DCT
1:23-cv-02532
Newtonoid Tech LLC v. Abbott Laboratories
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Newtonoid Technologies, L.L.C. (Missouri); Windgo, Inc. (Missouri); Veristik, Inc. (Missouri)
- Defendant: Abbott Laboratories (Illinois)
- Plaintiff’s Counsel: Dunlap Bennett & Ludwig PLLC; The Simon Law Firm, P.C.
- Case Identification: 1:23-cv-02532, N.D. Ill., 04/21/2023
- Venue Allegations: Venue is alleged to be proper based on Defendant residing in the district, having committed alleged acts of infringement there, and maintaining a regular and established place of business in the district.
- Core Dispute: Plaintiffs allege that Defendant’s BinaxNOW rapid COVID-19 test infringes a patent related to graphically encoded icons that incorporate stimuli-responsive materials to convey information.
- Technical Context: The technology concerns scannable labels, such as QR codes, that are integrated with materials capable of changing their physical appearance in response to environmental triggers like temperature or the presence of a chemical substance.
- Key Procedural History: The complaint states that Newtonoid Technologies, L.L.C. is the assignee of the patent-in-suit and has licensed rights to co-plaintiffs Windgo, Inc. and Veristik, Inc. The patent is part of a family that includes at least two prior patents and claims priority to provisional applications filed in 2017 and 2018.
Case Timeline
| Date | Event |
|---|---|
| 2017-11-22 | Earliest Priority Date ('818 Patent) |
| 2022-07-19 | U.S. Patent No. 11,392,818 Issued |
| 2023-04-21 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,392,818 - "Graphically encoded icons having intrinsic attributes embedded therein and systems and methods for using same," issued July 19, 2022
The Invention Explained
- Problem Addressed: The patent addresses the limitation of conventional barcodes and QR codes, which are static once printed and cannot convey variable information about the object to which they are attached, such as its environmental history (Compl. ¶9; ’818 Patent, col. 6:36-41).
- The Patented Solution: The invention is a "graphically encoded icon" that combines a static, machine-readable portion with an "intrinsic portion" made of a stimuli-responsive material. This material is designed to change its appearance (e.g., color, transparency) when exposed to a specific "trigger," such as a change in temperature or pH. This physical change alters the icon, allowing it to convey new, dynamic information that can be read by a machine or observed by a user ('818 Patent, Abstract; col. 2:37-45). For example, a label on a container of shrimp could change its appearance if the temperature exceeds a safe threshold, providing a visual and machine-readable warning of spoilage ('818 Patent, col. 7:27-43).
- Technical Importance: This technology enables a single, scannable label to function as a dynamic sensor, providing real-time data about an object's intrinsic state or exposure to certain conditions, which is valuable in supply chains for sensitive goods like food and medicine ('818 Patent, col. 8:36-50).
Key Claims at a Glance
- The complaint asserts independent claim 8 (Compl. ¶15).
- Claim 8 requires:
- A label attached to an object, the label comprising a static portion and an intrinsic portion;
- The static portion comprises machine-readable indicia;
- The intrinsic portion comprises an area of stimuli-responsive material;
- The stimuli-responsive material is configured to change from a first state to a second state in response to a trigger, with the change being based on an attribute of the object;
- The transformation of the stimuli-responsive material is a change in the transparency of that material.
- The complaint does not explicitly reserve the right to assert other claims.
III. The Accused Instrumentality
Product Identification
- The BinaxNOW COVID-19 Antigen Self Test ("the Infringing Product") (Compl. ¶1).
Functionality and Market Context
- The complaint identifies the accused product as a rapid antigen self-test for detecting COVID-19 infection (Compl. ¶1, ¶13). The complaint includes a visual of the product packaging and the test card, which is a lateral flow assay where a fluid sample is applied and a result appears as a visible line in a result window (Compl. p. 3). This image from the complaint shows the "BinaxNOW COVID-19 Ag CARD" which includes both a result window and a separate QR code (Compl. p. 3). The complaint alleges that Abbott has derived "substantial revenue" from sales of the product, which is marketed for use under an Emergency Use Authorization (Compl. ¶3, p. 3).
IV. Analysis of Infringement Allegations
The complaint alleges infringement of Claim 8 but does not provide a detailed mapping of product features to claim elements. The following analysis is based on the allegations and the nature of the accused product.
