Mitchell Repair Information Co LLC v. Noregon Systems Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Mitchell Repair Information Company, LLC (Delaware)
  • Defendant: Noregon Systems, Inc. (North Carolina)
  • Plaintiff’s Counsel: Brinks Gilson & Lione
• Case Identification: 1:18-cv-00500, M.D.N.C., 03/21/2019
• Venue Allegations: Venue is alleged to be proper as Defendant is a North Carolina corporation that resides and maintains a regular and established place of business in the district, and allegedly committed tortious acts within the district.
• Core Dispute: Plaintiff alleges breach of contract, false advertising, and unfair competition, asserting that Defendant, a former licensee, created and substituted a derivative, competing product for Plaintiff's licensed vehicle diagnostic software.
• Technical Context: The technology at issue involves systems for retrieving vehicle diagnostic trouble codes and providing technicians with specific, corresponding repair information from a remote database.
• Key Procedural History: The complaint alleges the parties operated under a Service Information Access Agreement (SIA Agreement) beginning in 2012. After Defendant terminated the agreement in late 2017, it allegedly began offering its own competing system to former joint customers. Plaintiff notes that it offered Defendant a license on February 5, 2018, which was declined. While the complaint invokes federal question jurisdiction in part under 28 U.S.C. § 1338, which relates to patents, it does not assert a specific count for patent infringement.

Case Timeline

Date	Event
2008-12-03	Priority Date for U.S. Patent No. 8,954,222
2012-03-01	Mitchell and Noregon enter initial Service Information Access Agreement (SIA I)
2012	Mitchell launches its REPAIR-CONNECT system
2015-02-10	U.S. Patent No. 8,954,222 Issues
2015-07-20	Mitchell and Noregon extend relationship with a second SIA Agreement (SIA II)
2017-09	Noregon informs Mitchell of intent to cancel the SIA Agreement
2017-10	Noregon allegedly substitutes its "Next Step" system via a "software update"
2018-02-05	Mitchell offers Noregon a license, which Noregon declines
2019-03-21	Plaintiff files First Amended Complaint

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

As this action is not pleaded as a patent infringement case, there are no formal patents-in-suit. However, the technology described in the complaint is highly relevant to U.S. Patent No. 8,954,222 ("the ’222 Patent"), which is owned by the Plaintiff.

U.S. Patent No. 8,954,222 - "Method and System for Retrieving Diagnostic Information"

• Patent Identification: U.S. Patent No. 8,954,222, "Method and System for Retrieving Diagnostic Information", issued February 10, 2015.

The Invention Explained

• Problem Addressed: The patent's background describes the process of vehicle repair as being inefficient because technicians must manually sort through voluminous repair manuals to find information pertinent to a specific diagnostic trouble code, a process that is time-consuming and costly (’222 Patent, col. 2:27-34).
• The Patented Solution: The invention is a system that automates this process. A diagnostic tool at a technician's location retrieves a trouble code from a vehicle. The tool then sends a request, including the trouble code and vehicle identifiers (e.g., make, model, year), to a remote server hosting an "electronic library." This library contains diagnostic information that is "tagged" with specific trouble code identifiers. The server processes the request and returns only the relevant information, which the local tool then organizes and displays to the technician as an index of repair topics like wiring diagrams and testing steps (’222 Patent, Abstract; col. 2:46-65).
• Technical Importance: This selective retrieval method was designed to significantly reduce vehicle diagnostic and repair times, a critical factor in the commercial trucking industry where vehicle downtime directly impacts revenue (’222 Patent, col. 2:30-38).

Key Claims at a Glance

• The complaint does not assert any patent claims. Independent claim 1 is representative of the patent's core system.
• The essential elements of independent claim 1 include:
  • A first computing system (e.g., a remote server) with an electronic library of diagnostic information "tagged with trouble code identification ID's."
  • A second computing system (e.g., a technician's tool) that retrieves diagnostic trouble codes (DTCs) from a vehicle.
  • The second computing system is configured to request, from the first system's library, only the specific diagnostic information corresponding to the retrieved DTC.
  • The second system then receives the specific information, stores it locally, and populates its display with an "index" to that information.
• The complaint does not reserve the right to assert any patent claims.

III. The Accused Instrumentality

Product Identification

• The "Next Step" system, also referred to as the "JPRO Professional Diagnostic Software with Next Step" (Compl. ¶4, ¶25).

Functionality and Market Context

• The complaint alleges that the Next Step system is functionally "similar" to Mitchell's REPAIR-CONNECT product (Compl. ¶28). The system is described as working with a diagnostic tool to retrieve a diagnostic trouble code (DTC) from a vehicle. It then allegedly requests, from a "remote electronic library," diagnostic information corresponding to that DTC (Compl. ¶28). Upon receiving the information, it "populated the display of a local computing device... with an index to the diagnostic information" (Compl. ¶28).
• The complaint further alleges that the Next Step system’s user interface includes tabs for "OVERVIEW", "WIRING", and "TROUBLESHOOTING TASKS" that are "derived and adapted" from Mitchell's system (Compl. ¶29). Noregon is alleged to have switched approximately 3,000 users from Mitchell's system to its own Next Step system under the guise of a "software update" in October 2017 (Compl. ¶24, ¶26).
• No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint does not contain a count for patent infringement. The following table analyzes the potential technical overlap between the asserted independent claim of the ’222 Patent and the functionality of the Next Step system as described in the complaint.

