DCT
1:24-cv-00140
Xmark Corp v. Omnidots BV
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Xmark Corp. (Canada)
- Defendant: Omnidots B.V. (Netherlands) and Omnidots North America Inc. (Delaware)
- Plaintiff’s Counsel: Leason Ellis LLP
- Case Identification: 1:24-cv-00140, S.D.N.Y., 01/08/2024
- Venue Allegations: Venue is alleged to be proper for Omnidots North America Inc. based on it maintaining a regular and established place of business and having made sales in the district. For the foreign defendant, Omnidots B.V., venue is asserted as proper in any judicial district.
- Core Dispute: Plaintiff alleges that Defendant’s SWARM vibration monitors infringe a patent related to vibration sensing systems that use a dual-accelerometer configuration.
- Technical Context: The technology pertains to vibration monitoring for industrial and construction projects, where sensor accuracy and ease of deployment are critical for regulatory compliance and safety.
- Key Procedural History: The complaint alleges that Plaintiff has not sold or licensed any products embodying the patent-in-suit, which, if true, would render the patent marking requirements of 35 U.S.C. § 287(a) inapplicable to the calculation of damages.
Case Timeline
| Date | Event |
|---|---|
| 2016-03-18 | ’929 Patent Priority Date |
| 2020-10-06 | ’929 Patent Issue Date |
| 2024-01-08 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,794,929 - "System for Vibration Sensing"
- Patent Identification: U.S. Patent No. 10,794,929, "System for Vibration Sensing," issued October 6, 2020.
The Invention Explained
- Problem Addressed: The patent’s background section notes that traditional vibration sensors, such as geophones, must be precisely positioned in the ground to function correctly and that any misalignment beyond a certain tolerance requires them to be physically re-installed (’929 Patent, col. 1:25-30).
- The Patented Solution: The invention is a vibration sensor system that uses accelerometers instead of geophones. A key aspect is the use of both a low-range accelerometer for sensitive measurements and a high-range accelerometer for large-magnitude events, which provides a better dynamic range than a single sensor (’929 Patent, col. 2:9-16). The system is also described as being capable of compensating for positional misalignment through software, by determining the sensor’s orientation and applying a "correction factor" to the data, thus avoiding the need for physical re-disposition (’929 Patent, col. 3:23-34).
- Technical Importance: This approach allows for a smaller physical sensor and introduces software-based calibration to correct for installation errors, offering a practical advantage over traditional geophones that require precise and potentially laborious physical placement (’929 Patent, col. 3:15-34).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 8, as well as dependent claims 6-7 and 15-17 (Compl. ¶30).
- Independent Claim 1 includes these essential elements:
- A water-proof housing
- A low acceleration range accelerometer and a high acceleration range accelerometer disposed in the housing
- An analog-to-digital conversion circuit connected to the accelerometers providing data along x-, y-, and z-axes
- A data processing circuit that receives the data and:
- determines the directional orientation of the sensor assembly, and
- determines a correction factor to compensate for that orientation
- Independent Claim 8 includes these essential elements:
- A water-proof housing
- A low acceleration range accelerometer and a high acceleration range accelerometer disposed in the housing
- An analog-to-digital conversion circuit connected to the accelerometers providing data along x-, y-, and z-axes
- A data processing circuit that receives the data and uses the data from the low acceleration range accelerometer to calculate velocity
III. The Accused Instrumentality
Product Identification
- The SWARM vibration monitor, with the complaint identifying models SWARM V2.2b, SWARM V2.2c, and SWARM V2.2cw as the "Accused Product" (Compl. ¶26, ¶29).
Functionality and Market Context
- The SWARM monitor is alleged to be a vibration sensor system used at construction and infrastructure sites (Compl. ¶27). The system collects vibration data and transmits it wirelessly to a web platform called "Honeycomb" (Compl. ¶27).
- Customers allegedly access the Honeycomb platform via a subscription to configure the monitors and view the collected data (Compl. ¶28). The complaint references technical specifications for the SWARM V2.2cw model, attached as Exhibit C (Compl. ¶29).
- The complaint positions Omnidots as a direct competitor to Xmark in the market for construction and infrastructure monitoring systems (Compl. ¶24).
IV. Analysis of Infringement Allegations
The complaint alleges that the Accused Product meets every limitation of claims 1 and 8 and references an infringement chart in Exhibit D, which was not publicly filed with the complaint (Compl. ¶31). The narrative allegations support the following infringement theory.
