One Source Technology LLC v. Difilippo

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: One Source Technology, LLC dba Asurint (Delaware)
  • Defendant: Robert DiFilippo (Ohio)
  • Plaintiff’s Counsel: Kohrman Jackson & Krantz P.L.L.
• Case Identification: 1:10-cv-00860, N.D. Ohio, 03/23/2012
• Venue Allegations: Venue is alleged to be proper based on the defendant’s residence in the district, the location where a key employment agreement was executed, and the district being the target of and location of injury from the defendant's alleged tortious conduct.
• Core Dispute: Plaintiff, a background screening company, alleges that its former employee misappropriated corporate trade secrets related to its proprietary "iMARC" technology to file and obtain a patent in his own name, in violation of his employment agreement, and seeks correction of inventorship, transfer of patent ownership, and damages.
• Technical Context: The technology involves data processing methods for improving the accuracy of criminal background checks by using a multi-factor scoring system to reduce false positives and false negatives.
• Key Procedural History: The complaint is a First Amended Complaint. The central dispute is not a typical product-based infringement but a challenge to the inventorship and ownership of the patent-in-suit. Plaintiff alleges that the defendant, a former employee, was subject to an employment agreement that assigned all rights to inventions developed during his employment to the plaintiff. The complaint alleges the defendant used confidential information about the plaintiff's pre-existing "iMARC" technology to file for the patent, naming himself as the sole inventor.

Case Timeline

Date	Event
2002-01-01	Asurint alleges its R&D of iMARC technology began.
2004-01-01	Asurint alleges its research was formalized into a technical design document.
2005-12-31	Defendant DiFilippo allegedly executes NDA with Asurint.
2006-03-06	Defendant DiFilippo begins employment with Asurint.
2006-03-14	Defendant DiFilippo allegedly signs Non-Competition and Non-Disclosure Agreement.
2007-09-19	Priority date for '427 Patent (Provisional App. 60/973,538 filed).
2008-07-28	Defendant DiFilippo resigns from Asurint.
2008-09-19	Application for U.S. Patent 8,112,427 filed.
2012-02-07	U.S. Patent 8,112,427 issues.
2012-03-23	First Amended Complaint filed.

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 8,112,427 - "Criminal Background Investigation"

• Patent Identification: U.S. Patent No. 8,112,427, "Criminal Background Investigation", issued February 7, 2012 (Compl. ¶51).

The Invention Explained

• Problem Addressed: The patent seeks to solve problems inherent in computer-based criminal background checks, namely "false negatives" (where a search returns no records when one exists) and "false positives" (where a search returns irrelevant records for a person with a common name) ('427 Patent, col. 1:19-39). The complaint frames this as the core value proposition of its proprietary "iMARC" technology (Compl. ¶7).
• The Patented Solution: The invention is a computer-implemented method that analyzes and scores criminal records to provide a more reliable result ('427 Patent, Abstract). The method comprises three key "dimensions" for scoring: a "Probability Dimension" that uses geographic data (e.g., proximity of an offense to a candidate's address) to address false negatives; a "Confidence Dimension" that analyzes the commonality of names and other identifying data to address false positives; and an "Offense Severity" dimension that categorizes crimes to create a final, sortable "offense score" ('427 Patent, col. 2:26-31, col. 3:5-8, col. 3:23-28).
• Technical Importance: The technology aims to provide an "objective measure of the reliability of the information" found during a background check, which is a key differentiator in what the complaint describes as a "crowded and competitive" industry ('427 Patent, col. 1:41-44; Compl. ¶6).

Key Claims at a Glance

The complaint does not identify any specific claims for assertion, referring only generally to "Infringement of U.S. Patent No. 8,112,427" (Compl. ¶¶141-150). Independent claims 1 and 15 are representative of the patented method.

• Independent Claim 1 (method) includes the following essential elements:
  • Determining identifying information for a person of interest.
  • Determining the probability that relevant information is not in the database, which includes creating a "probability measure" based on the number of counties within a certain distance.
  • Determining which information in the database relates to the person.
  • Creating an "offense array" that ranks offenses by severity and crime category.
  • Applying the person's information to the offense array.
  • Creating an "offense score" for the person.
• Independent Claim 15 (method) includes similar elements, but more specifically requires:
  • The step of determining which information relates to the person includes "determining the commonality of the name of the person of interest and weighting information about the person of interest as a function of the age of the information and the distance of the information from the person's known addresses."

III. The Accused Instrumentality

Product Identification

The complaint does not identify an accused product, method, or service being sold or practiced by the Defendant, Robert DiFilippo (Compl. ¶¶141-150). The accused infringer is the individual defendant himself.

