central factual question is the location and nature of the system's processing logic. For the '205 Patent, the analysis raises the question of whether the processor within the accused door lock itself performs the claimed time-comparison function, or if this logic is handled elsewhere (e.g., on a server or smartphone), as Plaintiff alleges (Compl. ¶¶ 56, 68). For the '474 Patent, the question is whether the application on the smartphone performs this comparison as claimed (Compl. ¶113).

V. Key Claim Terms for Construction

• The Term: "reservation certificate"

• Context and Importance: This term appears in the independent claims of all three patents-in-suit and is central to Plaintiff's non-infringement argument. Plaintiff argues that its system uses a "mobile key," which it contends is technically distinct from the claimed "reservation certificate" (Compl. ¶¶ 75, 87). Practitioners may focus on this term because its construction could be dispositive of infringement for the entire system.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification describes the invention as relating to a "digital token or certificate" ('205 Patent, col. 2:18-19). This more generic language could support an argument that the term encompasses any form of digital credential used to grant access based on a prior reservation.
  • Evidence for a Narrower Interpretation: The claims explicitly require the certificate to comprise or describe an "interval of a reservation" ('205 Patent, Reexamined Claim 1; '747 Patent, Claim 1). The patent figures and detailed description show the certificate as a specific data structure containing fields like "Start Time" and "Device ID", suggesting it is more than a simple unlock token ('205 Patent, FIG. 2; col. 5:29-41).

• The Term: "processor ... configured to compare the interval of the reservation to a current time" (from '205 Patent)

• Context and Importance: This limitation defines where a key piece of logic must reside. Plaintiff argues its door locks do not perform this function, which would be a direct defense to infringement of the '205 Patent's device claims (Compl. ¶56). The construction of "processor" and where it must be located (i.e., within the physical access device) is therefore critical.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: A party could argue that "processor" in a modern device might refer to a system-on-a-chip or distributed processing elements, and that the function of "comparing" could be inherent in the act of validating any time-limited cryptographic key.
  • Evidence for a Narrower Interpretation: The claim recites "An access device ... comprising: a processor," directly linking the processor to the claimed device. The specification's block diagram (FIG. 6) clearly depicts the processor (16) as a component inside the access device (60), connected to a clock (8) and a communication module (17), strongly suggesting this comparison must be performed locally within the physical lock assembly ('205 Patent, col. 6:36-42).

VI. Other Allegations

The complaint is a declaratory judgment action for non-infringement and does not contain allegations of indirect or willful infringement.

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

This declaratory judgment action appears poised to turn on two fundamental issues that intertwine claim construction with technical fact-finding:

• A core issue will be one of definitional scope: Can the term "reservation certificate," which the patents describe as a data structure containing a specific time-based reservation interval, be construed to cover the accused "mobile key," which Plaintiff characterizes as an encrypted credential that does not contain such an interval?
• A key evidentiary question will be one of locus of functionality: Do the accused products place the critical time-validation logic where the patents claim it? Specifically, does the processor inside the physical door lock perform the time comparison as required by the '205 Patent, or does the application on the smartphone perform it as required by the '474 Patent, or is this function handled entirely on a server, potentially placing the system outside the scope of all asserted claims?