DCT
0:19-cv-00889
Vexilar Inc v. Deeper UAB
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Vexilar, Inc. (Minnesota)
- Defendant: Deeper, UAB (Lithuania)
- Plaintiff’s Counsel: MERCHANT & GOULD PC
- Case Identification: 0:19-cv-00889, D. Minn., 03/29/2019
- Venue Allegations: Venue is alleged to be proper on the basis that the defendant is a foreign corporation and may be sued in any judicial district. The complaint also alleges the defendant purposefully directs sales and advertising activities to Minnesota.
- Core Dispute: Plaintiff alleges that Defendant’s line of wireless, castable sonar devices infringes two U.S. patents related to using a Wi-Fi connection to link a sonar sensor unit with a standard smartphone or tablet for display and control.
- Technical Context: The technology at issue enables portable, consumer-grade sonar systems where a floating sensor puck creates its own Wi-Fi network, allowing anglers to use their personal smart devices as the primary fish-finder interface.
- Key Procedural History: The complaint notes significant pre-suit history, including Plaintiff providing notice of the ’592 patent to Defendant in July 2017, followed by licensing negotiations. Notably, Defendant filed an inter partes review (IPR) petition challenging the validity of the ’592 patent, which the Patent Trial and Appeal Board (PTAB) denied to institute in January 2019. This denial may influence subsequent validity or willfulness arguments.
Case Timeline
| Date | Event |
|---|---|
| 2013-01-18 | Priority Date for ’592 and ’639 Patents |
| 2017-04-18 | U.S. Patent No. 9,628,592 Issued |
| 2017-07-13 | Plaintiff provides notice of ’592 patent to Defendant |
| 2018-06-05 | U.S. Patent No. 9,989,639 Issued |
| 2018-06-18 | Plaintiff provides notice of ’639 patent to Defendant |
| 2018-06-26 | Defendant files IPR petition challenging ’592 patent |
| 2019-01-24 | PTAB denies institution of Defendant's IPR petition |
| 2019-03-29 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,628,592 - Wireless Water Regimen Detecting Device, System and Method Based on WIFI (Issued Apr. 18, 2017)
The Invention Explained
- Problem Addressed: The patent describes prior art fish-finding devices as being limited by either wired connections or unreliable wireless technologies like ASK modulation, which suffered from interference and slow data transmission, and required the use of dedicated, outdated display terminals. (’592 Patent, col. 1:12-29).
- The Patented Solution: The invention is a self-contained, water-deployable device that uses an integrated WIFI module to create its own wireless network. This allows it to communicate sonar, temperature, and other data directly to a standard modern "intelligent display terminal," such as a smartphone or tablet computer, which runs a corresponding application to display the information. (’592 Patent, col. 2:40-52, Abstract). This leverages the superior display quality and processing power of ubiquitous consumer electronics.
- Technical Importance: This approach decouples the sonar sensor from proprietary display hardware, making advanced fish-finding technology more portable, affordable, and accessible to a wider consumer base. (’592 Patent, col. 2:40-49).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 22, and reserves the right to assert others.
- Independent Claim 1 recites a wireless fish finder device comprising:
- a housing configured to be deployed on water;
- a fish finder module with a temperature sensor and processing circuit;
- a data communication module mechanically connected to the fish finder module; and
- a WIFI module configured to generate a WIFI hotspot for communication with a remote terminal.
- Independent Claim 22 recites a similar device, but with the fish finder module comprising a sonar sensor and sonar detecting circuit, and includes a "wherein" clause specifying that the device is capable of connecting to a remote terminal that has a display screen and a "downloadable application for user control."
U.S. Patent No. 9,989,639 - Wireless Water Regimen Detecting Device, System and Method Based on WIFI (Issued Jun. 5, 2018)
The Invention Explained
- Problem Addressed: As a continuation of the application leading to the ’592 patent, this patent addresses the same limitations of prior art fish finders. (’639 Patent, col. 1:21-34).