Functionality and Market Context

The complaint does not allege that the defendant is practicing the claimed method (e.g., by offering a competing background check service). Instead, the infringement claim appears to be based on the defendant's alleged wrongful procurement of the patent and his continued assertion of ownership over it (Compl. ¶147). The complaint alleges this conduct is "without license or authorization" from the plaintiff, who claims to be the rightful owner of the '427 Patent by assignment (Compl. ¶¶146-147).

IV. Analysis of Infringement Allegations

The complaint makes a conclusory allegation of direct infringement, contributory infringement, and active inducement, but provides no claim chart or any factual detail explaining how the defendant is allegedly practicing the claimed invention (Compl. ¶147). The narrative theory of infringement is not based on the defendant making, using, selling, or offering to sell a product or service that embodies the claims. Rather, the theory appears to be that the defendant's act of obtaining and holding title to a patent that allegedly belongs to the plaintiff constitutes infringement of the plaintiff’s ownership rights.

The complaint alleges that the defendant is attempting to hide his relationship with the plaintiff, providing as evidence a screenshot of the defendant's LinkedIn profile which allegedly omits his employment at Asurint (Compl. ¶57, Ex. 9). This evidence is offered to support the claim of deceitful conduct in obtaining the patent, which underpins the plaintiff's theory of wrongful ownership and, by extension, its unconventional infringement claim.

• Identified Points of Contention:
  • Threshold Legal Question: The primary issue is not a typical infringement analysis but a question of ownership. Can the plaintiff establish that it is the rightful owner of the '427 Patent, either because its employees were the true inventors or because the defendant had a contractual duty to assign the invention?
  • Validity of Infringement Claim: A court may question whether the complaint states a valid claim for patent infringement under 35 U.S.C. § 271. The defendant’s alleged wrongful assertion of inventorship and ownership may be more appropriately addressed through the complaint’s claims for correction of inventorship (Count XIII), conversion (Count VI), and breach of contract (Count IV), rather than through a patent infringement claim.

V. Key Claim Terms for Construction

While claim construction is secondary to the core inventorship dispute, the definition of key terms may be relevant to determining who conceived of the specific invention claimed.

• The Term: "offense score" (Claim 1)

• Context and Importance: This term describes the final output of the claimed method and is central to the invention's purpose. The dispute over inventorship may focus on whether the specific method of calculating this "score" as claimed was conceived by the plaintiff's team or by the defendant.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The abstract describes the score generally as being "represented by three distinct values or three dimensions which can easily be represented by any 3-D graphical display or easily sorted" ('427 Patent, Abstract). This suggests a functional rather than a strictly structural definition.
  • Evidence for a Narrower Interpretation: The specification details a specific embodiment where offenses are scored on a "10xn grid" and the scores are "combined (not added) to create a single n digit number which can be easily sorted" ('427 Patent, col. 3:26-34). A party could argue the term should be limited to this more specific computational structure.

• The Term: "probability measure" (Claim 1)

• Context and Importance: This measure is the basis for the "Probability Dimension" used to combat false negatives. Its definition is critical to understanding the scope of the claimed solution and who may have conceived it.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: Claim 1 defines the measure functionally as "including determining the number of counties within a predetermined distance of a given county" ('427 Patent, col. 5:27-30). This language does not appear to limit the term to one specific formula.
  • Evidence for a Narrower Interpretation: The detailed description discloses specific calculations, such as "Pc/Pt=Px=Percent of Population Contained," which rely on the "standard Haversine formula" to determine distances between geographic points ('427 Patent, col. 2:36-62). A court may be asked to determine if the claims are implicitly limited to this disclosed methodology.

VI. Other Allegations

• Indirect Infringement: The complaint alleges contributory and induced infringement but provides no supporting factual allegations, such as the defendant providing a component or instructions to a third party to perform the claimed method (Compl. ¶147).
• Willful Infringement: The complaint alleges the defendant's infringement is "willful and deliberate" (Compl. ¶148). The basis for this allegation appears to be the defendant's alleged "intentional and deceitful" conduct in naming himself the sole inventor and obtaining the patent, rather than knowledge of infringement in a traditional sense (Compl. ¶55, ¶136).

VII. Analyst’s Conclusion: Key Questions for the Case

• A central issue will be one of inventorship: Can the plaintiff produce sufficient corroborating evidence, such as the alleged "technical design document" and testimony from other employees, to prove by clear and convincing evidence that its employees, not the defendant, conceived of the invention as recited in the patent’s claims?
• A second core issue is one of contractual obligation: Independent of the inventorship question, did the defendant's employment agreement create an unambiguous obligation to assign the '427 Patent to the plaintiff? The outcome will depend on the court's interpretation of the "Work Product" and assignment clauses in that agreement.
• A threshold legal question is one of claim viability: Does the defendant's alleged act of wrongfully obtaining and holding title to the '427 Patent constitute "infringement" under 35 U.S.C. § 271, or is that claim duplicative of the plaintiff's more direct claims for correction of inventorship and breach of contract?