DCT
2:18-cv-11107
Reflection Code LLC v. Mucci Farms Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Reflection Code LLC (Texas)
- Defendant: Mucci Farms Ltd. (Ontario), Mucci International Manufacturing Inc. (Ontario), Mucci Pac U.S.A. Ltd. (Michigan)
- Plaintiff’s Counsel: Devlin Law Firm LLC
- Case Identification: 2:18-cv-11107, E.D. Mich., 04/06/2018
- Venue Allegations: Venue is based on Defendant Mucci Pac U.S.A. Ltd. being a Michigan corporation and the other two defendants being foreign entities. The complaint also alleges purposeful availment and business contacts within the district.
- Core Dispute: Plaintiff alleges that Defendants’ use of QR codes on retail products infringes patents related to using a barcode as a pointer to retrieve information, such as a URL, from a remote database.
- Technical Context: The technology involves using two-dimensional barcodes on products or advertisements to link a consumer's scanning device (e.g., a smartphone) to online content via a server-side database lookup.
- Key Procedural History: The complaint alleges that as of the filing date, there are "at least twenty-one licensees" to each of the three patents-in-suit, which may be significant in establishing a reasonable royalty rate if infringement is found.
Case Timeline
| Date | Event |
|---|---|
| 2000-07-18 | Earliest Priority Date for '657, '446, and '907 Patents |
| 2011-06-21 | U.S. Patent No. 7,963,446 Issues |
| 2014-05-27 | U.S. Patent No. 8,733,657 Issues |
| 2014-07-01 | U.S. Patent No. 8,763,907 Issues |
| 2016-10-26 | Alleged observation of accused QR code on product |
| 2018-04-06 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
No probative visual evidence provided in complaint.
U.S. Patent No. 8,733,657 - "Barcode Device," issued May 27, 2014 (’657 Patent)
The Invention Explained
- Problem Addressed: The patent addresses the limitations of storing extensive information directly within a barcode (Compl. ¶12). The patent background notes the common use of barcodes for information scanning, implying a need for more flexible and dynamic data retrieval than is possible when all information is static within the code itself (’657 Patent, col. 1:12-25).
- The Patented Solution: The invention proposes a system where a barcode does not contain the final information itself, but rather a "pointer" to a database entry (’657 Patent, col. 4:60-63). A computer-controlled device, such as a PDA or smartphone, scans the barcode, sends the pointer to a remote server, and the server returns more detailed information, such as a URL, from the corresponding database entry (’657 Patent, Fig. 4; col. 4:26-54).
- Technical Importance: This approach allows for "increased flexibility in the information returned by the database," enabling content to be updated on the server without altering the physical barcode printed on a product (Compl. ¶12).
Key Claims at a Glance
- The complaint asserts "one or more claims" of the ’657 patent (Compl. ¶19). Independent claim 13 is representative of the asserted technology.
- Independent Claim 13, Essential Elements:
- A two-dimensional barcode containing first and second pieces of coded information.
- The first information is a "command" executable by a reading device.
- The second information is a "pointer" that addresses an entry in a database stored on a non-transitory computer readable medium.
- The database entry itself contains a URL.
- Upon reading the barcode, the device executes the command, uses the pointer to access the database, and receives the URL in return.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 7,963,446 - "Bar Code Device," issued June 21, 2011 (’446 Patent)
The Invention Explained
- Problem Addressed: Similar to the ’657 patent, this patent addresses the need for a more flexible way to link physical items via barcodes to dynamic digital information (Compl. ¶30).
- The Patented Solution: The patent describes a portable communications apparatus (e.g., a cellular telephone) with an optical reader that scans a barcode containing two parts of information (’446 Patent, col. 2:5-20). The first part is a command, and the second is a pointer used to fetch a corresponding website address from a remote database, which is then displayed on the device (’446 Patent, col. 8:50-65).
- Technical Importance: The invention focuses on the implementation of the pointer-and-database system within a portable, wirelessly-connected device, which increases the utility of barcodes for mobile consumers (Compl. ¶32).
