DCT
2:20-cv-02989
Soter Tech LLC v. IP Video Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Soter Technologies, LLC (New York)
- Defendant: IP Video Corporation (New York), A+ Technology & Security Solutions, Inc. (New York), Halo Smart Solutions, Inc. (New York), & Advance Convergence Group, Inc. (Delaware)
- Plaintiff’s Counsel: GIBBONS P.C.
- Case Identification: 2:20-cv-02989, E.D.N.Y., 07/06/2020
- Venue Allegations: Venue is asserted based on all Defendants residing in the district and a substantial part of the events giving rise to the claim having occurred there.
- Core Dispute: Plaintiff alleges that Defendants’ HALO Device, an environmental sensor product, infringes a patent related to systems for detecting vaping.
- Technical Context: The technology operates in the field of automated environmental monitoring, specifically addressing the need to detect vaping in privacy-sensitive locations like school restrooms where camera surveillance is not feasible.
- Key Procedural History: The patent-in-suit claims priority from a provisional application filed in August 2017. The complaint alleges that Defendants had actual notice of the issued patent as of July 1, 2020, six days before the complaint was filed. A Certificate of Correction was issued for the patent in February 2022, which may bear on the interpretation of a key claim term.
Case Timeline
| Date | Event |
|---|---|
| 2017-08-15 | '549 Patent Priority Date (Provisional Filed) |
| 2020-06-30 | '549 Patent Issue Date |
| 2020-07-06 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,699,549 - "SYSTEM AND METHOD FOR IDENTIFYING VAPING AND BULLYING," issued June 30, 2020
The Invention Explained
- Problem Addressed: The patent identifies the difficulty of preventing vaping and bullying in enclosed, private areas such as restrooms, bathrooms, or hospital rooms, where privacy concerns preclude the use of camera surveillance systems (’549 Patent, col. 1:25-42).
- The Patented Solution: The invention proposes a sensor system to be placed in such areas. The system uses an air quality sensor to detect vaping and, in some embodiments, a sound detector to identify bullying (’549 Patent, Abstract). When vaping is detected, the system is configured to transmit an alert to a user (e.g., a school official) without providing any local indication to the person vaping, thereby enabling discreet supervision (’549 Patent, col. 2:23-28; col. 4:40-49). Vaping is identified by detecting an air quality "signature" (’549 Patent, col. 2:8-10).
- Technical Importance: The technology provides a method for monitoring prohibited activities in locations where traditional visual surveillance is inappropriate, addressing a stated need for safety and public health in academic and business environments (’549 Patent, col. 1:50-55).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 25, as well as dependent claims 6, and 27-30 (Compl. ¶48).
- Independent Claim 1 recites a sensor system with three primary components:
- An "air quality sensor" that includes a "combination of sensors."
- A "network interface" configured to transmit a signal indicating an "abnormality matching signature of vaping."
- A "controller" configured to identify vaping based on the detected air quality when it includes this signature.
- Independent Claim 25 recites a sensor system for identifying vaping at a site, comprising:
- An "air quality sensor" configured to detect air quality.
- A "network interface" configured to transmit a signal indicating an "abnormality matching signature of vaping."
- The claim specifies that vaping is identified when the detected air quality includes a "signature."
III. The Accused Instrumentality
Product Identification
- The "HALO Device" or "Halo Smart Sensor" (Compl. ¶2, p. 8).
Functionality and Market Context
- The HALO Device is described as a "smart sensor" that performs "VAPE & THC DETECTION," "AIR QUALITY & ENVIRONMENTAL MONITORING," and other functions (Compl. p. 8). The complaint alleges the device uses a "host of sensors to perform multiple detections, 12 sensors to be exact" (Compl. p. 9).
- Upon detecting certain environmental changes, the HALO Device is alleged to send "email, text and security platform alerts to designated security personnel" (Compl. p. 9). An image of the accused HALO Device shows a circular, ceiling-mounted unit (Compl. ¶46).
- The complaint alleges Defendants market and sell the HALO Device to customers including school districts (Compl. ¶2).
