DCT
1:17-cv-01733
Zito LLC v. CRJ Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Zito LLC (Delaware)
- Defendant: CRJ, Inc. (Maryland); Ripken Baseball Camps & Clinics LLC (Maryland)
- Plaintiff’s Counsel: Gohn Hankey Stichel & Berlage, LLP; Corcoran IP Law, PLLC
- Case Identification: 1:17-cv-01733, D. Md., 06/23/2017
- Venue Allegations: Venue is alleged to be proper in the District of Maryland because Defendants are Maryland entities that have conducted business, derived revenue, and committed alleged acts of infringement in the district.
- Core Dispute: Plaintiff alleges that Defendants’ use of an automated baseball practice machine in their training camps infringes two patents related to systems that dispense items or modify user experiences based on user-specific information.
- Technical Context: The patents relate to automated dispensing and interactive amusement systems that personalize an output—such as a physical item or a game's difficulty—based on stored data about a specific user.
- Key Procedural History: The complaint alleges that Defendants had knowledge of the asserted patents since at least March 10, 2014, when Plaintiff's managing member, Arthur J. Zito, Jr., provided Defendants with an employment agreement that listed the '921 patent and the then-pending application for the '369 patent. This alleged pre-suit knowledge forms the basis of the willfulness claim.
Case Timeline
| Date | Event |
|---|---|
| 2004-11-17 | Priority Date for '921 and '369 Patents |
| 2008-07-15 | U.S. Patent No. 7,398,921 Issued |
| 2014-03-10 | Alleged Date of Defendants' Knowledge of Patents |
| 2016-09-13 | U.S. Patent No. 9,443,369 Issued |
| 2017-06-23 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,398,921 - "User-Specific Dispensing System," Issued July 15, 2008
The Invention Explained
- Problem Addressed: The patent’s background section identifies a need in the retail market for an automated system to provide targeted, on-site samples to specific consumers, moving beyond traditional coupons or promotions that require a separate redemption step (ʼ921 Patent, col. 1:12-34).
- The Patented Solution: The invention is a system that uses a “user-identifier” (e.g., a card with a barcode or RFID) containing user-specific information. A reader sends this information to a processor, which then instructs a dispensing mechanism to release a physical item that is specifically appropriate for that user, such as a sample tailored to their preferences or demographics (ʼ921 Patent, col. 2:7-16; FIG. 1).
- Technical Importance: The technology aimed to directly link marketing data with the physical fulfillment of a promotional item at a specific location, thereby creating a more efficient and targeted sampling method (ʼ921 Patent, col. 1:50-55).
Key Claims at a Glance
- The complaint asserts independent claim 1.
- Essential elements of Claim 1 include:
- A readable user-identifier storing user-specific information (but not a purchase history).
- A reader for the user-identifier.
- Coded instructions to interpret the user-specific information and automatically select and dispense an item without further user intervention.
- A storage means for a plurality of items.
- A dispensing means to release the selected item.
- A processor to execute the instructions.
- The claim further specifies that the dispensation is not actuated by an item purchase and the dispensed item is not a redeemable voucher.
- The complaint reserves the right to assert additional claims, including numerous dependent claims (Compl. ¶17, ¶20).
U.S. Patent No. 9,443,369 - "User-Specific Dispensing System," Issued September 13, 2016
The Invention Explained
- Problem Addressed: As a continuation-in-part of the '921 patent's application, the '369 patent addresses a similar need but expands the concept into the realm of interactive amusement and gaming (ʼ369 Patent, col. 1:11-17).
- The Patented Solution: The invention describes an interactive amusement system where a user-identifier is used to "configure" a feature of a "playfield" specifically for that user. For example, the system could adjust the difficulty of a game or training exercise based on pre-existing information about the user's skill level, age, or other characteristics (ʼ369 Patent, col. 2:38-46). The specification explicitly contemplates an automatic baseball machine where the "level of difficulty of play is adjusted based on the user's skill level" (ʼ369 Patent, col. 6:66-7:3).
