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: Venue is alleged to be proper as Defendant is a Michigan corporation with a regular and established place of business within the Eastern District of Michigan, where it is alleged to have committed acts of infringement.
• Core Dispute: Plaintiff alleges that Defendant’s Advanced Inventory Management Vending Solutions infringe three patents related to systems and methods for dispensing items based on user-specific information.
• Technical Context: The technology concerns intelligent vending systems that control access to inventory, such as industrial tools or medical supplies, by authenticating users and dispensing items based on their specific roles, authorizations, or other characteristics.
• Key Procedural History: The complaint is an amended complaint. The patents-in-suit belong to a single family, stemming from a 2005 priority application, which may indicate a protracted prosecution history. No prior litigation or post-grant proceedings are mentioned in the complaint.

Case Timeline

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

U.S. Patent No. 10,867,461 - “User-Specific Dispensing System,” issued December 15, 2020

The Invention Explained

• Problem Addressed: The patent's background describes a need for automated dispensing systems that are more sophisticated than those that simply reward consumers with a generic item or coupon. The problem is that existing systems often fail to physically dispense a sample on-site or to customize the dispensed item based on the specific characteristics of the user (’461 Patent, col. 2:3-17).
• The Patented Solution: The invention is a system comprising a user identifier (e.g., an RFID tag), a reader, a processor, and a physical dispenser. The system is designed to read user-specific data, process it to select an item that is specifically appropriate for that user, and then automatically dispense the item on-site, thereby providing targeted and controlled distribution ('461 Patent, Abstract; col. 4:26-34).
• Technical Importance: This approach enables automated, controlled inventory management in environments like factories or hospitals, ensuring that only authorized users receive specific items, or facilitates highly targeted marketing by dispensing products tailored to a consumer's profile ('461 Patent, col. 1:25-34).

Key Claims at a Glance

• The complaint asserts infringement of at least independent claim 1 (Compl. ¶17, 25).
• The essential elements of independent claim 1 include:
  • an input device for accepting user-specific information;
  • at least one storage device;
  • at least one dispensing device;
  • a processor that interprets the user information to select an item type and a specific item based on a user characteristic (e.g., location, biological profile, or role) and sends a signal to dispense it; and
  • a condition where the dispensation is final and 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 (Compl. ¶10).

U.S. Patent No. 11,127,239 - “User-Specific Dispensing System,” issued September 21, 2021

The Invention Explained

• Problem Addressed: The patent addresses the same technical problem as the ’461 Patent: the lack of effective, automated on-site systems for dispensing items based on specific user attributes (’239 Patent, col. 2:3-17).
• The Patented Solution: This patent claims a method for user-specific dispensing. The method involves identifying a user, associating them with specific information, and using that information to select an appropriate type of item. Crucially, the method then presents the user with choices within that pre-approved item type, and dispenses the specific item the user selects from that limited menu ('239 Patent, Abstract; col. 5:44-6:6).
• Technical Importance: This method enhances controlled dispensing systems by adding a layer of user interaction, granting users a degree of choice within system-defined boundaries, which can improve user experience while maintaining inventory control (’239 Patent, col. 1:25-34).

Key Claims at a Glance

• The complaint asserts infringement of at least independent claim 1 (Compl. ¶18).
• The essential elements of independent claim 1 include:
  • identifying a user and associating user-specific information with them;
  • selecting an appropriate type of item based on that information;
  • presenting the user with at least one choice from that item type;
  • selecting a specific item based on the user's response;
  • automatically dispensing the selected item; and
  • a condition where the user cannot select a different type of item after being presented with the initial choices.
• The complaint reserves the right to assert other claims (Compl. ¶10).

U.S. Patent No. 11,710,364 - “User-Specific Dispensing System,” issued July 25, 2023

• Patent Identification: U.S. Patent No. 11,710,364, “User-Specific Dispensing System,” issued July 25, 2023 (Compl. ¶15).
• Technology Synopsis: This patent claims a system to activate a "user-appropriate type of tool or type of machine." It teaches identifying a user, associating them with user-specific information (e.g., location, biological profile, or role), and using a processor to select an item and activate a release mechanism. The system is characterized by a limitation where the user cannot select a different item for release after the processor has made its selection (’364 Patent, Abstract; col. 6:8-27). This patent appears focused on the activation of equipment, not just dispensing consumable goods.
• Asserted Claims: The complaint asserts at least independent claim 1 (Compl. ¶19).
• Accused Features: The complaint alleges that Defendant's entire line of "Advanced Inventory Management Vending Solutions" constitutes the infringing system (Compl. ¶9, 23).

