Multimodal LLC v. ZKTeco USA LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Multimodal LLC (Delaware)
  • Defendant: ZKTeco USA LLC (New Jersey)
  • Plaintiff’s Counsel: Garibian Law Offices, P.C.; Rabicoff Law LLC
• Case Identification: 2:23-cv-03528, D.N.J., 06/29/2023
• Venue Allegations: Venue is alleged to be proper in the District of New Jersey because Defendant is incorporated in the state, has an established place of business in the District, and has allegedly committed acts of infringement in the District.
• Core Dispute: Plaintiff alleges that Defendant’s unspecified object-recognition security products infringe a patent related to using an object's surface texture as a key to operate a lock.
• Technical Context: The technology concerns biometric and physical-object authentication systems, where the unique microscopic surface texture of an everyday object is scanned and used for identification to grant access.
• 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

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

U.S. Patent No. 7,045,763 - "Object-recognition lock," issued May 16, 2006

The Invention Explained

• Problem Addressed: The patent identifies the drawbacks of conventional security systems, noting that traditional keys can be lost or copied, and combination locks can be forgotten or "picked" (’763 Patent, col. 1:11-47). It further notes that while pattern-recognition systems (e.g., retinal scanners) exist, they are often expensive and limited in the types of patterns they can recognize, restricting their widespread use (’763 Patent, col. 1:48-58).
• The Patented Solution: The invention proposes a lock system that uses a scanner to generate an image signal indicative of the "surface texture" of an ordinary object, such as a rock, a piece of wood, or a body part (’763 Patent, col. 5:19-24). A controller compares this scanned texture to a pre-stored reference texture; if they match, a lock assembly is actuated (’763 Patent, Abstract; col. 2:30-39). The system focuses on identifying variations in surface features at a "micro-level," described as being in the range of 5 to 500 microns, to use the object's unique physical characteristics as a "key" (’763 Patent, col. 2:39-43).
• Technical Importance: This approach sought to create a secure, flexible, and inexpensive alternative to both traditional locks and high-end biometric systems by enabling nearly any object with a stable, unique surface texture to function as a key (’763 Patent, col. 7:31-50).

Key Claims at a Glance

• The complaint alleges infringement of "one or more claims" and "the Exemplary '763 Patent Claims," which are identified in an incorporated exhibit that was not filed with the complaint (Compl. ¶11). Independent claims 1 (method) and 8 (apparatus) are representative of the patent's scope.
• Independent Claim 1 (Method):
  • scanning an object for at least one surface texture of the object;
  • generating at least one image signal indicative of the at least one surface texture;
  • comparing the at least one surface texture of the object indicated by the at least one image signal with a reference texture; and
  • actuating the lock if the at least one surface texture of the object matches the reference texture,
  • wherein the comparison occurs at a "micro-level in which depths of features of the surface texture and features of the reference texture are in a range of 5 microns to 500 microns."
• Independent Claim 8 (Apparatus):
  • a scanner... generating at least one image signal indicative of a surface texture of an object;
  • a controller communicatively coupled to said scanner, said controller determining said surface texture from said at least one image signal, said controller comparing said surface texture of said object with a reference texture;
  • a lock assembly communicatively coupled to said controller, said lock assembly operable between a closed position and an open position by said controller when said surface texture of said object matches said reference texture; and
  • a user interface operatively associated with said controller... operable to establish and change settings for said controller.
• The complaint does not explicitly reserve the right to assert dependent claims, but refers generally to infringement of "one or more claims" (Compl. ¶11).

III. The Accused Instrumentality

Product Identification

• The complaint does not identify any specific accused products by name. It refers to "the Defendant products identified in the charts incorporated into this Count below (among the 'Exemplary Defendant Products')" (Compl. ¶11). However, the referenced charts (Exhibit 2) were not filed with the public complaint.

