DCT
2:17-cv-02082
Symbology Innovations LLC v. Quest Diagnostics Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Symbology Innovations, LLC (Texas)
- Defendant: Quest Diagnostics Incorporated (Delaware/New Jersey)
- Plaintiff’s Counsel: Zimmerman Law Group; Ferraiuoli LLC
- Case Identification: 2:17-cv-02082, D.N.J., 03/30/2017
- Venue Allegations: Venue is based on Defendant’s principal place of business being located in Madison, New Jersey, within the judicial district.
- Core Dispute: Plaintiff alleges that Defendant’s use of Quick Response (QR) codes in its promotional materials infringes four patents related to methods for retrieving and presenting information about an object on a portable electronic device.
- Technical Context: The technology involves using portable devices like smartphones to scan machine-readable codes to link physical media to digital information, a practice widely used in marketing and information services.
- Key Procedural History: The four asserted patents are part of a single family, all claiming priority to the same 2010 application, which suggests a focused prosecution strategy around a core invention. The complaint does not mention any prior litigation or administrative proceedings involving these patents.
Case Timeline
| Date | Event |
|---|---|
| 2010-09-15 | Earliest Priority Date for ’752, ’369, ’190, and ’773 Patents |
| 2011-08-09 | U.S. Patent No. 7,992,773 Issued |
| 2013-04-23 | U.S. Patent No. 8,424,752 Issued |
| 2013-10-01 | Approximate Date of Accused Brochure Publication (based on © date) |
| 2014-02-18 | U.S. Patent No. 8,651,369 Issued |
| 2015-01-20 | U.S. Patent No. 8,936,190 Issued |
| 2017-03-30 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,424,752 - “System and method for presenting information about an object on a portable electronic device,” Issued April 23, 2013
The Invention Explained
- Problem Addressed: The patent describes a technical environment where users of portable electronic devices may wish to retrieve information about a physical object but may find it difficult to select the correct software application on their device to do so (’752 Patent, col. 3:25-30).
- The Patented Solution: The invention provides a method where a portable device’s camera captures an image of a "symbology" (e.g., a barcode) associated with an object. An application on the device decodes the symbol to get a "decode string," sends that string to a remote server, and then receives and displays information about the object from that server (’752 Patent, Abstract; col. 3:3-19). This process streamlines linking a physical object to its corresponding digital information.
- Technical Importance: This approach automated the process of using a phone's camera to bridge the gap between physical marketing or products and online content, a key enabler for interactive advertising and information-on-demand services (’752 Patent, col. 2:41-54).
Key Claims at a Glance
- The complaint asserts at least Claim 5, which depends on independent Claim 1 (Compl. ¶30).
- Independent Claim 1 requires a method with the following essential elements:
- capturing a digital image using a digital image capturing device that is part of a portable electronic device;
- detecting symbology associated with an object within the digital image using a portable electronic device;
- decoding the symbology to obtain a decode string using one or more visual detection applications residing on the portable electronic device;
- sending the decode string to a remote server for processing;
- receiving information about the object from the remote server wherein the information is based on the decode string of the object;
- displaying the information on a display device associated with the portable electronic device.
- Claim 5 adds the limitation that "the one or more visual detection systems are configured to automatically detect the symbology" (’752 Patent, col. 14:5-7).
U.S. Patent No. 8,651,369 - “System and method for presenting information about an object on a portable device,” Issued February 18, 2014
The Invention Explained
- Problem Addressed: As with the related ’752 patent, this patent addresses the challenge of efficiently using a portable device to retrieve information linked to a symbol found in the physical world (’369 Patent, col. 3:29-41).
- The Patented Solution: The method is nearly identical to that of the ’752 patent: a portable device captures an image containing a symbol, decodes it, communicates with a remote server using the decoded data, and displays the information received from the server (’369 Patent, Abstract). A notable distinction in the claim language is the type of information received from the server, as detailed in Section IV below.
- Technical Importance: The technology represents an iterative refinement in the field of linking physical-to-digital information via mobile devices, focusing on the specific data flow between the device and a remote server (’369 Patent, col. 3:10-19).
Key Claims at a Glance
- The complaint asserts at least Claim 5, which depends on independent Claim 1 (Compl. ¶44).
- Independent Claim 1 requires a method with the following essential elements:
- capturing a digital image using a digital image capturing device that is part of a portable electronic device;
- detecting symbology associated with the digital image using a portable electronic device;
- decoding the symbology to obtain a decode string using one or more visual detection applications residing on the portable electronic device;
- sending the decode string to a remote server for processing;
- receiving information about the digital image from the remote server wherein the information is based on the decode string;
- displaying the information on a display device associated with the portable electronic device.
- Claim 5 adds the limitation that "the one or more visual detection systems are configured to automatically detect the symbology" (’369 Patent, col. 13:5-7).
