DCT
2:20-cv-01051
Dri Mark Products Inc v. Walmart Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Dri Mark Products, Inc. (New York)
- Defendant: Walmart, Inc. (Arkansas)
- Plaintiff’s Counsel: Ostrolenk Faber LLP
- Case Identification: 2:20-cv-01051, E.D.N.Y., 02/26/2020
- Venue Allegations: Venue is alleged based on Defendant's residence status, transaction of business, and commission of tortious acts within the Eastern District of New York, including the operation of store locations.
- Core Dispute: Plaintiff alleges that Defendant’s counterfeit detector pens infringe a patent related to a dual-function device combining a chemical test solution with an ultraviolet light source.
- Technical Context: The technology involves handheld devices used at points of sale to quickly verify the authenticity of paper currency by testing for both paper composition and the presence of UV-sensitive security features.
- Key Procedural History: The complaint alleges that Plaintiff contacted Defendant regarding the infringement prior to filing suit, and that Defendant referred Plaintiff to its supplier, but discussions with the supplier did not lead to a resolution.
Case Timeline
| Date | Event |
|---|---|
| 2008-09-15 | '499 Patent Priority Date |
| 2013-01-01 | Plaintiff begins marketing products covered by '499 Patent (stated as "as early as 2013") |
| 2013-03-26 | '499 Patent Issue Date |
| 2020-02-26 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,406,499 - "Counterfeit Detector Pen"
- Patent Identification: U.S. Patent No. 8,406,499, issued March 26, 2013
The Invention Explained
- Problem Addressed: The patent background notes that while chemical counterfeit detection methods and ultraviolet (UV) light examination methods existed, devices using UV lamps were often "expensive to manufacture, and in most cases, are rather bulky and complex in design" (’499 Patent, col. 1:40-46). This created a need for a simple, integrated apparatus for detecting counterfeit currency.
- The Patented Solution: The invention is a single, pen-shaped device that combines two modes of counterfeit detection. One end of the pen features an applicator for a chemical test solution (e.g., an iodine solution) that reacts to starch found in common commercial paper but not in genuine currency paper (’499 Patent, col. 3:2-14). The other end incorporates a compact ultraviolet light source, which can be activated to illuminate security threads embedded in authentic currency notes, causing them to glow (’499 Patent, Abstract; col. 2:39-44). The design integrates both functions into a portable, pen-like form factor.
- Technical Importance: The invention provides a "pen like device with two modes of testing," improving on prior art by combining distinct counterfeit detection techniques into a single, non-bulky instrument (’499 Patent, col. 3:37-41).
Key Claims at a Glance
- The complaint asserts independent claim 1. (Compl. ¶10).
- Essential elements of Independent Claim 1:
- A detector body with a forward, rearward, and middle section for a user to hold.
- A UV light source assembly mounted at the forward end.
- A counterfeit solution applicator comprising the middle and rearward end of the body, enabling use of either or both the UV light and the solution applicator.
- The solution applicator is impregnated with a test solution that changes color on counterfeit currency.
- The UV light source is configured to be turned on to make a security thread in a currency note glow.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- "money tester pen" sold by Defendant Walmart (the "Accused Products") (Compl. ¶9).
Functionality and Market Context
- The complaint alleges the Accused Products are counterfeit detector pens constructed according to the teachings of the ’499 Patent (Compl. ¶¶9-10). The pleading itself does not describe the specific functionality of the accused pens beyond this general allegation.
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint alleges that the Accused Products infringe at least claim 1 because they "contain all the limitations of claim 1" (Compl. ¶10). It does not provide a detailed, element-by-element breakdown of its infringement theory. The following chart is based on the complaint's general allegation that the accused "money tester pen" meets all limitations of the claim.
