Kar Enterprises LLC v. Ford Motor Co

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Kar Enterprisess, LLC (Massachusetts)
  • Defendant: Ford Motor Co (Delaware)
  • Plaintiff’s Counsel: LAMBERT & ASSOCIATES
• Case Identification: 4:11-cv-11200, D. Mass., 10/25/2012
• Venue Allegations: Plaintiff alleges venue is proper because Defendant conducts continuous and systematic business in the district and has purposefully availed itself of the privilege of conducting business there.
• Core Dispute: Plaintiff alleges that Defendant’s MyKey® technology, as incorporated into its vehicles, infringes three patents related to systems for identifying a vehicle operator and limiting the vehicle's maximum speed based on that operator's identity.
• Technical Context: The technology addresses safety concerns, particularly for inexperienced drivers, by allowing a vehicle's owner to use a specific, identifiable ignition key to enforce a pre-set maximum speed limit.
• Key Procedural History: The complaint is a First Amended Complaint. The three asserted patents are from the same family; U.S. Patent No. 7,959,177 and U.S. Patent No. 8,256,560 are continuations of the application that matured into U.S. Patent No. 7,757,803. The '177 and '560 patents are subject to terminal disclaimers, which may limit their effective patent term to that of the '803 patent.

Case Timeline

Date	Event
2006-07-14	Priority Date for '177, '803, '560 Patents
2010-07-20	U.S. Patent No. 7,757,803 Issued
2011-06-14	U.S. Patent No. 7,959,177 Issued
2012-09-04	U.S. Patent No. 8,256,560 Issued
2012-10-25	First Amended Complaint Filed

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

U.S. Patent No. 7,959,177 - "Motor Vehicle Operator Identification and Maximum Speed Limiter"

• Patent Identification: U.S. Patent No. 7,959,177, "Motor Vehicle Operator Identification and Maximum Speed Limiter," issued June 14, 2011.

The Invention Explained

• Problem Addressed: The patent identifies the problem of inexperienced drivers having difficulty safely operating vehicles at high speeds, noting that vehicles are not typically designed to evaluate an operator's competence, which can lead to accidents. (’177 Patent, col. 4:17-29).
• The Patented Solution: The invention proposes an automotive vehicle system where an ignition key contains a computer chip programmed with information. When the key is used, it communicates this information to the vehicle's on-board computer, which in turn limits the vehicle to a pre-determined maximum speed. The system is also "reprogrammable," allowing the maximum speed associated with the key to be changed. (’177 Patent, Abstract; col. 4:32-54).
• Technical Importance: The technology provides a mechanism for vehicle owners to administratively control vehicle performance based on the identity of the driver, with the stated goal of reducing accidents involving less experienced operators. (’177 Patent, col. 4:21-29).

Key Claims at a Glance

• The complaint alleges infringement of "at least one claim" but does not specify any particular claims (Compl. ¶10). Independent claim 1 is representative of the invention.
• Independent Claim 1 includes these essential elements:
  • An automotive vehicle comprising an on-board computer configured to control the vehicle to a maximum speed.
  • A "first ignition key" that is usable to access and operate the vehicle and is adapted to communicate information to the on-board computer.
  • The on-board computer is arranged to receive the information from the key and limit the vehicle to a maximum speed based on that information.
  • The on-board computer is "reprogrammable" to change the speed limit from a first maximum speed to a second maximum speed based on the information from that same key.

U.S. Patent No. 7,757,803 - "Motor Vehicle Operator Identification and Maximum Speed Limiter"

• Patent Identification: U.S. Patent No. 7,757,803, "Motor Vehicle Operator Identification and Maximum Speed Limiter," issued July 20, 2010.

The Invention Explained

• Problem Addressed: The patent background describes the risk posed by inexperienced drivers operating vehicles at high speeds and notes that vehicles, as marketed, allow any operator to drive at any speed regardless of their experience level. (’803 Patent, col. 1:11-24).
• The Patented Solution: The invention is a system for controlling vehicle speed comprising a "first device" (such as a chipped ignition key) that communicates "information representative of a vehicle speed" to an on-board computer. The computer receives this information and controls a "vehicle operating parameter" (e.g., fuel flow, spark) to limit the vehicle to a maximum speed. A key feature is that the on-board computer is reprogrammable to change the speed limit. (’803 Patent, Abstract; col. 3:30-42).
• Technical Importance: This system provides for flexible, operator-specific vehicle speed controls intended to improve safety for new or otherwise restricted drivers. (’803 Patent, col. 1:15-19).

Key Claims at a Glance

• The complaint alleges infringement of "at least one claim" without further specification (Compl. ¶17). Independent claim 3 is a representative system claim.
• Independent Claim 3 includes these essential elements:
  • A "first device" arranged to communicate "information representative of a vehicle speed."
  • An automotive vehicle with an "on-board computer" that controls at least one vehicle operating parameter.
  • The on-board computer is arranged to receive the information from the first device and, based on it, control the operating parameter to limit the vehicle to a "first maximum speed."
  • The on-board computer is "reprogrammable" to change the operating parameter to limit the vehicle to a "second maximum speed."

U.S. Patent No. 8,256,560 - "Motor Vehicle Operator Identification and Maximum Speed Limiter"

• Patent Identification: U.S. Patent No. 8,256,560, "Motor Vehicle Operator Identification and Maximum Speed Limiter," issued September 4, 2012.

Technology Synopsis

This patent describes a speed control system for an automotive vehicle featuring an on-board computer and an ignition key. The key communicates information to the computer, which then limits the vehicle to a first speed. The system is explicitly "reprogrammable" to allow the vehicle to operate at a speed greater than the first speed, based on the information from that same ignition key. (’560 Patent, Abstract; col. 4:35-52). The invention aims to prevent inexperienced drivers from operating vehicles at excessive speeds. (’560 Patent, col. 4:15-21).

