DCT

3:23-cv-00070

Ez Key Programming LLC v. Ikeyless LLC

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 3:23-cv-00070, W.D. Ky., 02/10/2023
  • Venue Allegations: Venue is alleged to be proper as Defendants reside in, transact business in, and have caused tortious injury within the district.
  • Core Dispute: Plaintiff alleges that Defendant’s "Universal EZ Installer" product for programming vehicle keys infringes patents related to a remote, smartphone-assisted vehicle key programming system.
  • Technical Context: The technology involves using an on-board diagnostic (OBD) dongle, a smartphone application, and a remote server to allow users to program new electronic keys for vehicles without requiring a specialized locksmith on-site.
  • Key Procedural History: The complaint alleges that the parties entered into an agreement on January 4, 2021, under which Plaintiff disclosed its patented technology to Defendants for evaluation. Plaintiff alleges that after this disclosure, Defendants declined to license the technology but proceeded to develop and sell a "blatantly copied" product. The complaint also details a series of pre-suit communications regarding the alleged infringement.

Case Timeline

Date Event
2017-11-08 Priority Date for ’628 and ’661 Patents
2020-05-12 U.S. Patent 10,650,628 Issued
2021-01-04 Parties allegedly execute technology disclosure agreement
2022-01-25 U.S. Patent 11,232,661 Issued
2022-01-25 Plaintiff notifies Defendants of potential infringement
2022-02-09 Defendants respond, claiming their product is different
2022-04-21 Plaintiff notifies Defendants of infringement by "Universal EZ Installer"
2022-04-25 Defendants request claim chart from Plaintiff
2022-05-04 Plaintiff provides information identifying infringed claims
2022-05-23 Defendants respond requesting further claim mapping
2023-02-10 Complaint Filed

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

U.S. Patent No. 10,650,628 - "Remote Programming System and Method for Replacement Vehicle Keys," Issued May 12, 2020

The Invention Explained

  • Problem Addressed: The patent's background section describes the process of programming a replacement vehicle key as cumbersome, costly, and time-consuming, as it requires an individual with specialized training and expensive equipment (e.g., a locksmith) to be physically present at the vehicle's location (’628 Patent, col. 1:38-51). It also notes the difficulty for entities like auction houses to verify that programming was successfully completed (’628 Patent, col. 1:56-col. 2:15).
  • The Patented Solution: The invention is a distributed system that allows for remote programming of a vehicle’s engine control unit (ECU) to accept a new key. As illustrated in the patent’s Figure 1, the system architecture involves three main components: an onboard diagnostic (OBD) interface device (108) plugged into the vehicle (104), a handheld device such as a smartphone (110) that communicates with the OBD device, and a remote "back end programming machine" (112) that communicates with the handheld device over a network (114) (’628 Patent, Abstract; col. 3:45-54). The remote machine provides the necessary programming information and action sequences, which are relayed through the user's handheld device to the vehicle's ECU, removing the need for an expert to be on-site (’628 Patent, col. 5:35-col. 6:2).
  • Technical Importance: The technology separates the physical task of connecting a device to the vehicle from the expert knowledge required for programming, allowing the complex steps to be managed from a central, remote location and executed by a non-specialist user at the vehicle (’628 Patent, col. 10:3-21).

Key Claims at a Glance

  • The complaint asserts independent claim 1 and dependent claims 2, 4-6, 9, 11, and 12 (Compl. ¶25).
  • Independent Claim 1 (Method):
    • Coupling an onboard diagnostic (OBD) interface device with a vehicle's engine control unit (ECU).
    • Communicatively linking the interface device with a mobile handheld device.
    • Communicatively linking the handheld device with a remote back-end programming machine via a network.
    • Communicating identifying information about the vehicle (including a VIN) to the remote machine.
    • Determining, at the remote machine, the actions and programming information needed.
    • Sending this information from the remote machine to the handheld device.
    • Programming the ECU to accept the replacement key using that information.

U.S. Patent No. 11,232,661 - "Remote Programming System and Method for Replacement Vehicle Keys," Issued January 25, 2022

The Invention Explained

  • Problem Addressed: As a continuation of the application leading to the ’628 Patent, the ’661 Patent addresses the same technical problem of inefficient and costly on-site vehicle key programming (’661 Patent, col. 1:40-53).
  • The Patented Solution: The patented solution is functionally identical to that described in the ’628 Patent, utilizing the same three-part architecture of an OBD interface, a handheld device, and a remote programming machine to facilitate key programming (’661 Patent, Abstract; col. 5:37-col. 6:2). The system is depicted in Figure 1 of the patent, which is identical to Figure 1 of the parent ’628 Patent.
  • Technical Importance: The technical contribution is the same as the ’628 Patent: enabling remote management of vehicle key programming by a non-expert at the vehicle's location (’661 Patent, col. 10:5-21).

Key Claims at a Glance

  • The complaint asserts independent claims 1 and 10, and multiple dependent claims (Compl. ¶35).
  • Independent Claim 1 (Method):
    • Communicatively linking an OBD interface device with a vehicle's ECU and with a mobile, handheld device.
    • Communicatively linking the handheld device with a remote back-end programming machine.
    • Communicating identifying information to the remote machine.
    • Determining, at the remote machine, actions and programming information.
    • Sending this information from the remote machine to the handheld device.
    • A concluding "wherein" clause stating the ECU is programmed to accept the key using the received information.

III. The Accused Instrumentality

Product Identification

  • The accused instrumentality is the "Universal EZ Installer" product and associated system (Compl. ¶16, 25).