- Technical Importance: This approach applies the concept of data-driven personalization to interactive entertainment, allowing for dynamic experiences tailored to individual users rather than a one-size-fits-all model (ʼ369 Patent, col. 8:10-19).
Key Claims at a Glance
- The complaint asserts independent claim 1.
- Essential elements of Claim 1 include:
- A reader for a user-identifier associated with pre-existing user-specific information.
- A feature of a playfield.
- A processor that executes instructions to interpret the user-identifier and "configure the feature" in response to the user-specific information.
- This configuration makes the "difficulty of play... appropriate for the user."
- The complaint reserves the right to modify its infringement theory and assert additional claims (Compl. ¶24, ¶27).
III. The Accused Instrumentality
Product Identification
The accused instrumentality is the Fungoman® FM-250 Automated Baseball Practice Machine (Compl. ¶11).
Functionality and Market Context
The complaint alleges that Defendants use the Accused Product in their business of conducting baseball camps, clinics, and skills training seminars throughout the United States (Compl. ¶11, ¶13). It further alleges that Defendants derive "millions of dollars in annual revenues" from these activities, which feature the use of the Accused Product (Compl. ¶14). The complaint does not provide specific details on the technical operation of the Fungoman® FM-250 machine itself, focusing instead on the context of its use.
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
The complaint alleges infringement in a conclusory manner consistent with notice pleading standards and does not map specific product features to claim limitations. The following charts summarize the infringement theory as implied by the complaint's allegations regarding the use of the Accused Product.
’921 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a readable user-identifier associated with a targeted user that stores information that is specific to said targeted user | The complaint does not identify a specific "user-identifier," but the alleged infringement context is a training camp where information about individual players is known and used. | ¶11, ¶17 | col. 3:25-48 |
| a reader configured for reading said user-identifier | The complaint does not specify a component that performs this function. The infringement theory may depend on a broad interpretation of this term. | ¶17 | col. 3:56-61 |
| coded instructions to interpret said user-specific information... and automatically actuate dispensation | The complaint does not specify the software or control system, but alleges the use of the automated machine infringes. | ¶17 | col. 4:1-12 |
| at least one dispensing means... for automatically dispensing said selected item from said storage means | The mechanism within the Fungoman® machine that launches or pitches baseballs. | ¶11, ¶17 | col. 4:25-27 |
| a processor coupled to said dispensing means and to said reader | The complaint does not identify a specific processor. | ¶17 | col. 3:61-65 |
’369 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a reader configured for reading a user-identifier associated with a user and associated with user-specific information of the user | The complaint does not identify a specific "user-identifier" or "reader," but the alleged use of the machine in a baseball camp implies players are identified and drills are set for them. | ¶11, ¶24 | col. 4:35-42 |
| a feature of a playfield | The Fungoman® machine itself, which operates on a baseball field (the "playfield") to deliver pitches for training drills. | ¶11, ¶24 | col. 7:13-24 |
| a processor... operable to execute coded instructions to interpret the user-identifier and configure the feature | The control system of the Fungoman® machine, which is allegedly used to adjust its operation (e.g., pitch type, speed, location) for a specific player. | ¶11, ¶24 | col. 9:41-51 |
| wherein to configure the feature... includes activating the feature such that a difficulty of play is appropriate for the user | The act of setting the Fungoman® machine to provide certain pitches tailored to the skill level or training needs of a specific player at a camp. | ¶13, ¶24 | col. 8:57-64 |
- Identified Points of Contention:
- Scope Questions: The infringement theory for the ’921 patent raises the question of whether an automated baseball pitching machine falls within the scope of a "user-specific dispensing system" as described in that patent, which focuses on providing targeted consumer product samples for marketing. A court may need to determine if launching a baseball constitutes "dispensing" an "item" in the manner contemplated by the claims.
