Inventergy LBS LLC v. Casio America Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Inventergy LBS, LLC (Delaware)
  • Defendant: Casio America, Inc. (New York)
  • Plaintiff’s Counsel: Stamoulis & Weinblatt, LLC; Rabicoff Law LLC
• Case Identification: 2:19-cv-12210, D.N.J., 05/06/2019
• Venue Allegations: Venue is alleged to be proper in the District of New Jersey because Defendant Casio America, Inc. is headquartered in the district and has conducted systematic and continuous business there, including alleged acts of patent infringement.
• Core Dispute: Plaintiff alleges that Defendant’s WSD-30 series of smartwatches infringes a patent related to remotely configurable tracking devices.
• Technical Context: The technology concerns personal tracking devices and methods to remotely manage their operational parameters to balance performance features with constraints such as battery life and network data usage.
• Key Procedural History: The asserted patent claims priority from a provisional application filed in 2008 and is a divisional of an application that has since issued as a separate patent. The complaint does not specify any prior litigation or administrative proceedings involving the patent-in-suit.

Case Timeline

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

U.S. Patent No. 9,219,978 - "System and Method for Communication with a Tracking Device"

• Patent Identification: U.S. Patent No. 9,219,978, "System and Method for Communication with a Tracking Device," issued December 22, 2015.

The Invention Explained

• Problem Addressed: The patent identifies a need to improve communication with tracking devices beyond simple location reporting, while also addressing the technical challenges of minimizing power consumption and network airtime costs, which were significant concerns in prior art systems (Compl. ¶10; ’978 Patent, col. 1:39-51).
• The Patented Solution: The invention is a tracking device that can be remotely reconfigured by a remote system. The device comprises a location detector, a communication module, memory, and a processor. Crucially, it includes a "configuration routine" that allows a remote system to modify the device's "configuration data," thereby altering its functionality—for example, changing how often it reports its location or how it buffers data when out of communication range (’978 Patent, col. 2:1-16, Abstract). This provides "functional access" to the device, allowing its behavior to be dynamically managed (’978 Patent, col. 2:14-16).
• Technical Importance: This approach allows for dynamic optimization of the device's operation, enabling a user or system to balance the need for detailed tracking information against the practical limits of battery life and data costs (’978 Patent, col. 1:45-51).

Key Claims at a Glance

• The complaint asserts direct infringement of at least independent Claim 1 (Compl. ¶13).
• The essential elements of Claim 1 of the ’978 Patent are:
  • A location detector operative to determine locations of the tracking device;
  • A communication device operative to communicate with a remote system;
  • Memory for storing data and code, including location and configuration data;
  • A processor operative to execute code to impart functionality that depends on the configuration data;
  • A configuration routine operative to modify the configuration data in response to a communication from the remote system;
  • A buffering routine operative to buffer location data when the communication device is unable to communicate with the remote system;
  • A reporting routine operative to transmit the buffered location data when the communication device is able to communicate with the remote system.
• The complaint does not explicitly reserve the right to assert dependent claims.

III. The Accused Instrumentality

Product Identification

• The accused instrumentality is the Casio WSD-30 smartwatch (Compl. ¶13).

Functionality and Market Context

• The Casio WSD-30 is a smartwatch featuring a location-tracking capability using GPS, GLONASS, and Michibiki satellite systems (Compl. ¶14, Fig. 2). Figure 2 from the complaint provides a partial list of the device's main specifications, including its GPS compatibility (Compl. ¶14, Fig. 2). The device includes communication hardware such as Bluetooth and Wi-Fi, as well as onboard memory for storing data (Compl. ¶¶15-16, Fig. 3). The complaint alleges that the watch's functionality can be configured through a companion smartphone application, the "CASIO MOMENT SETTER+" App (Compl. ¶18, Fig. 6). It is also alleged to store location data when it cannot communicate with a server and later transmit that data (Compl. ¶¶19-20).

