DCT
1:24-cv-05537
Railware Inc v. New Jersey Transit Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Railware, Inc. (New York)
- Defendant: New Jersey Transit Corporation (New Jersey)
- Plaintiff’s Counsel: Robins Kaplan LLP
- Case Identification: 1:24-cv-05537, S.D.N.Y., 07/22/2024
- Venue Allegations: Plaintiff alleges venue is proper because Defendant maintains a regular and established place of business in the district, specifically at New York Penn Station, and has committed the alleged acts of infringement within the district.
- Core Dispute: Plaintiff alleges that Defendant’s centralized train traffic control systems, which include a safety feature for track workers, infringe three patents related to methods and systems for placing and removing electronic safety blocks on railway tracks.
- Technical Context: The technology provides a safety overlay for railway operations, preventing a central dispatcher from removing a track block until a unique code, sent to and held by a worker in the field, is provided back to the control system.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant with actual notice of the parent patent to two of the patents-in-suit in November 2016. One of the original patents has since been reissued as two separate reissue patents, both of which are asserted. Plaintiff also references a prior lawsuit filed in 2022 against Amtrak asserting the same patents.
Case Timeline
| Date | Event |
|---|---|
| 2013-10-21 | Earliest Priority Date for ’782, ’835, and ’115 Patents |
| 2014-11-25 | FRA issues Safety Advisory 2014-02 recommending technologies like EEPS |
| 2016-06-10 | FRA issues Final Rule encouraging use of new technologies like EEPS |
| 2016-11-22 | Plaintiff allegedly provides NJ Transit notice of infringement of the parent ’545 Patent |
| 2016-12-13 | U.S. Patent No. 9,517,782 issues |
| 2020-02-04 | U.S. Reissue Patent No. RE47,835 issues |
| 2022-06-15 | Plaintiff files suit against Amtrak asserting the patents-in-suit |
| 2022-06-28 | U.S. Reissue Patent No. RE49,115 issues |
| 2024-07-22 | Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,517,782 - "Tools for Railway Traffic Control"
- Patent Identification: U.S. Patent No. 9,517,782, "Tools for Railway Traffic Control," issued December 13, 2016.
The Invention Explained
- Problem Addressed: The patent’s background section identifies the risk of fatal accidents involving railway workers on or near tracks, noting that even with centralized traffic control (CTC) systems, human error by dispatchers can lead to blocks being removed prematurely or mistakenly (’782 Patent, col. 1:21-25; col. 2:26-44).
- The Patented Solution: The invention creates a two-party authorization system for track safety. A central dispatcher can place a block on a track section, which generates a unique "release code" transmitted to a mobile device held by the railway worker in the field. The system is designed so that the block cannot be removed until that specific release code is received back from the worker's terminal, thereby shifting the final authority to release the block from the remote dispatcher to the worker physically present on the track (’782 Patent, Abstract; col. 2:45-67).
- Technical Importance: This approach introduces a technological barrier that is independent of the dispatcher's actions, intended to prevent accidental removal of a safety block due to human error (’782 Patent, col. 11:11-14).
Key Claims at a Glance
- The complaint asserts independent claim 5 (Compl. ¶59).
- Claim 5 recites a method with the following essential elements:
- Configuring a mobile user device of a railway field worker to provide a user interface for displaying information and responding to prompts.
- Providing a terminal user interface on a terminal to permit a user to request that the railway control apparatus place a block on specified track sections.
- Generating a release code by the railway control apparatus and transmitting it to an electronic contact address accessible by the field worker via the user terminal.
- Permitting the block to be removed by the railway control apparatus only upon receiving the release code from the user terminal in return.
- The complaint reserves the right to assert other claims (Compl. ¶60, n.32).
U.S. Reissue Patent No. RE47,835 - "Tools for Railway Traffic Control"
- Patent Identification: U.S. Reissue Patent No. RE47,835, "Tools for Railway Traffic Control," issued February 4, 2020. This is a reissue of U.S. Patent No. 9,403,545.
The Invention Explained
- Problem Addressed: The patent addresses the same technical problem as the ’782 Patent: the danger to railway workers from dispatcher error in managing track blocks under CTC systems (RE’835 Patent, col. 2:34-45).
- The Patented Solution: The invention describes a method for controlling railway access where a central apparatus provides a user interface for placing a block. The system then generates a "removal code," determines the worker’s electronic contact address by accessing a personnel database, transmits the code to the worker, and permits the block to be removed only upon entry of that code at the central control apparatus (RE’835 Patent, col. 2:50-67). Figure 4 illustrates the communication flow, from the control apparatus initiating the block to the terminal providing the code for removal (RE’835 Patent, Fig. 4).
