DCT
1:18-cv-04535
Coding Tech LLC v. Robert Graham Retail LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Coding Technologies LLC (Texas)
- Defendant: Robert Graham Holdings, LLC (New York)
- Plaintiff’s Counsel: Watson LLP
- Case Identification: 1:18-cv-04535, S.D.N.Y., 07/06/2018
- Venue Allegations: Venue is alleged to be proper as Defendant resides in the district, has a regular and established place of business in the district, and has committed alleged acts of infringement there.
- Core Dispute: Plaintiff alleges that Defendant’s use of QR codes in its marketing materials to direct customers to its website infringes a patent related to methods and systems for providing mobile services using a code pattern.
- Technical Context: The technology concerns the use of a camera-equipped mobile device to scan a machine-readable code, which then automatically directs the device to online content, thereby streamlining the process of connecting physical media to the internet.
- Key Procedural History: The provided document is an Amended Complaint. The complaint does not mention any prior litigation, licensing history, or post-grant proceedings involving the patent-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2003-03-07 | ’159 Patent Priority Date |
| 2013-09-24 | ’159 Patent Issue Date |
| 2018-07-06 | Amended Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,540,159 - "METHOD FOR PROVIDING MOBILE SERVICE USING CODE-PATTERN"
The Invention Explained
- Problem Addressed: The patent describes the inconvenience of manually typing a URL from a printed advertisement into a mobile device, a process prone to error. It also notes that travelers may have difficulty accessing location-specific services (like calling a taxi) if they do not know the local telephone number or web address. (’159 Patent, col. 1:36-61).
- The Patented Solution: The invention provides a method where a user photographs a "code pattern" (such as a QR code) with a mobile terminal. The terminal, or a connected server, then decodes the pattern to obtain information, such as a URL, and automatically retrieves the associated online content for the user. This creates a direct and convenient link between a physical object and digital information. (’159 Patent, Abstract; Fig. 5).
- Technical Importance: This technology provides a streamlined interface between the physical and digital worlds, a critical function for mobile marketing, information dissemination, and commerce. (Compl. ¶10).
Key Claims at a Glance
- The complaint asserts independent claims 1, 8, 15, and 16. (Compl. ¶18).
- Independent Claim 1 (Method): The essential elements are:
- obtaining a photographic image of a code pattern by a camera of the user terminal;
- processing, by a processor of the user terminal, the photographic image of the code pattern to extract the code pattern from the photographic image;
- decoding the extracted code pattern by the processor of the user terminal into code information;
- transmitting a content information request message to a server based on the code information; and
- receiving content information from the server in response to the content information request message.
- Independent Claim 8 (Apparatus): The essential elements are:
- a camera configured to obtain a photographic image of a code pattern;
- a processor comprising: an image processor configured to process the photographic image to extract the code pattern, and a decoder configured to decode the extracted code pattern into code information; and
- a transceiver configured to transmit a content information request message to a server and receive content information from the server.
- The complaint also asserts dependent claims 2, 3, 9, and 10, and reserves the right to assert others. (Compl. ¶¶18, 27, 30, 40, 43).
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is a method of providing content practiced by Defendant through "internal use and testing," which involves using a user terminal (e.g., a smartphone) to scan a QR code provided in Defendant's marketing materials. (Compl. ¶¶17, 21, 28). The complaint also accuses the "user terminal" itself when used in this manner. (Compl. ¶¶33, 35).
Functionality and Market Context
- Defendant, a seller of apparel and accessories, utilizes QR codes in marketing materials. The complaint provides an example of an advertisement with a QR code that, when scanned, directs a user's smartphone to the Defendant's e-commerce website, robertgraham.us. (Compl. ¶¶21-26). The complaint includes a visual of this advertisement, which encourages users to "Find out more and register at robertgraham.us" next to a prominent QR code. (Compl. p. 6, ¶21). The complaint alleges this functionality is used to promote and sell products in interstate commerce. (Compl. ¶3).