III. The Accused Instrumentality

Product Identification

• The accused products are Defendant’s "Advanced Inventory Management Vending Solutions," which are also marketed as "MATRIX Inventory Management" (Compl. ¶9, 20). The complaint specifically shows a photograph of the "HELIX" model vending machine (Compl. ¶9, p. 3).

Functionality and Market Context

• The accused products are intelligent, high-security vending machines designed for industrial sectors to manage and dispense critical supplies like cutting tools and MRO (maintenance, repair, and operations) items (Compl. ¶26, p. 8). Their function is to provide "secure point-of use distribution" by ensuring "only authorized tools can be accessed per job" (Compl. ¶26, p. 8). The system operates via a touchscreen interface that requires a user to log in to access inventory, as shown in a screenshot of the login screen (Compl. ¶26, p. 10). A further screenshot shows that access can be controlled based on parameters such as "Department," "Work Center," "Machine," and "Job Number" (Compl. ¶26, p. 10).

IV. Analysis of Infringement Allegations

’461 Patent Infringement Allegations

Identified Points of Contention

• Scope Questions: A central dispute may arise over whether the accused system's operational data (e.g., "Job Number," "Department") constitutes "user-specific information" as defined by the patent's claim language ("user location... or a user role within a group"). A defendant could argue this is task-specific or equipment-specific data, not user-specific data.
• Technical Questions: The complaint alleges that the user "cannot select a different type of item" after the processor selects it. This negative limitation is a critical part of the claim. The key technical question will be what factual evidence supports this "lockout" functionality in the accused software's workflow, as opposed to merely filtering a list from which a user can freely navigate away.

V. Key Claim Terms for Construction

The Term: "user-specific information"

• Context and Importance: The case's infringement theory hinges on this term. The patent's claimed advance is dispensing based on data specific to the user, not generic inputs. Practitioners may focus on this term because the defendant will likely argue that the accused system operates on job- or task-specific data, which may not be coextensive with "user-specific" data.
• Intrinsic Evidence for a Broader Interpretation: The specification provides a wide-ranging list of potential user-specific information, including "gender, name, address, age, athletic preference, food preferences, music preferences, etc." and even information that simply authorizes a user to receive any sample, suggesting the term is not narrowly constrained ('461 Patent, col. 4:32-41).
• Intrinsic Evidence for a Narrower Interpretation: Claim 1 itself defines the operative "characteristic" as comprising "at least one of a user location, a biological profile of the user, or a user role within a group" ('461 Patent, col. 12:56-61). A party could argue that this list, provided within the claim itself, implicitly limits the scope of "user-specific information" to these enumerated categories or their close equivalents.

The Term: "processor to... select a type of item for dispensing"

• Context and Importance: This term is critical because of the subsequent limitation that the "user cannot select a different type of item." The dispute will center on whether the processor is the primary actor making a binding selection, or if it merely acts as a filter for the user, who retains ultimate control.
• Intrinsic Evidence for a Broader Interpretation: The specification 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. 4:51-54). This language could support the view that the processor is the decision-making component.
• Intrinsic Evidence for a Narrower Interpretation: The family of patents also describes embodiments where a user is presented with a menu of choices ('239 Patent, col. 5:61-64). A defendant might leverage this to argue that the system as a whole is designed to facilitate user selection, and that if the processor merely presents a filtered list, it is the user, not the processor, who ultimately "selects" the item, and who may be able to back out of that selection.

VI. Other Allegations

• Indirect Infringement: The complaint does not plead specific facts to support claims of induced or contributory infringement, such as knowledge or intent related to third-party use. The allegations are centered on direct infringement under 35 U.S.C. §271(a) (Compl. ¶21-23, 29).
• Willful Infringement: The complaint does not explicitly allege "willful" infringement. It includes a prayer for "enhanced damages under 35 U.S.C. §284" (Compl. p. 14, ¶F), but it does not allege supporting facts, such as that the defendant had pre- or post-suit knowledge of the patents-in-suit.

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

• A core issue will be one of definitional scope: can operational data used by the accused system, such as "Job Number" or "Department," be construed to meet the claim requirement for "user-specific information," particularly the claimed characteristics of "user location" or "user role within a group"?
• A key evidentiary question will be one of functional operation: does the accused "MATRIX Software" actually perform the restrictive function required by Claim 1 of the '461 patent, where a user "cannot select a different type of item... subsequent to the processor selecting the type of item," or does it merely provide a flexible filtering tool that the user ultimately controls?
• A third question concerns the distinction between infringement types: as the suit alleges infringement of both system claims (e.g., '461 Patent) and method claims (e.g., '239 Patent), the court may need to distinguish between infringement by making and selling the accused system versus infringement by practicing the claimed method, and whether the evidence sufficiently links the defendant's actions to the direct infringement of each type of claim.