Key Claims at a Glance
- The complaint asserts "one or more claims" of the ’446 patent (Compl. ¶37). Independent claim 7 is a representative apparatus claim.
- Independent Claim 7, Essential Elements:
- A portable communications apparatus with an optical reader and wireless communication circuitry.
- The device is "operable to make a telephone call."
- The optical reader obtains information from a barcode with a first part (a command) and a second part (a pointer).
- A processor uses the pointer to fetch a corresponding website address from a remote database.
- The device fetches and displays the website address and corresponding website.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 8,763,907 - "Bar Code Device," issued July 1, 2014 (’907 Patent)
- Technology Synopsis: Belonging to the same family as the other patents-in-suit, the ’907 Patent describes a mobile device that reads a two-dimensional barcode. The barcode includes a "first uniform resource locator" that acts as a pointer to an internet database. The database, in turn, returns a "second uniform resource locator" and associated content to the mobile device for display (Compl. ¶55; ’907 Patent, col. 8:1-12).
- Asserted Claims: The complaint asserts "one or more claims" (Compl. ¶55). Independent claims 1 (method) and 12 (device) are available for assertion.
- Accused Features: The accused features are products with a barcode that includes a "first uniform resource locator" to address a database and receive a "second uniform resource locator" in return (Compl. ¶55).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are Defendants' "retail consumer products and/or marketing materials" that incorporate a two-dimensional barcode (Compl. ¶19). The complaint specifically identifies a "quick response code found on the Mucci NakedLeaf Lettuce" as an exemplary product (Compl. ¶20).
Functionality and Market Context
The complaint alleges that the QR codes on these products function as a "pointer addressing a database entry" (Compl. ¶19). When scanned by a consumer's device, this system "returns a URL in the addressed database entry to a computer-controlled device" (Compl. ¶19). The complaint further alleges that these products are marketed and sold throughout the United States, including in the Eastern District of Michigan (Compl. ¶21).
IV. Analysis of Infringement Allegations
’657 Patent Infringement Allegations
| Claim Element (from Independent Claim 13) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A two-dimensional barcode comprising: a two-dimensional portion comprising coded information... | The accused products incorporate a "quick response code," which is a type of two-dimensional barcode. | ¶20 | col. 6:1-3 |
| the coded information comprising first coded information ... comprising a first value comprising an indication of a command ... and second coded information ... a second value ... is a pointer addressing a database entry of a non-transitory ... medium | The QR code allegedly "includes a value acting as a pointer addressing a database entry," which implies the existence of both a pointer value and a command to use it. | ¶19 | col. 4:46-48 |
| the database entry comprising a URL | The system allegedly "returns a URL in the addressed database entry." | ¶19 | col. 8:60-63 |
| wherein when a computer-controlled reading device reads the barcode, the device executes the command and passes the second value to the command, and the command, upon execution, accepts the second value as the pointer...and returns the URL... | The overall process of a user's device scanning the code, which causes a database to be addressed and a URL to be returned, is alleged to occur. | ¶19 | col. 4:36-54 |
’446 Patent Infringement Allegations
| Claim Element (from Independent Claim 7) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a portable communication device including an optical reader therein and circuitry operable to make a wireless communication over a channel... | The complaint alleges use by "customers and end users," whose devices (e.g., smartphones) are portable, have optical readers (cameras), and wireless communication capabilities. | ¶22 | col. 2:5-15 |
| said portable communication device operable to make a telephone call... | End-user devices such as smartphones, which are used to scan QR codes, are capable of making telephone calls. | ¶22 | col. 2:11-13 |
| said optical reader operable to obtain information from a bar code having a first part and a second part ... the first information comprises a command to use the second information as a pointer to fetch a corresponding website address | The complaint alleges the barcode acts as a "pointer to fetch a corresponding website address ... from a remote database," implying the existence of a command and a pointer. | ¶37 | col. 8:50-60 |
| ...operable to fetch the corresponding website address from the remotely located database responsive to the command and display the address and the corresponding website on the portable communication device... | The complaint alleges the end result of scanning the code is the retrieval and display of a website address from a database. | ¶37 | col. 8:60-65 |
Identified Points of Contention
- Technical Questions: A primary factual question will be whether the accused QR codes function as claimed. The complaint does not provide evidence to distinguish between a QR code that contains a direct URL versus one that contains a "pointer" to a separate "database entry" which then returns a URL. If the QR code simply encodes a standard URL (even one that results in a redirect), Defendants may argue that it does not meet the "pointer" and "database entry" limitations.
