DCT
1:18-cv-00323
Escort Inc v. Nolimits Enterprises Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Escort Inc. (Illinois)
- Defendant: noLimits Enterprises Inc. (Ohio)
- Plaintiff’s Counsel: Dinsmore & Shohl LLP; Hitchcock Evert LLP
- Case Identification: 1:18-cv-00323, S.D. Ohio, 05/09/2018
- Venue Allegations: Venue is alleged to be proper as the Defendant, noLimits Enterprises Inc., is an Ohio corporation with its principal place of business in Cincinnati, Ohio, and therefore resides in the Southern District of Ohio.
- Core Dispute: Plaintiff alleges that Defendant’s Radenso Pro M and Radenso XP radar detectors infringe three U.S. patents related to the use of GPS data to identify and filter false alerts.
- Technical Context: The technology addresses the persistent problem of false alarms in radar detectors by using a vehicle's GPS-determined location and speed to intelligently suppress alerts from known, non-police radar sources.
- Key Procedural History: The complaint alleges that Defendant was aware of the asserted patents due to Plaintiff's prior lawsuit against Uniden America Corporation involving the same patents. Plaintiff also alleges it sent pre-suit correspondence providing notice of infringement, which Defendant ignored. Two of the asserted patents, *RE39,038* and *RE40,653*, are reissues of the same original patent and have undergone separate ex parte reexamination proceedings, which may affect the scope and validity of the asserted claims.
Case Timeline
| Date | Event |
|---|---|
| 1999-04-14 | Priority Date for U.S. RE39,038 and U.S. RE40,653 Patents |
| 1999-06-14 | Priority Date for U.S. *7,576,679* Patent |
| 2006-03-28 | U.S. Patent No. RE39,038 Issued |
| 2009-03-10 | U.S. Patent No. RE40,653 Issued |
| 2009-08-18 | U.S. Patent No. 7,576,679 Issued |
| 2017-10-31 | Accused Radenso Pro M Product Introduced at SEMA Show |
| 2017-12-18 | Reexamination Certificate for RE39,038 Patent Issued |
| 2018-05-09 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Reissued Patent No. RE39,038 - "Method and apparatus for alerting an operator of a motor vehicle to an incoming radar signal"
The Invention Explained
- Problem Addressed: The patent's background describes how conventional radar detectors frequently generate annoying "false alarms" from non-police microwave sources like automatic door openers, and also generate alerts when the vehicle is traveling at a slow speed where a warning is not needed, undermining the device's credibility (RE39,038 E, col. 1:15-46).
- The Patented Solution: The invention integrates a GPS receiver with a radar detector's microprocessor to provide location and velocity data. This allows the detector to suppress alerts based on context, such as when the vehicle is near a known false alarm source (a "predetermined position") or when its speed is below a "predetermined velocity" (RE39,038 E, Abstract; col. 2:50-67).
- Technical Importance: This approach introduced geographic and kinetic intelligence to radar detection, aiming to transform the devices from simple signal detectors into smarter, context-aware warning systems (RE39,038 E, col. 1:20-24).
Key Claims at a Glance
- The complaint asserts independent claim 11, among others (Compl. ¶25).
- Independent Claim 11 requires a method with the following essential elements:
- detecting the incoming radar signal;
- determining the velocity of the device that detected the incoming radar signal;
- generating an alert if the velocity of the device is greater than a predetermined velocity;
- determining the position of the device that detected the incoming radar signal; and
- comparing the position of the device that detected the incoming radar signal to a predetermined position.
- The complaint reserves the right to assert other claims, including dependent claims (Compl. ¶25).
U.S. Reissued Patent No. RE40,653 - "Radar detector for detecting police radar that receives GPS data"
The Invention Explained
- Problem Addressed: As with the ’*038* patent, this patent addresses the issue of frequent false alarms from non-law enforcement sources, which annoys users and reduces the utility of radar detectors (RE40,653 E, col. 1:15-34).
- The Patented Solution: The patent describes a radar detector with a GPS receiver and a processor. The processor uses position data from the GPS receiver to make more intelligent alerting decisions, distinguishing between real threats and known, stationary false alarm sources. The patent describes how the system determines the vehicle's position over time to understand its path and context (RE40,653 E, Abstract; col. 3:18-28).
