DCT
1:18-cv-02653
InVue Security Products Inc v. Mobile Tech Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: InVue Security Products Inc. (Ohio)
- Defendant: Mobile Tech, Inc. d/b/a Mobile Technologies Inc. and MTI (Indiana)
- Plaintiff’s Counsel: Ice Miller LLP; Dority & Manning, P.A.
- Case Identification: 1:18-cv-02653, S.D. Ind., 08/28/2018
- Venue Allegations: Venue is alleged to be proper in the Southern District of Indiana because the Defendant is an Indiana corporation with a registered agent in the district.
- Core Dispute: Plaintiff alleges that Defendant’s retail security systems, including its "Intellikey" products, infringe a patent related to programmable keys and security devices for protecting merchandise.
- Technical Context: The technology concerns electronic anti-theft systems used in retail environments to prevent theft of displayed merchandise, where electronic keys are used to arm and disarm security alarms attached to products.
- Key Procedural History: The complaint alleges that Defendant had pre-suit knowledge of the patent-in-suit while it was a pending application, citing a May 31, 2018 meeting where Plaintiff provided Defendant with a copy of what would become Claim 1. The complaint also notes that several related patents from the same family are asserted against the Defendant in separate litigation in the District of Oregon, which may be relevant to the question of notice and willfulness.
Case Timeline
| Date | Event |
|---|---|
| 2005-12-23 | Earliest Priority Date Claimed by ’266 Patent (U.S. Prov. App. 60/753,908) |
| 2016 | Defendant allegedly began deploying Accused Product "Intellikey 3.0" |
| 2018-04-11 | CEOs of Plaintiff and Defendant met |
| 2018-05-31 | Plaintiff allegedly provided Defendant with pending Claim 1 of the application for the ’266 Patent |
| 2018-08-16 | Patent application published as '024 Publication |
| 2018-08-28 | U.S. Patent No. 10,062,266 issued |
| 2018-08-28 | Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,062,266 - Programmable Security System and Method for Protecting Merchandise
- Issued: August 28, 2018
The Invention Explained
- Problem Addressed: The patent’s background section identifies a problem with conventional retail security systems where the keys used to arm and disarm alarm modules can be stolen by shoplifters or dishonest employees and used to defeat the security measures at the same or another store location (’266 Patent, col. 2:1-17).
- The Patented Solution: The invention is a security system comprising a programming station, a programmable key, and a security device (e.g., an alarm module). The programming station generates a unique Security Disarm Code (SDC) and transfers it to the programmable key. The key, in turn, is used to program the security device with the same SDC (’266 Patent, col. 9:20-53). A key can only operate a security device if their SDCs match. To prevent misuse of a lost or stolen key, the patent describes invalidating the key's SDC after a preset period of time (e.g., 96 hours), requiring it to be "refreshed" at the programming station to remain functional (’266 Patent, col. 10:1-10).
- Technical Importance: This approach aims to enhance security by creating a closed system where keys are uniquely tied to a specific store's programming station and are rendered useless after a set time period unless re-authorized, limiting the window of opportunity for misuse (’266 Patent, col. 2:32-42).
Key Claims at a Glance
- The complaint asserts at least independent Claim 1 (Compl. ¶27).
- The essential elements of Claim 1 are:
- A programming station comprising a memory.
- A programmable key comprising a memory configured to store a security code.
- A security device comprising an alarm and configured for attachment to merchandise, which activates the alarm if its integrity is compromised.
- The programmable key is configured to provide its security code to the programming station for storage.
- The programmable key is configured to wirelessly communicate with the programming station to authorize the key to control the security device if the key's code matches the station's code.
- The complaint does not explicitly reserve the right to assert dependent claims, but the prayer for relief is for infringement of "one or more claims" (Compl. p. 13, ¶A).
III. The Accused Instrumentality
Product Identification
- The accused products are Defendant's security systems, including components referred to as "Intellikey," "Intellikey 3.0," "Intellikey 3.0 Gateway," "Gateway," "Freedom Micro," "Manager Key," and "User Key" (Compl. ¶15).
Functionality and Market Context
- The complaint alleges the accused systems comprise a "programming station" (e.g., "Gateway" or "Hub"), a "programmable key" (e.g., "Intellikey"), and a "security device" (e.g., a "puck") that has an alarm and attaches to merchandise (Compl. ¶28-29).
- The accused functionality is described as a system where the programmable key can provide a security code to the programming station for storage, and can wirelessly communicate with the programming station to receive authorization to control the security device upon a match of their respective security codes (Compl. ¶30-31).