- The Patented Solution: The invention again employs a WIFI-based communication system between a sensor puck and a smart device. The novel aspect recited in the asserted claim is the integration of a GPS module directly into the fish finder module within the floating housing, in addition to the sonar detecting assembly. (’639 Patent, Claim 1; col. 4:41-45).
- Technical Importance: Integrating a GPS module within the sensor puck itself allows the system to create bathymetric (underwater contour) maps by logging depth and location data, a feature that is particularly useful when casting from a fixed position like a bank or dock where the user's smartphone's GPS location is static. (’639 Patent, col. 4:41-45).
Key Claims at a Glance
- The complaint asserts independent claim 1 and reserves the right to assert others.
- Independent Claim 1 recites a wireless fish finder device comprising:
- a housing configured to be deployed on water;
- a fish finder module comprising both a "sonar detecting assembly" for detecting water depth and floor outline, and a "GPS module for locating a longitude and a latitude";
- a data communication module; and
- a WIFI module configured to generate a WIFI hotspot.
III. The Accused Instrumentality
Product Identification
The Deeper Start, Deeper Pro, and Deeper Pro+ wireless sonar devices. (Compl. ¶21).
Functionality and Market Context
The accused products are described as spherical, castable sonar devices that are deployed on the water. (Compl. ¶¶33b, 34b). They are alleged to create their own Wi-Fi network, allowing them to connect wirelessly to a user's smartphone or tablet. (Compl. ¶¶33e, 34e). The user then interacts with the device via a "downloadable application" on their smart device, which displays sonar returns, water temperature, and other data. (Compl. ¶¶18, 37f). The complaint alleges the Deeper Pro+ model specifically contains an "internal GPS receiver" that enables it to create bathymetric maps, even when fishing from shore. (Compl. p. 21). A product screenshot shows the Deeper device connecting to a smartphone via a local Wi-Fi network named "Deeper-E9C2." (Compl. p. 10).
IV. Analysis of Infringement Allegations
’592 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a wireless fish finder device configured to be deployed on water and to communicate with a remote terminal using WIFI | The Deeper Pro+ is a wireless fish finder device that is cast into water and communicates with a smartphone via Wi-Fi. A provided infographic illustrates this use case. (Compl. p. 7). | ¶33a | col. 10:17-18 |
| a housing configured to be deployed on water | The Deeper Pro+ has a buoyant, spherical housing designed for deployment in water. | ¶33b | col. 10:19-20 |
| a fish finder module arranged at the housing and comprising a temperature sensor and a temperature processing circuit mechanically connected to the temperature sensor | The device allegedly contains a fish finder module with a temperature sensor. A diagram points to "Water sensor contacts" and an app screenshot displays water temperature. (Compl. p. 8). | ¶33c | col. 10:21-25 |
| a data communication module arranged in the housing and mechanically connected to the fish finder module | The device allegedly has an internal data communication module connected to the fish finder module. | ¶33d | col. 10:26-28 |
| a WIFI module... configured to generate a WIFI hotspot to communicate between the housing and the remote terminal | The device allegedly has a Wi-Fi module that generates its own network, to which a smartphone connects. A screenshot shows a phone connected to a "Deeper-E9C2" Wi-Fi network. (Compl. p. 10). | ¶33e | col. 10:29-33 |
’639 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a fish finder module... wherein the fish finder module comprises a sonar detecting assembly... and a GPS module for locating a longitude and a latitude | The Deeper Pro+ allegedly contains a fish finder module with both sonar and an "internal GPS receiver." A marketing blurb states this enables the creation of bathymetric maps even when fishing onshore. (Compl. p. 21). | ¶47c | col. 11:32-37 |
| a data communication module arranged in the housing and mechanically connected to the fish finder module | The complaint alleges the Deeper Pro+ has an internal data communication module connected to the other components. | ¶47d | col. 11:38-40 |
| a WIFI module arranged in the housing, mechanically connected to the data communication module, and configured to generate a WIFI hotspot... | The Deeper Pro+ is alleged to have a Wi-Fi module to create a local network for communicating with the user's phone. A diagram of the product's internal components labels an "Antenna." (Compl. p. 22). | ¶47e | col. 11:41-45 |
- Identified Points of Contention:
- Technical Question: A primary factual dispute for the ’639 patent will likely be whether the Deeper Pro+ device contains a "GPS module" that operates as claimed. The complaint's evidence includes a marketing text box stating the device "uses the internal GPS receiver" for onshore mapping (Compl. p. 21); the case may turn on whether discovery confirms this specific technical implementation.