- Technical Importance: This method formalizes the integration of a personnel contact database into the safety authorization loop, ensuring the correct worker receives the removal code needed to clear a track block (RE’835 Patent, col. 3:51-60).
Key Claims at a Glance
- The complaint asserts independent claim 19 (Compl. ¶115).
- Claim 19 recites a method with the following essential elements:
- Providing a user interface of the railway traffic control apparatus, including a block placing part, to place a block on track sections.
- Generating a removal code, determining an electronic contact address of the railway field worker by accessing a rail personnel contact database, and transmitting the code to that address.
- Permitting the block to be removed only upon entry of the removal code by the centralized control operation from the railway traffic control apparatus.
- The complaint reserves the right to assert other claims (Compl. ¶116, n.71).
U.S. Reissue Patent No. RE49,115 - "Tools for Railway Traffic Control"
- Patent Identification: U.S. Reissue Patent No. RE49,115, "Tools for Railway Traffic Control," issued June 28, 2022. This is also a reissue of U.S. Patent No. 9,403,545.
- Technology Synopsis: This patent claims a railway control apparatus, rather than a method. It describes an apparatus with a processor and a memory storing instructions that, when executed, cause the apparatus to receive a track selection, transmit a block signal to the corresponding track interlock, generate a secret code associated with that track section, and transmit the secret code to a remote user terminal (RE’115 Patent, col. 15:5-20).
- Asserted Claims: The complaint asserts independent claim 20 (Compl. ¶176).
- Accused Features: The complaint alleges that NJ Transit’s RailwayNet/AIM system is a railway control apparatus that includes the claimed processor and memory for performing the steps of selecting tracks, placing blocks via interlocks, and generating and transmitting secret codes (Compl. ¶¶194, 210-211, 236-237).
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is NJ Transit’s implementation of Wabtec’s RailwayNet or Advanced Information Management (“AIM”) centralized train control system (Compl. ¶¶12, 46).
Functionality and Market Context
- The complaint alleges this system is used in NJ Transit’s control centers, such as the Penn Station Central Control (“PSCC”) and the Rail Operations Center (“ROC”) in Kearny, NJ, to control train movements, signals, and switches (Compl. ¶¶45, 79).
- A key accused functionality is what NJ Transit internally refers to as its “Enhanced Employee Protection System (EEPS)” (Compl. ¶55). According to a document cited in the complaint, this system requires a worker to possess a company-issued cell phone. To take a track out of service, the worker receives a four-digit PIN ("EEPS code"). To relinquish the track, the worker must provide this code to the dispatcher, who can then remove the blocking devices (Compl. ¶55). The complaint includes a photo of the PSCC control room, showing the terminals where dispatchers would operate the system (Compl. p. 27).
IV. Analysis of Infringement Allegations
’782 Patent Infringement Allegations
| Claim Element (from Independent Claim 5) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| configuring a mobile user device of a railway field worker to provide a device user interface to display information received via a network... and to permit the railway field worker to respond to prompts... | NJ Transit’s EEPS requires workers to possess a "company issued cell phone" configured to receive an "EEPS code" and respond to prompts by providing the code to the dispatcher. | ¶¶69-70, 73 | col. 11:9-14 |
| providing a terminal user interface on a terminal to permit a terminal user...request the railway control apparatus to place a block on one or more specified track sections... | NJ Transit operates control centers (PSCC and ROC) with user terminals that allow train dispatchers to remotely place "blocking devices" on track sections to protect employees. | ¶¶78-80, 83-84 | col. 5:6-8 |
| generating by the railway control apparatus a release code and transmitting the release code to an electronic contact address accessible by the railway field worker... | The accused RailwayNet/AIM system's "back office" allegedly functions as the railway control apparatus, generating a four-digit "EEPS code" and transmitting it to the worker's company-issued cell phone. | ¶¶90-94 | col. 6:58-62 |
| permitting the block to said one or more track sections to be removed by the railway control apparatus only upon receiving the release code from the user terminal in return. | The accused EEPS system requires the dispatcher to receive the worker's individual EEPS code before the dispatcher is able to remove the blocking devices providing protection. | ¶¶99-100, 102 | col. 7:1-14 |
- Identified Points of Contention:
- Scope Questions: A central question may be whether a worker verbally relaying a code to a dispatcher, who then manually enters it into a terminal, satisfies the claim limitation of "receiving the release code from the user terminal in return." The construction of this phrase could be pivotal.
