DCT
3:17-cv-00270
InVue Security Products Inc v. Mobile Tech Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: InVue Security Products Inc. (Ohio)
- Defendant: Mobile Tech, Inc. d/b/a Mobile Technologies Inc. and MTI (Indiana)
- Plaintiff’s Counsel: Moore & van Allen, PLLC; Dority & Manning, PA.
- Case Identification: 3:17-cv-00270, W.D.N.C., 05/23/2017
- Venue Allegations: Venue is alleged to be proper because Plaintiff’s principal place of business is in the district, and Defendant allegedly committed acts of infringement there and is subject to personal jurisdiction.
- Core Dispute: Plaintiff alleges that Defendant’s programmable retail security systems infringe a patent related to protecting merchandise with a unique, store-specific security code.
- Technical Context: The technology operates in the retail anti-theft sector, involving systems where programmable electronic keys are used to arm and disarm security devices attached to merchandise.
- Key Procedural History: The complaint was filed on the same day the patent-in-suit issued. It alleges Defendant had knowledge of the patent's impending issuance due to its public file history and ongoing litigation with Plaintiff over related patents. Significantly, an Inter Partes Review (IPR) proceeding (IPR2018-01138) concluded on June 28, 2021, resulting in the cancellation of claims 1-10 and 12-45 of the patent-in-suit. As the complaint asserts infringement of claim 16, which is now cancelled, the substantive basis for this lawsuit as filed appears to have been eliminated by the subsequent IPR decision.
Case Timeline
| Date | Event |
|---|---|
| 2005-12-23 | '472 Patent Priority Date (Provisional App. 60/753,908) |
| 2017-04-27 | '472 Patent application publicly available |
| 2017-05-03 | '472 Patent Issue Notification publicly available |
| 2017-05-23 | '472 Patent Issue Date |
| 2017-05-23 | Complaint Filing Date |
| 2021-06-28 | IPR Certificate issued cancelling claims 1-10 and 12-45 |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,659,472 - "Programmable Security System and Method for Protecting Merchandise"
- Patent Identification: U.S. Patent No. 9,659,472, "Programmable Security System and Method for Protecting Merchandise," issued May 23, 2017.
The Invention Explained
- Problem Addressed: The patent describes a problem in retail security where generic keys used to arm or disarm anti-theft devices can be stolen by shoplifters or dishonest employees and used to defeat security systems at the same store or other retail locations that use a compatible system (’472 Patent, col. 2:1-25).
- The Patented Solution: The invention proposes a three-part system: a programming station, a programmable key, and a security device. The programming station generates a "unique security code" (SDC) that is specific to a single retail store. This SDC is programmed into the memory of a key, which in turn programs the SDC into security devices attached to merchandise. The key is designed to control a security device only if the SDC in the key's memory matches the SDC stored in the security device, thereby preventing a key stolen from one store from being used at another (’472 Patent, Abstract; col. 2:28-44).
- Technical Importance: This approach sought to create a store-specific, digital "lock-and-key" paradigm for retail security, increasing security over systems that relied on one-size-fits-all mechanical or magnetic keys (’472 Patent, col. 2:14-25).
Key Claims at a Glance
- The complaint explicitly alleges infringement of "at least claim 16" (Compl. ¶23), a dependent method claim. The factual allegations in the complaint, however, describe an infringing system, the elements of which correspond to independent system claim 17. Both claims were subsequently cancelled by an IPR proceeding.
- The essential elements of independent system claim 17 include:
- A programming station configured to provide a single security code usable in only a single retail store.
- A programmable key with a memory to store the single security code.
- A security device with an alarm and a memory to store the single security code, which is attached to merchandise.
- The programmable key is configured to control the security device only if the security code in the key matches the code in the device.
- The complaint’s use of "one or more claims" suggests the right to assert other claims was reserved (Compl. ¶1).
III. The Accused Instrumentality
Product Identification
- The accused products are identified as programmable security systems sold by MTI (Compl. ¶14). Specific product and component names include "Freedom Micro," "Intellikey Gen 2," "Multiple Code Processor" ("MCP"), and security devices referred to as a "puck" (Compl. ¶16, ¶24, ¶25).