Functionality and Market Context

  • The complaint alleges the Universal EZ Installer is a product and system for programming vehicle keys (Compl. ¶14). The system is described as embodying the patented inventions, which suggests it involves an OBD interface device that links to a mobile phone to program a replacement key for a vehicle (Compl. ¶23, 25). The complaint alleges Defendants market the product on their website and that it is designed to operate in an infringing manner (Compl. ¶26). One of the patent’s main system diagrams, Figure 1, illustrates the three-part architecture of an OBD interface, a handheld device, and a remote server that the complaint alleges the Accused Instrumentality copies (’628 Patent, Fig. 1).

IV. Analysis of Infringement Allegations

The complaint references exemplary claim charts in Exhibits 6 and 7, which were not available for this analysis (Compl. ¶25, 35). Therefore, the infringement theory is summarized below in prose.

  • Narrative Infringement Theory: The complaint alleges that the Defendants' "Universal EZ Installer" system directly infringes the asserted claims by performing the patented method and embodying the patented system (Compl. ¶25, 35). The core of the allegation is that the Universal EZ Installer operates using the same three-component architecture claimed in the patents: an OBD interface device, a link to a user's mobile device (e.g., a smartphone), and communication with a remote back-end system to facilitate programming a new key into a vehicle's ECU (Compl. ¶23). By making, using, selling, or offering this system for sale, Defendants are alleged to practice every step of the asserted method claims and provide every component of the asserted system claims (Compl. ¶25, 35).

  • Identified Points of Contention:

    • Architectural Questions: A central question will be whether the Universal EZ Installer’s architecture precisely matches the claimed three-part system. For instance, does the accused system use a "mobile, hand held device" as a communicative bridge between the OBD interface and a "back-end programming machine," or does it employ a different data pathway?
    • Functional Questions: The analysis may focus on whether the components of the accused system perform the specific functions recited in the claims. For example, does a remote server in the accused system "determine" the necessary "actions and programming information" in the manner claimed, or does the logic reside primarily in the mobile application or the OBD device itself?

V. Key Claim Terms for Construction

  • The Term: "back-end programming machine that is remotely located from the vehicle" (’628 Patent, claim 1; ’661 Patent, claim 1)

    • Context and Importance: This term is foundational to the claimed distributed architecture. The definition will determine whether any remote server used by the accused system falls within the scope of the claims. Practitioners may focus on this term because the infringement analysis will depend on whether the accused system’s server performs the specific role of a "programming machine" as contemplated by the patent.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification describes the machine as potentially being "software running on cloud-based computing devices" and interacted with via a "web-based dashboard," suggesting the term could cover a wide range of modern cloud service architectures (’628 Patent, col. 6:60-64).
      • Evidence for a Narrower Interpretation: The specification describes the machine as performing specific functions, such as storing and determining "action sequences" based on vehicle make/model and storing a history of programming events, which could be used to argue for a more limited definition requiring these specific capabilities (’628 Patent, col. 5:67-col. 6:2; col. 7:1-9).

  • The Term: "communicatively linking the interface device with a mobile, hand held device" (’628 Patent, claim 1)

    • Context and Importance: This limitation establishes the handheld device as an essential intermediary. The dispute may turn on whether the accused system requires such a link or allows for a direct connection between the OBD device and a remote network, bypassing a "hand held device."
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The claim language is broad. The specification provides examples such as Bluetooth or a physical wire but does not appear to limit the "linking" to a specific protocol (’628 Patent, col. 5:9-19).
      • Evidence for a Narrower Interpretation: A defendant could argue this limitation requires the handheld device to act as more than a simple data conduit, pointing to language describing the handheld device as running a "software application" that presents instructions to an operator and guides them through the process, implying an active role beyond mere linking (’628 Patent, col. 5:1-9; col. 5:20-24).

VI. Other Allegations

  • Indirect Infringement: The complaint alleges both induced and contributory infringement. The inducement allegation is based on Defendants allegedly providing instructions, software, and technical support that instruct users on how to use the Universal EZ Installer in an infringing manner (Compl. ¶26-27, 36-37). The contributory infringement allegation claims the product is especially made for practicing the invention and is not a staple article of commerce with substantial non-infringing uses (Compl. ¶28, 38).
  • Willful Infringement: The complaint alleges that Defendants' infringement has been willful. This allegation is supported by claims that Defendants had pre-suit knowledge of the patents and technology, arising from a January 4, 2021 agreement to evaluate Plaintiff's technology, which was covered by the then-issued ’628 Patent (Compl. ¶2, 11, 27). The complaint also details post-notice conduct, including a series of communications beginning in January 2022 where Plaintiff identified the patents and the alleged infringement, which allegedly continued unabated (Compl. ¶14-21).

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

  • A core issue will be one of architectural correspondence: does the accused "Universal EZ Installer" system operate on the specific three-part architecture (OBD device, handheld mobile device, and a remote "back-end programming machine") that is recited in the independent claims, or is there a material difference in its components or data flow?
  • The case may also turn on a question of claim construction: how broadly will the court define "back-end programming machine"? A narrow construction requiring the remote server to perform a specific set of determinative and historical logging functions could provide a non-infringement defense, while a broader construction covering any remote server that provides programming data could favor the plaintiff.
  • A key factual question for willfulness and potential damages enhancement will be the nature of the parties' prior relationship. The allegations that Defendants evaluated Plaintiff's patented technology under an agreement before launching a purportedly similar product will be a central focus of discovery and trial (Compl. ¶2, 11-13).