Innovative Timing Systems LLC v. End Max Sports Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Innovative Timing Systems, LLC (Missouri)
  • Defendant: End Max Sports, Inc. d/b/a Fleet Feet Sports and Fleet Feet St. Louis (Missouri)
  • Plaintiff’s Counsel: NIRO MCANDREWS, LLP
• Case Identification: 4:19-cv-02246, E.D. Mo., 07/26/2019
• Venue Allegations: Plaintiff alleges venue is proper because Defendant is a Missouri corporation with its principal place of business, a registered agent, and multiple regular and established places of business within the district, and because the alleged acts of infringement occurred there.
• Core Dispute: Plaintiff alleges that Defendant’s race timing systems and services, which utilize RFID tags, infringe four patents related to RFID tag assemblies designed for use in timed sporting events.
• Technical Context: The technology involves RFID tags attached to athletes, typically on race bibs, to automate the process of accurately recording times at various points along a race course.
• 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

Date	Event
2010-01-29	Earliest Patent Priority Date for all patents-in-suit
2015-07-07	U.S. Patent No. 9,076,053 Issues
2016-03-15	U.S. Patent No. 9,286,563 Issues
2018-10-09	U.S. Patent No. 10,095,973 Issues
2019-06-04	U.S. Patent No. 10,311,354 Issues
2019-06-XX	Defendant allegedly provides infringing race timing services
2019-07-26	Complaint Filing Date

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

U.S. Patent No. 9,076,053, Method of Operating a Spaced Apart Extended Range RFID Tag Assembly, Issued July 7, 2015

The Invention Explained

• Problem Addressed: The patent family addresses the problem of reduced RFID tag performance when the tag is mounted near an RF-absorbing medium like the human body, a common scenario in race timing where tags are placed on athletes' bibs (Compl. ¶10). This proximity to the body, combined with harsh environmental conditions like sweat and dirt, can weaken RF signals and lead to missed reads (Compl. ¶10; ’973 Patent, col. 1:31-44).
• The Patented Solution: The invention describes a method of operating an RFID tag assembly that uses a spacer, typically made of foam, to create a specific distance between the tag's antenna and the user's body (’973 Patent, col. 4:1-8). This spacing allows a two-sided planar antenna to receive a "first portion" of RF energy directly from a remote transceiver and a "second portion" of RF energy indirectly, as it is reflected off the user's body, thereby improving signal reception and operational reliability (’973 Patent, col. 4:20-33).
• Technical Importance: This design directly addresses the signal degradation caused by the human body, a fundamental challenge in wearable RFID applications, by turning the RF-absorbing body into a passive reflector to augment signal strength (Compl. ¶10).

Key Claims at a Glance

• The complaint asserts infringement of at least claims 1-22, with a focus on claim 1 (Compl. ¶18). Based on the infringement allegations for this method patent, independent claim 1 appears to require steps including:
  • Receiving at a first side of a two-sided planar antenna a first portion of RF energy as direct energy from a base station transceiver.
  • Receiving at a second side of the two-sided planar antenna a second portion of RF energy as indirect energy transmitted from the base station.
  • The second side is oriented towards an operating surface (e.g., a human body) and is separated from it by a spacer.
  • Processing the received first and second portions of energy with an RFID semiconductor chip.
  • Generating a reply radio frequency.
• The complaint reserves the right to assert additional claims, including dependent claims (Compl. ¶18).

U.S. Patent No. 9,286,563, Spaced Apart Extended Range RFID Tag Assembly, Issued March 15, 2016

The Invention Explained

• Problem Addressed: This patent addresses the same technical challenge as the ’053 Patent: unreliable RFID tag performance when used in close proximity to RF-absorbing materials such as a human body during a race (Compl. ¶10; ’973 Patent, col. 1:31-44).
• The Patented Solution: This patent claims the physical apparatus of the RFID tag assembly itself. The assembly includes a substrate with a passive RFID chip and a two-sided antenna, and crucially, a foam spacer attached to the substrate (’973 Patent, Abstract). The spacer is designed to be non-conducting and non-absorbent of RF energy, providing physical separation between the tag and the race participant to mitigate signal loss and enhance performance (’973 Patent, col. 4:1-8).
• Technical Importance: By claiming the tangible assembly, this patent protects the core hardware configuration that enables the method described in the ’053 Patent, providing a structural solution to the problem of RF absorption in wearable timing devices (Compl. ¶10).