’499 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a detector body having a forward end and a rearward end and a middle body by which the detector is configured to be held by in a user's hand; | The complaint alleges the Accused Products are "money tester pen[s]" which possess a pen-shaped body. | ¶9 | col. 4:2-4 |
| an ultraviolet light source assembly including an ultraviolet light source mounted at the forward end of the detector body; | The Accused Products are alleged to be constructed according to the patent's teachings, which include a UV light assembly. | ¶10 | col. 4:5-8 |
| a counterfeit solution applicator comprising the middle body and the rearward end of the detector body, to enable the user to use either or both... to test currency; | The Accused Products are alleged to be constructed according to the patent's teachings, which include a solution applicator. | ¶10 | col. 4:9-14 |
| wherein the counterfeit solution applicator is impregnated with a test solution configured to change color when applied to a counterfeit currency; and | The Accused Products are alleged to be "money tester pen[s]," which by their nature use such a solution. | ¶9-10 | col. 4:15-17 |
| wherein the ultraviolet light source is configured to be turned on to flash ultraviolet light onto a currency note... to cause a thread in the currency note to glow. | The Accused Products are alleged to be constructed according to the patent's teachings, which describe this functionality. | ¶10 | col. 4:18-22 |
- Identified Points of Contention:
- Structural Questions: A central question will be whether the accused "money tester pen" has the specific structure recited in claim 1. For instance, does its "counterfeit solution applicator" literally comprise "the middle body and the rearward end of the detector body," or is it merely a component, such as a nib, mounted at the rearward end? The complaint does not provide sufficient detail for analysis of this element.
- Evidentiary Questions: The complaint's infringement allegations are made generally "on information and belief" (Compl. ¶10). A point of contention will be what evidence Plaintiff can produce to demonstrate that the Accused Products, in fact, incorporate each and every element as claimed, particularly the specific configuration and operation of the UV light assembly and its activation mechanism.
V. Key Claim Terms for Construction
- The Term: "a counterfeit solution applicator comprising the middle body and the rearward end of the detector body"
- Context and Importance: This term defines a key structural relationship between the chemical applicator and the pen's body. The infringement analysis may depend on whether the applicator is interpreted as being a distinct component attached to the pen body, or as being structurally integral to and forming the body itself. Practitioners may focus on this term because the claim language "comprising the middle body and the rearward end" could be interpreted as being broader than the specific embodiment shown in the patent's figures.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The use of the open-ended transition word "comprising" in both the preamble and the element itself suggests the applicator may include other components, and that the "middle body and the rearward end" are parts of the applicator. The claim language itself does not explicitly state the applicator is merely a nib inserted into the body.
- Evidence for a Narrower Interpretation: The specification describes the "counterfeit solution applicator 20" as being "mounted at the rearward end 22 of the tubular body 12" (’499 Patent, col. 2:16-18). Figure 4 shows the applicator (20) as a component with a tip (42) that is "inserted to be secured" within a "tapered end 40" of the pen's body (’499 Patent, col. 2:53-56). This could support an interpretation that the "applicator" is the insertable component (20) and not the pen body itself.
VI. Other Allegations
- Indirect Infringement: The complaint makes general allegations of induced and contributory infringement by Defendant's acts of "making, using, selling and/or offering to sell" the Accused Products (Compl. ¶2, ¶11). It does not, however, plead specific facts detailing how Walmart allegedly encouraged or knew of specific infringing acts by its customers.
- Willful Infringement: The willfulness allegation is based on alleged pre-suit knowledge. The complaint states that "Dri Mark has been in contact with the Defendant about the foregoing infringement" and that both Walmart and its supplier were "fully apprised and are cognizant of the ongoing infringement" (Compl. ¶13, ¶14).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim scope and structure: can the phrase "applicator comprising the middle body and the rearward end," be construed to read on a device where the applicator is a separate component (e.g., a felt tip) inserted into the end of the pen body, as opposed to forming the body itself? The resolution of this construction issue may be dispositive of infringement.
- A key evidentiary question will be what proof Plaintiff can marshal to show that the accused "money tester pen" sold by Walmart performs the specific functions claimed, including the UV light causing a "thread in the currency note to glow," and that its chemical solution is "configured to change color when applied to a counterfeit currency," as required by the patent.