- The complaint alleges Defendant began deploying the "Intellikey 3.0" system with customers, including AT&T, in 2016 (Compl. ¶19).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
’266 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a programming station comprising a memory; | Defendant's security system includes a programming station, referred to as a "Gateway" or "Hub," which has a memory. | ¶28 | col. 6:28-56 |
| a programmable key comprising a memory configured to store a security code; | Defendant's system includes at least one key, referred to as an "Intellikey," "user key," or "manager key," which has a memory for storing a security code. | ¶28 | col. 8:45-54 |
| a security device comprising an alarm and configured to be attached to an item of merchandise, the security device further configured to activate the alarm in response to the integrity of the security device being compromised | Defendant's system includes at least one security device, referred to as a "puck," which has an alarm, attaches to merchandise, and activates the alarm if tampered with. | ¶29 | col. 7:26-44 |
| wherein the programmable key is configured to provide the security code to the programming station to be stored in the memory of the programming station; | The programmable key of Defendant's system is configured to provide the security code to the programming station, where it can be stored in the station's memory. | ¶30 | col. 9:27-38 |
| wherein the programmable key is configured to wirelessly communicate with the programming station for authorizing the programmable key to control the security device if the security code of the programmable key matches the security code of the programming station. | The programmable key of Defendant's system is configured to wirelessly communicate with the programming station to authorize the key to control the security device upon a matching of the security code stored in the key with the code stored in the station. | ¶31 | col. 10:1-10 |
- Identified Points of Contention:
- Scope Questions: A central question may be the interpretation of the final "authorizing" limitation. Does the claim require real-time, active communication between the key and the programming station each time the key attempts to control a security device? Or does it cover a system where the key is "authorized" or "refreshed" at the programming station periodically and then operates independently until a timeout period expires? The complaint's allegations track the claim language, but the specific architecture of the accused system will be critical.
- Technical Questions: The complaint alleges that the accused key communicates with the station "to authorize" control (Compl. ¶31). The factual evidence supporting how, when, and for what purpose this communication occurs in the accused system will be a primary focus. The court will need to determine if the accused system's function is a technical match for the claimed authorization process, which involves a code comparison with the programming station itself.
V. Key Claim Terms for Construction
- The Term: "wirelessly communicate with the programming station for authorizing the programmable key to control the security device"
- Context and Importance: This term is the functional core of Claim 1, defining the interaction that distinguishes the invention from prior art systems where a key, once stolen, could be used indefinitely. The interpretation of "authorizing" and the timing of this communication (e.g., real-time vs. periodic refresh) will likely be determinative of infringement. Practitioners may focus on this term because it involves a multi-step process (communication, matching, authorizing) whose specific implementation is a likely point of dispute.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes a system where a key is programmed and then "refreshed" periodically, for example after an 8-hour shift or a 96-hour period expires (’266 Patent, col. 10:1-10, 10:40-44). This could support an interpretation where "authorizing" refers to this periodic validation at the station, not necessarily a real-time check during every use at the security device.
- Evidence for a Narrower Interpretation: The plain language of Claim 1 links the communication to the station with the act of "authorizing the programmable key to control the security device." This could be argued to require a direct or indirect check with the programming station's memory as a precondition for control, suggesting a more active and direct role for the station in the authorization step itself, beyond merely programming the key.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both contributory and inducement infringement. Inducement is based on allegations that Defendant sells the accused products with the intent that customers will use them in an infringing manner and provides instructions and training for such use (Compl. ¶54-56). Contributory infringement is based on allegations that the accused products are not staple articles of commerce, are not suitable for substantial non-infringing use, and are especially adapted for use in an infringing manner (Compl. ¶40-43).
- Willful Infringement: Willfulness is alleged based on both pre-suit and post-suit knowledge. The complaint alleges pre-suit notice through a meeting on May 31, 2018, where Plaintiff allegedly provided Defendant with a copy of the then-pending Claim 1, and through Defendant's alleged awareness of the published application and related patents asserted in other litigation (Compl. ¶20, ¶39, ¶53). Post-suit willfulness is based on the filing of the complaint itself (Compl. ¶35).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim scope and timing: Does the claim limitation requiring the key to "wirelessly communicate with the programming station for authorizing" control of the security device necessitate a real-time authorization check with the station at the moment of use, or can it be satisfied by a system where the key is periodically validated by the station and then operates autonomously for a set period?
- A key evidentiary question will be one of technical operation: What is the precise communication protocol and system architecture of the accused "Intellikey" and "Gateway" products? The case will turn on whether the evidence shows that the accused system performs the specific authorization function recited in the claims, particularly the matching of a security code in the key against a code in the programming station to enable control of a separate security device.
- The litigation will also likely involve a significant focus on willfulness, given the complaint's detailed allegations of pre-suit notice, including a specific meeting discussing the asserted patent family and a separate, ongoing lawsuit between the parties involving related technology.