- Technical Importance: The technology provided a framework for a radar detector to not only use its current location but also its location history to improve alert accuracy, particularly along commonly traveled routes (RE40,653 E, col. 1:47-51).
Key Claims at a Glance
- The complaint asserts independent claim 22, among others (Compl. ¶31).
- Independent Claim 22 requires a method with the following essential elements:
- receiving data based at least in part upon the incoming police radar signal;
- alerting the operator of the motor vehicle to the incoming police radar signal;
- determining a first position of the radar detector;
- determining a second position of the radar detector;
- receiving data based at least in part upon the second position;
- wherein the determining of the second position is performed by the GPS receiver; and
- wherein the receiving of data based on the second position and the receiving of data based on the radar signal are both performed by the processor.
- The complaint reserves the right to assert other claims, including dependent claims (Compl. ¶31).
U.S. Patent No. 7,576,679 - "Radar detector with position and velocity sensitive functions"
Technology Synopsis
The patent discloses a GPS-enabled radar detector that dynamically handles alerts by comparing its current location against a stored database of geographically-referenced sources (’*679* Patent, Abstract). The system can learn and store locations of non-police signals ("unwanted source incidence counter") to suppress them in the future and can also modify alert behavior based on vehicle speed ('679 Patent, col. 21:1-24; col. 25:50-64).
Asserted Claims
The complaint asserts independent claims 1, 28, and 40, among others (Compl. ¶37).
Accused Features
The complaint alleges infringement by the accused products' GPS lockout feature for false alerts and speed-based muting capabilities (Compl. ¶¶10-11).
III. The Accused Instrumentality
Product Identification
The Radenso Pro M and Radenso XP radar detectors (collectively, the "Accused Products") (Compl. ¶12).
Functionality and Market Context
- The complaint alleges the Accused Products incorporate "GPS Lockout capability" that allows the devices to "remember common false alerts along your regularly driven routes" (Compl. ¶¶10-11). A user can manually store a false alert location by pressing and holding a button to "add a GPS lockout" (Compl. ¶¶10-11).
- The devices are also alleged to feature "automatic muting below a user-selected speed" and "automatic sensitivity adjustment based on current speed" (Compl. ¶¶10-11).
- The complaint alleges the products are significant market participants, having been showcased at "the premier automotive specialty products trade event in the world" (SEMA) and the "global stage where next-generation innovations are introduced" (CES) (Compl. ¶¶6-7).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
RE39,038 E Infringement Allegations
| Claim Element (from Independent Claim 11) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| detecting the incoming radar signal | The Accused Products are radar detectors that receive and process radar signals. | ¶12 | col. 2:30-34 |
| determining the velocity of the device that detected the incoming radar signal | The products offer "automatic muting below a user-selected speed," which requires a determination of the device's velocity. | ¶10, ¶11 | col. 3:20-24 |
| generating an alert if the velocity of the device is greater than a predetermined velocity | The "automatic muting below a user-selected speed" feature necessarily implies that an alert is generated above that speed. | ¶10, ¶11 | col. 5:51-57 |
| determining the position of the device that detected the incoming radar signal | The products use GPS to enable location-based features like "GPS lockout." | ¶10, ¶11 | col. 3:15-18 |
| comparing the position of the device... to a predetermined position. | The "GPS Lockout" function compares the device's current GPS position to stored false alert locations to suppress alerts. | ¶10, ¶11 | col. 2:4-6 |
- Identified Points of Contention:
- Scope Questions: Claim 11 requires both a velocity comparison (element c) and a position comparison (element e). A central question may be whether the Accused Products perform both of these steps as part of a single, unified method for determining whether to issue an alert. The complaint describes the "GPS Lockout" and "automatic muting" as distinct features, which may suggest that the functions are not combined in the conjunctive manner required by the claim.