IV. Analysis of Infringement Allegations

’978 Patent Infringement Allegations

Identified Points of Contention

• Scope Questions: The complaint appears to equate the claimed "remote system" with a paired smartphone running the CASIO MOMENT SETTER+ app and/or Casio's servers. The defense may argue that the patent, which depicts a client-server architecture over an internetwork (’978 Patent, Fig. 1), contemplates a system more "remote" than a locally-paired personal device. This raises the question of whether a smartwatch-and-app combination falls within the scope of the claimed system.
• Technical Questions: A key question will be whether the accused functionality performs the specific functions required by the claims. The "reporting routine" limitation may be a particular point of dispute. The complaint's supporting evidence describes a user-initiated procedure to "export a route stored in watch memory" (Compl. ¶20, Fig. 8), which raises the question of whether this manual export process meets the claim's requirement for a routine that transmits data "when said communication device is able to communicate," a condition that may imply an automatic function.

V. Key Claim Terms for Construction

• The Term: "configuration routine"

• Context and Importance: This term is central to the invention's novelty of a remotely reconfigurable device. The outcome of the case may depend on whether the accused functionality—changing "watch settings" via a companion app (Compl. ¶18, Fig. 6)—is legally equivalent to the claimed routine. Practitioners may focus on this term because its construction will define how much control and what type of modifications are required to infringe.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The claim itself broadly recites "a configuration routine operative to modify said configuration data responsive to a communication from said remote system" (’978 Patent, col. 42:43-46). Plaintiff may argue this language does not limit the specific types of configuration possible.
  • Evidence for a Narrower Interpretation: The specification provides numerous concrete examples of what the configuration data modifies, including location reporting intervals, data buffering intervals, the power state of the location detector, and geofence parameters (’978 Patent, col. 2:17-51). Defendant may argue that the term should be limited to these types of core operational tracking parameters rather than general device settings.

• The Term: "buffering routine operative to buffer location data ... when said communication device is unable to communicate with said remote system"

• Context and Importance: This limitation defines a specific, conditional behavior of the device. The infringement analysis will depend on whether the accused WSD-30 smartwatch automatically stores location data specifically because of a loss of communication, as the claim language suggests.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The claim language itself does not specify the mechanism that triggers the buffering, only that it operates "when" the device is unable to communicate. Plaintiff may argue any storage of location data that occurs during a period of no connectivity meets this limitation.
  • Evidence for a Narrower Interpretation: The patent describes this feature in the context of being "out of communication range" and then buffering data until a connection is re-established (’978 Patent, col. 2:24-30, col. 3:5-11). Defendant may argue this implies an automatic, state-aware process where the loss of connectivity itself is the trigger, potentially distinct from a routine that simply logs all data to memory regardless of connection status.

VI. Other Allegations

• Indirect Infringement: The complaint includes only one count for "Direct Infringement" and does not allege specific facts to support claims of induced or contributory infringement (Compl. ¶13).
• Willful Infringement: The prayer for relief seeks enhanced damages for willful infringement (Compl. p. 7, ¶D). However, the complaint does not plead any specific facts alleging that Casio had pre-suit knowledge of the ’978 Patent or engaged in conduct rising to the level of willfulness.

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

• A core issue will be one of definitional scope: can the patent's "tracking device" and "remote system" architecture, which the specification illustrates as a distinct client-server model, be construed to cover a consumer smartwatch that pairs and communicates with a user's own smartphone?
• A second central question will be one of functional operation: does the accused product's software perform the specific, conditional actions required by the claims? In particular, the case may turn on whether the accused "reporting routine" transmits buffered data automatically upon re-establishing communication, or whether the user-initiated "export" function described in the complaint (Compl. ¶20, Fig. 8) creates a functional mismatch with the claimed invention.
• Finally, the dispute will likely involve a claim construction battle over the meaning of "configuration routine." The court's interpretation will determine whether the ability to modify general device settings via a companion app is sufficient to meet the claim limitation, or if the patent requires the ability to modify more specific operational tracking parameters as detailed in the specification.