- Technical Questions: What evidence does the complaint provide that the "back office" of the RailwayNet/AIM system is the component that performs the step of "generating" the release code, as opposed to another system component or a manual process?
’835 Patent Infringement Allegations
| Claim Element (from Independent Claim 19) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| providing a user interface of the railway traffic control apparatus, including a block placing part to place a block on one or more specified track sections... | NJ Transit's control centers provide dispatchers with a user interface on terminals to control interlocks and place blocks on track sections, a process referred to as putting a track in "foul time." | ¶¶134, 139-140 | col. 11:4-8 |
| generating a removal code, determining an electronic contact address of the railway field worker by accessing a rail personnel contact database... and transmitting the removal code... | The accused system allegedly generates an "EEPS code" and transmits it to the worker's cell phone, the number for which is stored in a centralized database that employees must register with to receive the code. | ¶¶146, 148-154 | col. 12:56-61 |
| permitting the block to said one or more track sections to be removed only upon entry of the removal code by said centralized control operation from the railway traffic control apparatus. | NJ Transit’s EEPS procedures allegedly require the dispatcher to enter the authorization code provided by the worker into the control system to remove the protection from the track. | ¶¶160-161, 163 | col. 14:1-12 |
- Identified Points of Contention:
- Scope Questions: Does the accused system's functionality of placing a track in "foul time" constitute a "block placing part" as contemplated by the patent?
- Technical Questions: The complaint alleges the system accesses a "rail personnel contact database." The nature and integration of this database will be a factual question: is it a standalone HR system, or is it integrated into the accused control apparatus in a way that satisfies the claim? The complaint provides a system boundary diagram that shows communication between a "Dispatch" component and a "Roadway Worker" (Compl. p. 52).
V. Key Claim Terms for Construction
The Term: "release code" / "removal code"
- Context and Importance: The identity, generation, and handling of this code are central to the patented invention. The definition will determine whether a simple, manually-assigned PIN satisfies the claims or if a more dynamic, system-generated code is required. Practitioners may focus on whether the term implies security features beyond a static identifier.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term itself does not explicitly require cryptographic security or randomness. The patent abstract simply refers to a "release code."
- Evidence for a Narrower Interpretation: The specification describes the code as a "random cipher" and notes that a "new random cipher may be generated for each instance of traffic blocking" (RE’835 Patent, col. 6:55-60), suggesting a dynamic and non-repeating nature.
The Term: "receiving the release code from the user terminal in return" (’782 Patent, Claim 5)
- Context and Importance: This term defines the mechanism for completing the safety loop and removing the block. The dispute will likely focus on whether this requires a direct data transmission from the worker's device to the control apparatus, or if an indirect, human-mediated relay (worker speaks, dispatcher types) is sufficient.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent specification mentions that the code can be entered orally via a "voice or speech interface part" or extracted from a voice message, which could support an interpretation that does not require direct electronic transmission from the worker's device (RE’835 Patent, col. 3:15-24).
- Evidence for a Narrower Interpretation: The claim language "from the user terminal" could be construed to mean the data must originate electronically from the terminal itself. The specification also describes activating a link in a message on the terminal to "cause the removal code to be entered," suggesting a direct electronic action (RE’835 Patent, col. 3:20-24).
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement, stating that NJ Transit provides instructions to its dispatchers and potentially to dispatchers of other railroads like Amtrak on how to use the accused EEPS system (Compl. ¶¶106, 167, 252).
- Willful Infringement: The complaint alleges willfulness based on both pre-suit and post-suit knowledge. It claims NJ Transit had actual notice of the parent ’545 patent as early as November 22, 2016, via email, and of the ’782 patent upon its issuance in December 2016 (Compl. ¶¶35, 40). It further alleges constructive notice from Plaintiff's marking of its own products and from the filing of the related Amtrak lawsuit in June 2022 (Compl. ¶¶41, 44, 108).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of mechanistic interpretation: Does a safety protocol where a worker verbally provides a code to a dispatcher who then enters it into a control terminal meet the claim requirement of "receiving the release code from the user terminal in return," or is a direct electronic transmission from the worker's device required?
- A key evidentiary question will be one of system architecture: How is the accused EEPS functionality implemented within the broader RailwayNet/AIM platform? Specifically, which components perform the claimed steps of generating the code, accessing a personnel database, and receiving the code for block removal, and do these components constitute the claimed "railway control apparatus"?
- A third central question will be one of definitional scope: Does the "four digit PIN (EEPS code)" used in the accused system constitute a "release code" or "removal code" as the term is used and described in the patents, particularly in light of specification language describing it as a "random cipher"?