Asserted Claims

The complaint asserts infringement of "at least one claim" of the patent (Compl. ¶24). Independent claims 1 and 5 are available.

Accused Features

The complaint accuses Ford's "MyKey® technology in its cars and/or trucks" of infringing the patent (Compl. ¶23).

III. The Accused Instrumentality

Product Identification

The complaint identifies "certain MyKey® technology in its cars and/or trucks" as the accused instrumentality (Compl. ¶¶9, 16, 23).

Functionality and Market Context

The complaint does not provide any specific details about the technical operation or features of Ford's MyKey® technology. The allegations are limited to naming the technology and asserting that it infringes the patents-in-suit. The complaint does not contain allegations regarding the product's commercial importance or market position beyond its inclusion in Ford's cars and trucks.

IV. Analysis of Infringement Allegations

The complaint does not provide a claim chart or a detailed narrative mapping specific features of the accused MyKey® technology to the elements of any asserted patent claims. The infringement allegations are pleaded generally. No probative visual evidence provided in complaint.

The general theory of infringement appears to be that the combination of a Ford vehicle equipped with the MyKey® system and a corresponding MyKey® ignition key constitutes the infringing "vehicle" or "system" claimed in the patents. The MyKey® key allegedly functions as the claimed "ignition key" or "first device" that communicates information to the vehicle's "on-board computer," which in turn limits the vehicle's maximum speed.

Identified Points of Contention:

• Evidentiary Question: The complaint's lack of factual allegations raises a primary evidentiary question: what proof will Plaintiff offer to demonstrate that the accused MyKey® technology actually performs each function recited in the claims? For instance, what evidence will show that the system operates based on information communicated from the key in the specific manner claimed?
• Technical Question: A key technical question is whether the accused MyKey® system is "reprogrammable" in the manner required by the claims. For example, does the system allow a user to change the maximum speed associated with a specific key, as suggested by the patent specification ('803 Patent, col. 3:44-47), or does it operate with a more fixed set of permissions (e.g., an unchangeable "admin" key and "restricted" key)?

V. Key Claim Terms for Construction

The Term: "reprogrammable"

(appears in asserted patents, e.g., '177 Patent, claim 1; '803 Patent, claim 3)

Context and Importance

The definition of this term will be critical in determining infringement. The dispute will likely center on what actions qualify as "reprogramming" the on-board computer. Practitioners may focus on this term because its construction could distinguish between a system that allows for dynamic, ongoing changes to a key's permissions versus a system with more static, pre-set roles.

Intrinsic Evidence for a Broader Interpretation

The specification states that the "ignition key chip may be reprogrammed in order that the maximum allowable speed for any specific operator may be increased or decreased from time to time." (’803 Patent, col. 3:44-47). This language may support an interpretation requiring flexible, ongoing adjustability.

Intrinsic Evidence for a Narrower Interpretation

The claims state the on-board computer is reprogrammable to change how it limits the vehicle's speed. (’177 Patent, col. 5:48-62). This could be argued to cover a one-time setup or a change in the computer's settings, not necessarily a dynamic change to the permissions associated with an individual key after its initial configuration.

The Term: "information representative of a vehicle speed"

('803 Patent, claim 3)

Context and Importance

The construction of this term is central to what the "first device" (e.g., the key) must communicate to the on-board computer. The key question is whether the information must be an actual speed value (e.g., "75 MPH") or if it can be a more general identifier (e.g., "restricted user") from which the computer then determines a speed limit.

Intrinsic Evidence for a Broader Interpretation

The specification describes a computer chip that "identifies the operator and further indicates a maximum allowable operating speed." (’803 Patent, col. 3:33-35). This language could suggest that the information simply needs to lead to a speed determination, not be the speed value itself.

Intrinsic Evidence for a Narrower Interpretation

The claim language distinguishes between "identification information" (recited in a dependent claim 5) and "information representative of a vehicle speed" (recited in independent claim 3). This distinction suggests the information in claim 3 is meant to be more specific than just an operator ID.

VI. Other Allegations

• Indirect Infringement: The complaint alleges that Ford induced and contributed to infringement by "knowingly providing its customers with MyKey® technology" that is specially adapted for infringing use and by providing assistance to customers in using the technology in an infringing manner (Compl. ¶¶10, 17, 24). These allegations are not supported by specific facts, such as references to user manuals or marketing materials.
• Willful Infringement: The complaint makes a request for a declaration of willful infringement and enhanced damages in its prayer for relief (Compl. p. 6, ¶(f)). However, the factual allegations in the body of the complaint do not mention pre-suit knowledge or any other basis for willfulness, suggesting the claim may depend on establishing knowledge from the date the lawsuit was filed.

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

1. Evidentiary Sufficiency: A threshold issue for the court will be one of evidentiary sufficiency. Given the absence of specific factual allegations in the complaint, can the Plaintiff produce sufficient evidence to show that Ford’s MyKey® technology meets every limitation of the asserted claims as it actually operates in Ford's vehicles?

2. Claim Construction: The case will likely turn on a question of definitional scope. Can the claim term "reprogrammable" be construed to cover the specific functionality of the accused MyKey® system? The outcome of this construction will likely determine whether the fixed "admin" and "restricted" key model (if that is how MyKey® works) infringes claims that describe a more dynamic system.

3. Indirect Infringement: A key question for the indirect infringement claims will be one of specific intent. Can the Plaintiff move beyond boilerplate allegations and demonstrate with concrete evidence, such as user manuals or advertising, that Ford specifically intended for its customers to use the MyKey® system in a way that directly infringes the patents-in-suit?