DCT
1:20-cv-00465
Vigilant Solutions LLC v. Rekor Systems Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Vigilant Solutions, LLC (Delaware)
- Defendant: Rekor Systems, Inc.; Rekor Recognition Systems, Inc.; OpenALPR Software Solutions, LLC (all Delaware corporations with principal places of business in Maryland)
- Plaintiff’s Counsel: Kilpatrick Townsend & Stockton LLP
- Case Identification: 1:20-cv-00465, D. Md., 02/21/2020
- Venue Allegations: Venue is alleged to be proper as each Defendant maintains a principal place of business in the District of Maryland and has allegedly committed acts of infringement in the district.
- Core Dispute: Plaintiff alleges that Defendants’ automated license plate reader (ALPR) software systems infringe a patent related to a networked vehicle tracking and locating system.
- Technical Context: The technology at issue involves systems that use cameras to capture vehicle license plates, recognize the plate characters, and query a database to retrieve associated information for law enforcement or commercial purposes.
- Key Procedural History: The complaint cites the patent's prosecution history, noting an Examiner's statement that prior art lacked a system receiving vehicle data from a "plurality of client sources." Significantly, after this complaint was filed, a disclaimer for claims 1-8 and 11-19 of the patent-in-suit was entered, recorded in the USPTO's Official Gazette on May 25, 2021. This action disclaims the primary independent claim (Claim 1) asserted in this complaint.
Case Timeline
| Date | Event |
|---|---|
| 2010-11-03 | ’169 Patent Priority Date (Provisional 61/409,623) |
| 2014-07-15 | ’169 Patent Issue Date |
| 2020-02-21 | Complaint Filing Date |
| 2020-11-10 | Disclaimer filed for claims 1-8 and 11-19 of the '169 Patent |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,781,169 - “Vehicle Tracking and Locating System,” issued July 15, 2014
The Invention Explained
- Problem Addressed: The patent describes conventional methods for locating vehicles of interest (e.g., for repossession) as "inefficient, expensive, and time-consuming" (’169 Patent, col. 1:45-47). These methods required agents to manually "cross-reference the documents in his possession with each suspect license plate that he or she views" (’169 Patent, col. 1:48-50).
- The Patented Solution: The invention proposes a centralized system where data from a "plurality of client sources" (e.g., banks, credit agencies, law enforcement) is aggregated into a master database (’169 Patent, col. 14:52-55). Field agents can use remote communication devices to send a query (e.g., a license plate number) to a request server, which then retrieves corresponding information from the database and transmits it back to the agent (’169 Patent, Abstract; Fig. 1). The system architecture is designed to handle various data input formats and securely segment data based on the client source (’169 Patent, col. 5:8-18).
- Technical Importance: The claimed invention purports to improve the efficiency and safety of locating vehicles by enabling users in the field to perform rapid, remote, and automated analysis of license plates against a comprehensive, multi-source database (Compl. ¶16).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 1 (Compl. ¶30).
- Essential elements of Independent Claim 1 include:
- A database controller configured to receive data from a plurality of client sources and save it as information records corresponding to each source.
- One or more external communication devices to transmit a data request.
- A request server to receive the data request in one of a plurality of communication formats.
- An input request processor to obtain information records from the database.
- An output processor to provide data of interest for transmission back to the communication device.
- The complaint does not explicitly reserve the right to assert dependent claims, but the infringement count is for "one or more claims of the '169 Patent" (Compl. ¶30).
III. The Accused Instrumentality
Product Identification
- Defendants' "Watchman" vehicle recognition software and "OpenALPR" vehicle recognition software (collectively, the "Accused Instrumentalities") (Compl. ¶6, ¶17).
Functionality and Market Context
- The complaint alleges the Accused Instrumentalities are "Licensed Plate Recognition Software" that "upgrades any IP camera into a vehicle recognition solution" for real-time alerting (Compl. ¶17, ¶20). The software allegedly reads license plate numbers, vehicle type, make, and color, and stores the collected data in a "Searchable Vehicle Database" (Compl. ¶20). This database can be shared among different law enforcement departments, allowing them to search collected data from multiple sources (Compl. ¶20). The system also allegedly stores "hot-lists" and generates "real time alerts" when a match is found (Compl. ¶21). A promotional image displays a smartphone receiving "Real Time Alerts" from the accused system (Compl. ¶22, Fig. 11).
