Zito LLC v. Berkshire Production Supply

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Zito, LLC (Maryland)
  • Defendant: Berkshire Production Supply LLC d/b/a PT Solutions, Inc. (Michigan)
  • Plaintiff’s Counsel: DNL Zito
• Case Identification: 2:25-cv-10867, E.D. Mich., 05/08/2025
• Venue Allegations: Plaintiff alleges venue is proper because Defendant is a Michigan corporation with its headquarters and a regular and established place of business in the district, where it has allegedly committed acts of infringement.
• Core Dispute: Plaintiff alleges that Defendant’s Advanced Inventory Management Vending Solutions infringe three patents related to user-specific dispensing systems.
• Technical Context: The technology concerns automated vending or dispensing systems that identify a user and dispense an item, service, or feature based on that user's specific profile or characteristics.
• Key Procedural History: The complaint does not mention any prior litigation, inter partes review (IPR) proceedings, or licensing history related to the patents-in-suit.

Case Timeline

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

U.S. Patent No. 10,867,461 - “User-Specific Dispensing System” (Issued Dec. 15, 2020)

The Invention Explained

• Problem Addressed: The patent’s background section identifies a need in the retail and marketing fields for a system that can provide targeted, on-site samples to consumers. It notes that prior art systems either do not physically dispense an item (e.g., they issue a coupon) or dispense items that are not customized to the user’s specific needs or characteristics (e.g., based only on holding a store card) (’461 Patent, col. 1:24-39; col. 2:4-16).
• The Patented Solution: The invention is a system designed to solve this problem by physically dispensing an item on-site based on pre-knowledge of the user. It comprises a user-identifier (like an RFID tag), a reader, and a processor. The processor uses the user-specific information from the identifier to select and automatically dispense an appropriate item from a storage device, thereby providing a customized sample or product directly to the consumer (’461 Patent, col. 2:21-30; Fig. 1).
• Technical Importance: This approach aimed to provide a novel method for automated, on-site sampling based on a user's specific profile, described as an effective marketing tool for directing products to targeted consumers (’461 Patent, col. 1:28-39).

Key Claims at a Glance

• The complaint asserts independent claim 1, among others (Compl. ¶10, ¶17).
• Claim 1 (System Claim) requires:
  • An input device for accepting user-specific information.
  • At least one storage device.
  • At least one dispensing device.
  • A processor that interprets the user-specific information (user location, biological profile, or user role) to select a type of item and then a specific item from that type.
  • The processor sends a signal to automatically dispense the selected item.
  • A negative limitation: the user cannot select a different type of item after the processor has made its selection.
• The complaint reserves the right to assert numerous other claims, including dependent claims (Compl. ¶10).

U.S. Patent No. 11,127,239 - “User-Specific Dispensing System” (Issued Sep. 21, 2021)

The Invention Explained

• Problem Addressed: The '239 Patent shares a specification with the '461 Patent and addresses the same problem of providing targeted, on-site dispensing of items (’239 Patent, col. 1:24-39).
• The Patented Solution: As a related patent, the overall system concept is the same. However, the '239 patent claims a method of dispensing. This method involves not just an automated selection by the processor, but also a step of interacting with the user by "presenting the user with at least one choice" of appropriate items before the user's response triggers the final dispensation (’239 Patent, col. 12:44-67). This differs from the more processor-driven selection recited in claim 1 of the ’461 Patent.
• Technical Importance: The technical importance is the same as for the ’461 Patent: creating an effective, automated system for targeted on-site marketing and product distribution (’239 Patent, col. 1:28-39).

Key Claims at a Glance

• The complaint asserts independent claim 1, among others (Compl. ¶10, ¶18).
• Claim 1 (Method Claim) requires:
  • Identifying a user and associating user-specific information (user location, biological profile, or user role).
  • Selecting at least one type of item appropriate to the user.
  • Presenting the user with at least one choice of the appropriate item type.
  • Selecting a specific item based on the user's response.
  • Automatically dispensing the selected specific item.
  • A negative limitation: the user cannot select a different type of item after being presented with the choice.
• The complaint asserts claims 1-17 (Compl. ¶10).

Multi-Patent Capsule: U.S. Patent No. 11,710,364

• Patent Identification: U.S. Patent No. 11,710,364, “User-Specific Dispensing System,” issued July 25, 2023.
• Technology Synopsis: This patent is from the same family and covers a "User-Specific Dispensing System." It claims a system to activate a user-appropriate type of tool or machine. The system comprises an input device to identify a user, a release mechanism, and a processor that uses coded instructions to associate user-specific information with an item and activate the release mechanism, preventing the user from selecting a different item after the processor's selection (’364 Patent, col. 13:1-17).
• Asserted Claims: The complaint asserts independent claim 1, among others (Compl. ¶10, ¶19).
• Accused Features: The complaint accuses Defendant's "Advanced Inventory Management Vending Solutions" of infringing the system claims by making, using, and selling them in the U.S. (Compl. ¶9, ¶23).