U.S. Patent No. 8,936,190 - “System and method for presenting information about an object on a portable electronic device,” Issued January 20, 2015
- Patent Identification: U.S. Patent No. 8,936,190, “System and method for presenting information about an object on a portable electronic device,” Issued January 20, 2015 (Compl. ¶19).
- Technology Synopsis: This patent describes a method similar to the ’369 patent, wherein an "electronic device" (a potentially broader term not limited to "portable" devices) captures a digital image of a symbol, decodes it, sends the resulting data to a remote server, and displays information received back from the server about the digital image (’190 Patent, Abstract).
- Asserted Claims: At least Claim 5 (dependent on Claim 1) (Compl. ¶58).
- Accused Features: The complaint alleges infringement by Defendant's system of using QR codes on promotional materials, which are scanned by a device to retrieve and display information from Defendant’s web server (Compl. ¶59-64).
U.S. Patent No. 7,992,773 - “System and method for presenting information about an object on a portable electronic device,” Issued August 9, 2011
- Patent Identification: U.S. Patent No. 7,992,773, “System and method for presenting information about an object on a portable electronic device,” Issued August 9, 2011 (Compl. ¶23).
- Technology Synopsis: This patent discloses a distinct method where a portable device detects and decodes a symbol, then combines a "first amount of information" received from a local application on the device with a "second amount of information" received from a remote server to display "cumulative information" to the user. The patent also requires the visual detection system to run in the background (’773 Patent, Abstract; col. 13:42-53).
- Asserted Claims: At least Claim 4 (dependent on Claim 1) (Compl. ¶72).
- Accused Features: The complaint alleges that when Defendant's QR code is scanned, the portable device receives a "first amount of information" (a URL) from the scanning application, sends a decode string to a remote server, and receives a "second amount of information" (website content), which are then combined for display (Compl. ¶76).
III. The Accused Instrumentality
Product Identification
The accused instrumentality is Defendant's method of using QR codes in promotional materials, specifically including a brochure for its "ClariSure Oligo-SNP Postnatal Chromosomal Microarray Analysis" service (Compl. ¶31, 45, 59, 73).
Functionality and Market Context
The complaint alleges that a user can scan the QR code printed on the Defendant’s brochure with a portable electronic device, such as a smartphone (Compl. ¶33, p. 7). This visual shows a QR code on a brochure next to the text "Learn more by visiting QuestDiagnostics.com or by scanning this QR code." (Compl. p. 7). The device's scanning application then decodes the symbol to obtain a "decode string" (e.g., a URL), sends that string to a remote server, and receives back information related to Defendant’s products or services (Compl. ¶34-35). This information, which includes a website with details about the ClariSure test, is then displayed on the device (Compl. ¶35, p. 8). A screenshot shows the resulting Quest Diagnostics webpage for the "ClariSure® Oligo-SNP" test (Compl. p. 8).
IV. Analysis of Infringement Allegations
’752 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| capturing a digital image using a digital image capturing device that is part of a portable electronic device | Defendant has used a digital image capturing device of a portable electronic device, such as a smartphone camera, to capture a digital image of the QR code. | ¶33 | col. 13:40-42 |
| detecting symbology associated with an object within the digital image using a portable electronic device | The captured digital image is processed by scanning technology on the device, which detects symbology (the pattern in the QR code) associated with an object (the product/service). | ¶34 | col. 13:43-45 |
| decoding the symbology to obtain a decode string using one or more visual detection applications... | The scanning technology decodes the symbology to obtain a decode string. | ¶34 | col. 13:46-48 |
| sending the decode string to a remote server for processing | The decode string is sent to a remote server for further processing. | ¶34 | col. 13:49-49 |
| receiving information about the object from the remote server... | Based on the decode string, the remote server sends information associated with the QR code, which is received by the user of the portable electronic device. | ¶34 | col. 13:50-51 |
| displaying the information on a display device associated with the portable electronic device | The received information is displayed on the device's display, including a website with information related to Defendant's products/services. | ¶34-35 | col. 6:57-65 |
| From dependent Claim 5: ...configured to automatically detect the symbology | The visual detection system (smartphone camera and QR code scanning application) is configured to automatically detect symbology in a QR code when said code is scanned. | ¶36 | col. 13:65-col. 14:2 |
’369 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| capturing a digital image using a digital image capturing device that is part of a portable electronic device | Defendant has used a digital image capturing device of a portable electronic device, such as a smartphone camera, to capture a digital image of the QR code. | ¶47 | col. 13:40-42 |
| detecting symbology associated with the digital image using a portable electronic device | The captured digital image is processed by scanning technology on the device, which detects symbology (the pattern in the QR code) associated with an object (the product/service). | ¶48 | col. 13:43-45 |
| decoding the symbology to obtain a decode string using one or more visual detection applications... | The scanning technology decodes the symbology to obtain a decode string. | ¶48 | col. 13:46-48 |
| sending the decode string to a remote server for processing | The decode string is sent to a remote server for further processing. | ¶48 | col. 13:49-49 |
| receiving information about the digital image from the remote server... | Based on the decode string, the remote server sends information associated with the QR code, which is received by the user of the portable electronic device. | ¶48 | col. 13:50-51 |
| displaying the information on a display device associated with the portable electronic device | The received information is displayed on the device's display, including a website with information related to Defendant's products/services. | ¶49 | col. 6:57-65 |
| From dependent Claim 5: ...configured to automatically detect the symbology | The visual detection system (smartphone camera and QR code scanning application) is configured to automatically detect symbology in a QR code when said code is scanned. | ¶50 | col. 13:5-7 |
Identified Points of Contention
- Scope Question: The ’369 and ’190 patents claim a method of "receiving information about the digital image" from the server, whereas the ’752 patent claims receiving "information about the object." The complaint alleges the same functionality—retrieving a webpage about a medical test—infringes both types of claims (Compl. ¶34, 48). This raises the question of whether information about a medical service can be construed as "information about the digital image" of the QR code that links to it.