IV. Analysis of Infringement Allegations
U.S. Patent No. 8,540,159 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| obtaining a photographic image of a code pattern by a camera of the user terminal; | A user terminal (e.g., smartphone) obtains a photographic image of the QR code using its camera. A visual shows an iPhone being positioned to capture a QR code. | ¶22 | col. 2:43-44 |
| processing, by a processor of the user terminal, the photographic image of the code pattern to extract the code pattern from the photographic image; | The smartphone's processor processes the captured image to view and extract the QR code from the overall photographic image. | ¶23 | col. 38:5-7 |
| decoding the extracted code pattern by the processor of the user terminal into code information; | The smartphone's processor decodes the extracted QR code into code information, specifically the URL of the Defendant's website. A diagram illustrates a "Scan" to "Decode" process. | ¶24 | col. 38:8-10 |
| transmitting a content information request message to a server based on the code information; | The smartphone transmits an HTTP request message to the Defendant's server based on the decoded URL. | ¶25 | col. 38:11-13 |
| receiving content information from the server in response to the content information request message. | The smartphone receives web page content from the Defendant's server in response to the request. A visual shows the Defendant's mobile website loaded on the smartphone. | ¶26 | col. 38:14-16 |
U.S. Patent No. 8,540,159 Infringement Allegations
| Claim Element (from Independent Claim 8) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a camera configured to obtain a photographic image of a code pattern; | A smartphone used in the accused method comprises a camera configured to obtain a photographic image of the QR code. | ¶36 | col. 41:7-14 |
| a processor comprising: an image processor configured to process the photographic image...to extract the code pattern...; and a decoder configured to decode the extracted code pattern into code information; | The smartphone's processor is alleged to perform the functions of both the claimed image processor and decoder to extract and decode the QR code into a URL. | ¶¶37-38 | col. 41:19-24 |
| a transceiver configured to (i) transmit a content information request message to a server...; and (ii) receive content information from the server... | A smartphone's transceiver (e.g., FDD-LTE/TDD-LTE/CDMA/EDGE) is configured to transmit the request to and receive the webpage from the Defendant's server. To support this, the complaint provides a technical specifications table for an Apple iPhone 7. | ¶39 | col. 41:51-58 |
- Identified Points of Contention:
- Scope Questions: The complaint's theory of direct infringement is predicated on Defendant's "internal use and testing" of its own marketing QR codes. (Compl. ¶21). A primary question will be whether Plaintiff can produce sufficient evidence of this internal activity by Defendant, a clothing retailer, rather than just by its customers.
- Technical Questions: Claim 1 recites two distinct steps: "processing...to extract the code pattern" and then "decoding the extracted code pattern." A technical question arises as to whether the software in a modern smartphone performs these as two separate, sequential operations that map to the claim language, or as a single, integrated function that might not literally infringe the multi-step limitation.
V. Key Claim Terms for Construction
The Term: "code pattern"
Context and Importance: This term's scope is foundational to the case, as the infringement allegations depend on the accused QR code falling within its definition. The Defendant's liability hinges on whether a "QR code" is a "code pattern."
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification explicitly lists "a QR code" as an example of a "two-dimensional barcode," which falls under the umbrella of "barcode 60," the patent's exemplary "code pattern." This language may support an interpretation that expressly includes the accused technology. (’159 Patent, col. 11:1-5).
- Evidence for a Narrower Interpretation: Throughout the detailed description and flowcharts, the invention is frequently referred to simply as "barcode." For instance, step S500 in Figure 5 is "PHOTOGRAPH BARCODE." A party could argue that this repeated usage limits the term's meaning to more traditional one-dimensional barcodes, though the explicit mention of QR codes elsewhere complicates this argument. (’159 Patent, col. 12:22-26; Fig. 5).
The Term: "characteristic information" (from independent claim 16)
Context and Importance: Claim 16 differs from Claim 1 by reciting the extraction of "characteristic information" instead of a "code pattern." The complaint appears to treat "characteristic information" and "code pattern" as equivalent, alleging that processing the image to "extract characteristic information" is met by extracting the QR code. (Compl. ¶¶58, 19). Practitioners may focus on whether "characteristic information" is a broader term than "code pattern," or if it carries a distinct meaning that the accused process does not meet.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not explicitly define "characteristic information." Its use in parallel with "code pattern" could suggest it is a generic term meant to encompass any distinguishing data derivable from the image, which would include a QR code.
- Evidence for a Narrower Interpretation: The patent lacks a clear antecedent basis or definition for "characteristic information," which could render the term indefinite. Alternatively, a party could argue it refers to image characteristics (e.g., color, shape) distinct from the data encoded within a formal code pattern, raising the question of whether simply extracting a QR code satisfies this limitation.
VI. Other Allegations
- Indirect Infringement: The complaint does not plead a separate count for indirect infringement. However, the factual allegations—that Defendant provides QR codes in advertisements encouraging users to scan them to access its website—could form the basis for a future or amended claim of induced infringement. (Compl. p. 6).
- Willful Infringement: The complaint alleges on "information and belief" that Defendant knew of the ’159 Patent and that its infringement has been willful. It does not provide specific facts to support pre-suit knowledge, such as prior correspondence or citation of the patent in other contexts. (Compl. ¶60).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of liability theory: Can the Plaintiff establish direct infringement by the Defendant, a clothing company that does not manufacture or sell the accused smartphones? The case may turn on the evidence presented for the "internal use and testing" allegation, or it may pivot to a theory of indirect infringement based on Defendant's role in encouraging its customers to perform the patented method.
- A key evidentiary question will be one of technical operation: Does the accused QR-scanning software perform the discrete steps of "processing... to extract the code pattern" and "decoding the extracted code pattern" as recited in Claim 1? The infringement analysis will depend on whether the claim language maps precisely onto the operation of the accused software, or if there is a functional mismatch.
- A central question for damages will be one of causation and scope: If infringement is found based on the Defendant's "use" of the patented system/method for marketing, what is the appropriate measure of damages? The dispute will likely focus on whether damages should be a nominal royalty for the act of internal testing or a more substantial figure tied to the commercial benefit Defendant derived from the QR code-based marketing campaigns.