DCT
8:20-cv-00159
Coding Tech LLC v. HyVee Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Coding Technologies, LLC (Texas)
- Defendant: HyVee, Inc. (Iowa)
- Plaintiff’s Counsel: Goosmann Law Firm, PLC
- Case Identification: 8:20-cv-00159, D. Neb., 04/24/2020
- Venue Allegations: Plaintiff alleges venue is proper because Defendant conducts business and commits acts of infringement in the district, pointing to a regular and established place of business in Kearney, Nebraska.
- Core Dispute: Plaintiff alleges that Defendant’s use of QR codes in its promotional media infringes a patent related to methods for providing mobile services by scanning a code-pattern.
- Technical Context: The technology involves using a camera-equipped mobile device to scan a visual code, which then directs the device to retrieve online content, streamlining the link between physical and digital information.
- Key Procedural History: The complaint does not mention any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history related to the patent-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2003-03-07 | U.S. Patent No. 8,540,159 Priority Date |
| 2013-09-24 | U.S. Patent No. 8,540,159 Issue Date |
| 2020-03-30 | Date of alleged infringing activity shown in complaint screenshot |
| 2020-04-24 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,540,159 - "Method for Providing Mobile Service Using Code-pattern"
- Patent Identification: U.S. Patent No. 8,540,159, "Method for Providing Mobile Service Using Code-pattern," issued September 24, 2013 (the ’159 Patent).
The Invention Explained
- Problem Addressed: The patent's background section identifies the inconvenience for users of manually typing a website URL from a physical advertisement into a mobile device to get more information about a product ('159 Patent, col. 1:44-50). It also notes the difficulty travelers may have in obtaining location-specific information or services, such as calling a taxi, without readily available contact details ('159 Patent, col. 1:56-62).
- The Patented Solution: The invention provides a method where a user terminal, such as a smartphone, uses its camera to capture an image of a "code pattern" like a QR code. The terminal’s processor then automatically decodes this pattern to obtain embedded information (e.g., a URL), sends a request to a server using that information, and receives corresponding content back from the server ('159 Patent, Abstract; FIG. 5). This creates a direct and convenient link from a physical object to online content.
- Technical Importance: The technology aimed to make mobile services more convenient by automating the process of accessing web-based content referenced in the physical world, thereby more effectively inducing customers to visit websites from advertisements ('159 Patent, col. 1:31-35, 1:51-53).
Key Claims at a Glance
- The complaint asserts infringement of at least Claim 1 of the ’159 Patent (Compl. ¶13).
- Independent Claim 1 recites a method with the following essential elements:
- obtaining a photographic image of a code pattern by a camera of the user terminal;
- processing, by a processor of the user terminal, the photographic image of the code pattern to extract the code pattern from the photographic image;
- decoding the extracted code pattern by the processor of the user terminal into code information;
- transmitting a content information request message to a server based on the code information; and
- receiving content information from the server in response to the content information request message.
- The complaint notes that infringement is alleged of "one or more claims," suggesting the right to assert additional claims, including dependent claims, is reserved (Compl. ¶13).
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is Defendant HyVee's system and method of "using and/or incorporating code patterns in connection with promotional media" (Compl. ¶13). This is exemplified by a promotional display for "Baked Tilapia" that includes a QR code (Compl. ¶14).
Functionality and Market Context
- The complaint alleges that a user can scan the QR code on HyVee's promotional material with a smartphone (Compl. ¶15). The smartphone's processor then decodes the QR code into a hyperlink (URL) and sends a request to a server, which in turn delivers a HyVee webpage containing recipe information to the user's device (Compl. ¶¶17-19). A screenshot in the complaint shows the QR code on a HyVee promotional flyer for tilapia (Compl. p. 3). The complaint alleges this system is used for promotion but provides no further market context.