’929 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a vibration sensor system for construction and industrial projects, comprising: a water-proof housing; | The SWARM vibration monitor is a system used for construction monitoring and is contained in a housing. | ¶26, ¶27 | col. 4:52 |
| a low acceleration range accelerometer disposed in the housing for measuring acceleration data below a first threshold; | The SWARM monitor allegedly contains a low-range accelerometer for measuring vibrations. | ¶31, ¶39 | col. 4:54-56 |
| a high acceleration range accelerometer disposed in the housing for measuring acceleration data above a second threshold; | The SWARM monitor allegedly contains a high-range accelerometer for measuring vibrations. | ¶31, ¶39 | col. 4:57-59 |
| an analog-to-digital conversion circuit connected to the low and high acceleration range accelerometers, wherein the analog-to-digital conversion circuit provides acceleration data along x-, y- and z-axes; | The SWARM monitor allegedly converts analog sensor signals to digital data for three axes. | ¶21 | col. 4:60-63 |
| a data processing circuit... determines the directional orientation of the vibration sensor assembly, and determines a correction factor to be applied... to compensate for the directional orientation... | The SWARM monitor and associated Honeycomb platform allegedly comprise a processing circuit that determines the sensor's orientation and applies a correction factor to the data. | ¶21, ¶31 | col. 4:64-67 |
Identified Points of Contention
- Technical Questions: A primary factual question will be whether the accused SWARM system performs the specific function recited in Claim 1 of "determin[ing] a correction factor to be applied to the acceleration data to compensate for the directional orientation." The complaint does not provide specific evidence, such as screenshots of a calibration interface or excerpts from technical manuals, detailing this capability.
- Scope Questions: The complaint alleges that customers use the "Honeycomb" web platform to configure and monitor the SWARM device (Compl. ¶28). This raises the question of whether the "data processing circuit" recited in the claims is located entirely within the physical sensor or is a distributed system that includes the remote Honeycomb platform. The resolution of this issue may impact analyses of both direct and divided infringement.
V. Key Claim Terms for Construction
- The Term: "data processing circuit"
- Context and Importance: This term is central to the infringement analysis for both asserted independent claims. Its construction will determine whether the claimed "system" is confined to the physical sensor device or can encompass a distributed architecture including the remote Honeycomb server (Compl. ¶27-28). Practitioners may focus on this term because its scope could determine whether infringement is assessed based on the sale of the physical product alone or on the operation of the product in conjunction with the cloud-based service.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states that the sensor circuit connects to a "computer or server 105" and that analysis can be performed by the "interface circuit 102I (or computer 105)" (’929 Patent, col. 2:49-51, col. 4:51-53). This language may support an interpretation where the "data processing circuit" can include a remote server.
- Evidence for a Narrower Interpretation: The claims recite a "vibration sensor system," and the figures depict a self-contained unit (’929 Patent, Fig. 1). The specification describes the "sensor circuit 102," which includes processing elements, as being contained within the "housing 101" (’929 Patent, col. 2:46-48, Fig. 2). This could support a narrower construction limited to components within the physical sensor.
VI. Other Allegations
Indirect Infringement
- The complaint alleges induced infringement under 35 U.S.C. § 271(b). It asserts that Omnidots provides customers with "detailed instructions, tools and assistance for installing... and using the Accused Product," specifically citing a quick-start guide (referenced as Exhibit B) and the subscription-based Honeycomb platform (Compl. ¶35, ¶41). The complaint alleges Omnidots acts with knowledge and the specific intent to cause infringement (Compl. ¶36).
Willful Infringement
- Willfulness is alleged based on Omnidots' purported knowledge of the ’929 Patent and its infringement, with knowledge alleged to exist "at the latest as of the filing date of this complaint" (Compl. ¶43). This frames the allegation primarily around potential post-suit conduct.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim scope: can the term "data processing circuit," as used in the patent, be construed to encompass the combined functionality of the physical SWARM sensor and the remote "Honeycomb" cloud platform? The answer will define the boundaries of the accused system and frame the entire infringement analysis.
- A key evidentiary question will be one of functional operation: does the accused SWARM system, through its hardware or software, actually perform the specific function of determining and applying a "correction factor to... compensate for the directional orientation" as required by Claim 1? The plaintiff's ability to produce evidence of this specific capability will be critical to proving infringement of that claim.