Functionality and Market Context
- The complaint alleges the accused products operate as a system. An "MCP" programming device provides a single security code for a single retail store. This code is programmed into an "Intellikey." The Intellikey is then used to program and control a "puck" security device attached to merchandise. The Intellikey is alleged to control the puck only when the security code stored in the key matches the code in the puck (Compl. ¶24-26). These products are allegedly used by retailers in the United States (Compl. ¶17).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
’472 Patent Infringement Allegations
| Claim Element (from Independent Claim 17) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a programming station configured to provide a single security code that is usable in only a single retail store | Defendant's "Multiple Code Processor" or "MCP" allegedly provides a single security code usable in only a single retail store. | ¶24 | col. 5:15-24 |
| a programmable key comprising a memory configured to store the single security code... an end of the programmable key is configured to be inserted within the port for programming the security code | Defendant's "Intellikey" is allegedly a programmable key with a memory. An end of the key can be inserted into a port on the MCP to be programmed with the single security code. | ¶24 | col. 7:40-54 |
| a security device comprising an alarm and a memory for storing the single security code... configured to be attached to an item of merchandise... further configured to activate the alarm in response to the integrity of the security device being compromised | Defendant’s security device, or "puck," allegedly has an alarm and memory for the code, attaches to merchandise, and activates an alarm if its integrity is compromised. | ¶25 | col. 7:20-34 |
| wherein the programmable key is configured to control the security device if the single security code stored in the memory of the security device matches the single security code stored by the programmable key | The accused Intellikey is allegedly configured to control the security device only if the security code it stores matches the code stored in the security device. | ¶26 | col. 10:46-54 |
- Identified Points of Contention:
- Scope Questions: A central question for the court would have been the meaning of "usable in only a single retail store." The analysis would focus on whether this requires a technical limitation that prevents multi-store use, or if it is met by a system that is merely configured for single-store use as alleged in the complaint (Compl. ¶24).
- Technical Questions: The complaint alleges the accused MCP "provides" a single security code (Compl. ¶24). A key factual dispute would likely concern how the accused system generates, provides, and stores this code, and what evidence supports the allegation that it is functionally equivalent to the unique, randomly generated code described in the patent specification ('472 Patent, col. 9:22-29).
V. Key Claim Terms for Construction
- The Term: "a single security code that is usable in only a single retail store"
- Context and Importance: This limitation appears to be the primary basis for the patent's novelty claim over prior art. Its construction would be critical to determining infringement, as it defines the core store-specific security feature.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Language in the patent summary stating the Security Disarm Code (SDC) is "unique to a particular retail store" could support an interpretation where any code that is, in practice, used at only one store meets the limitation, regardless of the underlying technology (’472 Patent, col. 2:35-36).
- Evidence for a Narrower Interpretation: The specification's description of the programming station "randomly generat[ing] a unique security code" that "always remains with that programming station" could support a narrower construction requiring a system that technologically generates and enforces a store-locked code (’472 Patent, col. 9:22-41).
VI. Other Allegations
- Indirect Infringement: The complaint alleges both contributory and induced infringement. The contributory claim is based on allegations that the accused products are not staple articles of commerce and are especially adapted for infringing use (Compl. ¶36-38). The inducement claim is based on allegations that MTI provides instructions and training to customers for the infringing use of the products with knowledge of the patent (Compl. ¶49-51).
- Willful Infringement: Willfulness is alleged based on both post-suit and pre-suit knowledge. Post-suit knowledge is based on receipt of the complaint (Compl. ¶30). Pre-suit knowledge is alleged on the basis that MTI was already defending lawsuits on related patents and "would have monitored the prosecution" of the application that led to the '472 patent, making it aware of its issuance (Compl. ¶34, ¶48).
VII. Analyst’s Conclusion: Key Questions for the Case
Given the subsequent cancellation of the asserted claims in IPR, the viability of the case as pleaded is moot. However, at the time of filing, the key questions for the court would have been:
A dispositive issue of claim construction: How should the court define the phrase "a single security code that is usable in only a single retail store"? Does this limitation require a technical enforcement mechanism that locks a code to a specific store, or can it be met by a system merely configured to operate in that manner?
A central evidentiary question: Assuming a construction, what technical evidence demonstrates that Defendant's "Multiple Code Processor" and "Intellikey" system actually implements the specific "single security code" functionality as required by the claims, rather than a more generic key management system?