Key Claims at a Glance

• The complaint asserts infringement of at least claims 1, 3-6, 8-12, and 15-17, with a focus on claim 1 (Compl. ¶24). Based on the infringement allegations, independent claim 1 appears to be an apparatus claim comprising elements including:
  • A substrate with a first surface for adhering to a race bib and an opposing second planar surface.
  • A passive RFID semiconductor chip.
  • Conductors coupling the chip to a two-sided planar antenna.
  • A foam spacer attached to the substrate, positioned between the race participant and the RFID tag.
  • The foam spacer is non-conducting and does not absorb a significant amount of RF energy.
• The complaint reserves the right to assert additional claims, including dependent claims (Compl. ¶24).

Multi-Patent Capsule: U.S. Patent No. 10,095,973

• Patent Identification: U.S. Patent No. 10,095,973, Methods of Operation of an RFID Tag Assembly for Use in a Timed Event, Issued October 9, 2018 (Compl. ¶13).
• Technology Synopsis: This patent claims a method for timing a race participant by operating an RFID tag assembly that is physically spaced apart from the participant's body (’973 Patent, Abstract). The method involves using the tag's two-sided antenna to receive both direct RF energy from a base station and indirect RF energy that has been transmitted from the station and reflected by the participant's body, thereby enhancing signal integrity (Compl. ¶¶10, 29).
• Asserted Claims: At least claims 1, 3, 8, and 10-16 are asserted (Compl. ¶30).
• Accused Features: The complaint alleges that Defendant's provision of race timing services using the Accused Products constitutes performance of the patented method, as the systems are used to determine the lapse time of race participants (Compl. ¶29).

Multi-Patent Capsule: U.S. Patent No. 10,311,354

• Patent Identification: U.S. Patent No. 10,311,354, Methods of Operation of an RFID Tag Assembly for Use in a Timed Event, Issued June 4, 2019 (Compl. ¶14).
• Technology Synopsis: This patent claims a method of operating an RFID assembly where a tag, separated from a race participant by a foam spacer, receives RF energy on two sides of a planar antenna (’354 Patent, Abstract). The RFID chip is configured to process the energy from both the direct and indirect reception paths and send a reply, enabling reliable operation in a timed event (Compl. ¶35).
• Asserted Claims: At least claims 1, 2, 4-6, 8-13, 15-17, and 19-30 are asserted (Compl. ¶36).
• Accused Features: The complaint alleges that Defendant's use of the Accused Products, which include a tag with a two-sided antenna and a foam spacer, practices the claimed method of receiving and processing RF energy from two sides of the antenna to time race participants (Compl. ¶35).

III. The Accused Instrumentality

Product Identification

The Accused Products are race tracking systems that use "BibTag" and "ThinTag" tracking chips, or other substantially similar chips (Compl. ¶16).

Functionality and Market Context

The accused system consists of a base station transceiver that transmits RF energy, antennas (such as antenna mats), and the BibTag or ThinTag RFID chips that are affixed to race bibs worn by participants (Compl. ¶17). The complaint provides an annotated photograph showing the accused chip's components, including a passive RFID semiconductor chip, conductors, and a two-sided planar antenna (Compl. ¶23, image on p. 9). A key feature is a foam spacer attached to the tag, which physically separates the tag from the athlete's body (Compl. ¶17). The complaint alleges these systems are used by Defendant to provide commercial race timing services for events such as 5K races and triathlons (Compl. ¶¶3, 7).

IV. Analysis of Infringement Allegations

9,076,053 Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
[A method of operating an RFID tag assembly having] a two-sided planar antenna... and a foam spacer	The Accused Products have a two-sided planar antenna and a foam spacer composed of material that does not significantly absorb radio waves.	¶17	col. 4:1-3
...receiving at the first side of the two-sided planar antenna... direct energy from the base station antenna	The side of the antenna oriented away from the race participant receives RF energy directly from the base station antenna.	¶17	col. 4:21-25
...receiving at the second side of the two-sided planar antenna... indirect energy when the race participant's body absorbs a significant amount of RF energy but reflects another amount	The side of the antenna oriented toward the body receives RF energy indirectly when the participant's body absorbs a significant amount of RF energy but reflects another amount toward the antenna.	¶17	col. 4:25-30
...the semiconductor chips process the received energy and send out unique RF signals	The semiconductor chips in the Accused Products process the received energy from both sides and transmit unique RF signals in response.	¶17	col. 4:31-33