- Technical Questions: A key technical question for the ’369 patent is whether the accused use of the Fungoman® machine involves an automated "configuration" based on a "user-identifier" as required by the claim. The analysis may turn on what evidence is presented to show that the machine's operations are adjusted based on pre-existing, stored data specific to a player, rather than through manual adjustments by a human operator for any given user.
V. Key Claim Terms for Construction
The Term: "user-identifier" (’921 cl. 1; ’369 cl. 1)
- Context and Importance: This term is fundamental to both patents, as it is the mechanism for inputting the user-specific data that drives the system. The definition will be critical to determining whether the defendants' alleged method of operating the pitching machine—which may not involve a scannable card—meets this limitation.
- Intrinsic Evidence for a Broader Interpretation: The '921 specification states the identifier "need not be a card" and "could be any physical holder of information," including a user entering their phone number (ʼ921 Patent, col. 3:33-39). This language may support an interpretation that does not require a specific physical token.
- Intrinsic Evidence for a Narrower Interpretation: The primary embodiments in both patents describe and depict a physical card with a barcode or RFID tag that is read by a machine (ʼ921 Patent, FIG. 1; col. 2:9-12). This could support a narrower construction requiring a distinct, machine-readable object.
The Term: "dispense" / "dispensation" (’921 cl. 1)
- Context and Importance: The viability of the infringement allegation against the ’921 patent hinges on whether launching a baseball is considered "dispensing" an item. Practitioners may focus on this term to argue there is a mismatch between the patent's focus and the accused activity.
- Intrinsic Evidence for a Broader Interpretation: The specification lists "athletic gear" as a potential item to be dispensed (ʼ921 Patent, col. 4:32). This could be argued to encompass a baseball.
- Intrinsic Evidence for a Narrower Interpretation: The patent is framed around "targeted on-site sampling" for marketing, with examples like after-shave and vitamins (ʼ921 Patent, col. 1:24; col. 4:45-53). This context suggests providing a consumer good for the user to keep, which differs from propelling a standard ball for a training drill.
The Term: "configure the feature" (’369 cl. 1)
- Context and Importance: This term is central to the ’369 patent's infringement theory. The dispute may focus on whether manual adjustment of the machine's settings by a camp instructor for a known player constitutes the claimed "configuration" by a "processor" in response to a "user-identifier."
- Intrinsic Evidence for a Broader Interpretation: The claim language itself is general and does not explicitly forbid manual input as part of the process that leads to the configuration.
- Intrinsic Evidence for a Narrower Interpretation: The claim requires a "processor" to "execute coded instructions to interpret the user-identifier and configure the feature." This suggests an automated, processor-driven action based on reading the identifier, which could be contrasted with a purely manual dial adjustment by an operator.
VI. Other Allegations
- Willful Infringement: The complaint alleges that infringement has been willful since at least March 10, 2014 (Compl. ¶21, ¶28). The factual basis for this allegation is the claim that Plaintiff's managing member, Arthur J. Zito, Jr., provided his signed employment agreement to Defendants on that date, and the agreement listed the '921 patent and the published application for what would become the '369 patent (Compl. ¶12).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the act of pitching a standard baseball from an automated machine be construed as "dispensing a user-appropriate item" as claimed in the ’921 patent, which is primarily described in a consumer marketing and sampling context?
- A key evidentiary question for the ’369 patent will be one of functional operation: does the defendants’ alleged use of the Fungoman machine involve an automated "configuration" based on a "user-identifier" as claimed, or does it rely on manual adjustments by an operator that may fall outside the specific architectural requirements of the claims?
- The willfulness allegation will likely turn on the nature and context of the alleged 2014 disclosure: specifically, whether an employment agreement listing patents is sufficient to establish that any subsequent infringement was "wanton, malicious, bad-faith, [or] deliberate," as required by post-Halo case law.