’222 Patent Infringement Allegations

Claim Element (from Independent Claim 1)	Described Functionality of Accused Product	Complaint Citation	Patent Citation
a first computing system at a first location, the first computing system including an electronic library of diagnostic information tagged with trouble code identification ID's stored in a first electronic medium;	The Next Step system requests diagnostic information "from a remote electronic library." The complaint alleges the system is an "adaptation" of Mitchell's system, suggesting a similar architecture.	¶28, ¶41	col. 2:46-51
a second computing system at a second location...including a first interface for retrieving one or more diagnostic trouble codes from a second electronic storage medium within a motor vehicle under diagnosis...	The Next Step system functions with a "diagnostic tool" for the "retrieval of a diagnostic trouble code (DTC) from the motor vehicle."	¶28	col. 2:51-55
request, from the electronic library at the first location, specific diagnostic information tagged with a trouble code identification ID corresponding to the first DTC...	The Next Step system "requested, from a remote electronic library, diagnostic information corresponding to the DTC."	¶28	col. 2:58-62
receive the specific diagnostic information requested from the first computing system,	The Next Step system "received the diagnostic information requested from the remote electronic library."	¶28	col. 2:62-63
store the received specific diagnostic information in third electronic storage medium,	The complaint does not provide sufficient detail for analysis of this element. It states the system "populated the display," which implies local processing but does not explicitly describe storage.	¶28	col. 20:56-59
and populate the display of the second computing system with an index to the specific diagnostic information tagged with the trouble code identification ID...	The system "populated the display of a local computing device...with an index to the diagnostic information corresponding to the DTC."	¶28	col. 20:59-65

• Identified Points of Contention:
  • Scope Questions: Should patent infringement be alleged, a key question would concern the scope of "tagged with trouble code identification ID's." The dispute would likely focus on whether Noregon's database architecture uses the specific "tagging" structure disclosed in the ’222 Patent, or merely a conventional searchable database.
  • Technical Questions: A central evidentiary question would be whether the Next Step system actually performs the "store the received specific diagnostic information" step as required by the claim. The complaint's description of "populat[ing] the display" (Compl. ¶28) does not explicitly confirm local storage in a separate medium, which is a required limitation of claim 1.

V. Key Claim Terms for Construction

• The Term: "tagged with trouble code identification ID's" (claim 1)

  • Context and Importance: This term is central to how the patented invention achieves its efficiency. Practitioners may focus on this term because the infringement analysis would hinge on whether Noregon’s database is merely searchable by a trouble code or employs a specific, structured data "tagging" system as contemplated by the patent.
  • Intrinsic Evidence for a Broader Interpretation: The claim language itself is general. The specification states the library is tagged "to allow for the retrieval of only the diagnostic information relevant to the particular trouble codes received" (’222 Patent, col. 4:44-47), which a party might argue covers any method of associating data with codes for selective retrieval.
  • Intrinsic Evidence for a Narrower Interpretation: The specification provides detailed examples of a specific implementation using SGML markup, with "article-id" and "info-obj" tags that create a hierarchical data structure (’222 Patent, Figs. 2-4; col. 8:26-48). A party could argue these embodiments limit the term to a structured, multi-level tagging system, not just a simple database key.

• The Term: "index to the specific diagnostic information" (claim 1)

  • Context and Importance: The complaint explicitly alleges the Next Step system displays an "index" (Compl. ¶28). The patent's Figure 7 provides a clear example of such an index. The construction of this term would determine whether the GUI of the accused product meets this limitation.
  • Intrinsic Evidence for a Broader Interpretation: A party could argue that any organized presentation of links or buttons that allows a user to navigate the retrieved diagnostic information (e.g., wiring, specifications, testing) constitutes an "index."
  • Intrinsic Evidence for a Narrower Interpretation: A party could argue the term is limited by the embodiment in Figure 7, which shows a specific layout with a series of distinct buttons for different categories of information ("Code Description," "Wiring Diagram," "Connector Views," etc.). An accused system that presents information in a simple list or a different format might be argued to fall outside this narrower construction.

VI. Other Allegations

• Indirect Infringement: The complaint does not allege indirect patent infringement. However, it pleads facts that could potentially support such a claim, alleging that Noregon "markets and sells its JPRO system with Next Step" and provides it to end users (Compl. ¶30, ¶36). These allegations of providing an infringing system to third parties could form the basis of an induced infringement claim if direct infringement were established.
• Willful Infringement: The complaint does not allege willful patent infringement. It does, however, allege that Noregon's conduct in the context of its unfair competition and contract claims was "willful and malicious" (Compl. ¶47) and "willful and intentional" (Compl. ¶59, ¶70). The complaint alleges Noregon acted with knowledge, "intentionally concealed the switch" from users (Compl. ¶27), and continued to sell the Next Step system after Mitchell offered a license and Noregon declined (Compl. ¶37). This alleged knowledge and continuation of accused activity after notice is a fact pattern often used to support willfulness in patent cases.

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

• A core issue will be one of technical implementation: The complaint alleges Noregon created a functionally "similar" system (Compl. ¶28) that is a "derivative work" (Compl. ¶41). Should a patent claim be asserted, the case would turn on whether this alleged functional similarity is achieved through the same technical means claimed in the ’222 Patent, particularly regarding the internal "tagging" architecture of the database and the local "storing" of data, or through a different, non-infringing method.
• A second key question is strategic: Given the existence of the ’222 Patent, the decision to frame the case around contract and unfair competition claims, rather than patent infringement, is notable. This raises the question of whether the contractual prohibitions against creating "derivative work" (Compl. ¶41) are perceived to offer a clearer or more advantageous path to relief than the technical and legal hurdles of a patent infringement action.
• Finally, a central question is one of definition and scope: Can the functional descriptions in the complaint (e.g., a system that retrieves information "corresponding to the DTC" and displays an "index") be proven to meet the specific claim limitations of the ’222 Patent, such as "tagged with trouble code identification ID's," or will those terms be construed narrowly based on the patent's specific embodiments, creating a path for non-infringement?