ScanComm LLC v. Medialabai Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: ScanComm LLC (Delaware)
  • Defendant: MediaLab.AI Inc. (Delaware)
  • Plaintiff’s Counsel: KENT & RISLEY LLC
• Case Identification: 1:24-cv-02148, E.D.N.Y., 03/25/2024
• Venue Allegations: Plaintiff alleges venue is proper because Defendant maintains a regular and established place of business in the district and has committed alleged acts of infringement within the district.
• Core Dispute: Plaintiff alleges that Defendant’s Kik mobile application infringes a patent related to systems for initiating secure, private communication by scanning a QR code.
• Technical Context: The technology concerns the use of machine-scannable labels, like QR codes, to establish a communication link between two users' devices, where the underlying contact information is stored on a remote server to maintain privacy.
• Key Procedural History: The complaint alleges that Plaintiff provided Defendant with notice of infringement, including a detailed claim chart, via a letter dated March 2, 2024. Defendant is alleged to have responded on March 5, 2024, denying infringement but providing no basis for its position. This exchange forms the basis for the willfulness allegation.

Case Timeline

Date	Event
2015-04-23	Priority Date for U.S. Patent No. 11,003,878
2021-05-11	Issue Date for U.S. Patent No. 11,003,878
2024-03-02	Plaintiff sends notice letter and claim chart to Defendant
2024-03-25	Complaint Filed

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

U.S. Patent No. 11,003,878 - System for Communication from a User to the Publisher of a Scannable Label

The Invention Explained

• Problem Addressed: The patent describes a need to facilitate private communication between individuals or between a customer and a business without requiring the parties to immediately exchange sensitive, permanent contact information like phone numbers or email addresses ('878 Patent, col. 2:20-34). Traditional QR codes often link directly to public information, failing to provide a mechanism for controlled, private, or anonymous interaction ('878 Patent, col. 2:45-50).
• The Patented Solution: The invention proposes a system where a "publisher" uses an application to generate a QR code linked to a specific user profile. Crucially, the sensitive contact information associated with that profile is not embedded in the QR code itself but is stored on a secure remote server ('878 Patent, col. 4:57-63). A "consumer" scans the code with their own device, which uses the code to access the server and initiate a "secure and private communication" with the publisher, without either party initially knowing the other's direct contact details ('878 Patent, Abstract; col. 3:60-65). The system can create temporary or anonymous profiles that limit the duration or extent of communication ('878 Patent, col. 7:40-45).
• Technical Importance: This architecture allows for interactions initiated by a physical-to-digital scan to remain private or pseudonymous, which can be valuable in contexts such as customer service feedback, online dating, or initial business networking where parties may not yet trust each other with personal data ('878 Patent, col. 3:23-38).

Key Claims at a Glance

• The complaint asserts infringement of "one or more claims" of the ’878 patent (Compl. ¶15). The patent contains two independent method claims, 1 and 13.
• Independent Claim 1 (recited from the perspective of the user scanning the code):
  • obtaining, via a 2D code scanner on a first user's mobile device, a scanned image of a code symbol corresponding to a unique communication profile of a second user;
  • extracting a "digital identification code" of the second user from the scanned image;
  • establishing a "secure two-way communication" with the second user using the application and the digital identification code, which comprises using a "secure server";
  • receiving contact information of the second user and providing an option to store it.
• The complaint does not explicitly reserve the right to assert dependent claims but makes a general allegation of infringement of "one or more claims" (Compl. ¶15).

III. The Accused Instrumentality

Product Identification

The complaint identifies the "Kik app" as one of the "Exemplary Defendant Products" that allegedly infringes the ’878 Patent (Compl. ¶13).

Functionality and Market Context

The complaint alleges that Defendant offers and distributes the Kik app and provides "product literature, website materials, and/or in-app instructions" that induce end users to use the app in a manner that infringes the ’878 Patent (Compl. ¶13).

The complaint does not provide specific details on the technical operation of the Kik app's scannable code features. It alleges that Defendant derives substantial revenue from its infringing acts (Compl. ¶6). To support its venue allegations, the complaint includes a photograph of a New York City skyline with text identifying Defendant’s office address as '55 Water Street Brooklyn, NY 11201' (Compl. p. 2).