- Scope Question: For both patents, a potential point of contention is the scope of the term "generate a WIFI hotspot." The defense may argue that the device's creation of a point-to-point ADHOC network does not meet the common or technical definition of a "hotspot," which may be argued to imply the provision of internet access.
V. Key Claim Terms for Construction
The Term: "generate a WIFI hotspot" (from ’592 Claim 1, ’639 Claim 1)
- Context and Importance: This is a core functional limitation of the invention. The outcome of the case may depend on whether the accused devices' creation of a self-contained, ad-hoc Wi-Fi network for direct device-to-device communication falls within the scope of this term.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification's objective is to use "the wireless communication way of WIFI" to connect to smart devices, without limiting the type of Wi-Fi network. (’592 Patent, col. 2:40-49). The patent contrasts its solution with prior art ASK modulation, suggesting any modern Wi-Fi based connection is an improvement.
- Evidence for a Narrower Interpretation: The specification discusses operation in "ADHOC mode (point-to-point)," which a party could argue is technically distinct from a "hotspot," a term often associated with an access point (AP) providing broader network or internet connectivity. (’592 Patent, col. 6:5-12).
The Term: "GPS module" (from ’639 Claim 1)
- Context and Importance: This term is the key differentiator for the ’639 patent and the infringement allegation against the Deeper Pro+. The dispute will center on what hardware and/or software combination in the accused device satisfies this limitation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent simply claims "a GPS module... for locating longitude and latitude" and describes its function as such. (’639 Patent, Claim 1; col. 4:41-45). This lack of specific structural limitations could support a construction that covers any component or set of components within the housing that performs this function.
- Evidence for a Narrower Interpretation: A party could argue that in the context of the art, a "GPS module" implies a specific, self-contained hardware chip. The specification does not provide a specific definition or embodiment, which may make it difficult to argue for a construction narrower than its plain and ordinary meaning.
VI. Other Allegations
- Indirect Infringement: The complaint does not contain a separate count for indirect infringement. However, it alleges facts that may support such a claim, specifically that Defendant provides a "downloadable application for user control" of the sonar data, and that its instructions and marketing show users how to pair the device with a phone to create the infringing system. (Compl. ¶¶18, 33, 37f).
- Willful Infringement: The complaint alleges willful infringement of both patents. For the ’592 patent, it cites pre-suit knowledge from at least July 2017 and, notably, Defendant's continued infringement after its own IPR challenge to the patent's validity was denied by the PTAB. (Compl. ¶39). For the ’639 patent, it alleges knowledge from at least June 2018. (Compl. ¶49).
VII. Analyst’s Conclusion: Key Questions for the Case
- A key evidentiary question will be one of technical implementation: does the accused Deeper Pro+ device contain a "GPS module" that independently determines its location as claimed in the ’639 patent, or does it rely on the connected smartphone's GPS in a way that falls outside the claim scope? The complaint's allegations on this point are specific, setting up a focused factual dispute.
- The case may also turn on a question of definitional scope: can the claim term "generate a WIFI hotspot" be construed to read on the point-to-point, ad-hoc network created by the accused devices, or does intrinsic evidence limit the term to networks with different characteristics, such as internet-providing access points?
- Finally, a central question for damages will be willfulness: did Defendant's conduct, particularly its continued sales of the accused products after its own unsuccessful IPR challenge on the ’592 patent, constitute willful infringement that would warrant enhanced damages under 35 U.S.C. § 284?