RE40,653 E Infringement Allegations
| Claim Element (from Independent Claim 22) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| receiving data based at least in part upon the incoming police radar signal | As radar detectors, the Accused Products necessarily receive data from their radar-detecting circuitry. | ¶12 | col. 2:30-34 |
| alerting the operator of the motor vehicle to the incoming police radar signal | The purpose of the Accused Products is to provide alerts for police radar. | ¶3 | col. 2:55-60 |
| determining a first position of the radar detector; determining a second position of the radar detector | To "remember common false alerts along your regularly driven routes," the device must determine its position at different points in time to establish a path and identify recurring signals. | ¶10, ¶11 | col. 3:18-24 |
| wherein the determining of the second position... is performed by the GPS receiver | The complaint states the products use GPS, a standard function of which is to determine position. | ¶10, ¶11 | col. 3:15-18 |
| wherein the receiving the data based at least in part upon the second position and the receiving the data based... upon the... radar signal are both performed by the radar detector's processor | This describes the standard architecture where a central processor receives and processes data from both the GPS module and the radar receiver front-end to execute the device's logic. | ¶10, ¶11 | col. 3:24-28 |
- Identified Points of Contention:
- Technical Questions: Claim 22 recites a specific division of labor: the "GPS receiver" determines the position, while the "processor" receives data based on that position. The infringement analysis will turn on the precise internal architecture and data flow of the Accused Products. What evidence does the complaint provide that this specific functional partition exists, beyond general allegations of using a GPS and a processor?
V. Key Claim Terms for Construction
For the '038 Patent
- The Term: "predetermined position"
- Context and Importance: This term is fundamental to the GPS-based false alert filtering. Its construction will define what kind of stored locations qualify for suppressing an alert. Practitioners may focus on this term because its scope dictates whether a user-generated "lockout" falls within the claim, or if it is limited to locations programmed by a manufacturer or through some other non-user-initiated process.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification suggests a dynamic process, stating the "radar detector could attempt to locate the approximate position of the source of the incoming radar signal" for storage, which could support a user-initiated lockout ('038 Patent, col. 4:11-14).
- Evidence for a Narrower Interpretation: The specification also describes an embodiment where the "position of a microwave automatic door opener is programmed into the radar detector," which could imply a location that is fixed or set prior to the user encountering it ('038 Patent, col. 5:6-8).
For the '653 Patent
- The Term: "determining" a... "position"
- Context and Importance: In Claim 22, the act of "determining" a position is explicitly assigned to the "GPS receiver." This term's construction is critical because modern systems often involve both a GPS chipset and a main processor working together to refine a location fix. The dispute will center on where the act of "determining" legally concludes.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent states a "GPS receiver receives signals from satellites and uses these signals to calculate the position," which treats the receiver as the primary actor ('653 Patent, col. 3:15-18). This supports the view that the complete determination happens within the GPS unit.
- Evidence for a Narrower Interpretation: The patent later states the "GPS receiver can provide the microprocessor with data that includes the position," which could be interpreted to mean the GPS receiver provides raw or intermediate data, and the microprocessor performs the final "determination" or calculation of the usable position coordinate ('653 Patent, col. 3:24-28).
VI. Other Allegations
- Indirect Infringement: The complaint makes a general allegation of indirect infringement (Compl. ¶25). Factual support may be inferred from allegations that the accused products' marketing materials and user-facing features (e.g., "Simply press and hold a single button to add a GPS lockout") actively instruct users on how to perform the allegedly infringing methods (Compl. ¶¶10-11).
- Willful Infringement: The complaint alleges willful infringement based on both pre-suit and post-suit knowledge (Compl. ¶27, ¶33, ¶39). The specific factual bases alleged are (1) Defendant’s alleged awareness of Plaintiff's lawsuit against Uniden America Corporation on the same patents, and (2) Defendant’s alleged failure to respond to Plaintiff's pre-suit notice letter that identified the Asserted Patents and the Accused Products (Compl. ¶¶8, 13).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim scope and construction: Can Escort demonstrate that the Accused Products’ features, which are marketed as separate "GPS Lockout" and "automatic muting" functions, meet the combined, conjunctive limitations of a single method as required by claims like Claim 11 of the '038 patent?
- A key evidentiary question will be one of technical proof: What evidence can be presented to establish the specific internal hardware and software architecture of the Accused Products, particularly the precise division of labor between the "GPS receiver" and the "processor" as required by the narrow functional limitations of Claim 22 of the ’*653* patent?
- A significant procedural question will be the impact of reexamination: How will the court address the assertion of claims from the '038 patent that were affected by a reexamination certificate issued months before the complaint was filed, and what does this imply about the sufficiency of the plaintiff's pre-filing diligence?