IV. Analysis of Infringement Allegations
’159 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| obtaining a photographic image of a code pattern by a camera of the user terminal; | A user obtains an image of the QR code on Defendant's promotional media using a smartphone camera. This is illustrated with a screenshot of a smartphone's camera view framing the QR code. (Compl. p. 4). | ¶15 | col. 38:39-40 |
| processing, by a processor of the user terminal, the photographic image of the code pattern to extract the code pattern from the photographic image; | A processor of the user's smartphone processes the photographic image to extract the QR code pattern from the image. | ¶16 | col. 38:41-44 |
| decoding the extracted code pattern by the processor of the user terminal into code information; | The smartphone processor decodes the QR code pattern to obtain code information, which is alleged to be a hyperlink (URL). A provided screenshot shows the decoded URL. (Compl. p. 6). | ¶17 | col. 38:45-47 |
| transmitting a content information request message to a server based on the code information; | Based on the decoded URL, the smartphone transmits a request message (e.g., an HTTP request) to a server to access a webpage. | ¶18 | col. 38:48-50 |
| receiving content information from the server in response to the content information request message. | The smartphone receives content, such as Defendant’s webpage with recipe information, from the server. This is depicted in a screenshot of the HyVee website loaded on a smartphone. (Compl. p. 7). | ¶19 | col. 38:51-52 |
Identified Points of Contention
- Scope Questions: Claim 1 is a method claim performed "by a user terminal." The complaint accuses HyVee, not the end-user. This raises the question of HyVee's liability. The allegation that HyVee infringes "at least through internal testing" (Compl. ¶13) may be an attempt to establish direct infringement, while the overall scenario of providing promotional materials for customer use suggests a potential theory of indirect infringement.
- Technical Questions: The complaint provides a screenshot showing the decoded QR code resolves to "http://qrs.ly/uu53ahr", which appears to be a URL shortening service, not a direct HyVee server address (Compl. p. 6). The claim requires transmitting a request "to a server based on the code information." This raises the question of whether a request to an intermediary URL-shortening server, which then redirects to HyVee's server, meets this limitation, or if this two-step process creates a factual distinction from the claimed method.
V. Key Claim Terms for Construction
The Term: "user terminal"
- Context and Importance: The construction of this term is critical because Claim 1 is a method performed "by a user terminal." The infringement theory against HyVee, a corporate entity, hinges on whether its alleged actions (e.g., "internal testing") constitute performing the method, or if it is accused of inducing infringement by end-users operating their own terminals.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states that a "Personal Computer (PC) or a notebook computer, as well as a mobile terminal, can be used as the user terminal 10" ('159 Patent, col. 8:61-63), suggesting the term is not limited to a specific type of device.
- Evidence for a Narrower Interpretation: The patent consistently depicts the "user terminal" (10) as a single, integrated, portable device (e.g., a mobile phone) that performs the camera, processing, and decoding functions ('159 Patent, FIG. 3). Language describing the method steps as being performed "by a processor of the user terminal" could support a reading that all enumerated processing and decoding steps must occur on a single device controlled by the user.
The Term: "processing... to extract the code pattern from the photographic image"
- Context and Importance: This step is recited as distinct from the subsequent "decoding" step. Practitioners may focus on this term because the accused software may perform image isolation and decoding in what appears to be a single, seamless operation. The case may turn on whether the accused system performs two distinct steps as required by the claim.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification does not provide a specific definition of "extract," which could support an argument that it encompasses any standard initial step in barcode analysis where the relevant pattern is computationally isolated from the rest of the photographic image data before being decoded.
- Evidence for a Narrower Interpretation: The sequential phrasing ("processing...to extract" followed by "decoding the extracted code pattern") suggests two separate and ordered actions. A party could argue this requires evidence of a distinct software module or process step that first isolates the code pattern data from the image data before a separate decoding process begins.
VI. Other Allegations
- Indirect Infringement: The complaint does not explicitly allege "inducement" or "contributory" infringement. However, the factual allegations—that Defendant provides promotional media with QR codes that direct users' phones to its web content (Compl. ¶¶13-14)—may support an unstated theory of induced infringement by encouraging customers to perform the claimed method.
- Willful Infringement: The complaint does not contain allegations of willful infringement or make any claims regarding Defendant's pre- or post-suit knowledge of the ’159 Patent.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of infringement theory: As Claim 1 is a method performed "by a user terminal," can the Plaintiff prove that HyVee is a direct infringer through its alleged "internal testing," or will the case depend on establishing a theory of indirect infringement where HyVee is liable for encouraging its customers to perform the patented method?
- A key evidentiary question will be one of technical operation: Does the accused system's use of an intermediary URL shortening service ("qrs.ly") satisfy the claim limitation of "transmitting a content information request message to a server based on the code information," or does this redirection create a functional mismatch with the process described and claimed in the ’159 patent?