IV. Analysis of Infringement Allegations

The complaint alleges infringement but does not contain a claim chart or detailed, element-by-element mapping of the accused product to the patent's claims. It states that a claim chart was provided to the Defendant pre-suit via an exhibit that is not attached to the complaint itself (Compl. ¶15). The narrative infringement theory is presented at a high level, alleging that offering and inducing use of the Kik app infringes the ’878 Patent (Compl. ¶¶ 13-14). The complaint does not provide sufficient detail for a tabular analysis of the infringement allegations.

• Identified Points of Contention:
  • Technical Questions: A primary factual dispute will concern the specific architecture of the Kik app's QR code functionality. The key question is whether the Kik app's QR codes contain a "digital identification code" that is used to look up a profile on a "secure server" to establish communication, as recited in the claims. An alternative possibility is that the QR codes simply embed a direct link or public username, which may not align with the patent's description of a mediated, server-centric system where private data is not in the code itself ('878 Patent, col. 4:57-63).
  • Scope Questions: The interpretation of what constitutes a "secure two-way communication" will be critical. The dispute may focus on whether the general encryption used in modern messaging apps is sufficient to meet this limitation, or if the term, in the context of the patent, requires the specific server-mediated, privacy-preserving channel described in the specification.

V. Key Claim Terms for Construction

• The Term: "secure two-way communication" (Claim 1)

• Context and Importance: This term is the central purpose of the claimed method. Its construction will determine the type of communication channel that falls within the scope of the patent. Practitioners may focus on this term because the specific nature of the "security"—whether it means standard transport-layer encryption or the architectural privacy of a server-mediated anonymous channel—is fundamental to the infringement analysis.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The term itself is not explicitly defined. A party could argue it should be given its plain and ordinary meaning, which could encompass any standard, encrypted (e.g., TLS) messaging session between two users.
  • Evidence for a Narrower Interpretation: The specification repeatedly links the "secure and private communication" to the system's ability to function "without either party knowing the phone number or email address... of the other party" ('878 Patent, Abstract; col. 4:31-34). This suggests "secure" may be tied to the architectural security of anonymity provided by the remote server, not just data encryption.

• The Term: "digital identification code" (Claim 1)

• Context and Importance: This term defines the data extracted from the QR code that enables the connection. Its definition is critical because the patent distinguishes its invention from prior art based on what is stored in the code. A central question will be whether a public username or profile URL constitutes a "digital identification code."

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: A party might argue that any unique identifier that allows the system to find the second user, including a public username, meets the definition of a "digital identification code."
  • Evidence for a Narrower Interpretation: The specification states that a randomly generated code is "preferably generated for each profile" and that if another application scans the code, "all they would get is an 8 digit random code that must be decoded after it is received by the secure server" ('878 Patent, col. 7:52-58). This suggests the "digital identification code" is a non-public, system-specific token, not a user's public-facing information.

VI. Other Allegations

• Indirect Infringement: The complaint alleges induced infringement, stating that Defendant provides "product literature, website materials, and/or in-app instructions and information" that knowingly and intentionally encourage users to operate the Kik app in a manner that directly infringes the ’878 Patent (Compl. ¶¶ 13, 14).
• Willful Infringement: The complaint alleges willful infringement based on Defendant's alleged actual knowledge of the ’878 Patent as of March 2, 2024, the date Plaintiff's notice letter and claim chart were sent. The complaint alleges that Defendant's continued infringement after receiving this notice has been willful (Compl. ¶¶ 12, 16).

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

• A core issue will be one of technical implementation: How does the accused Kik app's QR code system function at an architectural level? The case will likely depend on evidence showing whether Kik's system operates like a conventional QR code that embeds a public user identifier, or whether it uses a non-public "digital identification code" to establish a server-mediated communication channel as described in the patent.
• The case will also turn on a question of claim construction: Can the term "secure two-way communication," as used in the patent, be construed to cover standard encrypted messaging platforms, or is its meaning limited by the specification to the specific privacy-preserving architecture where the server shields the parties' direct contact information from each other?
• Finally, a key evidentiary question will be one of inducement: Assuming the court finds that end-users directly infringe, what specific "instructions" or "product literature" did the Defendant provide that would demonstrate its specific intent for users to perform the patented method?