DCT
1:14-cv-12428
Crane Security Tech Inc v. Rolling Optics Ab
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Crane Security Technologies, Inc. (New Hampshire) and Visual Physics, LLC (Georgia)
- Defendant: Rolling Optics AB (Sweden)
- Plaintiff’s Counsel: Wilmer Cutler Pickering Hale and Dorr LLP; Holland & Bonzagni, PC
- Case Identification: 1:14-cv-12428, D. Mass., 06/09/2014
- Venue Allegations: Venue is alleged based on Defendant transacting business and committing acts of infringement in the United States, including marketing, offering to sell, and selling micro-optic films throughout the country.
- Core Dispute: Plaintiffs allege that Defendant’s micro-optic films, used as anti-counterfeiting features on consumer goods, infringe five U.S. patents related to optical systems that create synthetic, three-dimensional moving images.
- Technical Context: The technology involves micro-optic systems that combine an array of focusing elements with an array of micro-images to create unique, dynamic visual effects for authenticating currency, documents, and other products.
- Key Procedural History: The complaint alleges that Plaintiffs provided Defendant with notice of infringement via correspondence beginning on April 26, 2010, and later identified specific asserted claims on December 21, 2012, which may form the basis for Plaintiffs' allegations of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2004-11-22 | Earliest Priority Date for '855, '462, '360, '030, '842 Patents |
| 2008-12-23 | U.S. Patent No. 7,468,842 Issues |
| 2010-04-26 | Plaintiffs allegedly provide initial notice of infringement to Defendant |
| 2011-08-30 | U.S. Patent No. 8,009,360 Issues |
| 2012-02-07 | U.S. Patent No. 8,111,462 Issues |
| 2012-02-21 | U.S. Patent No. 8,120,855 Issues |
| 2012-08-28 | U.S. Patent No. 8,254,030 Issues |
| 2012-12-21 | Plaintiffs allegedly identify specific infringed claims to Defendant |
| 2014-06-09 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,120,855 - “Micro-Optic Security and Image Presentation System for a Security Device”
The Invention Explained
- Problem Addressed: The patent family addresses the deficiencies of prior art anti-counterfeiting measures, such as holographic displays or simple lenticular lenses, which can be readily copied, are often too thick for use in documents, provide fuzzy images with a narrow field of view, and require difficult alignment during manufacturing (’842 Patent, col. 1:28-67).
- The Patented Solution: The invention is a micro-optic system that uses a periodic planar array of non-cylindrical focusing elements (e.g., micro-lenses) optically coupled with a corresponding periodic planar array of micro-images, or "icons" (’842 Patent, col. 2:13-24). The precise geometric relationship between the lens array and the icon array creates a synthetically magnified image that can exhibit unique visual effects, such as orthoparallactic motion (moving perpendicular to the direction of tilt), apparent depth, or floating above the surface (’842 Patent, col. 3:43-67; Fig. 1a).
- Technical Importance: This approach creates complex, multi-layered visual effects that are highly resistant to counterfeiting because they are not amenable to reproduction by commonly available manufacturing systems (’842 Patent, col. 4:33-38).
Key Claims at a Glance
- The complaint asserts independent claims 95 and 109, and dependent claim 96 (Compl. ¶16).
- Essential elements of independent claim 95 include:
- a micro image comprised of a periodic planar array of a plurality of image icons having an axis of symmetry within its plane; and
- a periodic planar array of a plurality of image icon focusing elements having a rotational symmetry and a periodicity substantially corresponding to the micro image array;
- the axis of symmetry of the focusing element array having a selected angle with respect to the corresponding axis of symmetry of the micro image planar array;
- the focusing elements having an effective diameter of less than 50 microns or being polygonal base multi-zonal focusing elements;
- wherein the plane of the focusing elements is disposed substantially parallel to the plane of the image icons at a distance sufficient for the focusing elements to form a synthetic image of the image icons.
U.S. Patent No. 8,111,462 - “Micro-Optic Security and Image Presentation System”
The Invention Explained
- Problem Addressed: This patent addresses the same technical problems as described for the ’855 Patent.
- The Patented Solution: The technology disclosed is a micro-optic system that generates synthetic images with distinctive visual and motion effects through the interaction of a micro-lens array and a micro-icon array (’462 Patent, Abstract). This patent focuses on systems that produce orthoparallactic motion, where the synthetic image moves in a direction perpendicular to the axis of tilt, a counter-intuitive effect that is difficult to replicate (’462 Patent, col. 1:44-53).