- Technical Question: For the ’773 patent, the infringement theory depends on combining two distinct amounts of information. The complaint alleges the "first amount" is the URL obtained from decoding the QR code locally, and the "second amount" is the website content from the server (Compl. ¶76). This raises the question of whether merely decoding a URL constitutes "receiving a first amount of information about the object from the one or more visual detection applications" as contemplated by the patent, or if the patent requires the local application to provide more substantive, object-related information on its own.
- Technical Question: The complaint provides a generic screenshot about multitasking on an iPhone to support its allegation that the "visual detection system... can run in the background" as required by the ’773 patent (Compl. ¶78, p. 19). Whether general operating system functionality satisfies this specific claim limitation may be a point of dispute.
V. Key Claim Terms for Construction
"visual detection application"
- Context and Importance: This term appears in the independent claims of all asserted patents and is central to defining what software on the portable device performs the key steps of the invention. Its construction is critical because the accused infringement rests on the functionality of standard smartphone QR code readers and web browsers. Practitioners may focus on whether a generic QR reader that simply decodes a symbol into a URL and launches a browser qualifies as the "application" described in the specification, particularly for the ’773 patent, which claims the application provides a "first amount of information about the object" (’773 Patent, col. 13:33-37).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification lists several commercially available scanning applications by name, such as "Neomedia's Neo Reader, Microsoft's Smart Tags, Android's Shop Savvy, Red Laser, ScanBuy, etc." (’752 Patent, col. 3:21-24). This may support a construction that covers common, off-the-shelf scanning apps.
- Evidence for a Narrower Interpretation: The specification describes a "symbology management module" that controls various detection applications, analyzes scanned data, and prompts the user, suggesting a more complex and integrated software system than a simple, standalone QR reader (’752 Patent, col. 7:56-col. 8:7; FIG. 5).
"information about the digital image"
- Context and Importance: This term from the ’369 and ’190 patents distinguishes them from the ’752 patent, which claims "information about the object." The infringement analysis for the ’369 and ’190 patents hinges on whether the webpage content provided by Quest's server can be defined as "information about the digital image" of the QR code.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not explicitly define this term, which may allow for an argument that any information retrieved using the data from the digital image (i.e., the decoded URL) is "information about" it.
- Evidence for a Narrower Interpretation: A defendant could argue that the plain meaning of the phrase refers to metadata about the image file itself (e.g., resolution, file type, timestamp) or analysis of its visual properties, not the content of a webpage linked by a symbol within the image. The specification consistently discusses retrieving information about the "object" associated with the symbology, not the image of the symbology itself (’369 Patent, col. 3:9-19).
VI. Other Allegations
Indirect Infringement
The complaint alleges only direct infringement under 35 U.S.C. § 271 and does not include separate counts for induced or contributory infringement.
Willful Infringement
For each of the four patents-in-suit, the complaint alleges that Defendant had knowledge of its infringement "at least as of the service of the present complaint" (Compl. ¶29, 43, 57, 71). This allegation provides a basis for potential post-filing willfulness and a claim for enhanced damages under 35 U.S.C. § 285, which Plaintiff requests in its prayer for relief (Compl. p. 21, ¶e).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: Can the phrase "information about the digital image" (from the ’369 and ’190 patents) be construed to cover webpage content about a medical service that is merely linked to by a QR code contained within that image, or is there a fundamental mismatch between the claim language and the accused functionality?
- A key evidentiary question will concern functional operation: For the ’773 patent, does the accused process of decoding a URL on a device and then loading the corresponding webpage from a server meet the claim requirement of "combining" a "first amount of information" from a local application with a "second amount" from a remote server to create "cumulative information"?
- The case may also turn on a question of technical scope: Is a standard, off-the-shelf QR code scanning application on a smartphone the "visual detection application" managed by a "symbology management module" as described in the patents' detailed specification, or do the patents envision a more specialized and integrated software architecture that is not present in the accused system?