'818 Patent Infringement Allegations
| Claim Element (from Independent Claim 8) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a label attached to an object, the label comprising a static portion and an intrinsic portion | The BinaxNOW test card, which is attached to or part of the overall test kit object, allegedly functions as the claimed label. | ¶13, ¶15 | col. 5:48-54 |
| the static portion comprises machine-readable indicia | The QR code printed on the BinaxNOW test card is alleged to be the static machine-readable indicia. | ¶13, ¶15 | col. 6:5-13 |
| the intrinsic portion comprises an area of stimuli-responsive material | The test strip within the result window, which contains chemical reagents that react to the sample, is alleged to be the area of stimuli-responsive material. | ¶13, ¶15 | col. 6:30-34 |
| the stimuli-responsive material is configured to change from a first state to a second state in response to a trigger, the change in state being based on an attribute about the object | The test strip material changes from a "no line" state to a "line present" state in response to the trigger (application of the user's sample), based on the attribute of the presence or absence of COVID-19 antigen. | ¶13, ¶15 | col. 6:46-51 |
| the transformation of the stimuli-responsive material is a change in the transparency of the stimuli-responsive material | The appearance of a colored line on the test strip is alleged to constitute a change in the material's transparency. | ¶13, ¶15 | col. 31:20-23 |
- Identified Points of Contention:
- Scope Questions: A primary issue may be whether the BinaxNOW test card meets the definition of a "graphically encoded icon" as contemplated by the patent. The patent's embodiments frequently depict an integrated structure where the stimuli-responsive area is located within the machine-readable indicia (e.g., '818 Patent, Fig. 3A, 4B). The accused product, however, features a QR code and a result window as physically separate and distinct areas on the test card (Compl. p. 3). This raises the question of whether a device with non-integrated static and intrinsic portions falls within the scope of the claim.
- Technical Questions: The infringement theory appears to depend on construing the appearance of a colored line on an opaque test strip as a "change in the transparency." This raises the question of whether such a change, which is arguably one of color and/or reflectivity, meets the specific "transparency" limitation of claim 8.
V. Key Claim Terms for Construction
The Term: "graphically encoded icon"
- Context and Importance: This term appears in the preamble of claim 8. Its construction is critical because the infringement case depends on whether the accused test card, with its separate QR code and result window, can be considered a single, integrated "icon." Practitioners may focus on this term because the physical separation of these elements in the accused product appears to differ from the integrated designs shown in the patent's figures ('818 Patent, Figs. 3A, 5, 7).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent summary broadly describes the icon as "a label attached to an object" that "includes a static portion and an intrinsic portion," without explicitly requiring physical integration ('818 Patent, col. 2:37-45).
- Evidence for a Narrower Interpretation: Numerous figures in the patent depict the "intrinsic portion" as being physically encapsulated within or forming a part of the data-encoding area of the machine-readable indicia itself ('818 Patent, Figs. 3A, 4A, 5). This consistent depiction may support an interpretation that requires the portions to be structurally integrated.
The Term: "change in the transparency"
- Context and Importance: This term in claim 8 defines the specific nature of the transformation. The viability of the infringement claim hinges on whether the appearance of a colored result line on the test strip constitutes a "change in the transparency."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification, when discussing stimuli-responsive polymers in general, notes they may respond by "altering their color, transparency, or other physical attributes" ('818 Patent, col. 6:52-54). This language suggests the inventors contemplated various types of optical changes.
- Evidence for a Narrower Interpretation: Claim 8 specifically recites "a change in the transparency," while a separate claim, claim 14, recites "a change in the reflection." The choice to use different, specific terms in different claims suggests that "transparency" was intended to have a distinct and narrower meaning than a general optical change, and may not cover a change in surface reflection or color on an opaque material.
VI. Other Allegations
- Indirect Infringement: The complaint's prayer for relief seeks to enjoin inducement of infringement (Prayer for Relief, ¶B). However, the complaint does not allege specific facts to support the required elements of knowledge and intent, such as referencing defendant's instructional materials.
- Willful Infringement: The complaint does not contain allegations of willful infringement or facts that would support a claim of pre- or post-suit knowledge of infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
This case appears to present fundamental questions of claim scope and technical interpretation that will likely be addressed during claim construction. The key issues for the court will be:
A central issue will be one of structural scope: can the term "graphically encoded icon" be construed to cover a product where the machine-readable indicia (a QR code) and the stimuli-responsive area (a test strip) are physically separate components, or does the patent require an integrated structure as depicted in its primary embodiments?
A dispositive legal question will be one of technical definition: does the appearance of a colored line on an opaque lateral flow test strip constitute a "change in the transparency" as strictly required by Claim 8, or is it a change in reflectivity or color that falls outside the claim's specific language?