III. The Accused Instrumentality

Product Identification

• The accused products are Defendant’s "Advanced Inventory Management Vending Solutions," also referred to as "MATRIX Inventory Management." Specific product lines named include View DLS, View ECO Locker, View Helix, View Max, View Mini, View Toolport, and View WIZ (Compl. ¶9).

Functionality and Market Context

• The accused products are described as "intelligent vending machines" for industrial, manufacturing, aerospace, and medical sectors (Compl. ¶20, p. 8). Their function is to provide "secure point-of-use distribution" of critical supplies like tools and MRO (maintenance, repair, and operations) items (Compl. p. 8, p. 9). The system is driven by a "Simple & Intuitive touchscreen application" that requires a user to log in to access inventory (Compl. p. 9, p. 10). A photograph in the complaint shows the exterior of the accused "HELIX" vending machine (Compl. p. 3). The complaint alleges the products are commercially important for reducing downtime and streamlining workflows in these sectors (Compl. p. 8).

IV. Analysis of Infringement Allegations

The complaint provides a detailed, element-by-element analysis only for claim 1 of the '461 Patent.

'461 Patent Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: The asserted claims recite user characteristics including "biological profile." A question for the court may be whether the "user role" prong of the claim, which Plaintiff appears to rely on, is sufficiently supported by the accused system’s use of a "user name" and "password" for job-based authorization (Compl. p. 10).
  • Technical Questions: A central technical question is who performs the "selection" required by the claim. Claim 1 of the ’461 Patent requires the processor to select the item and then prevent the user from choosing a different type. The complaint's own visual evidence shows a user making several inputs on the "Issue" screen (Department, Work Center, Machine, Job Number) before an item is dispensed (Compl. p. 10), which raises the question of whether the user, not the processor, is making the operative selection.

V. Key Claim Terms for Construction

For the '461 Patent

• The Term: "a processor to...select a type of item for dispensing...wherein the user cannot select a different type of item for that dispensation subsequent to the processor selecting the type of item"
• Context and Importance: This term is the functional core of the asserted independent claim. Its construction will be critical to the infringement analysis, as the dispute will likely center on the sequence of operations and whether the accused system's processor performs an autonomous, binding selection or merely facilitates a user-driven choice.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification broadly describes the processor as "capable of processing the inputted user-specific data in order to instruct the system to dispense an item" (’461 Patent, col. 4:51-55), which a party could argue covers any processor-involved selection process.
  • Evidence for a Narrower Interpretation: The explicit negative limitation ("user cannot select a different type") and embodiments describing pre-determined, non-negotiable dispensing criteria (e.g., males under 45 receive after-shave) may support a narrower construction requiring a fully automated, locked-in selection by the processor based on the user's profile, without subsequent user modification (’461 Patent, col. 5:32-46).

For the '239 Patent

• The Term: "presenting the user with at least one choice"
• Context and Importance: Practitioners may focus on this term because, unlike claim 1 of the ’461 Patent, this limitation explicitly requires user interaction. Its construction will determine whether the accused system's touchscreen interface, which allows users to input information for a job, constitutes "presenting...a choice" as claimed. The functionality of the accused product (Compl. p. 10) may map more closely to this claim language than to the language of the ’461 Patent.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The shared specification describes embodiments where the system prompts the user via a graphical display, which could be argued to encompass any user interface that allows for input leading to a dispensation (’239 Patent, col. 6:49-59).
  • Evidence for a Narrower Interpretation: The full limitation, which includes the subsequent step of "selecting at least one specific item based on the user's response," suggests that the "choice" presented must be a direct precursor to a user's final decision, not just a series of data entry fields. The exact nature of the "choice" and the "response" will likely be a point of contention.

VI. Other Allegations

• Indirect Infringement: The complaint does not contain allegations of indirect or contributory infringement.
• Willful Infringement: The complaint does not explicitly allege willful infringement or plead any facts regarding Defendant’s knowledge of the patents prior to the lawsuit. The prayer for relief includes a request for enhanced damages under 35 U.S.C. §284, but the body of the complaint does not provide a factual basis for such a claim (Compl. ¶F, p. 14).

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

1. A core issue will be one of operative control: Does the accused system’s processor perform the binding "selection" of an item type based on a user’s role, as required by claim 1 of the ’461 Patent, or does it present options from which the user makes the dispositive selection, an operation that may align more closely with the "presenting...a choice" language of the asserted ’239 method patent?
2. A key evidentiary question will be one of functional implementation: The case will likely depend on detailed evidence of how the accused MATRIX software operates. Discovery will be needed to determine if the software’s logic locks a user into a specific item type based on their authorization, or if it functions as a more conventional inventory management system where the user navigates a catalog to find and select the desired item for their task.
3. A central legal and factual question will be the interpretation of the negative limitation present in the asserted claims: "wherein the user cannot select a different type of item..." The resolution of the case may turn on what the patent means by a "type of item" and at what specific point in the accused system's workflow the user is (or is not) prevented from making a different selection.