- Technical Importance: The creation of orthoparallactic motion provides an immediate and distinct authentication feature, as this type of movement is not characteristic of conventional printing or holography and is difficult for counterfeiters to simulate (’462 Patent, col. 16:7-14).
Key Claims at a Glance
- The complaint asserts independent claims 158 and 161 (Compl. ¶16).
- Essential elements of independent claim 158 include:
- an array of image icons;
- an array of image icon focusing elements disposed a substantially uniform distance from the array of image icons and forming at least one synthetically magnified image;
- the relation of the image icons to the focusing elements provides a motion effect for the synthetically magnified image, the motion effect being an orthoparallactic motion effect.
U.S. Patent No. 8,009,360 - “Micro-Optic Security and Image Presentation System Presenting a Synthetically Magnified Image That Appears To Lie Above a Given Plane”
- Technology Synopsis: This patent describes a micro-optic system specifically configured to produce a "Unison Float" or "SuperFloat" effect, where the synthetic image appears to rest on a spatial plane that is a distance above the surface of the material (’360 Patent, col. 3:60-64). This is achieved by setting the ratio of the icon array's repeat period to the lens array's repeat period to be greater than 1.0 (’360 Patent, col. 16:5-8).
- Asserted Claims: The complaint asserts claims 73 and 76 (Compl. ¶16).
- Accused Features: The accused features are "micro-optic films with three-dimensional optical effects" (Compl. ¶31).
U.S. Patent No. 8,254,030 - “Micro-Optic Security and Image Presentation System Presenting a Synthetically Magnified Image That Appears To Lie Below a Given Plane”
- Technology Synopsis: This patent describes a micro-optic system configured to produce a "Unison Deep" or "SuperDeep" effect, where the synthetic image appears to rest on a spatial plane visually deeper than the thickness of the material (’030 Patent, col. 3:55-59). This is achieved by setting the ratio of the icon array's repeat period to the lens array's repeat period to be less than 1.0 (’030 Patent, col. 16:1-5).
- Asserted Claims: The complaint asserts claims 175 and 181 (Compl. ¶16).
- Accused Features: The accused features are "micro-optic films with three-dimensional optical effects" (Compl. ¶35).
U.S. Patent No. 7,468,842 - “Image Presentation and Micro-Optic Security System”
- Technology Synopsis: This patent provides a foundational disclosure for the micro-optic security system, describing the core components of cooperating focusing element arrays and microstructured icon element arrays (’842 Patent, Abstract). It discloses the creation of various visual effects, including orthoparallactic motion, based on the geometric relationship between the two arrays, such as their relative scale and rotational alignment (’842 Patent, col. 3:43-56).
- Asserted Claims: The complaint asserts claim 76 (Compl. ¶16).
- Accused Features: The accused features are "micro-optic films with three-dimensional optical effects" (Compl. ¶39).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are Defendant's "micro-optic films with three-dimensional optical effects" (Compl. ¶14, ¶23).
Functionality and Market Context
- The complaint alleges these films are used as anti-counterfeiting features on security labels and stickers for consumer goods, including UGG Australia footwear, Mondeléz International chocolates, Bacardi Bombay Sapphire gin, and Hennessy cognac (Compl. ¶14, ¶19). The relevant functionality is the projection of "synthetic images that 'move' and that include image icons formed as voids or recesses" to create three-dimensional optical effects (Compl. ¶14). The complaint alleges these products are marketed, offered for sale, and sold in the United States (Compl. ¶6). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint does not contain a claim chart or detailed element-by-element infringement allegations. The following tables summarize the core infringement theory based on the general allegations in the complaint.
’855 Patent Infringement Allegations
| Claim Element (from Independent Claim 95) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a micro image comprised of a periodic, rotationally symmetric planar array of a plurality of image icons having an axis of symmetry within its plane | The accused films allegedly contain an array of micro-images, or icons, formed as voids or recesses. | ¶14, ¶23 | col. 2:17-21 |
| a periodic planar array of a plurality of image icon focusing elements having a rotational symmetry and a periodicity substantially corresponding to the micro image array | The accused films allegedly contain an array of focusing elements that cooperate with the icon array. | ¶14, ¶23 | col. 2:15-17 |
| the plane of the image icon focusing elements is disposed substantially parallel to the plane of the image icons at a distance sufficient for the image focusing elements to form a synthetic image of the image icons | The accused films are allegedly configured to project synthetic images that "move" by optically coupling the focusing elements and image icons. | ¶1, ¶14 | col. 2:21-24 |
’462 Patent Infringement Allegations
| Claim Element (from Independent Claim 158) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an array of image icons | The accused films allegedly contain an array of micro-images ("icons") formed as voids or recesses. | ¶14, ¶27 | col. 1:40-44 |
| an array of image icon focusing elements disposed a substantially uniform distance from the array of image icons and forming at least one synthetically magnified image | The accused films allegedly contain an array of focusing elements that cooperate with the icon array to project synthetic images. | ¶1, ¶14, ¶27 | col. 15:47-51 |
| the relation of at least a portion of the image icons to at least a portion of the focusing elements provides a motion effect for the at least one synthetically magnified image, the motion effect being an orthoparallactic motion effect | The accused films allegedly project synthetic images that "move," which Plaintiffs allege constitutes the claimed motion effect. | ¶1, ¶14, ¶27 | col. 3:48-56 |
Identified Points of Contention
- Scope Questions: The complaint's allegations are general. A central point of contention may be whether the term "image icons formed as voids or recesses," as used in the complaint's description of the accused technology (Compl. ¶14), falls within the scope of the patents' claims. The precise structure of the icons in the accused products will be a key factual question.