IV. Analysis of Infringement Allegations
’169 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a database controller coupled to a client data processor,... configured to receive data corresponding to vehicles from a plurality of client sources, and save the data as information records corresponding to each client source; | The Accused Instrumentalities allegedly share collected vehicle data "across multiple departments, and even states," which function as a plurality of client sources providing data to a "Searchable Vehicle Database." | ¶20 | col. 2:37-43 |
| one or more external communication devices, including at least one wireless communication device, configured to transmit a data request by the user, the data request corresponding to the vehicle of interest; | The system allows users to "manually enter plates" and "do forensic searches" from external devices to query the database. Promotional materials show alerts on a smartphone. | ¶22-23 | col. 2:50-54 |
| a request server configured to receive the data request, the data request received in one of a plurality of communication formats; | The complaint alleges the Accused Instrumentalities include a request server configured to receive data requests in one of a plurality of communication formats. | ¶26 | col. 2:38-39 |
| an input request processor operatively coupled to the request server and configured to obtain information records from the database corresponding to the data request; | The system is alleged to have an "input request processor" that allows users to search the "Searchable Vehicle Database" to obtain specific information, such as by "exact plate number." | ¶23, ¶26 | col. 2:39-41 |
| an output processor operatively coupled to the request server and configured to provide data of interest from the obtained information records for transmission to the respective communication device. | The system allegedly includes an "output processor" that provides data of interest, such as "real time alerts" and results from forensic searches, back to the user's device. | ¶25-26 | col. 2:40-44 |
- Identified Points of Contention:
- Scope Questions: A central question is whether the accused system's architecture, which allegedly aggregates data from its own users (e.g., various police departments using the software), satisfies the "plurality of client sources" limitation. The patent specification appears to contemplate distinct third-party entities like "credit companies" and "banking entities" as client sources (’169 Patent, col. 4:50-52), raising the question of whether a user of a software platform can also be a "client source" in the manner claimed.
- Technical Questions: The complaint alleges a system architecture matching the claim's specific components (request server, input/output processors) (Compl. ¶26). A key evidentiary question will be whether the accused software actually operates with this distinct, multi-component server architecture or utilizes a more integrated or monolithic design. The complaint's evidence is primarily based on marketing materials, such as a graphic depicting a "Searchable Vehicle Database" (Compl. ¶20, Fig. 8), rather than detailed technical documentation.
V. Key Claim Terms for Construction
- The Term: "client sources"
- Context and Importance: This term appears to be the primary basis on which the patent was granted over the prior art (Compl. ¶15). Its definition is therefore critical to the infringement analysis. Practitioners may focus on this term because its construction could determine whether the accused system's data aggregation model falls within the scope of the claims.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not provide an explicit definition. A party could argue that any distinct entity providing vehicle data to the master database qualifies as a "client source," potentially including different police departments or government agencies that use and contribute data to the accused system.
- Evidence for a Narrower Interpretation: The specification provides specific examples of "client sources" as "the various credit companies, banking entities, finance credit companies, vehicle credit agencies, and law enforcement agencies" (’169 Patent, col. 4:49-52). A party could argue this language limits the term to third-party entities that provide pre-existing datasets to the system operator, as opposed to users of the system who generate new data through its operation. The complaint's reference to the prosecution history suggests the patentee distinguished its invention based on this specific feature (Compl. ¶15).
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement by providing instructions and "touting these infringing uses" in advertisements (Compl. ¶31). It also alleges contributory infringement, asserting the Accused Instrumentalities are "specially made for use in a manner infringing" and have "no substantial non-infringing uses" (Compl. ¶32).
- Willful Infringement: The complaint alleges willfulness based on knowledge of the ’169 Patent "at least by the filing of the Complaint" (Compl. ¶36).
VII. Analyst’s Conclusion: Key Questions for the Case
- A dispositive threshold issue is the legal effect of the post-filing disclaimer of all independent claims and most dependent claims asserted in the complaint. The case, as pled, appears to rely on claims that are no longer enforceable, raising a fundamental question about the suit's viability without significant amendment.
- Assuming the case were to proceed, a core issue would be one of definitional scope: can the term "client sources", which the patent specification exemplifies with third-party data providers like banks and credit agencies, be construed to cover the accused system's user base (e.g., multiple law enforcement agencies) who simultaneously use the software and contribute the data they collect with it?
- A key evidentiary question will be one of architectural correspondence: do Defendants' "Watchman" and "OpenALPR" software products, which are presented in marketing materials as cloud-based solutions, actually implement the specific, distributed hardware architecture recited in Claim 1 (e.g., a distinct "database controller," "request server," "input request processor," and "output processor"), or is there a material difference in their technical implementation?