Functionality and Market Context

• The complaint does not provide any description of the accused products' functionality, operation, or market position beyond the conclusory allegation that they "practice the technology claimed by the '763 Patent" (Compl. ¶16). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint alleges infringement through claim charts in an "Exhibit 2," which it incorporates by reference (Compl. ¶¶16, 17). As this exhibit was not provided with the filed complaint, a detailed claim chart summary cannot be constructed. The complaint's narrative theory alleges that the "Exemplary Defendant Products" directly infringe by "making, using, offering to sell, selling and/or importing" products that "satisfy all elements of the Exemplary '763 Patent Claims" (Compl. ¶¶11, 16).

• Identified Points of Contention: Based on the patent and the general nature of the allegations, the dispute may raise several questions:
  • Technical Questions: A central evidentiary question will be whether the accused products, once identified, actually scan and compare surface features at the specific "micro-level" required by certain claims (e.g., within the "5 microns to 500 microns" range specified in claim 1) ('763 Patent, col. 8:1-3). The method of generating the "image signal" and the algorithms used for comparison will be technically significant.
  • Scope Questions: What is the scope of "surface texture"? The patent provides examples ranging from a rock to a human palm (’763 Patent, col. 5:19-24). The litigation will need to establish how this term applies to the specific technology used in the accused products (e.g., fingerprint scanners, palm scanners, or other biometric readers).

V. Key Claim Terms for Construction

The Term: "surface texture"

• Context and Importance: This term is the foundation of the invention, defining the physical characteristic that functions as the "key." Its construction will determine what types of physical features fall within the patent's scope. Practitioners may focus on this term to determine if it is limited to naturally occurring, random patterns or if it also covers manufactured or more regular patterns.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification suggests a broad scope by listing diverse examples of objects, including "a rock or stone, a body part (e.g., an elbow, palm, or finger), wood, metal, or plastic objects" (’763 Patent, col. 5:19-24).
  • Evidence for a Narrower Interpretation: The patent frequently describes the feature as a "micro-textured surface" comprising "very small ridges and valleys" (’763 Patent, col. 4:6-9) and distinguishes it from systems that recognize more structured "patterns" (’763 Patent, col. 1:48-52). This could support a narrower construction limited to microscopic, irregular topographies.

The Term: "micro-level"

• Context and Importance: This term, explicitly defined with a numeric range in claim 1, is critical for defining the scale of the claimed invention. The infringement analysis for claim 1, and potentially other claims by implication, will depend entirely on whether the accused devices operate within this specific physical dimension.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: Some claims (e.g., independent claim 8) do not include the explicit numeric range, potentially suggesting that "micro-level" could be interpreted more generally as simply "microscopic" in the context of those claims.
  • Evidence for a Narrower Interpretation: Claim 1 explicitly defines the term: "at a micro-level in which depths of features of the surface texture and features of the reference texture are in a range of 5 microns to 500 microns" (’763 Patent, col. 7:66-col. 8:3). An argument could be made that this definition should inform the meaning of the term throughout the patent. The specification also consistently refers to this size range when describing the surface texture (’763 Patent, col. 2:41-43; col. 4:15-17).

VI. Other Allegations

• Indirect Infringement: The complaint alleges induced infringement, stating that Defendant distributes "product literature and website materials inducing end users and others to use its products in the customary and intended manner that infringes the '763 Patent" (Compl. ¶14).
• Willful Infringement: The willfulness claim is based on post-suit conduct. The complaint alleges that Defendant has had "actual knowledge" of infringement since being served with the complaint and its attached (but un-filed) claim charts, and that its continued infringement is therefore willful (Compl. ¶¶13, 15).

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

1. A central issue will be one of definitional scope and technical proof: Can Plaintiff demonstrate that the accused products—once they are specified—operate by comparing a "surface texture" at the specific "micro-level" defined in the patent's claims (i.e., the 5-500 micron range)? The viability of the infringement case may depend heavily on whether the accused technology functions within this precise, narrow technical window.

2. A threshold issue will be one of pleading sufficiency: The complaint relies entirely on incorporating an external, un-filed exhibit to provide the factual basis for its infringement allegations against specific products. This raises the question of whether the complaint, as filed, contains sufficient factual matter to state a plausible claim for relief under the Twombly/Iqbal standard, a point the Defendant may choose to challenge early in the proceedings.