- Scope Questions: For the ’446 Patent, the interpretation of "operable to make a telephone call" will be critical. The dispute may center on whether this requires the telephone function to be used as part of the infringing act, or whether it is sufficient that the infringing device (e.g., a smartphone) is merely capable of making calls, a characteristic of nearly all modern scanning devices.
V. Key Claim Terms for Construction
Term 1: "pointer" (’657 Patent, Claim 13; ’446 Patent, Claim 7)
- Context and Importance: The definition of "pointer" is fundamental to the infringement case for all asserted patents. Infringement may turn on whether the data encoded in the accused QR code is a "pointer" to a database entry or simply a standard URL. Practitioners may focus on this term because if a standard URL is not a "pointer," the core infringement theory could fail.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the pointer as a "cue" or an "address" and notes that it can be used to "fetch a corresponding website address" from a remote database, suggesting it is an intermediary value that resolves to a final destination (’446 Patent, col. 4:36-41; col. 8:57-60).
- Evidence for a Narrower Interpretation: The specification provides an example of a "cue command CX, followed by a base 39 alphanumeric value 4DMKDP," which could be argued to define "pointer" as a specific, non-URL value that requires a bespoke database system, not a standard web server (’657 Patent, col. 4:46-48).
Term 2: "operable to make a telephone call" (’446 Patent, Claim 7)
- Context and Importance: This limitation in an apparatus claim could be a dispositive issue for infringement of the ’446 patent. The question is whether this phrase describes a required function during the infringing use or a mere capability of the device.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification explicitly describes the "portable computer" as potentially being a "cellular telephone" (’446 Patent, col. 2:11-13). A plaintiff would argue that "operable to" means "capable of," and a device that is a cellular telephone is inherently "operable to make a telephone call," regardless of whether that feature is used simultaneously with barcode scanning.
- Evidence for a Narrower Interpretation: A defendant might argue that for the limitation to have meaning, it must be tied to the other functions of the claim, suggesting a closer functional relationship is required than mere coexistence of capabilities on the same device. However, the plain language of "operable to" generally favors the capability-based interpretation.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced and contributory infringement for the ’446 and ’907 patents. Inducement is premised on Defendants allegedly "advertising and distributing the Accused Instrumentalities and providing instruction materials" that encourage end-users to perform the infringing acts (Compl. ¶¶ 25, 43, 61). Contributory infringement is based on the allegation that the Accused Instrumentalities are a material component "especially made or adapted for use in an infringement" and are not a staple article of commerce (Compl. ¶¶ 26, 44, 62).
- Willful Infringement: The complaint alleges that Defendants had knowledge of the patents and their infringement "at least as early as the filing of this Complaint" (Compl. ¶¶ 23, 41, 59). It also alleges inducement with "specific intent or willful blindness" (Compl. ¶¶ 24, 42, 60). These allegations form a basis for post-suit willfulness and a potential claim for enhanced damages under 35 U.S.C. § 284.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of technical implementation vs. claim scope: Does the information encoded in Defendants' QR codes constitute a "pointer" to a "database entry" as required by the claims, or is it a standard URL? The resolution of this question will depend heavily on claim construction and the specific technical evidence of how Defendants' system operates.
- A key legal question will be the interpretation of capability-based limitations: Can the ’446 patent's requirement that the infringing device be "operable to make a telephone call" be satisfied by the mere fact that the scanning device is a smartphone, or must a more direct functional link to the infringing act be shown?
- A central question for damages will be the impact of prior licensing: The complaint's assertion that there are "at least twenty-one licensees" for the patents-in-suit suggests the potential existence of an established royalty rate, which would be a primary focus in determining a reasonable royalty if infringement and validity are established.