IV. Analysis of Infringement Allegations
'549 Patent Infringement Allegations (Claim 1)
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A sensor system comprising: | The HALO Device is described as a "smart sensor" and a "device on the network." | ¶50, p. 8 | col. 13:20-21 |
| an air quality sensor configured to detect air quality, | The HALO Device "can detect... air quality changes." | ¶50, p. 8 | col. 13:21-22 |
| the air quality sensor including a combination of sensors configured to sense air quality; and | The HALO Device "has a host of sensors to perform multiple detections, 12 sensors to be exact." The complaint includes a photograph of the device's sensor board showing a "Particle sensor" and "Environment and gas sensors" (Compl. p. 11). | p. 9, 11 | col. 13:23-24 |
| a network interface configured to transmit a signal indicating abnormality matching signature of vaping, and | The HALO Device is a "device on the network" with an RJ-45 port that "sends email, text and security platform alerts." The complaint includes a photo of the device's processor board showing a LAN port (Compl. p. 12). | p. 11, 12 | col. 14:1-5 |
| a controller configured to identify vaping based on the detected air quality, | The HALO Device is alleged to use a processor board (Raspberry Pi 3B+) with an internal controller (Broadcom BCM2837) to "detect... air quality changes such as vaping." | p. 12, 13 | col. 14:5-8 |
| wherein the vaping is identified when the detected air quality includes the abnormality matching signature. | The HALO Device "provides indications of VAPE... based on the presence of chemical signatures and particulates in the air." | p. 13 | col. 14:9-12 |
'549 Patent Infringement Allegations (Claim 25)
| Claim Element (from Independent Claim 25) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A sensor system for identifying vaping at a site, the sensor system comprising: | The HALO Device is a "smart sensor" and a "device on the network." Marketing materials state it performs "Detection of vaping and smoking" (Compl. p. 14). | ¶51, p. 14 | col. 14:49-51 |
| an air quality sensor configured to detect air quality; and | The HALO Device "can detect... air quality changes." | p. 14 | col. 14:52-53 |
| a network interface configured to transmit a signal indicating abnormality matching signature of vaping, | The device has network specifications including an RJ-45 Ethernet port and is alleged to send alerts to security personnel when environmental changes like vaping occur. | p. 15 | col. 14:54-56 |
| wherein the vaping is identified when the detected air quality includes a signature. | The device "provides indications of VAPE... based on the presence of chemical signatures and particulates in the air." The complaint alleges this constitutes identification based on a signature. | p. 16, 17 | col. 14:57-58 |
Identified Points of Contention
- Scope Questions: The complaint alleges the HALO Device detects vaping based on "chemical signatures and particulates in the air" (Compl. p. 13). A central question will be whether this method falls within the scope of the patent's term "abnormality matching signature of vaping." The definition of this term will be critical.
- Technical Questions: The complaint identifies a general-purpose processor (Raspberry Pi) and controller (Broadcom BCM2837) as the claimed "controller configured to identify vaping" (Compl. p. 12-13). A key factual question for the court will be what specific software logic runs on that hardware and whether its operation—not just its marketing materials—performs the function required by the claims.
V. Key Claim Terms for Construction
The Term: "abnormality matching signature of vaping" / "signature" (claims 1, 25)
- Context and Importance: This term is the core of the claimed invention's detection mechanism. Its construction will likely determine the outcome of the infringement analysis. A narrow construction could place the accused device's functionality outside the claims, while a broad construction would favor the plaintiff.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states that a "specific range combination of humidity, hydrogen, and temperature... may be considered as one signature in this disclosure" (’549 Patent, col. 9:20-23, as amended by Certificate of Correction). Plaintiff may argue that the phrase "may be considered as one" indicates this combination is merely an example, and that other combinations of sensor readings that indicate vaping could also constitute a "signature."
- Evidence for a Narrower Interpretation: Defendants may argue that the only concrete technical description of a "signature" provided in the patent is the combination of temperature, hydrogen, and humidity ranges, which is recited in dependent claim 26 (’549 Patent, col. 14:59-62). They may contend that the term should be limited to this disclosed embodiment to avoid encompassing all possible methods of vape detection.
The Term: "controller configured to identify vaping" (claim 1)
- Context and Importance: This is a functional limitation. Practitioners may focus on this term because the accused device allegedly uses a general-purpose processor. The dispute will be whether simply running software that triggers an alert based on sensor thresholds meets the "configured to identify" requirement as claimed.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not appear to mandate a specific algorithm for the controller. The specification describes the controller's function at a high level, such as identifying vaping based on the sensed air quality (’549 Patent, col. 2:38-42). This may support an argument that any controller programmed to perform this general function meets the limitation.
- Evidence for a Narrower Interpretation: The specification includes a flowchart (FIG. 6) detailing a method for detecting vape that involves sensing temperature/humidity, adjusting a gas sensor's voltage, reading the sensor, and matching the result to "vape base data" (’549 Patent, FIG. 6). A party could argue that "configured to identify" requires this more specific process, not just a simple alert.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement based on Defendants "actively and knowingly inducing others to use the HALO Device, including school districts" (Compl. ¶56). It alleges contributory infringement on the basis that the HALO Device is especially made for practicing the invention and is not a staple article of commerce suitable for substantial non-infringing use (Compl. ¶58).
- Willful Infringement: Willfulness is alleged based on continued infringement after Defendants allegedly received "actual notice of the '549 Patent on July 1, 2020" (Compl. ¶61), which predates the filing of the complaint.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: How will the court construe the term "signature"? The analysis will likely focus on whether the term is limited to the specific multi-factor embodiment (temperature, humidity, hydrogen) disclosed in the specification, or if the language in the Certificate of Correction supports a broader interpretation covering other methods of detecting vaping via air quality sensors.
- A key evidentiary question will be one of functional implementation: Does the accused HALO device's general-purpose processor, when loaded with its operating software, actually perform the function of a "controller configured to identify vaping" as required by claim 1? The case may turn on evidence of the device's specific operational logic, beyond the marketing claims and hardware components identified in the complaint.