- Technical Questions: The complaint does not specify how Defendant's films achieve their "three-dimensional optical effects" (Compl. ¶14). A technical question for the court will be whether the mechanism in the accused products operates in substantially the same way as the claimed invention, which requires the specific optical coupling of a focusing element array and an icon array to create a synthetic image.
V. Key Claim Terms for Construction
Term: "synthetic image"
- Context and Importance: This term is central to the dispute, as the patents are directed to systems that form a "synthetic image" from the interaction of micro-lenses and micro-icons. The definition of this term will be critical to determining whether the visual effects produced by the accused films are generated by the claimed structure and method. Practitioners may focus on this term because the patents attribute specific, unconventional optical properties (e.g., orthoparallactic motion, apparent depth) to the "synthetic image."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patents describe the term broadly as the image formed "through the united performance of a multiplicity of individual lens/icon image systems" (’842 Patent, col. 2:35-39). This language could support a construction covering any magnified image resulting from such a combination.
- Evidence for a Narrower Interpretation: The detailed description extensively links the "synthetic image" to specific, unusual visual effects like "Unison Motion," "Unison Deep," and "Unison Float," which are tied to precise geometric relationships between the lens and icon arrays (’842 Patent, col. 3:43-67). This may support a narrower construction limited to images possessing these disclosed properties.
Term: "orthoparallactic motion"
- Context and Importance: This term is recited in the independent claims of the ’462 Patent and is a key feature of the patented technology. Infringement of these claims will depend on whether the "move" effect alleged in the complaint (Compl. ¶14) constitutes "orthoparallactic motion" as understood in the patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The complaint does not provide sufficient detail for analysis of arguments for a broader interpretation.
- Evidence for a Narrower Interpretation: The patents define the term explicitly as movement "perpendicular to the normally expected parallactic motion direction" (’462 Patent, col. 18:8-10) and an effect where "when the material is tilted the images move in a direction of tilt that appears to be perpendicular to the direction anticipated by normal parallax" (’462 Patent, col. 3:48-53). This provides a precise technical definition that may limit the claim scope to this specific counter-intuitive movement.
VI. Other Allegations
Indirect Infringement
- The complaint alleges inducement of infringement by "making, using, selling and offering for sale micro-optic films" (Compl. ¶23, ¶27, ¶31, ¶35, ¶39). The factual basis alleged is the sale of these films to U.S.-based companies with the knowledge and intent that the films would be imported into and used in the United States on consumer goods (Compl. ¶19-20).
Willful Infringement
- The complaint alleges that Defendant's infringement "has been and continues to be willful and deliberate" (Compl. ¶24, ¶28, ¶32, ¶36, ¶40). This allegation is based on alleged pre-suit notice, including a letter from April 26, 2010, and subsequent correspondence that specifically identified the patents-in-suit and asserted claims on December 21, 2012 (Compl. ¶15-16).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of claim scope and construction: how will the court define key technical terms such as "synthetic image" and "orthoparallactic motion"? The outcome will depend on whether these terms are given a broad meaning covering a general class of optical effects or are limited to the specific, counter-intuitive visual phenomena detailed in the patents' specifications.
- A key evidentiary question will be one of technical equivalence: does discovery on the accused micro-optic films reveal a product that operates on the same principles as the patented technology? The case will likely turn on a detailed comparison of the accused product's structure—specifically its use of icon arrays and focusing elements—against the limitations recited in the asserted claims.
- Given the complaint’s allegations of extensive pre-suit notice, a significant question will be one of willfulness: if infringement is found, can the Defendant establish that its positions on non-infringement or invalidity were objectively reasonable at the time it was notified of the specific infringement allegations?