• Identified Points of Contention:
  • Scope Questions: A central question may be whether the accused method of receiving RF energy reflected off the human body constitutes receiving "indirect energy as transmitted from the... base station transceiver" as required by the claim language. The analysis would focus on whether the reflection from the body alters the energy in a way that takes it outside the claim's scope.
  • Technical Questions: The complaint alleges the foam spacer "does not significantly absorb radio waves" (Compl. ¶17). Factual questions may arise regarding the actual absorption properties of the accused spacer material and whether this meets the "non-absorbing" limitation of the patent. The complaint includes a photograph showing the foam spacer of an accused BibTag (Compl. ¶17, image on p. 6).

9,286,563 Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
[An RFID tag assembly comprising] a substrate having first surfaces configured to be adhered to a race bib and opposing second planar surfaces	The Accused Products include tags with substrates having first surfaces configured to be adhered to a race bib and opposing second planar surfaces.	¶23	col. 3:55-58
...a passive RFID semiconductor chip... coupled... to a two-sided planar antenna	The Accused Products include a passive RFID semiconductor chip [A] coupled by conductors [B] to a two-sided planar antenna [C]. The complaint provides a labeled photograph identifying these components.	¶23	col. 6:4-6
...foam spacers that are non-conducting and do not absorb a significant amount of... RF energy	The Accused Products include foam spacers that are non-conducting and do not absorb a significant amount of 860 to 960 MHz RF energy.	¶23	col. 4:1-4
...the foam spacers are attached to the substrates and are positioned between the race participants and the RFID tags	The foam spacers are attached to the substrates and are positioned between the race participants and the RFID tags.	¶23	col. 3:65-67

• Identified Points of Contention:
  • Scope Questions: The term "significant amount" is not defined in the patent and is inherently subjective. The parties may dispute the threshold for what constitutes a "significant amount" of RF energy absorption, which could be a central issue for claim construction.
  • Technical Questions: The complaint provides thickness measurements for the accused spacers ("approximately 7/32nds of an inch" for BibTag) (Compl. ¶23). A technical question will be whether this specific thickness, in combination with the material's properties, is sufficient to achieve the functional purpose described in the patent and satisfy the claim limitations.

V. Key Claim Terms for Construction

• The Term: "non-absorbing of a substantial amount of energy"
• Context and Importance: This term is critical because the invention's core function relies on the spacer material being RF-transparent to allow for the reception of indirect, reflected energy. The definition of "substantial amount" will determine whether the accused foam spacers, which the complaint alleges do not "significantly" absorb energy, meet this limitation. Practitioners may focus on this term because it is a relative term of degree that is likely indefinite without further construction.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification repeatedly uses the general phrase "non-absorbing of a substantial amount of energy" without specifying a precise quantitative threshold or material type beyond "foam" (’973 Patent, col. 4:2-3). This may support an argument that the term should be understood by its functional outcome: whether the material permits enough RF energy to pass through to enable the tag to operate as intended.
  • Evidence for a Narrower Interpretation: A defendant could argue that the term should be construed in light of the specific embodiments, which describe a "foam material" (’973 Patent, col. 3:66). This could suggest that the properties should be limited to those inherent in the types of foam contemplated by the inventor at the time, potentially excluding other materials or foams with different absorption characteristics.

VI. Other Allegations

The complaint does not provide sufficient detail for analysis of indirect or willful infringement, as the counts are limited to direct infringement under 35 U.S.C. § 271(a).

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

• A core issue will be one of definitional scope: can the qualitative claim term "non-absorbing of a substantial amount of energy" be construed with sufficient clarity to determine if the accused foam spacers, which allegedly do not "significantly" absorb RF energy, fall within its bounds? The resolution of this claim construction dispute may be dispositive for infringement.
• A key evidentiary question will be one of technical operation: does the RF energy that reflects off an athlete's body and is subsequently received by the accused tag meet the claim limitation of "indirect energy as transmitted from the... base station transceiver"? This will likely require expert testimony on the physics of RF propagation and reflection in the specific environment of a running event.